Boon Peng. Chew et al.

Patent Trials and Appeals Board

Jul 17, 2019

15279265 - (D) (P.T.A.B. Jul. 17, 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.
15/279,265 09/28/2016 Boon Peng Chew IAM0043 US2 1860
132446 7590 07/17/2019
Mars, Inc. c/o Mars Petcare
Theresa Shearin
2013 Ovation Parkway
Franklin, TN 37067
EXAMINER
STONE, CHRISTOPHER R
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
07/17/2019 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):
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 BOON PENG CHEW, MICHAEL GRIFFIN HAYEK, and
JEAN SOON PARK1
__________

Appeal 2019-002795
Application 15/279,265
Technology Center 1600
__________

Before RYAN H. FLAX, 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 involving claims directed to a
method of enhancing the immune response of a domestic dog or cat
comprising administering to the dog or cat a composition comprising an
effective amount of astaxanthin. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellants identify the real party in interest as “Mars, Incorporated”.
Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification states that astaxanthin is a common carotenoid and
a potent antioxidant, which is commonly used in aquaculture and in the
poultry industry as a feed additive. Spec. ¶¶ 4, 33. The Specification further
states that carotenoid absorption and metabolism have been determined to be
species-specific, and asserts that “it has not been known whether companion
animals (e.g., dogs and cats) could absorb and utilize astaxanthin in effective
pharmacological amounts.” Id. ¶¶ 6, 34. The Specification states that “[t]he
inventors have discovered that both domestic dogs and cats are able to
absorb dietary astaxanthin” (id. ¶ 35), and it provides “[m]ethods . . . that are
useful for enhancing the immune response in a companion animal, where
astaxanthin is utilized.” Id. ¶ 2.
Claims 1–4, 6, and 8–11 are on appeal. Final Act. 2. Claim 1, the
only independent claim, reads as follows:
1. A method of enhancing the immune response of a
domestic dog or cat comprising administering to the dog or cat a
composition comprising an effective amount of astaxanthin.
Appeal Br. 11 (Claims Appendix).
The claims stand rejected under 35 U.S.C. § 103 as obvious over
Lignell et al., US 6,054,491 (issued Apr. 25, 2000) (“Lignell”). Final Act. 3.
DISCUSSION
The Examiner rejected the claims as obvious over Lignell, finding that
Lignell “teaches a method comprising administering an animal feed
composition comprising from 1 to 50mg astaxanthin to a companion animal,
i.e. a dog,” and renders obvious administration of astaxanthin “to other
breeding animals, e.g., cats.” Final Act. 3 (citing Lignell Abstract and 1:55–
60). With regard to the dosage administered, the Examiner stated that “it is
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clear from the teachings that the amount of composition varies with animal
to be treated, therefore it would have been prima facie obvious to vary the
dosage of composition for a given animal, as is customary in the art, thus
resulting in the instantly claimed dosages, with a reasonable expectation of
success.” Id. The Examiner acknowledged that Lignell “does not expressly
teach that the composition enhances the immune response,” but argued that
it “teaches the administration of the instantly claimed compound at dosages
[which] reasonably correspond the instantly claimed ranges” (id.), and noted
that “[m]ere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” Ans. 7. The Examiner also
determined that Lignell
further discloses experimentation employed to determine the
effect of a particular dosage of the compound on a particular
animal (column 4), readily enabling one of ordinary skill in the
art to determine the appropriate dosage for a given subject
without undue burden. It is noted that to reach “about 0.001 mg
daily, of astaxanthin” recited in claims 2 and 8, the claimed
domestic dog or cat needs to consume about 1 g of 1 mg
astaxanthin per kilogram feed taught by Lignell et al. (US
6,054,491). To reach “about 10 mg daily, of astaxanthin daily,
of astaxanthin” recited in claim 8 [an effective amount], a given
domestic dog or cat needs to consume about 200 g of 50 mg
astaxanthin per kilogram feed taught by Lignell et al. (US
6,054,491).
Answer 5–6.
Findings of Fact
The following findings of fact highlight certain evidence.
FF1. Lignell states that “[i]n the food, livestock, breeding animal and
domestic animal industry”
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there is a demand for agents that increase the productivity by
for example improved fertility, more progeny born alive
(especially pig, cow and sheep), lower mortality after birth,
increased growth during the sucking period, higher milk
production, shorter recovery period between weaning and new
heat, and generally improved state of health due to strengthened
immune defence [sic].
Lignell, 1:15–27.
FF2. Lignell identifies “pigs, cattle, sheep, horses, dogs etc.” as
examples of breeding and production mammals. Id. at 1:59–60.
FF3. Lignell identifies astaxanthin as an agent that increases
productivity. Id. at 1:25–27.
FF4. Lignell states that the amount of astaxanthin administered is
preferably 1–50 mg/kg feed. Id. at 3:62–64; see also 2:11–13.
Analysis
“[T]he examiner bears the initial burden . . . of presenting a prima
facie case of unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.” In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). We have considered those arguments
made by Appellants in the Appeal Brief; arguments not so presented in
Appellants’ brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015); see
also Ex Parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(“Any bases for asserting error, whether factual or legal, that are not raised
in the principal brief are waived.”).
Appellants focus their arguments on the limitations in claims 1 and 2,
and did not provide any separate arguments for dependent claims 3, 4, 6, and
8–11. Accordingly, claims 3, 4, 6, and 8–11 stand or fall with claims 1 and
2. 37 C.F.R. § 41.37(c)(1)(iv).
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We adopt the Examiner’s findings of fact and rationale on
obviousness as set forth in the Final Action and Answer, and affirm the
obviousness rejection, for the reasons discussed more fully below.
Claim 1 recites a “method of enhancing the immune response of a
domestic dog or cat” comprising a single step of administering “an effective
amount” of astaxanthin. Appeal Br. 11 (Claims Appendix). Claim 2
specifies that the amount of astaxanthin administered to achieve the
enhanced immune response is “from about 0.001 mg to about 40 mg, daily.”
Id.
Lignell is directed to a method of increasing productivity in domestic
animals such as dogs. FF1, FF2. Lignell indicates that one measure of
increased productivity is an “improved state of health due to strengthened
immune defence.” FF1. Like the claimed method, Lignell’s method
comprises administering an amount of astaxanthin to an animal. FF1, FF2,
FF3. Lignell teaches administration of 1–50 mg astaxanthin/kg feed. FF4.
The Examiner found—and Appellants did not dispute—that the
amounts of astaxanthin recited in Appellants’ claims “reasonably
correspond” to the amounts taught in Lignell. Final Act. 3; Ans. 4. As
further noted by the Examiner, to reach “about 0.001 mg” astaxanthin daily
as recited in appealed claim 2, a dog or cat needs to consume only about 1 g
of a mixture of 1 kg feed containing 1 mg astaxanthin. Ans. 6. Accordingly,
we agree with the Examiner that the claimed amounts of astaxanthin
reasonably correspond to the amounts taught by Lignell.
We determine that Appellants’ claims do not represent what can be
termed a new use for astaxanthin. The generic purpose of the method of
astaxanthin supplementation disclosed in Lignell is to increase productivity
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in breeding and production mammals. FF1, FF3. Lignell teaches that this
generic purpose includes the more specific purpose of improving health due
to strengthening the immune defense. FF1. Moreover, as just discussed,
Lignell discloses that the strengthening of the immune defense can be
accomplished with dosages within the claimed range. As such, the specific
benefit of astaxanthin administration claimed by Appellants (enhancing
immune response) is identified in Lignell as being encompassed by the more
generic purpose for astaxanthin supplementation of increasing productivity.
In other words, Appellants’ disclosure that astaxanthin supplementation is
also effective in enhancing immune response relates to Lignell’s teaching of
improving health due to strengthening the immune defense, and thus cannot
render the claimed method patentable. See, e.g., In re Woodruff, 919 F.2d
1575, 1577–78 (Fed. Cir. 1990) (affirming rejection of claims to a
purportedly “new use” of maintaining vegetables under certain conditions to
prevent fungal growth as obvious where prior art disclosed maintaining
vegetables under the same or similar conditions to prevent deterioration).
It is a general rule that merely discovering and claiming a new benefit
of an old method cannot render the method again patentable. See, e.g.,
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376–77
(Fed. Cir. 2001) (“However, the claimed process here is not directed to a
new use; it is the same use, and it consists of the same steps as described by
[the cited art]. Newly discovered results of known processes directed to the
same purpose are not patentable because such results are inherent.”).
Appellants rely on In re Shetty, 566 F.2d 81 (CCPA 1977), but that case
does not require a contrary result. In Shetty, the prior art disclosed use of a
compound as an antiviral agent, and the applicant claimed a structurally
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similar compound in a method of curbing appetite. Shetty, 566 F.2d at 86.
The court reversed the obviousness rejection because the applicant had
discovered a completely new and nonobvious use for the compound. Here,
in contrast, the claimed use (enhancing immune response) is generically
encompassed by the prior art use of increasing productivity. See FF1.
Turning to Appellants’ arguments, they argue that Lignell fails to
teach an amount of astaxanthin effective to enhance an immune response, a
method of determining such an amount, and the amount of astaxanthin
consumed by the sows in Lignell’s experiment. Br. 5, 6. We are not
persuaded by these arguments because Lignell’s failure to specifically
identify the disclosed amounts of astaxanthin as enhancing the immune
response is irrelevant to the obviousness rejection. On this record,
Appellants do not dispute that the amounts of astaxanthin taught by Lignell
(see FF4) reasonably correspond to the claimed amounts. Accordingly, to
the extent the claimed method achieves enhancing of immune response, so
does the Lignell method.
Appellants additionally argue that Lignell is not enabled because “[a]s
taught in Appellant’s specification, the efficacy of one carotenoid in one
species is no guarantee [] that the same carotenoid will exhibit the same, or
any, efficacy in another species.” Br. 5–6 (citing Spec. ¶¶ 6–7); see also Br.
6–7, 9. We are not persuaded by this argument. Lignell, which teaches a
method of increasing productivity in breeding and production mammals such
as dogs via astaxanthin supplementation (FF1, FF2, FF3), is presumed
enabled. In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012)
(“[A] prior art printed publication cited by an examiner is presumptively
enabling barring any showing to the contrary by a patent applicant or
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patentee.”). We find that the information in paragraphs 6 and 7 of the
Specification do not undercut the teachings of Lignell. Paragraphs 6 and 7
reference the absorption of carotenoids in goats and sheep; the absorption of
beta-carotene in cattle, horses, cats, and humans; and the presence of lutein
and zeaxanthin in the human retina. Spec. ¶¶ 6, 7. These paragraphs do not
address the effect of astaxanthin in cats and dogs. Accordingly, on this
record, we determine that Appellants have not demonstrated that a person of
ordinary skill in the art would have had reason to doubt Lignell’s specific
teaching that astaxanthin will increase productivity in breeding mammals.
Appellants additionally assert that the results of the sow study
reported in Lignell “teach away” from administration of astaxanthin to a dog
or cat, undercut motivation to administer astaxanthin to a dog or cat, and
negate any reasonable expectation of success. Br. 7–8. Specifically,
Appellants assert that several measures of productivity were either
comparable or worse in the sows provided with astaxanthin-modified feed
compared to sows provided with unmodified feed. Id. at 7. We are not
persuaded by this argument because, as indicated by the Examiner, “the
experiments exhibit the statistically positive effect of astaxanthin on litter
weight at 21 days and weaning to remating intervals, clearly demonstrating
the positive effect of the compound on the production/breeding performance
of mammals regardless of its impact on other breeding parameters, e.g.
farrowing rate.” Final Act. 4–5; Ans. 6.

SUMMARY
We affirm the rejection of claims 1–4, 6, and 8–11 under 35 U.S.C.
§ 103 as obvious over Lignell.
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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)(1)(iv).

AFFIRMED