Ex Parte Clarke et alDownload PDFPatent Trials and Appeals BoardJun 5, 201913907090 - (D) (P.T.A.B. Jun. 5, 2019) Copy Citation 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." 2 Appeal2018-001615 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. 3 Appeal2018-001615 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). 4 Appeal2018-001615 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."). 5 Appeal2018-001615 Application 13/907,090 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. 6 Appeal2018-001615 Application 13/907,090 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 7 Copy with citationCopy as parenthetical citation