Ex Parte Frantz

Patent Trial and Appeal Board

Nov 30, 2016

13142919 (P.T.A.B. Nov. 30, 2016)

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.
13/142,919 06/30/2011 Nolan Zebulon Frantz 8346-02-HL 9050
23909 7590 12/02/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
SAYALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOLAN ZEBULON FRANTZ
Appeal 2015-007157
Application 13/142,919
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 3 through 7. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellant’s invention is generally directed to method for enhancing
the palatability of a pet food composition. App. Br. 2. Claim 1 illustrates
the subject matter on appeal and is reproduced below:
Appeal 2015-007157
Application 13/142,919
1. A method for enhancing the palatability of a pet food
composition, which comprises adding an amount of lipoic acid
or a salt thereof in an amount effective to enhance the palatability
of the pet food composition, wherein the effective amount is at
least 25 ppm, and wherein the pet food composition further
comprises of from 600 to 1,000 IU vitamin E.
App. Br. 8, Claims Appendix.
Appellant (see generally App. Br.) requests review of the following
rejections from the Final Office Action entered October 15, 2014 (“Final
Act.”):
I. Claims 1 and 3—7 under 35 U.S.C. § 112, second paragraph for
being indefinite for failing to particularly point out and distinctly claim the
subject matter that applicant regards as the invention.
II. Claims 1 and 3—7 under 35 U.S.C. § 102(b) as anticipated by
Scherl et al. (US 2006/0134014 Al, published June 22, 2006, hereinafter
“Scherl”) or Zicker et al. (US 2005/0232976 Al, published October 20,
2005, hereinafter “Zicker ’976”) or Zicker et al. (US 2002/0076470 Al,
published June 20, 2002, hereinafter “Zicker ’470”) as evidenced by Vitamin
E Fact Sheet for Health Professionals (June 2011),
http://ods.od.nih.gov/factsheets/VitaminE-Health Professional (hereinafter
“Vitamin E Factsheet”).
III. Claims 1 and 3—7 under 35 U.S.C. § 103(a) as unpatentable
over Scherl or Zicker ’976 or Zicker ’470 and Ann Wortinger, Nutritional
Myths, 41 J. Am. Anim. Hosp. Assoc. 273 (July/August 2005) (hereinafter
“Wortinger”), Repo (US 2006/0153964 Al, published July 13, 2006,
hereinafter “Repo”), Addy (US 6,379, 727 Bl, issued April 30, 2002,
hereinafter “Addy”), and Swenson (US 2008/0233244 Al, issued September
25, 2008, hereinafter “Swenson”) as evidenced by Vitamin E Factsheet.
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Application 13/142,919
IV. Claims 1 and 3—7 for non-statutory, obviousness-type double
patenting over claims 1—7 and 10-65 of Zicker (US 8,669,282 B2, issued
Mar. 11, 2014) (hereinafter “Zicker ’282”).
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejections of claims 1 and 3—7 under
35 U.S.C. § 103(a) and for non-statutory, obviousness-type double patenting,
but REVERSE the Examiner’s rejections of claims 1 and 3—7 under 35
U.S.C. § 112, second paragraph and under 35 U.S.C. § 102(b). We add the
following.1
Rejection I
We reverse the Examiner’s rejection of claims 1 and 3—7 under 35
U.S.C. § 112, second paragraph, as being indefinite. Claim 1 recites a
method for enhancing the palatability of a pet food composition comprising
adding an amount of lipoic acid or a salt thereof in an amount effective to
enhance the palatability of the pet food composition, wherein the effective
amount is at least 25 ppm. The Examiner asserts that the term “enhancing”
in relation to the term “palatability” is relative terminology that renders
claims 1 and 3—7 indefinite because the claims do not define these terms,
and Appellant’s Specification “does not provide a standard for ascertaining
the requisite degree.” Final Act. 2. In addition, the Examiner asserts that
the term “palatability” does not have an accepted definition in the art, and
1 Appellant argues claims 1 and 3—7 together. See generally Appeal Brief.
Therefore, we select claim 1 as representative, and claims 3—7 will stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Application 13/142,919
the Examiner cites non-patent literature to provide evidence in support of
this assertion.2 Final Act. 2-4.
However, the Examiner does not carry the burden of showing that one
of ordinary skill in the art would not understand the scope and meaning of
“an amount effective to enhance the palatability of the pet food composition,
wherein the effective amount is at least 25 ppm” recited in claim 1. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability”); Amgen, Inc. v. Chugai
Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991) (A claim is
considered indefinite under 35 U.S.C. § 112, second paragraph, if it does not
reasonably apprise those skilled in the art of its scope). As Appellant
correctly argues, the claim language itself and the Specification provide
sufficient guidance to allow one of ordinary skill in the art to understand that
“an amount effective to enhance the palatability of the pet food composition,
wherein the effective amount is at least 25 ppm” refers to lipoic acid in an
amount of at least 25 ppm. App. Br. 2—5; Spec. 38—39. Accordingly, one
of ordinary skill in the art would understand that the effective amount of
lipoic acid for enhancing the palatability of the pet food composition is at
least 25 ppm as recited in claim 1, and would thus understand the metes and
bounds of the claim. Therefore, we do not sustain the Examiner’s rejection
of claims 1 and 3—7 under § 112, second paragraph.
2 The Examiner cites Yeomans, Taste, Palatability and the Control of
Appetite, 57 Proc. Nutr. Soc. 609 (1998); and Palatability More than a
Matter of Taste,
http://extension.usu.edu/files/publications/factsheet/l_3_l .pdf. Final Act.
2-4.
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Application 13/142,919
Rejections II and III
Appellant does not dispute the Examiner’s finding that each of Scherl,
Zicker ’976, and Zicker ’470 disclose a food composition for companion
animals—including dogs and cats—that includes lipoic acid in an amount of
at least about 25 ppm. Compare Final Act. 5—7, with App. Br. 5—6.
Appellant also does not dispute the Examiner’s finding that Scherl discloses
that the food composition includes vitamin E in an amount of about 250 ppm
to about 2,500 ppm, Zicker ’976 discloses that the food composition
includes vitamin E in an amount of about 100 ppm to about 2,000 ppm, and
Zicker ’470 discloses that the food composition includes vitamin E in an
amount of at least about 100 ppm. Compare Final Act. 5—7, with App. Br.
5—6. The Examiner determines that converting vitamin E from units of ppm
as disclosed in Scherl, Zicker ’976, and Zicker ’470 to international units as
recited in claim 1 would have been within the ambit of one of ordinary skill
in the art at the time of the invention, as evidenced by the Vitamin E
Factsheet. Final Act. 7. The Examiner finds that Scherl, Zicker ’976, and
Zicker ’470 thus each disclose feeding pets the same composition having the
same components in the same amounts as recited in claim 1, and the
Examiner finds that each reference therefore anticipates the claimed method.
Final Act. 5—7.
The Examiner further finds that Wortinger, Repo, Addy, and Swenson
all disclose that the antioxidant activity of vitamin E and lipoic acid make
them useful as preservatives to prevent rancidity in pet foods. Final Act. 8—
11. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to include lipoic acid and
vitamin E in pet food in the amounts disclosed in Scherl, Zicker ’976, and
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Zicker ’470 to prevent rancidity in the pet food as taught by Wortinger,
Repo, Addy, and Swenson, which would have enhanced the palatatility of
the food. Final Act. 10—11.
Appellant argues that international units of vitamin E as recited in
claim 1 are a measure of bioavailability rather than weight, and Appellant
contends that converting international units to units of ppm as disclosed in
Scherl, Zicker ’976, and Zicker ’470 is not a standard conversion that would
have been obvious to one of ordinary skill in the art at the time of the
invention, as the Examiner asserts. App. Br. 5—6. In response to this
argument, the Examiner provides calculations in the Answer in which the
Examiner converts 600—1000 international units of vitamin E as recited in
claim 1 to 402—670 ppm, based on the conversion rules set forth in the
Vitamin E Factsheet. Ans. 15—16. Appellant does not dispute the
Examiner’s calculations, or dispute that the ranges of vitamin E disclosed in
each of Scherl, Zicker ’976, and Zicker ’470 encompass the calculated
range.3
Although Scherl, Zicker ’976, and Zicker ’470 each do not describe
the amount of vitamin E in pet food compositions comprising at least 25
ppm lipoic acid with sufficient specificity to constitute anticipation of the
method of claim 1 within the meaning of 35 U.S.C. § 102(b)4, we agree with
3 Appellant did not elect to file a Reply Brief to respond to the Examiner’s
statements in the Answer.
4 Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999—1000 (Fed. Cir.
2006) (“Here, the prior art,..., discloses a temperature range of 100 to 500
°C which is broader than and fully encompasses the specific temperature
range claimed ... of 330 to 450 °C. Given the considerable difference
between the claimed range and the range in the prior art, no reasonable fact
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Application 13/142,919
the Examiner that the applied prior art would have rendered the claimed
method prima facie obvious. In particular, Scherl, Zicker ’976, and Zicker
’470 disclose pet food compositions comprising a combination of lipoic acid
and vitamin E in amounts that overlap or encompass the corresponding
ranges recited in claim 1, based on the Examiner’s undisputed conversion of
the international units of vitamin E recited in claim 1 to ppm. Scherl || 20,
37, 41, 45; Zicker ’976 H 5, 16, 17; Zicker ’470 H4, 15, 16.
Specifically, Scherl discloses that the pet food composition includes
vitamin E in an amount of about 500 ppm to about 1,500 ppm, Zicker ’976
discloses that the pet food composition includes vitamin E in an amount of
about 500 ppm to about 1,000 ppm, and Zicker ’470 discloses that the pet
food composition includes vitamin E in an amount of about 500 ppm to
about 1,000 ppm, which all overlap the calculated range of 402—670 ppm
vitamin E. Scherl 141; Zicker 976 1 17; Zicker 470 1 16. In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003)(“In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness.”)
Furthermore, Example 1 of Appellant’s Specification describes
particular dog food compositions of Appellant’s invention that include
vitamin E at a level of 600—1000 international units, while other portions of
Appellant’s Specification broadly describe the amount of vitamin E in the
pet food composition of the invention in units of ppm, and indicate that at
least about 100 ppm should be included in the pet food composition, and in
certain embodiments of the invention, vitamin E in an amount of about 500
finder could conclude that the prior art describes the claimed range with
sufficient specificity to anticipate this limitation of the claim.”).
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Application 13/142,919
to about 1,000 ppm can be used. Spec. H 56, 71. Thus, read in its entirety,
Appellant’s Specification indicates that 600—1000 international units of
vitamin E falls within the range of at least about 100 ppm, and this range
described in Appellant’s Specification encompasses the ranges of vitamin E
disclosed in Scherl, Zicker 976, and Zicker 470, reasonably indicating that
the range of 100—1000 international units of vitamin E recited in claim 1
overlaps the prior art ranges. Accordingly, Appellant’s argument is
inconsistent with the disclosure provided in Appellant’s own Specification.
Moreover, because vitamin E was known to be an antioxidant as
taught by the applied prior art, the amount of vitamin E in a pet food
composition was a recognized result-effective variable, and one of ordinary
skill in the art reasonably would have been led by the combined disclosures
of the applied prior art to optimize the level of vitamin E in a pet food
composition, and would have arrived at the optimal amount, such as that
claimed, through nothing more than routine experimentation. See, e.g.,
Scherl 137; Zicker ’976 1 16; Zicker ’4701 15. In re Boesch, 617 F.2d 272,
276 (CCPA 1980) (“[Djiscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art.”); In re
Alter, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).
Appellant’s arguments are therefore unpersuasive of reversible error
in the Examiner’s conclusion of obviousness, and we accordingly sustain the
Examiner’s rejection of claims 1 and 3—7 under 35 U.S.C. § 103(a), but do
not sustain the Examiner’s rejection of claims 1 and 3—7 under 35 U.S.C.
§ 102(b).
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Application 13/142,919
Rejection IV
In contesting the Examiner’s rejection of claims 1 and 3—7 for
obviousness-type double patenting, Appellant argues that the claims of the
reference patent (Zicker ’282) recite vitamin E in units of ppm rather than in
International Units as recited in claim 1, and Appellant again contends that
converting International Units to units of ppm is not a standard conversion
that would have been obvious to one of ordinary skill in the art at the time of
the invention. App. Br. 6.
However, we find Appellant’s argument lacking in persuasive merit
because Appellant does not identify a patentable distinction between the
instant claims and claims 1—7 and 10-65 of Zicker ’282, particularly claim
31 (App. Br. 6), which recites:
31. A pet food composition comprising an effective amount of
lipoic acid to enhance palatability to a companion animal in need
thereof, wherein said effective amount of lipoic acid to enhance
palatability is at least 25 ppm to about 600 ppm, the pet food
composition further comprising vitamin E at a level of 500—1000
ppm, vitamin C at levels of 100-200 ppm, and fat, carbohydrate,
protein, and dietary fiber to form a pet food.
As discussed above, Appellant does not dispute the Examiner’s
determination that 600—1000 international units of vitamin E as recited in
claim 1 corresponds to 402—670 ppm vitamin E, which significantly overlaps
the range of 500—1000 ppm vitamin E recited in claim 31 of Zicker ’282.
Peterson, 315 F.3d at 1329. In addition, as also discussed above,
Appellant’s Specification indicates that 600—1000 international units of
vitamin E as recited in claim 1 reasonably overlaps the range of 500-1000
ppm vitamin E recited in claim 31 of Zicker 282. Moreover, as further
discussed above, the amount of vitamin E in a pet food composition was
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Application 13/142,919
recognized in the art as a result-effective variable, and one of ordinary skill
in the art reasonably would have been led by the claims of Zicker ’282 to
optimize the level of vitamin E in a pet food composition, and would have
arrived at the optimal amount, such as that claimed, through nothing more
than routine experimentation. Boesch, 617 F.2d at 276. Appellant’s
arguments are therefore unpersuasive of reversible error, and we accordingly
sustain the Examiner’s rejection of claims 1 and 3—7 for non-statutory,
obviousness-type double patenting.
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
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)(1).
AFFIRMED
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