Rios, Humberto González. et al.

Patent Trials and Appeals Board

May 29, 2020

2019005321 (P.T.A.B. May. 29, 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.
13/446,594 04/13/2012 Humberto González Rios 2807-02000 8645
23505 7590 05/29/2020
CONLEY ROSE, P.C.
575 N. Dairy Ashford Road
Suite 1102
HOUSTON, TX 77079
EXAMINER
LEE, ANDREW P
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUMBERTO GONZÁLEZ RIOS, DIEGO ARTURO GIL
LOZANO, and ANTONINO BERRONDO MIR
Appeal 2019-0053211
Application 13/446,594
Technology Center 1600
BEFORE DONALD E. ADAMS, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims related to
ferulic acid food supplements for cattle. The Examiner rejected the claims
as obvious under 35 U.S.C. § 103(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Laboratorios
Minkab, S.A. DE C.V. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claims 6, 8, 9, 11, and 19 are on appeal (Final Act. 2), of which
claims 6 and 19 are independent. Claim 6, reproduced below, is illustrative
of the claimed subject matter:
6. An antioxidant food supplement for feeding cattle 30 days
immediately prior to slaughter consisting of:
ferulic acid or a salt thereof in an amount of 240 milligram (mg)
per kilogram (kg) of a beef cattle feed, wherein the supplement
is configured to reduce lipid oxidation and reduce levels of a
TBARS (thiobarbituric acid reactive substance) in the meat of
cattle fed said supplement 30 days immediately prior to
slaughter of said cattle as compared to cattle not fed said
supplement, or cattle fed a supplement comprising ferulic acid
for 60 days prior to slaughter.
Appeal Br. 18 (Claims Appendix).
REFERENCES
The Examiner relied upon the following prior art references:
Name Reference Date
Wolf US 2004/0266862 A1 Dec. 30, 2004
Herrera US 2011/0046224 A1 Feb. 24, 2011
REJECTION
Claims 6, 8, 9, 11, and 19 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Herrera and Wolf. Final Act. 6.
OPINION
Appellant asserts that “[c]laim 6 is representative of claims 8, 9, and
11,” and that “claim 19 is allowable for much the same reason as claim 6.”
Appeal Br. 11, 15. Accordingly, we focus our analysis on independent
claim 6, and all claims stand or fall together. 37 C.F.R. § 41.37(c)(1)(iv).
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We begin by interpreting claim 6. The Examiner and Appellant
disagree over whether the preamble is limiting. See, e.g., Final Act. 7;
Appeal Br. 15–16. “In general, a preamble limits the invention if it recites
essential structure or steps, or if it is necessary to give life, meaning, and
vitality to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (citations omitted). “Conversely, a
preamble is not limiting where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention.” Id. (citations omitted). “[T]he rule against
giving invention-defining effect to intended-use preamble language reflects
. . . the ‘well settled’ fundamental principle ‘that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.’” Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320,
1328 (Fed. Cir. 2019) (quoting In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997)).
The preamble of claim 6 reads: “[a]n antioxidant food supplement for
feeding cattle 30 days immediately prior to slaughter.” Appeal Br. 18
(Claims Appendix). As will be explained, we find that the preamble has two
parts: “[a]n antioxidant food supplement,” which is limiting because it
provides antecedent basis; and “for feeding cattle 30 days immediately prior
to slaughter,” which is not limiting, because it merely recites an intended use
of the supplement. Cf. TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed.
Cir. 2015) (“That the phrase in the preamble ‘destination tracking system of
at least one mobile unit’ provides a necessary structure for claim 1 does not
necessarily convert the entire preamble into a limitation, particularly one that
only states the intended use of the invention.”).
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Claim 6 is directed to “[a]n antioxidant food supplement” for beef
cattle. The body of the claim refers to “the supplement.” Thus, because the
preamble term “[a]n antioxidant food supplement” provides antecedent basis
for the later occurrence of the term “the supplement,” we determine that this
portion of the preamble serves to limit the scope of the claim to a
composition that has use as a food supplement. See Catalina, 289 F.3d at
808 (“[D]ependence on a particular disputed preamble phrase for antecedent
basis may limit claim scope because it indicates a reliance on both the
preamble and claim body to define the claimed invention.”). It provides
structural limits to the composition in that the ferulic acid (or salt thereof)
must be in a form that can be ingested.
However, we determine that the portion of the preamble reciting “for
feeding cattle 30 days immediately prior to slaughter” is not limiting. That
phrase does not provide structural limits to the composition, or any further
meaning to the claimed ingredient that makes up the supplement. Rather,
this phrase merely states both an intended length of time in which this
supplement is to be used, and a point in time at which its use can begin. See,
e.g., In re Schreiber, 128 F.3d at 1477 (finding preamble language reciting a
dispensing top “for passing only several kernels of a popped popcorn at a
time” not limiting because it did not impose any structural limitations on the
claimed dispenser); In re Taylor, 484 Fed. App’x 540, 543 (Fed. Cir. 2012)
(finding preamble language reciting a mix “for making low-calorie,
palatable food or food components” non-limiting because it did not impose
any structural limitations on the claimed mix). Indeed, deleting this portion
of the preamble “[would] not affect the structural definition . . . of the
[supplement] itself.” Catalina, 289 F.3d at 810. Thus, we are not persuaded
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by Appellant’s argument that this portion of the preamble is limiting because
“30 days [immediately] prior to slaughter” is recited in both the preamble
and claim body. Appeal Br. 15.
We are also not persuaded by Appellant’s argument that the preamble
is limiting because Appellant has relied on it to distinguish over prior art.
Appeal Br. 16. Simply arguing that an intended use in a claim preamble
distinguishes that claim from the prior art—particularly during prosecution,
where claims are given their broadest reasonable interpretation—does not by
itself convert the intended use into a claim limitation. See, e.g., In re
Schreiber, 128 F.3d at 1477 (rejecting appellant’s argument, made during
prosecution, that the prior art did not perform the intended use recited in the
preamble because there was insufficient evidence to establish a difference in
structure between the prior art and the claimed invention connected to that
intended use); In re Taylor, 484 Fed. App’x at 543–44 (affirming that
preamble was non-limiting, despite reliance on preamble during prosecution
to distinguish prior art, because appellant did not explain how the intended
use “excludes compositions that would otherwise satisfy the recited
structural requirements,” i.e., “specified proportions of fiber and
hydrocolloid”).
Additionally, we are not persuaded by Appellant’s argument that the
preamble is limiting because the Specification demonstrates the criticality of
feeding the supplement for 30 days prior to slaughter versus 60 days in
achieving the outcomes recited in the claims. Appeal Br. 16. Claim 6 is
directed to a composition, not a method of using the composition.
Accordingly, whatever criticality there may be in the quality of meat in
cattle fed the supplement “consisting of” of ferulic acid or a salt thereof due
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to the duration of use recited in the preamble does not breathe life and
meaning to the structure or content of the supplement that is the subject of
claim 6.
The Examiner also found that the claim phrase “in an amount of 240
milligram (mg) per kilogram (kg) of a beef cattle feed” does not limit the
amount of ferulic acid in the claimed supplement, because the claimed
composition is to a supplement that consists only of ferulic acid, and “does
not contain a particular amount of beef cattle feed.” Ans. 5. We agree that
the recited amount “per kilogram (kg) of a beef cattle feed” is not limiting as
to the amount of ferulic acid or salt thereof that is required to be in the
“supplement.” Claim 6 recites an antioxidant food supplement consisting of
ferulic acid or a salt thereof. Under the broadest reasonable interpretation of
the claim, it does not require a composition that includes beef cattle feed, nor
can it. That is because the “closed transition phrases such as ‘consisting of’
are understood to exclude any elements, steps, or ingredients not specified in
the claim.” AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed.
Cir. 2001).
We are also not persuaded by Appellant’s argument that the Examiner
has not adequately addressed the claim element “in the meat of cattle fed
said supplement 30 days immediately prior to slaughter.” Appeal Br. 15.
This claim language appears in a “wherein” clause, which recites:
wherein the supplement is configured to reduce lipid oxidation
and reduce levels of a TBARS (thiobarbituric acid reactive
substance) in the meat of cattle fed said supplement 30 days
immediately prior to slaughter of said cattle as compared to
cattle not fed said supplement, or cattle fed a supplement
comprising ferulic acid for 60 days prior to slaughter.
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Appeal Br. 18 (Claims Appendix). This limitation is not limiting because it
is directed to use of the claimed supplement rather than any structure
associated with the supplement itself, and as explained above, the scope of
the claim does not reach use of the supplement. The Specification
demonstrates that to achieve the claimed reductions in lipid oxidation and
levels of a TBARS, one merely needs to administer 240 mg of ferulic acid
per kg of beef cattle feed for 30 days immediately prior to slaughter. Spec.
¶¶ 57, 58, 73. Thus, use of ferulic acid supplement in beef cattle for a
particular duration, without any further “configuration” of the supplement,
will reduce lipid oxidation and levels of a TBARS. Id.
As properly construed, claim 6 recites a ferulic acid (or salt thereof)
food supplement for beef cattle. We agree with the Examiner that Herrera
teaches ferulic acid-containing food and formulations for animals, which are
taught to promote animal growth. Final Act. 2, 6 (citing Herrera Abstract
and ¶¶ 26, 30). Indeed, Herrera teaches administering ferulic acid to animals
by adding it to a food preparation “during fattening or slaughter,” including
for “a total treatment period of 28 days.” Herrera ¶ 30. Although Herrera’s
disclosure focuses on pigs (see, e.g., Herrera Title and Abstract), it also more
broadly teaches administration to “animals,” including farm animals. See,
e.g., Herrera ¶¶ 3, 14, 29, claims 5–7. Additionally, Wolf teaches
administration of supplements comprising ferulic acid to cattle. Wolf ¶ 70;
Final Act. 6. Accordingly, we find that the cited prior art combination
teaches or suggests ferulic acid food supplements for cattle, as recited in
claim 6.
Appellant argues that the claimed invention achieves unexpected
results, namely, smaller increases in TBA values (indicating less lipid
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oxidation) when cattle are fed 240 mg ferulic acid per kg beef cattle feed for
30 days prior to slaughter, versus when cattle are fed this amount of ferulic
acid for 60 days prior to slaughter. Appeal Br. 13–14 (citing Spec. ¶ 73, Fig.
2); Reply Br. 2–3. Appellant argues that “[n]o art of record has addressed
optimizing the duration of feeding the supplement of the instant claims.
Hence, the element comprising the body of the claim drawn to exactly 30
days prior to slaughter is clearly related to an unexpected result, and
previously unrecognized in the art.” Appeal Br. 14.
We are not persuaded. “[T]he burden of showing unexpected results
rests on [the party] who asserts them.” In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). An appellant must prove a nexus between the alleged
unexpected results and the merits of the claimed invention. See In re GPAC
Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). Here, Appellant asserts that the
unexpected results flow from use of the claimed supplement for a particular
duration. However, as explained above, claim 6 is directed to a supplement,
not a method of using the supplement for a particular duration. Accordingly,
we are not persuaded that Appellant has demonstrated the required nexus.
CONCLUSION
We affirm the rejection of claims 6, 8, 9, 11, and 19 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Herrera and Wolf.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6, 8, 9, 11,
19
103 Herrera, Wolf 6, 8, 9, 11,
19

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED