Ex Parte Clarke et al

Patent Trials and Appeals Board

Jun 5, 2019

13907090 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/907,090 05/31/2013 Robert Clarke
75620 7590 06/05/2019
Kane Kessler P.C.
666 Third A venue
New York, NY 10017-4041
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.
8341/1466 1975
EXAMINER
CORDERO GARCIA, MARCELA M
ART UNIT PAPER NUMBER
1658
MAIL DATE DELIVERY MODE
06/05/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CLARKE, MATTHEW CAHILL, and BRIAN SWEET
Appeal2018-001615
Application 13/907,090 1
Technology Center 1600
Before JEFFREY N. FREDMAN, ELIZABETH A. LA VIER, and
DAVID COTTA, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejection of claims 1, 3, and 15-17. We have jurisdiction under
35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM-IN-PART.
1 Appellants identify the real party in interest as Sports Nutrition Research,
Ltd. Appeal Br. 3.
Appeal2018-001615
Application 13/907,090
BACKGROUND
The Specification describes compositions and methods for increasing
muscle mass and strength. Spec. 1. Claims 1 and 15, the only independent
claims on appeal, are illustrative:
1. A method of increasing muscle mass and strength in
mammals, the method comprising the step of orally
administering a composition comprising a therapeutically
effective amount of approximately 0.5 - 4.0 grams of
phosphatidic acid, wherein muscle mass and strength are
increased.
15. A method of increasing skeletal muscle mass and strength
in mammals, the method comprising the step of orally
administering a composition comprising a therapeutically
effective amount of phosphatidic acid to an exercising subject,
wherein skeletal muscle mass and strength are increased.
Appeal Br. 18, 20 (Claims Appendix) ( emphasis to claim 15 added).
APPEALED REJECTION
Claims 1, 3, and 15-17 stand rejected under 35 U.S.C. § 103(a)(l) as
anticipated by Hellhammer. 2 Ans. 1 (Section 9). 3
2 J. Hellhammer et al., Effects of Soy Lecithin Phosphatidic Acid and
Phosphatidylserine Complex (PAS) on the Endocrine and Psychological
Responses to Mental Stress, 7 STRESS 119-126 (2004).
3 The Answer contains several separately-paginated segments. The page 1
referred to above appears in the segment bearing the heading "(9) Grounds
of Rejection."
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Application 13/907,090
RELATED MATTERS AND REJECTIONS HELD IN ABEYANCE
Appellants state that "[t]he application on appeal is also the subject of
two derivation proceedings: DER2013-0000I, and DER2015-00003."
Appeal Br. 4. These two derivation proceedings are both pending before the
Board.
DER2013-0000I relates to Application No. 13/373,649, which in its
published form ("De Ferra"4), is one of the references on which the
Examiner relies for some of the rejections of the present application. The
Examiner states: "Examiner is in agreement with regards to [Appellants']
statement regarding the outstanding rejections over the De Ferra reference,
[which] are being held in abeyance until the instant application is deemed
allowable but for the DeFerra et al. reference, when the application would
enter Derivation proceedings." Ans. 1 (Section 9) (citing Final Action 8).
DER2015-00003 relates to Application No. 13/901,423 ("De Ferra
II"). 5 De Ferra II is not cited by the Examiner as a basis for rejecting the
claims of the present application.
The rejections held in abeyance by the Examiner involving De Ferra
("De Ferra rejections") are as follows:
1. Claims 1, 3, 9, 10, and 15-17 stand rejected under 35 U.S.C.
§ I02(a)(l) and 35 U.S.C. § I02(a)(2) as anticipated by De Ferra.
Final Action 4.
2. Claims 3-10 and 15-19 stand rejected under 35 U.S.C. § 103 as
unpatentable over De Ferra. Final Action 25.
4 De Ferra et al., US 2012/0141448 Al, published June 7, 2012.
5 De Ferra et al., US 2013/0338114 Al, published Dec. 19, 2013.
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Application 13/907,090
3. Claims 9-13 stand rejected under 35 U.S.C. § 103 as unpatentable
over De Ferra and Ferguson. 6 Final Action 29.
4. Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over De Ferra and Crowe. 7 Final Action 33.
Appellants do not present any arguments regarding the De Ferra
rejections in their briefs. Because a derivation proceeding concerning De
Ferra relating to the status of De Ferra as prior art is pending, and because
the De Ferra rejections are held in abeyance by the Examiner and not argued
by Appellants as part of this appeal, we do not review the De Ferra
rejections. Our discussion of the De Ferra rejections is presented only to
provide an overview of the procedural posture of this appeal and related
matters. Accordingly, none of our statements regarding the De Ferra
rejections should be read as binding on Appellants, the Examiner, or the
Board.
DISCUSSION
A. Claims 1 and 3
The Examiner finds that Hellhammer discloses a method of orally
administering phosphatidic acid in amounts of 0.5 g, 0.75 g, and 1.0 g. Final
Action 11; see also id. at 10, Hellhammer 120-121. Appellants correctly
point out (see Appeal Br. 9-10) that Hellhammer teaches administration of
its composition for the treatment of stress (see Hellhammer 119), not for
6 Ferguson et al., US 2011/0111066 Al, published May 12, 2011.
7 Melissa J. Crowe et al., Effects of Dietary Leucine Supplementation on
Exercise Performance, 97 EUR. J. APPL. PHYSIOL. 664--672 (2006).
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Application 13/907,090
improving muscle mass or strength. But the active step of claim 1 is simply
"orally administering a composition comprising a therapeutically effective
amount of approximately 0.5-4.0 grams of phosphatidic acid" (Appeal Br.
18 (Claims Appendix)). The remainder of claim 1 is either (a) non-limiting
preamble, which states an intended purpose, not a specific patient
population, 8 or (b) a description of an inherent effect of practicing the
claimed method, i.e., increased muscle mass and strength. 9 In these
respects, claim 1 of the present application is similar to the claimed methods
deemed to be anticipated in Perricone v. Medicis Pharmaceutical Corp., 432
F.3d 1368, 1379-80 (Fed. Cir. 2005) (finding method claims requiring
application of composition to exposed skin surfaces, or to aging skin
generally, to be inherently anticipated by reference describing topical
application of claimed composition; finding method claims requiring
"applying to skin sunburn" and therefore limiting the application to a
particular population of people with sunburn to be not inherently anticipated
by same reference).
Appellants' arguments that Hellhammer teaches away from the
method of claim 1 (see Appeal Br. 13-16) are not germane to a§ 102
8 Contra Appeal Br. 9 (indicating that "the patient population is 'people
seeking to bulk up their muscles and get stronger"').
9 Appellants argue that their desired amendment of claim 1, which would
have added the requirement that the composition be administered "to an
exercising subject," was improperly refused by the Examiner. Appeal Br. 16
(emphasis omitted). Review of this issue is by petition, not appeal. See 37
C.F.R. § 4I.37(c)(2) ("Review of an examiner's refusal to admit an
amendment ... is by petition to the Director.").
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rejection. See Celeritas Techs. Ltd. v. Rockwell Int'! Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998).
Having considered Appellants' arguments, we are unpersuaded of any
reversible error by the Examiner in rejecting claim 1 as anticipated by
Hellhammer. Accordingly, we sustain the rejection of claim 1 as anticipated
by Hellhammer. Claim 3 is not argued separately, and falls with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
B. Claims 15-17
In contrast to claim 1, claim 15 requires administration of the
composition "to an exercising subject." Appeal Br. 20 (Claims Appendix).
As Hellhammer is silent regarding exercise, 10 we cannot sustain the
Examiner's rejection of claim 15, or of claims 16 and 17, which depend on
claim 15. Cf Perricone, 432 F.3d at 1378 ("The issue is not ... whether
[prior art] lotion if applied to skin sunburn would inherently treat that
damage, but whether [ the reference] discloses the application of its
composition to skin sunburn. It does not.").
Accordingly, we do not sustain the Examiner's rejection of claim 15
as anticipated by Hellhammer, or of claims 16 and 17, which depend from
claim 15.
10 The Examiner's interpretation of "exercising" as broad enough to include
mental exercise (Final Action 23) and breathing (see Advisory Action dated
Mar. 2, 2017, at 2) is not reasonable, as it renders this claim term virtually
meaningless and is not consistent with the Specification. See generally In re
Smith Int'!, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017) (differentiating
broadest reasonable interpretation from broadest possible interpretation).
We do not otherwise address limitations imposed by the term "exercising"
not raised by the Examiner.
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CONCLUSION
We affirm the rejection of claims 1 and 3 as anticipated by
Hellhammer. We reverse the rejection of claims 15-17 as anticipated by
Hellhammer. We take no position regarding the De Ferra rejections.
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-IN-PART
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