Indiana Soybean Alliance, Inc.

Patent Trials and Appeals Board

May 21, 2020

15159726 - (D) (P.T.A.B. May. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/159,726 05/19/2016 H. William Harris 8660-0121 8336
25267 7590 05/21/2020
BOSE MCKINNEY & EVANS LLP
111 MONUMENT CIRCLE, SUITE 2700
INDIANAPOLIS, IN 46204
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
05/21/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATENT@BOSELAW.COM
mbartol@boselaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte H. WILLIAM HARRIS and STEVEN R. CRAIG1
____________

Appeal 2019-004894
Application 15/159,726
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Indiana Soybean Alliance, Inc. as the
real party-in-interest. App. Br. 1.

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Application 15/159,726

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 2, 4–13, 15–18, 26, and 27 as
unpatentable under 35 U.S.C. § 103 over the combination of Romarheim et
al. (WO 2010/128312 A2, November 11, 2010) 2 (“Romarheim”) and
Sweeney (US 3,916,832, November 4, 1975) (“Sweeney”).
Claim 3 stands rejected as unpatentable under 35 U.S.C. § 103 over
the combination of Romarheim, Sweeney, and Miyota et al. (US
2005/0142248 A1, June 30, 2005) (“Miyota”).
Claims 14, 19, and 29 stand rejected as unpatentable under 35 U.S.C.
§ 103 over the combination of Romarheim, Sweeney, and Abe et al. (US
5,739,006, April 14, 1998) (“Abe”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a method of providing a feed
composition containing soy protein and an antioxidant to salmonid fish,
thereby causing the fish to be resistant to inflammatory enteritis induced by
soy protein. Spec. ¶ 10.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:

2 The Examiner cites Romarheim as the A3 publication.
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1. A method of adapting a salmonidae fish to be resistant to
inflammatory enteritis induced by soy protein, the method
comprising:

providing to a salmonidae fish, within an effective period
of time after said fish has hatched, and for a sufficient number of
days thereafter, an oral feed composition containing soy protein
and an effective amount of an antioxidant to cause said fish to
become resistant to inflammatory enteritis induced by soy
protein.

App. Br. 16.

ISSUES AND ANALYSIS
We agree with, and expressly adopt, the Examiner’s findings,
reasoning, and conclusion that the claims are obvious over the combined
prior art. We address below the arguments raised by Appellant.

Issue 1
Appellant argues that the Examiner improperly construed the claims
to exclude the temporal limitation “within an effective period of time after
said fish has hatched … to cause said fish to become resistant to
inflammatory enteritis induced by soy protein.” App. Br. 8–10.

Analysis
The Examiner finds that Romarheim teaches a method for preventing
soybean meal-induced enteritis in salmonid fish. Final Act. 3–4 (citing
Romarheim 3–4, 14, 16). The Examiner finds that Romarheim teaches that
the method includes providing a fish feed containing soybean meal, 175 ppm
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astaxanthin antioxidant, and bacteria meal protein. Id. at 4 (citing
Romarheim 18–19). The Examiner finds that Romarheim teaches providing
the fish feed to salmon for 80 days, but does not explicitly teach feeding the
fish during the fry stage after hatching. Id. at 4–5 (citing Romarheim 20,
23).
The Examiner finds that Sweeney teaches aquaculture methods for
raising salmonid fish, including feeding the fish from the fry stage for two
years (at least 100 days) until reaching a market size of up to 8 lbs. See
Final Act. 5–6 (citing Sweeney col. 2, ll. 44–56). The Examiner finds it
would have been obvious to combine Romarheim and Sweeney to feed fry
fish after hatching with a fish feed that prevents soy protein-induced
inflammatory enteritis. Id. at 6. The Examiner finds that one of ordinary
skill in the art would have had a reasonable expectation of success in
combining the references to arrive at the claimed invention, and concludes
the claims would have been prima facie obvious. See id. at 7.
Appellant argues that the claimed invention
is based “on a surprising discovery which is that successful
induction of juvenile and larger sized salmonid fish to tolerate
aquafeed diets containing large amounts of soy can be achieved
by feeding such fish a unique series of pelleted diets beginning
with the first aquafeed consumed by the developing salmonid
fry.”

App. Br. 9 (citing Spec. ¶ 12) (emphasis in original). Appellant argues that
“to cause the fish to become resistant to inflammatory enteritis, the fish must
be fed the soy protein diet soon after they begin feeding by mouth
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(preferably immediately), and the window for imprinting fish closes when
the fish are around 30–40 g.” Id. at 9–10 (emphasis in original).
Appellant argues that Examiner applies an unreasonably broad
interpretation to the claims. App. Br. 9. Appellant argues that in light of the
Specification, one of ordinary skill in the art would understand that
Romarheim’s teaching of starting the soy diet after the fish reach 133 g, “is
well past an effective period of time after said fish has hatched.” Id. at 10
(emphasis in original).
Appellant further argues that the Examiner’s interpretation including
feeding soy to fish weighing 133 g expressly conflicts with the
Specification. App. Br. 10 (citing In re Man Mach. Interface Techs. LLC,
822 F.3d 1282, 1286–87 (Fed. Cir. 2016)). Appellant argues that the
Specification supports a more narrow interpretation by disclosing a “non-
limiting embodiment” of feeding “the fish immediately after the fish begin
feeding by mouth,” and “non-limiting examples” of “feeding a high-soy-
content starter diet to fry.” Id. (citing Spec. ¶¶ 43, 72, 82) (emphasis in
original).
We are not persuaded. “[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
Appellant’s proposed construction is not the broadest reasonable
interpretation because Appellant seeks to read limitations from the
Specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (holding that although the claims are interpreted in light of
the specification, limitations from the specification may not be read into the
claims).
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Appellant seeks to read into claim 1 the temporal limitation of
performing the method when the fish is a fry or prior to reaching a weight of
30–40 g. The Specification refers to both of these embodiments as “non-
limiting.” See Spec. ¶ 12. Non-limiting embodiments do not “expressly
disclaim the broader definition” based on the plain language of the claims.
See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
The plain language of the dependent claims further supports the
Examiner’s interpretation of claim 1. Dependent claim 26 limits the fish of
claim 1 to a fry, and claim 27 limits claim 1 with the temporal limitation of
“immediately after the fish begins feeding by mouth.” App. Br. 18.
Reading either of these limitations into claim 1, as proposed by Appellant,
would render the dependent claims superfluous. A claim construction that
results in a dependent claim having the same scope as the independent claim
from which it depends, and which thus renders the dependent claim
superfluous, is “presumptively unreasonable.” Beachcombers, Int’l Inc. v.
Wildewood Creative Prods., Inc., 31 F.3d 1154, 1162, 31 USPQ2d 1653,
1659 (Fed. Cir. 1994).
We find instant claim 1 readily distinguishable from the claim at issue
in Man Machine, cited by Appellant. See 822 F.3d at 1284. In Man
Machine, the claim expressly recited: “a body adapted to be held by the
human hand,” and “a thumb switch.” Id. Our reviewing court found that the
Specification did not support interpreting the claim to read on a desk-bound
device activated by the palm or finger, because that interpretation was
“expressly disclaimed in the [S]pecification.” See id. at 1286. Appellant
argues that the Examiner’s interpretation excludes the time period for
imprinting a fish. See App. Br. 9–10. However, the claim does not recite
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“imprinting” and Appellant does not argue that the preamble of “adapting a
salmonidae fish” limits the claim. As discussed supra, Appellant has not
identified any express disclaimer in the Specification. Accordingly, we are
not persuaded that the Examiner erred in interpreting claim 1.

Issue 2
Appellant argues the prior art does not disclose the timing limitation
of claim 1. App. Br. 10.

Analysis
Appellant argues the “[t]wo major elements of the claimed method
are the feed composition and the timing for introducing soy to the fish,” and
Romarheim only applies to the first element. App. Br. 10. Appellant argues
“that Sweeney teaches how to supply carnivorous [fish] with other fish to eat
is wholly irrelevant to the effective time for introducing soy protein into a
salmonid’s feed so as to prevent inflammatory enteritis.” Id. at 11.
We are not persuaded. “In determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted). The Examiner cites Sweeney for
teaching the basic aspects of salmonid fish aquaculture. Final Act. 5–6.
Sweeney teaches that salmon fry, aged 0–6 months, eat 100% ration feed
(fish feed). Sweeney col. 21, ll. 15–30. Sweeney teaches that “[t]he fry will
be fed pellet food … The pellet food for the fry will generally start at about
one-sixty-fourth inch diameter or less pellets, and the size can be made
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longer as the fry grow.” Id. Sweeney teaches that commercially available
pellet food may include fishmeal, soybean oil, and added vitamins and
minerals. Id. at col. 21, ll. 47–50. Sweeney teaches that as the salmon
mature and become primarily fish eaters, “[i]t is preferable to continue some
ration feeding … for the provision of medicated food for controlling
disease.” Id. at col. 21, ll. 56–65.
Romarheim teaches that the increasing cost of fishmeal has led to a
need for plant-based protein sources. Romarheim 1. Romarheim teaches a
fish feed containing a plant-based protein source that prevents soy protein-
induced inflammatory enteritis, thereby solving the same problem as
Appellant’s invention. Id. at 23. Romarheim’s fish feed contains soy
protein and an effective amount of an antioxidant as claimed by Appellant.
Id. at 18–19. Although Romarheim’s experimental example teaches feeding
the disclosed fish feed to fish that are 133 g or larger, we do not agree with
Appellant that Romarheim’s teachings are limited to this example. Rather,
we agree with the Examiner that the prior art suggests using Romarheim’s
fish feed in Sweeney’s method of providing fish feed at the fry stage, when
the fish begin eating by mouth, and continuing until the fish reach market
size.

Issue 3
Appellant argues one of ordinary skill in the art would not have been
motivated to combine the cited references. App. Br. 12.
Analysis
Appellant argues that “[t]he Examiner has failed to establish either the
motivation to combine or, as discussed above, the reasonable expectation
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that the combination would result in Appellant's claimed invention.” App.
Br. 12. Appellant argues that:
Romarheim teaches co-feeding older salmonids (juveniles)
bacterial protein meal as a way to ameliorate the inflammatory
enteritis caused by the also administered soy-based feed.
Meanwhile, Sweeney teaches feeding salmonids a fish-based
diet consisting primarily of live filter fish. Nothing in Sweeney
is relevant to the central purpose of Romarheim … As such, one
of skill in the art would have no rational motivation to make the
combination.

Id. at 12–13 (emphasis omitted).
We are not persuaded. As discussed supra, Sweeney teaches feeding
salmonid fish ration food, beginning at the fry stage and continuing until the
fish reach market size, at least for medicinal purposes. Romarheim teaches a
fish feed composition that replaces expensive fishmeal and provides the
medicinal benefit of preventing soy-protein-induced inflammatory enteritis.
Accordingly, combining Romarheim’s fish feed composition with
Sweeney’s aquaculture method is a “predictable use of prior art elements
according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).

Issue 4
Appellant argues that the Examiner did not state a reason for rejecting
claims 26 and 27, and further that these claims are independently patentable.
App. Br. 13–14.

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Analysis
Appellant asserts the Examiner’s rejection did not state a reason for
rejecting claims 26 and 27. App. Br. 13–14. Appellant further argues that
the prior art does not teach administering a feed composition “while the fish
is a fry” (claim 26) or “immediately after the fish begins feeding by mouth”
(claim 27). Id. Appellant argues that “Sweeney does not disclose
administering a feed composition that contains soy protein and an
antioxidant at any stage of development. Romarheim does not disclose
administering a feed composition containing soy and an antioxidant until
after the fish reaches 133 grams.” Id. at 14.
We are not persuaded by Appellant’s argument that the Examiner did
not address the claims. The Examiner lists claims 26 and 27 as rejected over
the combination of Romarheim and Sweeney in the rejection. Final Act. 3.
The Examiner finds “[Sweeney’s] process reads on the step of ‘feeding the
fry salmonidae fish after it has hatched’ as recited in claims 1 and 26.” Id. at
5. The Examiner finds that “[w]ith respect to feeding the salmon fish by
mouth as the manner recited” in claim 27, it would have been obvious to
feed the fish by mouth as taught by the prior art. See id. at 6. Accordingly,
we are not persuaded that the Examiner did not address claims 26 and 27.
We are also not persuaded by Appellant’s argument against the prior
art references individually. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). As discussed supra, it would have been
obvious to administer Romarheim’s fish feed in Sweeney’s aquaculture
method, wherein fry are fed 100% ration food. Feeding fry with
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Romarheim’s composition would allow for a diet that includes inexpensive
soy-protein meal, but prevents soy-protein-induced inflammatory enteritis.
We also note that Appellant has not relied on evidence of any
secondary consideration associated with feeding a fish while a fry or
immediately after the fish begins feeding by mouth, nor does Appellant
show a comparison to the closest prior art of Romarheim. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”).
We consequently affirm the Examiner’s rejection of the claims.

CONCLUSION

The rejection of claims 1–19, 26, 27, and 29 as unpatentable under
35 U.S.C. § 103, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 4–13,
15–18, 26,
27
103 Romarheim, Sweeney 1, 2, 4–13,
15–18, 26,
27

3 103 Romarheim, Sweeney,
Miyota
3
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Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
14, 19, 29 103 Romarheim, Sweeney,
Abe
14, 19, 29
Overall
Outcome
1–19, 26,
27, 29