Michael James. Schmidt et al.

Patent Trials and Appeals Board

Aug 26, 2019

12584367 - (D) (P.T.A.B. Aug. 26, 2019)

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.
12/584,367 09/03/2009 Michael James Schmidt 10654-002US1 1168
96039 7590 08/26/2019
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/26/2019 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):
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL JAMES SCHMIDT and DAVID AVARBOCK
____________

Appeal 2018-001522
Application 12/584,367
Technology Center 1700
____________

Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1–5, 7, 10, and 26–30.3 We have

1 In explaining our Decision, we refer to the Specification filed Sept. 3, 2009
(“Spec.”); Final Office Action dated Aug. 31, 2016 (“Final Act.”); Appeal
Brief filed June 30, 2017 (“Appeal Br.”); Examiner’s Answer dated Sept. 28,
2017 (“Ans.”); and Reply Brief filed Nov. 28, 2017 (“Reply Br.”).
2 Biomechanical Technologies, LLC is identified as the real party in interest.
Appeal Br. 3.
3 Claims 9, 11, 24, and 25 are withdrawn (Appeal Br. 6) and claims 6, 8, and
12–23 are cancelled (id. at 17–19).
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jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on July 30,
2019.4
We AFFIRM.
The Claimed Subject Matter
Appellants’ disclosure relates to a nutritional composition, which
comprises a carbohydrate and a protein, and preferably a ratio of the
carbohydrate to the protein greater than about 4.3 parts by weight
carbohydrate to 1 part by weight protein. Abstract; Spec. ¶ 1. According to
Appellants’ Specification, the claimed composition is intended for
optimizing the intensity and duration of muscle activity during exercise and
sport performance, and preventing muscle damage during and after exercise
while not causing gastrointestinal disturbances. Spec. ¶¶ 1, 33, 34, 43.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A nutritional composition comprising: a
carbohydrate portion and a whey protein portion,
wherein the carbohydrate portion comprises two or
more carbohydrates and includes from 5–45% by weight
fructose and from 40–95% by weight dextrose, based on
the total weight of the carbohydrate portion;
wherein the carbohydrate portion comprises less
than 25% by weight glucose polymer, based on the total
weight of the carbohydrate portion; and

4 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
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wherein the weight ratio of the carbohydrate
portion to the whey protein portion is from about 4.3:1
to 34.75:1.
Appeal Br. 17 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Kingham US 5,480,865 Jan. 02, 1996
Fuchs et al. (“Fuchs 2”) US 2002/0044957 A1 Apr. 18, 2002
Kaufman US 6,534,487 B1 Mar. 18, 2003
Fuchs et al. (“Fuchs”) US 7,008,654 B1 Mar. 07, 2006
Stillman US 7,115, 297 B2 Oct. 03, 2006
The Rejections
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1–5, 10, 26, 27, 29, and 30 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Kingham in view of the
combination of Fuchs and Kaufman (“Rejection 1”). Ans. 3.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kingham in view of the combination of Fuchs and
Kaufman as applied to claims 1–5, 10, 26, 27, 29, and 30 above, further in
view of Stillman (“Rejection 2”). Ans. 8.
3. Claim 28 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kingham in view of the combination of Fuchs and
Kaufman as applied to claims 1–5, 10, 26, 27, 29, and 30 above, further in
view of Fuchs 2 (“Rejection 3”). Ans. 9.
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OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We add the following.
Rejection 1
Appellants present arguments for the patentability of claim 1, but do
not separately argue claims 2–5, 10, 26, 27, 29, and 30. Appeal Br. 6–14.
We select claim 1 as representative and claims 2–5, 10, 26, 27, 29, and 30
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Kingham, Fuchs,
and Kaufman suggests a nutritional composition satisfying all of the
limitations of claim 1 and, thus, concludes the combination would have
rendered claim 1 obvious. Ans. 3–6 (citing Kingham, Abstract, 3:2–8, 3:48,
3:49, 4:32, 4:42, 4:62, 7:60–63, 14:19–54, 14:56–15:28, 19:5–10; Fuchs,
Abstract, 3:4, 3:30, 5:50–58; Kaufman, Abstract, 5:17–32, 6:32–35).
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed because the cited art fails to disclose or suggest “a carbohydrate
portion and a whey protein portion” and “wherein the weight ratio of the
carbohydrate portion to the whey protein portion is from about 4.3:1 to
34.75:1,” as recited in the claim. Appeal Br. 7; Reply Br. 2–3.
Appellants argue that, although Kingham does describe compositions
that include a carbohydrate component and a protein component in a
weight-to-weight ratio of at least about 3.5:1, Kingham provides no
guidance that would have led one of ordinary skill in the art to prepare
compositions that include a carbohydrate portion and a whey protein portion
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in any particular weight ratio because “whey protein alone cannot serve as
Kingham’s protein component.” Appeal Br. 8. In particular, Appellants
contend that Kingham requires that the protein component possess a
particular weight ratio of Group A amino acids to Group B amino acids and
because whey protein is too rich in Group B amino acids, it cannot serve as
Kingham’s protein component. Id. at 7 (citing Kingham 2:55–67, 5:1–3).
Appellants also contend that modifying Kingham’s compositions to replace
the protein component with whey protein would render Kingham’s
compositions unsuitable for their intended purpose. Id. at 8.
Appellants further argue that the cited art fails to disclose or suggest a
nutritional composition that includes the particular combination of
carbohydrates recited in the claim. Appeal Br. 9; Reply Br. 3–6. In
particular, Appellants contend
Kingham, Fuchs, and Kaufman fail to disclose or suggest
a nutritional composition that includes a carbohydrate
portion comprising (1) from 5-45% by weight fructose,
based on the total weight of the carbohydrate portion;
(2) from 40-95% by weight dextrose, based on the total
weight of the carbohydrate portion; and (3) less than 25%
by weight glucose polymer, based on the total weight of
the carbohydrate portion, as recited by claim 1.
Appeal Br. 9.
Appellants also argue that the proposed combination of Kingham,
Fuchs, and Kaufman relies on improper hindsight and the Examiner has
failed to articulate an adequate rationale for why one of ordinary skill in the
art would have combined the teachings of the references to arrive at the
claimed composition. Id. at 12. Appellants contend the Examiner “is
merely picking and choosing elements from Kingham, Fuchs, and Kaufman
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in an attempt to arrive at the composition recited in claim 1” and the analysis
“is based on knowledge gleaned from Appellant’s disclosure.” Id. at 12.
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we determine that a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination (Ans. 3–6, 10–18) that the
combination of Kingham, Fuchs, and Kaufman suggests all of the limitations
of claim 1, and conclusion that the combination would have rendered the
claim obvious. Kingham, Abstract, 3:2–8, 3:48, 3:49, 4:32, 4:42, 4:62,
7:60–63, 14:19–54, 14:56–15:28, 19:5–10; Fuchs, Abstract, 3:4, 3:30,
5:50–58; Kaufman, Abstract, 5:17–32, 6:32–35.
Contrary to what Appellants argue, Kingham does teach or suggest “a
carbohydrate portion and a whey protein portion” and “wherein the weight
ratio of the carbohydrate portion to the whey protein portion is from about
4.3:1 to 34.75:1,” as recited in the claim. In particular, as the Examiner
finds (Ans. 11), Kingham discloses a nutritional composition comprising a
first weight-to-weight ratio of carbohydrate to protein of at least about 3.5:1,
which encompasses the claimed range. Kingham, Abstract, 3:2–8, 19:5–10
(claim 1). As the Examiner further finds (Ans. 3), Kingham discloses the
use of “milk proteins,” which includes whey protein, as a protein component
for its composition. Kingham 4:48, 4:32–33, 5:2 (disclosing “a milk protein
such as whey or calcium or sodium caseinate”).
Appellants’ arguments do not reveal reversible error in the
Examiner’s factual findings and analysis in this regard.
Appellants’ contention that Kingham requires that the protein
component possess a particular weight ratio of Group A amino acids to
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Group B amino acids (Appeal Br. 7) and because whey protein is too rich in
Group B amino acids, it cannot alone serve as Kingham’s protein component
(id. at 7–8) is not persuasive because a “reference must be considered for
everything that it teaches, not simply the described invention or a preferred
embodiment.” In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir.
2012); see also In re Bode, 550 F.2d 656, 661 (CCPA 1977) (explaining that
a “reference must be evaluated for all it teaches and is not limited to its
specific embodiments”). The fact that Kingham may describe an
embodiment with a composition containing whey protein alone as being too
rich in Group B amino acids (Kingham 4:67–5:3) does not necessarily
negate or take away from Kingham’s disclosure regarding the use of milk
proteins, such as whey protein, as a component in its composition (see id. at
4:48, 4:32–33, 5:2–8). Kingham is not limited to its examples. See In re
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649,
651 (CCPA 1972). Instead, all of the disclosures in Kingham must be
evaluated for what they would have fairly suggested to one of ordinary skill
in the art. In re Boe, 355 F.2d 961, 965 (CCPA 1966).
Moreover, contrary to what Appellants’ argument implies, Kingham
does not require that its protein component consist of whey protein alone.
Rather, the reference makes clear that the protein component in its
composition may include the blending of different types of proteins,
including milk proteins, such as whey, in combination with other protein
sources to result in a composition having an acceptable content and/or
weight ratio of amino acids. See Kingham 5:3–7 (“The proper balancing of
such a milk protein with, for example, a collagen will result in a composition
which can meet the limits of the present invention yet still provide an
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acceptable content of various amino acids.”); see also id. at 4:62–67 (“It will
be understood that, generally speaking, a careful blending of different
protein types will be necessary to achieve some content of all or most
essential amino acids while at the same time maintaining the ratios of Group
A amino acids to Group B amino acids within the limits contemplated in the
present invention.”).
We note that claim 1 of Kingham recites a “comprises” transition
term, which opens the claim to other components and does not preclude the
recited “protein” component from being a blend of different types of
proteins, including milk proteins, such as whey and, for example, a collagen.
See In re Baxter, 656 F.2d 679, 686 (CCPA 1981). Appellants’ claim 1,
similarly, recites a “comprising” transition term and likewise does not
preclude additional components, including for example different types of
proteins such as collagen, from being included in the composition, so long as
the weight ratio of the carbohydrate portion to the whey protein portion is
from about 4.3:1 to 34.75:1, as claimed.
Appellants’ contentions that “whey protein alone cannot serve as
Kingham’s protein component” (Appeal Br. 8) and modifying Kingham’s
compositions to replace the protein component with whey protein “would
render Kingham’s [composition] unsatisfactory for administration to patients
undergoing treatment with an LNAA-type therapeutic agent” (id. at 8) are
not persuasive because they are conclusory and unsupported by persuasive
evidence in the record. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(explaining that mere lawyer’s arguments or conclusory statements, which
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are unsupported by concrete factual evidence, are entitled to little probative
value).
As previously discussed above, although Kingham may describe a
specific embodiment containing whey protein alone as being too rich in
Group B amino acids, the reference does not teach that such a composition
would necessarily render any and all compositions containing whey protein
unsuitable for administration to patients undergoing treatment with an
LNAA-type therapeutic agent. Mills, 470 F.2d at 651 (“All the disclosures
in a reference must be evaluated, including nonpreferred embodiments.”); cf.
also In re Susi, 440 F.2d 442, 445 (CCPA 1971) (explaining that preferred
embodiments do not constitute a teaching away from a reference’s broader
disclosure or nonpreferred embodiments). Rather, as discussed above,
Kingham suggests that milk proteins, such as whey, may be used in its
composition, including for example in combination with other proteins such
as collagen. Thus, on the record before us, we find that a preponderance of
the evidence supports the Examiner’s finding that the cited art teaches or
suggests “a carbohydrate portion and a whey protein portion” and “wherein
the weight ratio of the carbohydrate portion to the whey protein portion is
from about 4.3:1 to 34.75:1,” as recited in claim 1.
A preponderance of the evidence also supports the Examiner’s finding
(Ans. 3–5, 14–18) that the cited art teaches or suggests the (1) “from 5-45%
by weight fructose,” (2) “from 40-95% by weight dextrose,” and (3) “less
than 25% by weight glucose polymer” recitations of the claim. In particular,
as the Examiner finds (Ans. 4, 16), Fuchs discloses the use of “fructose” as a
carbohydrate source in nutritional compositions (Fuchs 3:20–22) and that
“the carbohydrate preferably provides about 10% to about 25% by weight of
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the nutritional composition” (id. at 3:17–19), which falls within the claimed
range of “from 5-45% by weight fructose.”
As the Examiner further finds (Ans. 5), Kaufman teaches methods of
making nutritional compositions comprising proteins and carbohydrates.
Kaufman 1:48–57, 2:18–31, 2:59–63, 3:12–18, 5:17–32. Kaufman also
suggests using fructose as a simple sugar in its nutritional composition in an
amount that falls within the claimed weight range. In particular, at column
3, lines 12–18, Kaufman describes an embodiment for a composition
containing “about 15–35 grams of total carbohydrates,” including “about
0–15 grams of simple sugar,” which, based on, for example, 15 grams of
simple sugar, corresponds to about 42.8% by weight and falls within the
claimed range. Kaufman further teaches using fructose as the simple sugar
in the prior art composition. Id. at 2:10–11 (disclosing use of “fructose” as a
“simple sugar” and “sweetening agent”). See also Kaufman 1:56–57
(disclosing composition comprising “at least one sweetening agent in an
amount effective to sweeten said food composition”), 2:65–66 (disclosing
“fructose” as the “principal sweetener”).
As the Examiner finds (Ans. 3), the cited art also suggests the “from
40-95% by weight dextrose” and “less than 25% by weight glucose
polymer” recitations of the claim. For example, Kingham discloses the use
of mixtures of mono-, di-, and polysaccharides, including “dextrose” and
“fructose” and “glucose” in nutritional compositions comprising
carbohydrates and proteins, and that such use was known in the art.
Kingham 3:51–57, 62–66. Kaufman also discloses using “polydextrose” as
a “rapidly absorbed complex carbohydrate” (Kaufman 2:59–61) and that the
composition contains “about 10 to 40 percent by weight of rapidly absorbed
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complex carbohydrate” (id. at 1:52–53, 3:12–17, 5:24–25), which overlaps
the claimed range.
As the Examiner further finds (Ans. 5), Kaufman discloses an
embodiment for a composition that includes “about 10 to 60 percent by
weight of a simple carbohydrate selected from the group consisting of
sucrose, glucose, dextrose, and combinations thereof” (Kaufman 6:32–35),
which, when glucose is selected, overlaps the claimed range of “less than
25% by weight glucose polymer.”
Appellants’ contention that “Kingham Fails to Disclose or Suggest
Example Compositions that Include Fructose” (Reply Br. 4) is not
persuasive of reversible error in the Examiner’s rejection because, as
previously discussed above, Kingham’s teachings are not limited to its
examples. Mills, 470 F.2d at 651. Appellants’ contention that “Kingham in
fact Recites a Laundry List of Possible Carbohydrates” (Reply Br. 4) is
equally unpersuasive because the fact that a reference suggests a multitude
of effective components does not render any particular component or
formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d
804, 807 (Fed. Cir. 1989).
We also do not find persuasive Appellants’ contention that the
Examiner has failed to articulate an adequate rationale for why one of
ordinary skill in the art would have combined the teachings of the references
to arrive at the claimed composition (Appeal Br. 12). Contrary to what
Appellants argue, we find that the Examiner does provide a reasoned basis,
which is supported by a preponderance of the evidence in this appeal record,
to evince why one of ordinary skill in the art would have combined the
teachings of Kingham, Fuchs, and Kaufman to arrive at Appellants’ claimed
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invention. Ans. 4, 5–6. See also KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness”).
Appellants fail to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning for why one of ordinary skill would have arrived at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error. Appellants’ disagreement as to the Examiner’s factual
findings and reasoning for combining the references, without more, is
insufficient to establish reversible error. Cf. SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Appellants’ assertions that (1) the proposed combination of Kingham,
Fuchs, and Kaufman relies on improper hindsight (Appeal Br. 12); (2) the
Examiner “is merely picking and choosing elements from Kingham, Fuchs,
and Kaufman in an attempt to arrive at the composition recited in claim 1”
(id. at 12); and (3) the analysis “is based on knowledge gleaned from
Appellant’s disclosure” (id. at 12) are not persuasive because they are
conclusory and unsupported by persuasive evidence in the record. Attorney
argument is not evidence. De Blauwe, 736 F.2d at 705.
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Accordingly, we affirm the Examiner’s rejection of claims 1–5, 10,
26, 27, 29, and 30 under 35 U.S.C. § 103(a) as obvious over the combination
of Kingham, Fuchs, and Kaufman.
Rejections 2 and 3
The Examiner’s Rejections 2 and 3 (stated above) are obviousness
rejections of dependent claims of claim 1 based upon the combination of
Kingham, Fuchs, and Kaufman, which is discussed above for claim 1, and
an additional reference, respectively. See Ans. 8, 9.
Appellants do not present any new or additional substantive
arguments in response to these rejections. Rather, Appellant relies on the
same arguments previously presented and discussed above in response to the
Examiner’s rejection of claim 1. See Appeal Br. 14 (asserting “Stillman
fails to cure the deficiencies of Kingham, Fuchs, and Kaufman”); id. at 15
(asserting “Fuchs 2 fails to cure the deficiencies of Kingham, Fuchs, and
Kaufman”).
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming the Examiner’s rejection of claim 1 (Rejection 1, stated above), we
affirm the Examiner’s Rejections 2 and 3, respectively.
DECISION
The Examiner’s rejections of claims 1–5, 7, 10, and 26–30 are
affirmed.
It is ordered that the Examiner’s decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED