Ex Parte Friesen et al

Patent Trial and Appeal BoardApr 6, 2016

11215146 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111215,146 08/30/2005 23909 7590 04/08/2016 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 FIRST NAMED INVENTOR Kim Gene Friesen 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. 7704-00-HL 3379 EXAMINER WHALEY, PABLO S ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 04/08/2016 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): Patent_Mail@colpal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KIM GENE FRIESEN and RY AN MICHAEL Y AMKA Appeal2013-010515 Application 11/215, 146 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and JACQUELINE T. HARLOW, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. Â§ 134 involving claims to a method for providing nutrition for an animal. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Colgate- Palmolive Company (see Br. 2). Appeal2013-010515 Application 11/215, 146 Statement of the Case Background "[I]ndustry has distinguished food for different animal attributes or phenotypes. Such attributes or phenotypes have included animal size, age, or body condition and in some cases foods have been proposed or marketed for one or more specific breeds or phenotypically defined breed types" (Spec. i-f 4). The Specification teaches that "methods for designing nutrition and health programs including formulating foods for animals based on genomic information would represent a useful advance" (Spec. i-f 8). The Claims Claims 1-20 are on appeal. Claim 1 is representative and is reproduced below: 1. A method for providing nutrition for an animal, compnsmg: (a) identifying a genome-based breed cluster to which the animal belongs from a first data set; (b) selecting certain dietary ingredients from a second data set, wherein the second data set is matched at least in part to nutritional needs of animals of the genome-based breed cluster identified from the first data set; ( c) designing a nutritional formula from the selection of the dietary ingredients identified from the second data set; and ( d) preparing a food composition according to the nutritional formula designed. 2 Appeal2013-010515 Application 11/215, 146 The Issues A. The Examiner rejected claims 1-16 and 18-20 under 35 U.S.C. Â§ 103(a) as obvious over Bebiak,2 Parker,3 and Shields4 (Ans. 4--10). B. The Examiner rejected claim 17 under 35 U.S.C. Â§ 103(a) as obvious over Bebiak, Parker, Shields, and Combs5 (Ans. 10-11). A. 35 U.S.C. Â§ 103(a) over Bebiak, Parker, and Shields The Examiner finds that "Bebiak teaches a computer-based method and system for manufacturing customized pet food for an animal" (Ans. 5). The Examiner finds that Bebiak teaches the "computer controls the selection of the proper types and amounts of ingredients added to the pet food ... [b ]ased on the combination of pet profile information (i.e. genetic and nutritional data" (Ans. 5). The Examiner acknowledges that "Bebiak does not teach identifying a genome-based breed cluster and using said cluster for selecting dietary ingredients" (Ans. 5). The Examiner also acknowledges that "Bebiak and Parker do not teach selecting certain dietary ingredients from a second data set ... [that] is matched at least in part to the nutritional needs of animals of specific breeds" (Ans. 6). The Examiner finds that Parker teaches "a method for identifying genome-based breed clusters" (Ans. 5). The Examiner finds that Shields 2 Bebiak et al., US 6,358,546 Bl, issued Mar. 19, 2002. 3 Parker et al., Genetic Structure of the Purebred Domestic Dog, 304 Science 1160-1164 (2004). 4 Shields, Jr. et al., US 6,156,355, issued Dec. 5, 2000. 5 Combs, M., US 2005/0010476 Al, published Jan. 13, 2005. 3 Appeal2013-010515 Application 11/215, 146 teaches "breed-specific canine food formulations and feeding guidelines" (Ans. 7). The Examiner finds it obvious: to have modified the method made obvious by Bebiak and Parker for selecting dietary ingredients that match the nutritional needs of animals of the genome-based breed cluster data, with a reasonable expectation of success, since genome-based breed clusters were known, as taught by Parker, since Bebiak provides customized nutritional formulas for selecting types and amounts of dietary ingredients based on pet profile data representing breed and genetic information, as set forth above, and since dietary ingredients representing the nutritional needs of groups of dogs with the same genetic makeup were known in the art, as taught by Shields. The motivation would have been combining prior art elements according to known methods to yield predictable results. (Ans. 7). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that Bebiak, Parker, and Shields render claim 1 obvious? Findings of Fact 1. Bebiak teaches "methods for customizing pet food allow the manufacturing of a pet food which is customized to the nutritional requirements of an individual pet. The customized pet food is tailored to individual characteristics of the pet, which can include species, breed ... and additional genetic and health information" (Bebiak, col., 11. 48-53). 2. Bebiak teaches that "main computer 104 includes a database which stores nutritional information, which is combined with the individual 4 Appeal2013-010515 Application 11/215, 146 pet profile to generate a customized pet food formula" (Bebiak, col. 3, 11. 26-29). 3. Bebiak teaches that the "customized pet food can be tailored to provide a desired nutritional balance for a pet of a specific age, gender and weight, at a particular time of year, and having a specific health problem, such as, for example, a food allergy" (Bebiak, col. 6, 11. 23-27). 4. Parker teaches that "[s]trong genetic differentiation among dog breeds suggests that breed membership could be determined from individual dog genotypes" (Parker 1161, col. 2). 5. Parker teaches that "[w]e next examined whether a dog could be assigned to its breed on the basis of genotype data alone. Using the direct assignment method with a leave-one-out analysis, we were able to assign 99% of individual dogs to the correct breed" (Parker 1161, col. 3 ). 6. Shields teaches "to provide improved dog food formulations designed for specific breeds that are designed based on the genetic diversity of different dog breeds" (Shields, col. 3, 11. 30-33). 7. Shields teaches that In addition to the common features listed above, the subject breed-specific formulations contain other unique features. These differences include the kibble size and shape . . . as well as the ingredients and nutrient levels. The variety of shapes and sizes includes a triangle Sporting Diet, square Terrier Diet, rectangular Non-Sporting Diet, almond shaped Hound Diet and round Toy, Working and Herding Diets in variable diameter and thickness appropriate for their sizes. Specifically, each diet is uniquely different as well with respect to specific nutrient targets (both nutrients listed in the standard AAFCO Nutrient Profile and some potential 5 Appeal2013-010515 Application 11/215, 146 conditionally essential nutrients which may be of benefit in specific animals), ingredients excluded to prevent intolerances (protein sources and food additives) and functional ingredients. These adjustments have been made because the size and shape outside and metabolism inside differs among breed groups (Shields, col. 7, 11. 21-39). 8. Shields teaches that "liver copper storage disease [is] present in Bedlington Terriers and West Highland Terriers" and that "[t]his condition is typically treated by a combination of dietary copper restriction and additional zinc supplementation .... Level of copper supplementation is lower and zinc higher in the Terrier formula than in any of the other Group Specific Formulas" (Shields, col. 13, 11. 13-33). Principles of Law "The combination of familiar elements according to known methods is likely to be obvious \'l1hen it does no more than yield predictable results." KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement a predictable variation, Â§ 103 likely bars its patentability." Id. at 417. Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 4--10; 22-28; FF 1-7) and agree that claim 1 is rendered obvious by Bebiak, Parker, and Shields. We address Appellants' arguments below. We recognize, but find unpersuasive, Appellants' argument that "[ n ]one of the cited references fairly suggests, much less teaches, Applicants' recited second data set matched at least in part to nutritional 6 Appeal2013-010515 Application 11/215, 146 needs of animals of the genome-based breed cluster identified from the first data set" (Br. 3--4). Bebiak suggests a first data set comprising pet genetic data including breed data (FF 1-2) so that the pet "food can be tailored ... for a pet ... having a specific health problem" (FF 3). Parker teaches that breeds may be identified by genotyping (FF 5). Shields teaches the further tailoring of pet food based upon breed data (FF 6) including diets tailored for specific breeds (FF 7) including the inclusion or exclusion of specific dietary ingredients such as zinc and copper tailored to a specific breed (FF 8). We agree with the Examiner that "[c]ombining such data would have been a computational exercise that would have been well within the capabilities of the ordinary artisan" and that the "motivation would have been to beneficially provide food formulations that account for genetic differences between pet breeds, as taught by Shields" (Ans. 13-14). We recognize, but find unpersuasive, Appellants' argument that "the Examiner's rejections underÂ§ 103 are based on an impermissible use of hindsight" (Br. 4 ). While we are fully aware that hindsight bias may plague determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are mindful that the Supreme Court has clearly stated that "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR, 550 U.S. at 417. In this case, we agree with the Examiner that the person of ordinary skill would have found it obvious 7 Appeal2013-010515 Application 11/215, 146 to customize pet food dietary ingredients (FF 1-3) based on the association of certain ingredients with breed health information taught by Shields (FF 6- 8) and to assign breed based on known genotyping methods (FF 5). We recognize, but find unpersuasive, Appellants' arguments that address the references separately, such as the "problem addressed by Bebiak is different from that addressed by the instant application" (Br. 5); that the "general reference to 'genetic' information in Bebiak, however, cannot be construed as teaching or suggesting genome-based clustering analyses of the type as instantly claimed" (Br. 6); that there "is no suggestion in Parker or in Bebiak that there could be differences in nutritional requirements among genome-based breed clusters" (Br. 7); and that "Shields has created groups that do not present any evident correlation with the genome-based clusters of Parker" (Br. 8). "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, Appellants' arguments do not address the combined teachings of Bebiak, Parker, and Shields, but instead dissect each reference separately. While Bebiak does not teach genome-base clustering, Parker does (FF 5). When Bebiak refers to genetic information and breed as relevant to pet diet customization, and Shields teaches that breed specific diseases may implicate diet ingredient selections (FF 1-3, 6-8), the ordinary artisan would reasonably find Parker's disclosed method of assigning breed using genetic 8 Appeal2013-010515 Application 11/215, 146 information (FF 5) an obvious approach to correctly customize Bebiak's pet food with the correct breed specific ingredients for the particular pet or breed of pet (cf Ans. 16). We recognize, but find unpersuasive, Appellants' argument that "[t]o modify Bebiak to provide a pet food customized to the health and nutrition requirements of any member of a genome-based cluster subverts Bebiak's express purpose and principle of operation" (Br. 7). Appellants' premise is incorrect because both Bebiak and Shields are focused on providing pet food that is breed-customized, Bebiak specifically teaching that "pet food is tailored to individual characteristics of the pet, which can include ... breed ... and additional genetic ... information" (FF 1) while Shields teaches "to provide improved dog food formulations designed for specific breeds" (FF 6). While we conclude that the combination of Bebiak, Parker, and Shields reasonably suggest providing a pet food customized for every member of a particular breed of animal consistent with the interpretation of claim 1 argued by Appellants, we note that claim 1 does not exclude methods for customizing nutrition for a single individual animal as expressly taught by Bebiak (FF 1). See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims.") Conclusion of Law The evidence of record supports the Examiner's conclusion that Bebiak, Parker, and Shields render claim 1 obvious. 9 Appeal2013-010515 Application 11/215, 146 B. 35 U.S.C. Â§ 103(a) over Bebiak, Parker, Shields, and Combs Appellants do not separately argue the claims in this obviousness rejection. Having affirmed the obviousness rejection of Claim 1 over Bebiak, Parker, and Shields, we also find the further combination with Combs renders claims 17 obvious for the reasons given by the Examiner (see Ans. 10-11). SUMMARY In summary, we affirm the rejection of claim 1 under 35 U.S.C. Â§ 103(a) as obvious over Bebiak, Parker, and Shields. Claims 2-16 and 18- 20 fall with claim 1. 37 C.F.R. Â§41.37(c)(l)(iv). We affirm the rejection of claim 17 under 35 U.S.C. Â§ 103(a) as obvious over Bebiak, Parker, Shields, and Combs. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 10