Boon Peng. Chew et al.Download PDFPatent Trials and Appeals BoardJul 17, 201915279265 - (D) (P.T.A.B. Jul. 17, 2019) 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. 15/279,265 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. Appeal 2019-002795 Application 15/279,265 2 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 Appeal 2019-002795 Application 15/279,265 3 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” Appeal 2019-002795 Application 15/279,265 4 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). Appeal 2019-002795 Application 15/279,265 5 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 Appeal 2019-002795 Application 15/279,265 6 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 Appeal 2019-002795 Application 15/279,265 7 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 Appeal 2019-002795 Application 15/279,265 8 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. Appeal 2019-002795 Application 15/279,265 9 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 Copy with citationCopy as parenthetical citation