Ex Parte Greenberg et al

Patent Trial and Appeal Board

Aug 30, 2017

13982822 (P.T.A.B. Aug. 30, 2017)

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.
13/982,822 10/14/2013 Norman Alan Greenberg 3712036-01945 1077
29157 7590 09/01/2017
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORMAN ALAN GREENBERG, DOUG BOLSTER, and
ZAMZAM KABIRY (FARIBA) ROUGHEAD
Appeal 2017-002246
Application 13/982,822
Technology Center 1700
Before JEFFREY B. ROBERTSON, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-002246
Application 13/982,822
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 11—19. (Appeal Brief filed May 24, 2016, hereinafter
“App. Br.,” 6—12.) We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants describe nutritional compositions having a high amount of
protein and methods of using such compositions. The methods include
treating patients suffering from complications associated with excessive
feeding and reducing the fat intake of a person being treated with a high fat
medication. (Spec. ^fl[ 1, 19, 30.)
Claims 11 and 16, reproduced below, are representative of the subject
matter on appeal.
11. A method of treating a patient suffering from complications
associated with excessive feeding, the method comprising:
administering, to a patient suffering from excessive
feeding, an effective amount of an enteral nutritional
composition comprising protein in an amount of at least 30% of
the total energy of the nutritional composition, and a source of
fatty acids that provides the nutritional composition with an
omega-6 to omega-3 fatty acid ratio from about 1.0:0.5 to about
2.5:1.5, wherein the composition is administered to the patient
daily and for a short-term.
16. A method of reducing the fat intake of a patient being
treated with, or having been treated with, a high fat medication,
the method comprising:
providing an effective amount of an enteral nutritional
composition comprising protein in an amount of at least 30% of
the total energy of the nutritional composition, and a source of
fatty acids that provides the nutritional composition with an
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Application 13/982,822
omega-6 to omega-3 fatty acid ratio from about 1.0:0.5 to about
2.5:1.5; and
administering the nutritional composition to the patient
daily and for a short-term.
(App. Br., Claims App’x 14—15.)
THE REJECTION
The Examiner rejected claims 11—19 under 35 U.S.C. § 103(a) as
obvious over Tiano (US 2004/0121044 Al, published June 24, 2004).
(Examiner’s Answer mailed August 26, 2016, hereinafter “Ans.”)
ISSUES
The Examiner found that Tiano discloses a method of treating subjects
intending to lose weight (via the Atkins diet1) comprising a step of
administering a nutritional composition having an amount of protein,
omega-6 fat, and omega-3 fat overlapping the ranges recited in the claims.
(Ans. 2.) The Examiner found that the subjects of Tiano would also be
considered those who were at risk of suffering from or suffering from
complications associated with excessive feeding. (Id.) The Examiner found
that Tiano discloses that the nutritional composition is a meal replacement
for humans on a high protein, low carbohydrate weight loss diet, and as
such, Tiano allows for short-term administration. (Ans. 2—3.) The Examiner
found that Tiano is silent with respect to a patient being treated with a high
1 A diet and nutrition plan developed by Dr. Robert Atkins and others, which
is known as a “ketogenic diet,” which restricts the consumption of
carbohydrates while allowing unlimited quantities of protein in order to bum
excess body fat. (Tiano, H 3, 4.)
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fat medication, but stated that those intending to lose weight “could include
subjects who are being treated with, or having been treated with a high fat
medication or those that are mechanically ventilated, for example a subject
with obstructive sleep apnea or obesity-hypoventilation syndrome.” (Ans.
3.)
Appellants contend that Tiano does not disclose or suggest that
patients on the Atkins weight loss diet suffer from excess feeding, and that
the patient population in Tiano is therefore distinct from that which is recited
in the claims. (App. Br. 6—8.) In addition, Appellants argue that Tiano
discloses a high fat nutritional product, while the claimed method is directed
to a low-fat nutritional composition to target a patient population that needs
to restrict fat intake. (App. Br. 8—9.) Appellants contend that the
complications associated with excessive feeding would be further
aggravated by a high fat nutritional compound. (App. Br. 9.)
Regarding claim 16, Appellants argue, similar to claim 11, that Tiano
does not disclose or suggest administering the composition to patients who
are being treated with, or have been treated with, a high fat medication.
(App. Br. 9-10.)
Accordingly, the dispositive issues in this appeal are:
Did the Examiner err in concluding that Tiano renders obvious a
method of treating a patient suffering from complications associated with
excessive feeding as recited in claim 11?
Did the Examiner err in concluding that Tiano renders obvious a
method of reducing the fat intake of a patient being treated with, or having
been treated with, a high fat medication as recited in claim 16?
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DISCUSSION
Appellants have presented separate arguments with respect to claims
11, 15, 16, and 19. Accordingly, we confine our discussion to those claims
pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
In support of their argument that claim 11 is patentable over Tiano,
Appellants cite Jansen v. Rexall Sundown, Inc., 342 F.3d 1329 (Fed. Cir.
2003), Rapoport v. Dement, 254 F.3d 1053 (Fed. Cir. 2001), and Perricone
v. Medicis Pharm. Corp., 432 F.3d 1368 (Fed. Cir. 2005) for the proposition
that claim language reciting the use of a composition to treat or prevent a
harmful condition and the recipient of the treatment must be considered.
(App. Br. 7-8.)
We are not persuaded by Appellants’ argument. In particular, as
previously recognized by this Board’s predecessor: “The fact that appellant
has recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be a basis for patentability
when the difference would otherwise have been obvious.” Ex parte Obiaya,
227 USPQ 58, 60 (BPAI 1985).
Regarding Perricone, although Appellants are correct that the court
determined that the method for treating skin sunburn claims were patentable
over the prior art, the court determined also that another set of method
claims directed to “preventing sunburn damage to exposed skin surfaces”
was not patentable over a composition applied to the skin for other purposes
stating that “the new realization” that the composition would prevent
sunburn damage “does not render the old invention patentable.” 432 F.3d at
1377-78.
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Regarding Jansen and Rapoport, as the Board’s predecessor
previously stated in Ex parte Batteaux, Appeal No. 2007-0622 (BPAI Mar.
27, 2007) (Informative):
Jansen was an infringement case, requiring the court to
construe the subject claim “so as to sustain [its] validity, if
possible.” Whittaker Corp. v. UNR Indus., 911 F.2d 709, 712,
15 USPQ2d 1742, 1743 (Fed. Cir. 1990) (citing ACSHosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 932 (Fed. Cir. 1984). In contrast, during prosecution, a
claim must be given its broadest reasonable interpretation.
Unlike the case here, in Jansen, the patentee was arguing a
broad construction to establish infringement. 342 F.3d at 1331,
68 USPQ2d at 1156. However, the court “strictly construed”
the claim against the inventor, in view of statements made
during prosecution. Id. at 1334, 68 USPQ2d at 1158.
In Rapoport (an interference proceeding), the Board
found no inherent anticipation. In affirming the Board, the
Federal Circuit stated: “Most importantly . . ., the issue of
anticipation whether by inherency or otherwise is a question of
fact, and we uphold decisions of the Board on factual matters if
there is substantial evidence in the record to support the
Board’s findings.” 254 F.3d at 1063, 59USPQ2d at 1222.
Further, at least two panels of the Board have previously
distinguished Jansen and/or Rapoport in similar circumstances.
See Ex parte Hempstead, App. No. 2006-061 1 (decided April
5, 2006). See also Ex Parte Renshaw, App. NO. 2006-1066
(2006 WL 2558174).
Accordingly, we do not view Jansen and Rapoport as dispositive in the
present appeal.
In the instant case, claim 11 broadly recites treating a patient
“suffering from complications” associated with excessive feeding.
Appellants do not contend that “an effective amount” and administering the
composition “daily and for a short-term” as recited in the claims is different
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from the amount of nutritional product disclosed in a serving size of the
nutritional product disclosed in Tiano. There is no dispute that Tiano
discloses a nutritional composition that is consumed by patients who desire
to lose weight as a result of excessive eating and that Tiano discloses a
nutritional composition having at least 30% protein and the source of fatty
acids having an omega-6 to omega-3 fatty acid ration recited in the claims.
(Tiano 1121, 22, 32.)
Thus, when the nutritional product of Tiano is consumed by a person
desiring to lose weight, treatment of complications associated with excessive
eating would necessarily occur. Accordingly, that Tiano does not expressly
disclose an intention for the nutritional composition to be consumed by such
a patient is not persuasive of patentability.
Regarding Appellants’ argument that Tiano is directed to a high fat
nutritional product and as such would not be used in a method to treat a
patient suffering from excessive feeding, we agree with the Examiner that
claim 11 does not recite any limitations limiting the amount of fat in the
nutritional composition. (Ans. 5.) Thus, Appellants’ argument is not
persuasive.
We are not persuaded by Appellants’ argument that complications
associated with excessive feeding would be further aggravated by the
introduction of a high fat nutritional compound. (App. Br. 9, citing Spec
1176 and 77.) As discussed above, claim 11 does not limit the fat content of
the nutritional compound, nor does it limit the complications associated with
excessive eating. The specific complications discussed in paragraphs 76 and
77 of the Specification are hyperlipidemia, which when high amounts of fat
are administered, and administration of propofol (a sedative), which
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perpetuates excessive caloric intake due to the calories needed in
conjunction with its administration. The claims are not limited to these
complications. Accordingly, Appellants’ argument is not commensurate in
scope with the claims on appeal.
Claim 15
Regarding claim 15, which recites specific complications including
“hyperlipidemia, azotemia, hyperglycemia, fluid overload, hepatic
dysfunction, respiratory compromise, and combinations thereof,” the
Examiner stated that the subjects of Tiano would be considered at risk of
suffering from complications required by claim 15. (Ans. 2, 7.)
Appellants contend that claim 15 requires that the patient suffer from
specific complications, none of which are suggested by Tiano. (App. Br.
11.)
For similar reasons as discussed above, we agree with the Examiner
that in patients suffering from complications such as hyperglycemia
(abnormally high blood glucose), a common condition of those suffering
from excessive eating, treatment of hyperglycemia would necessarily occur
in consuming the nutritional compositions of Tiano. (See, e.g., 116.)
Accordingly, we affirm the Examiner’s rejection of claim 15.
Claim 16
Claim 16 stands on different footing. Claim 16 expressly recites that
the method “reduc[es] the fat intake of a patient being treated with, or
having been treated with, a high fat medication.” Tiano discloses that “[f]at
is generally present in the nutritional product in an amount from about 37 to
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Application 13/982,822
47% of the calories of the nutritional product.” (121.) The Examiner’s
position is that Tiano takes a different approach to weight loss (Ketosis) than
the presently claimed invention, but nevertheless discloses administering a
nutritional composition as recited in the claims to a population of subjects.
(Ans. 6.)
However, the method recites reducing the fat intake of a patient, not a
method of weight loss. Accordingly, we agree with Appellants, that one of
ordinary skill in the art would not have used the nutritional product of Tiano,
which includes a significant amount of fat, 37 to 47%, of the nutritional
product in order to reduce the fat intake of a patient. Therefore, we reverse
the Examiner’s decision to reject claim 16. Because clams 17—19 depend
from 16, we reverse the rejection of claims 17—19 as well.
CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in concluding that Tiano renders obvious a method of treating a patient
suffering from complications associated with excessive feeding as recited in
claim 11.
However, Appellants have demonstrated that the Examiner reversibly
erred in concluding that Tiano renders obvious a method of reducing the fat
intake of a patient being treated with, or having been treated with, a high fat
medication as recited in claim 16.
ORDER
We affirm the Examiner’s decision rejecting claims 11—15 under 35
U.S.C. § 103(a) as obvious over Tiano.
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However, we reverse the Examiner’s decision rejecting claims 16—19
under 35 U.S.C. § 103(a) as obvious over Tiano.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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