Indiana Soybean Alliance, Inc.Download PDFPatent Trials and Appeals BoardMay 21, 20202019004894 (P.T.A.B. May. 21, 2020) Copy Citation 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. Appeal 2019-004894 Application 15/159,726 2 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. Appeal 2019-004894 Application 15/159,726 3 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 Appeal 2019-004894 Application 15/159,726 4 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 Appeal 2019-004894 Application 15/159,726 5 (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). Appeal 2019-004894 Application 15/159,726 6 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 Appeal 2019-004894 Application 15/159,726 7 “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 Appeal 2019-004894 Application 15/159,726 8 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 Appeal 2019-004894 Application 15/159,726 9 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. Appeal 2019-004894 Application 15/159,726 10 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 Appeal 2019-004894 Application 15/159,726 11 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 Appeal 2019-004894 Application 15/159,726 12 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 Copy with citationCopy as parenthetical citation