ter Haar, Robbert H. et al.

Patent Trials and Appeals Board

May 7, 2020

13460989 - (D) (P.T.A.B. May. 7, 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.
13/460,989 05/01/2012 Robbert H. ter Haar IAM0133 US 5299
132446 7590 05/07/2020
Mars, Inc. c/o Mars Petcare
Theresa Shearin
2013 Ovation Parkway
Franklin, TN 37067
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
05/07/2020 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):
becca.barnett@effem.com
mars.patents@effem.com
theresa.shearin@effem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBBERT H. TER HAAR,
GREGORY DEAN SUNVOLD, MONIKA BARBARA HORGAN, and
LAWRENCE ANDREW SCHUMACHER1
____________

Appeal 2019-000613
Application 13/460,989
Technology Center 3600
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 23–38. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to food supplements that “contain
a sensitive ingredient,” such as a probiotic. E.g., Spec. 1:8–9; Claim 23.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Mars,
Incorporated. Br. 2.
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Claim 23 is reproduced below from page 27 (Claims Appendix) of the
Appeal Brief:
23. A molded pet food supplement comprising:
a molded first portion comprising a probiotic component and
having at least two surfaces, a first melting point and a first water
activity; and
a molded second portion having a second melting point and a
second water activity;
wherein the second portion does not comprise a probiotic, the
second melting point is greater than the first melting point, the
second water activity is lower than the first water activity and
wherein one surface of the molded first portion is covered by the
molded second portion.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 23–38 under 35 U.S.C. § 112, ¶ 1, for lack of enablement;
2. Claims 23, 24, 26, 27, 30–32, and 34–36 under 35 U.S.C. § 103(a)
as unpatentable over Westenberg (GB 1 238 336, published July 7, 1971)
and Garbolino (US 2009/0017163 A1, published Jan. 15, 2009);
3. Claims 23–36 and 38 under 35 U.S.C. § 103(a) as unpatentable
over Sunvold (US 2011/0027419 A1, published Feb. 3, 2011) as evidenced
by Maurer (US 2005/0106216 A1, published May 19, 2005);
4. Claim 33 under 35 U.S.C. § 103(a) as unpatentable over Sunvold
and Horgan (US 2011/0027418 A1, published Feb. 3, 2011) as evidenced by
Maurer;
5. Claim 37 under 35 U.S.C. § 103(a) as unpatentable over Sunvold
and Ter Haar (US 2010/0003369 A1, published Jan. 7, 2010).
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ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in Rejections 2–5. Accordingly,
we affirm those rejections for reasons set forth below, in the Final Rejection
dated July 28, 2017, and in the Examiner’s Answer dated August 10, 2018.
However, as set forth below, we reverse as to Rejection 1.
Rejection 1
“[E]nablement requires that the specification teach those in the art to
make and use the invention without undue experimentation.” In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). “The test is not merely quantitative,
since a considerable amount of experimentation is permissible, if it is merely
routine . . . .” Id.
The Examiner determines that all claims fail to comply with the
enablement requirement. Ans. 3–9. Essentially, the Examiner finds that,
because the claims are broad and do not recite specific materials or
proportions of materials, the number of embodiments falling within the
scope of claim 23 is “nearly [an] infinite number of mixtures,” and the
claims, therefore, lack enablement. Id.
We reverse the rejection. The claims, although broad, are not
particularly complex. The Examiner does not adequately explain why
combining two components with different melting points and water
activities, and adding a probiotic to one of those components, would have
required undue experimentation. The Examiner does not assert that
determining melting points or water activities of components is anything
beyond routine experimentation. Nor does the Examiner identify any
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particular challenge in adding a probiotic to a component. The fact that a
person of ordinary skill in the art might be able to make a vast number of
compositions that fall within the scope of the claims does not mean that it
would have required undue experimentation to make and use the invention;
it simply means that the claims are broad.
On this record, the Examiner has not adequately established that any
of the claims on appeal are not enabled.
Rejection 2
The Appellant argues the claims as a group. We select claim 23 as
representative, and the remaining claims subject to Rejection 2 will stand or
fall with claim 23.
The Examiner’s rejection is stated at pages 9–13 of the Answer. The
Examiner finds, inter alia, that Westenberg discloses a food product
comprising molded first and second portions in which the first portion is
margarine and the second portion is a coating on top of the margarine.
Ans. 9–10. The Examiner finds that, although Westenberg does not disclose
the inclusion of a probiotic in its margarine, Garbolino teaches a margarine
comprising a probiotic. Id. at 10. The Examiner finds that it would have
been obvious to include Garbolino’s probiotic in Westenberg’s margarine
“because it assists the body’s naturally occurring gut microflora to
reestablish the gut microflora balance.” Id.
As to the negative limitation, “the second portion does not comprise a
probiotic,” the Examiner finds that it would have been obvious to include a
probiotic only in Westenberg’s margarine first portion because Garbolino
discloses including a probiotic in margarine. Id. at 10–11.
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As to water activity, the Examiner indicates that a composition
comprising a probiotic will have a higher water activity than a composition
without a probiotic. Ans. 11 (“Water activity is a property of a composition.
Since the prior art discloses the extent of the claimed composition, i.e., a
first portion having a probiotic and a second portion lacking a probiotic, one
having ordinary skill in the art would expect the prior art product to exhibit
the claimed property.”). Thus, the Examiner finds that a first portion of
Westenberg including a probiotic would have a higher water activity than a
second portion lacking a probiotic. Id.
In view of those and other findings less material to the issues raised
by the Appellant in this appeal, the Examiner concludes that the subject
matter of claim 23 would have been obvious.
The Appellant first argues that the proposed modification “would
change the principle of operation of Westenberg” because Westenberg
concerns the use of fats for cooking and frying, and probiotics may not
function under high temperatures. Br. 15–16.
That argument is unpersuasive for at least two reasons. First, the
Appellant fails to establish that Westenberg’s margarine products are limited
to high temperature cooking and frying applications. Second, the Appellant
cites no evidence in support of its contention that the temperatures
implicated by Westenberg would be unsuitable for the probiotic of
Garbolino. In that regard, we note that Garbolino teaches the use of
probiotics in margarine, which presumably could be used for cooking or
frying, and the Appellant identifies no disclosure in Garbolino of
unsuitability for cooking or frying. “Attorney’s argument in a brief cannot
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take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
The Appellant also argues that the combined prior art fails to suggest
the claimed water activities because Westenberg’s margarine and coating
material are not necessarily “chemically identical” to the subject matter of
claim 23 and therefore may not inherently possess the claimed water
activities. Br. 16–17.
That argument is not persuasive. As set forth above, we understand
the Examiner’s rejection to indicate that a composition comprising a
probiotic will have a higher water activity than a composition without a
probiotic. Ans. 11. The Appellant does not address that finding or
otherwise show error in it. Additionally, we note that Garbolino indicates
that higher water activity is desirable in compositions that include microbes,
e.g., probiotics, in order “to support microbial growth.” Garbolino ¶ 30.
The Appellant also argues that the combined prior art “does not
disclose or suggest a second portion that does not comprise a probiotic.”
Br. 18–19.
That argument is not persuasive. The Appellant does not dispute that
Westenberg’s first portion may be a margarine or that Garbolino teaches the
addition of a probiotic to a margarine. In view of Garbolino’s disclosure of
including a probiotic in a margarine, it would have been obvious to add a
probiotic specifically to Westenberg’s margarine and not to other
components of Westenberg. Even if it may also have been obvious to add a
probiotic to other components of Westenberg, that does not negate that the
art reasonably suggests adding a probiotic specifically to a margarine
component rather than to other components. See Merck & Co. v. Biocraft
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Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent
discloses a multitude of effective combinations does not render any
particular formulation less obvious.”).
On this record, we are not persuaded of reversible error in Rejection 2.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections . . . .”).
Rejection 3
The Appellant argues the claims as a group. We select claim 23 as
representative, and the remaining claims subject to Rejection 3 will stand or
fall with claim 23.
The Examiner’s rejection is stated at pages 13–18 of the Answer. The
Examiner finds, inter alia, that Sunvold teaches an animal food product
comprising a core and at least one coating, and that the coating may include
a probiotic. Ans. 14. The Examiner finds that Sunvold also discloses an
optional additional coating, i.e., “a coating on a coating,” that “can include
only the coating without the [probiotic].” Id. Thus, the Examiner finds that
Sunvold teaches or suggests an animal food product comprising a core, a
first coating with probiotic, and a second coating without probiotic. Id. The
Examiner relies on Sunvold’s first coating comprising a probiotic as
corresponding to the “first portion” of claim 23, and on Sunvold’s additional
coating without a probiotic as comprising “the second portion” of claim 23.
Id.
As to melting points, the Examiner finds that Sunvold teaches that the
first coating may have a melting point in the range of 25–70°C, and that the
second coating may have a “higher melting temperature” of “in excess of
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30°C.” Id. at 15. The Examiner finds that, in view of those disclosures, it
would have been obvious to “select a coating comprising a probiotic in a
layer having a melting point that is less than the melting point of another
layer.” Id.
As to water activity levels, the Examiner cites Sunvold’s disclosure
that Sunvold’s animal food product as a whole has certain water activity
level values that “ensure[] survival of the probiotic.” Id. The Examiner also
finds that Sunvold discloses that coating layers may include ingredients (i.e.,
humectants) that “lower water activity.” Id. The Examiner finds that, in
view of that disclosure, it would have been obvious to add a humectant to
Sunvold’s second coating, and that a person of ordinary skill would have
expected “that a fat layer comprising humectants would have a lower water
activity than a fat layer lacking humectants.” Id. at 15, 29 (finding that
“Sunvold discloses the additional coatings can include one or more active
ingredients,” which “can be humectants”).
In view of those and other findings less material to the issues raised
by the Appellant in this appeal, the Examiner concludes that the subject
matter of claim 23 would have been obvious.
The Appellant first argues that the prior art “does not disclose or
suggest the first and second melting points” recited by claim 23. Br. 20.
The Appellant does not dispute that Sunvold discloses an animal food
product with a core and at least one coating, that the first coating may
include a probiotic, or that a second coating need not include a probiotic.
Id.; see also Sunvold ¶¶ 7, 24, 42. Nor does the Appellant dispute that
Sunvold discloses coatings with melting temperatures of 25–70°C and other
coatings with “higher melting point temperature components” of greater than
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30°C. Br. 20; see also Sunvold ¶ 41. Instead, the Appellant argues that
Sunvold does not expressly teach a single embodiment having a lower-
melting-point first coating that includes a probiotic and a higher-melting-
point second coating that does not include a probiotic. Br. 20–21. The
Appellant asserts that “Sunvold merely provides an extensive list of possible
coating materials that may or may not comprise a probiotic component.” Id.
at 21.
That argument is not persuasive because the prior art’s disclosure of
“a multitude of effective combinations does not render any particular
formulation less obvious.” See Merck, 874 F.2d at 807. In view of the
Examiner’s uncontested findings concerning certain disclosures of Sunvold
discussed above, it would have been obvious to choose a first coating with a
melting point of, e.g., 25°C, that includes a probiotic, and it would have
been obvious to choose a second coating with a melting point of, e.g., 30°C,
that does not include a probiotic. E.g., Sunvold ¶¶ 7, 24, 41, 42. That other
combinations—e.g., combinations in which different melting point
combinations are used, or combinations in which the second coating also
includes a probiotic—may also have been obvious in view of Sunvold does
not indicate reversible error in the Examiner’s findings and conclusions.
The Appellant also argues that the prior art “does not disclose or
suggest the first and second water activities” of claim 23. Br. 22.
As noted above, however, the Examiner finds that the water activity
relates to the inclusion of a probiotic, and the Appellant does not address or
otherwise show error in that finding. Additionally, the Examiner finds that
Sunvold teaches or suggests inclusion of humectants (which lower water
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activity levels) in its coatings, including in its second coating. Ans. 15, 29.2
The Appellant does not file a Reply Brief to dispute those findings. In view
of those findings, it appears that it would have been within the ordinary level
of skill in the art to optimize the composition of Sunvold’s coatings,
including the addition a humectant to Sunvold’s second coating, which
would result in water activity levels falling within the scope of the claims.
On this record, we are not persuaded of reversible error in the Examiner’s
rejection. See Jung, 637 F.3d at 1365.
Rejections 4 and 5
The Appellant argues only that Rejections 4 and 5 should be reversed
because the additional references cited by the Examiner in those rejections
“fails to cure the deficiencies of Sunvold.” Br. 24–25. Because we are not
persuaded of reversible error in the Examiner’s analysis of Sunvold, we
likewise are not persuaded of reversible error in Rejections 4 and 5.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
23–38 112, ¶ 1 Enablement 23–38
23, 24, 26,
27, 30–32,
34–36
103(a) Westenberg, Garbolino
23, 24, 26, 27,
30–32, 34–36
23–36, 38 103(a) Sunvold, Maurer 23–36, 38
33 103(a) Sunvold, Maurer, Horgan 33

2 Moreover, the prior art, as represented by Garbolino, indicates that higher
water activity is desirable in compositions that include microbes, e.g.,
probiotics, in order “to support microbial growth.” Garbolino ¶ 30.
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Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
37 103(a) Sunvold, Ter Haar 37
Overall
Outcome 23–38
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