Ex Parte Chichlowski et al

Patent Trial and Appeal Board

Sep 20, 2018

14249548 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/249,548 04/10/2014
145003 7590
OspreyIP, pllc
320 Seven Springs Way
Suite 250
Brentwood, TN 37027
09/24/2018
FIRST NAMED INVENTOR
Maciej Chichlowski
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MJE00394NP 4710
EXAMINER
GITOMER, RALPH J
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
docket@ospreyip.com
info@ospreyip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MACIEJ CHICHLOWSKI, BRIAN BERG, COLIN RUDOLPH,
ROBERT J. MCMAHON, and ROSALINE WAWORUNTU
Appeal2017-009141
Application 14/249,548
Technology Center 1600
Before RICHARD M. LEBOVITZ, MICHAEL J. FITZPATRICK, and
DAVID COTTA, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Maciej Chichlowski, Brian Berg, Colin Rudolph, Robert J. McMahon,
and Rosaline Waworuntu ("Appellants") 1 appeal under 35 U.S.C. § 134(a)
from a decision rejecting claims 10-15 and 21-23 for a second time. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as Mead Johnson Nutrition Company.
Appeal Br. 3.
Appeal2017-009141
Application 14/249,548
STATEMENT OF THE CASE
The Specification
The Specification states:
The present disclosure relates generally to a method of
reducing visceral hyperalgesia and reducing functional
abdominal pain (F AP) in a target subject by administering a
nutritional composition including a combination of Lactobacillus
rhamnosus GG (LGG), galacto-oligosaccharide (GOS) and
polydextrose (PDX). The nutritional compositions are suitable
for administration to pediatric subjects. Additionally, the
disclosure provides methods for modulating the gut-brain axis,
supporting early modification of gut microbiota, and reducing
local inflammatory response by providing the nutritional
compositions disclosed herein. The nutritional composition( s)
provided herein including a combination of LGG, GOS, and
PDX may provide additive and or/synergistic beneficial health
effects.
Spec. ,II.
The Rejected Claims
Claims 10-15 and 21-23 stand rejected. See March 31, 2016, Office
Action ("Office Act."), 1. Claims 1-9 and 16-20 have been withdrawn from
consideration. See id.
Of the rejected claims, only claim 10 is independent. It is
representative and reproduced as follows:
10. A method for modifying the gut-brain axis in a
pediatric subject by providing a nutritional composition
compnsmg:
(i) between about 6 g and about 22 g of a
carbohydrate source per 100 kcal of nutritional
composition;
(ii) between about 1 g and about 7 g of a protein
source per 100 kcal of nutritional composition;
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Application 14/249,548
(iii) between about 1 g and about 10 g of a fat
source per 100 kcal of nutritional composition;
(iv) between about lx10[4] CPU and 1.5x10[10J
CPU of Lactobacillus rhamnosus GG per 100 kcal of
nutritional composition; [and]
(v) a source of prebiotics comprising polydextrose
and galactooligosaccharides to the pediatric subject.
Appeal Br. 13.
The Appealed Rejections
The following rejections are before us for review:
1. claims 10-12, 14, 15, and 21-23 under 35 U.S.C. § 103 as
unpatentable over each of Gonzalez2 and Wittke3 (Office Act. 2); and
2. claim 13 under 35 U.S.C. § 103 as unpatentable over each of
Gonzalez and Wittke in view of each of Connor4 and Rescigno 5 (Office
Act. 4).
DISCUSSION
Rejection 1
The Examiner rejects claims 10-12, 14, 15, and2I-23 under
35 U.S.C. § 103 as unpatentable over each of Gonzalez and Wittke. Office
Act. 2. Gonzalez describes an "ingestible composition ... useful for
nutrition of infants and children." Gonzalez, at [57]. Likewise, Wittke
describes "nutritional compositions" for "pediatric subjects." Wittke, at
[57].
2 US 2014/0093614 Al, published Apr. 3, 2014 ("Gonzalez").
3 US 2015/0125570 Al, published May 7, 2015 ("Wittke").
4 US 2016/0024149 Al, published Jan. 28, 2016 ("Connor").
5 US 2012/0087902 Al, published Apr. 12, 2012 ("Rescigno").
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Application 14/249,548
The Examiner finds that Gonzalez and Wittke each explicitly disclose
the "nutrition composition" recited in claim 10 and further describe
providing it to pediatric subjects. Office Act. 3--4. Appellants do not
contest these findings. See Appeal Br. 9--11.
The Examiner further finds and concludes as follows:
The claims differ from the above references in that they
state the function of the method is to modify the gut brain axis in
a subject.
It would have been obvious to one of ordinary skill in the
art at the time of filing the application to feed a complete
nutritional composition to infants to "modify the gut brain axis"
because consuming any food modifies the gut brain axis.
Office Act. 4.
Appellants argue patentability of the rejected claims merely on the
purported basis that "[ n ]either Gonazlez [sic] nor Wittke teaches or suggests
modifying the gut-brain axis in a pediatric subject via providing a nutritional
composition." Appeal Br. 9.
The phrase "modifying the gut-brain axis in a pediatric subject" is part
of the preamble and, thus, not necessarily a limitation of the claims. See,
e.g., Catalina Mktg. Int'!, Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 808
(Fed. Cir. 2002) ("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. 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."')
( citations omitted).
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Application 14/249,548
Neither the Examiner nor Appellants explicitly address whether the
preamble should be construed as limiting. However, we need not decide
whether it is limiting for purposes of this Decision, as we agree with the
Examiner that the preamble merely states the inherent function of the
claimed method. Office Act. 4 ("The claims differ from the above
references in that they state the function of the method is to modify the gut
brain axis in a subject."); Ans. 5 ("[T]he result of consuming the claimed
composition is inherent in the result, modifying the gut brain axis.").
Further, because it is unchallenged that the prior art compositions are the
same as the claimed composition, and administered to the same class of
patients, it is reasonable that the same effect on the gut brain axis would be
achieved, putting the burden on Appellants to show that it does not. In re
Best, 562 F.2d 1252, 1254-55 (CCPA 1977). Appellants do not carry that
burden.
For the foregoing reasons, we affirm the Examiner's rejection of
claims 10-12, 14, 15, and 21-23.
Rejection 2
The Examiner rejects claim 13 under 35 U.S.C. § 103 as unpatentable
over each of Gonzalez and Wittke in view of each of Connor and Rescigno.
Office Act. 4. Appellants argue the patentability of claim 13 only on the
basis that neither Connor nor Rescigno cure the purported deficiency of
Gonzalez and Wittke. Appeal Br. 11. Because we do not find such a
deficiency in Gonzalez and Wittke, we likewise affirm the rejection of claim
13.
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Appeal2017-009141
Application 14/249,548
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 10-15 and 21-23.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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