Ex Parte Troup et al

Patent Trial and Appeal Board

Sep 26, 2012

10662678 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOHN P. TROUP and ROBERT R. WOLFE
__________

Appeal 2011-013218
Application 10/662,678
Technology Center 1600
__________

Before TONI R. SCHEINER, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a composition. The Patent Examiner rejected the claims
for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2011-013218
Application 10/662,678

2
STATEMENT OF THE CASE
Claims 1-4, 7-11, 13, 14, 16, 17, and 23-28 are on appeal. Claim 1 is
representative and reads as follows (emphasis added):
1. A composition comprising: leucine, valine in an amount of about 8%
to about 10% by weight based on the weight of total amino acids, and at
least one essential amino acid selected from the group consisting of
isoleucine, lysine, methionine, phenylalanine, threonine, tryptophan,
histidine, and combinations thereof in free and/or salt form, wherein said
leucine, in free and/or salt form, is present in an amount of at least 30% to
about 95% by weight based on the weight of total amino acids and wherein
said composition provides a ratio of total essential amino acids to total
amino acids ranging from about 0.60 to about 0.90[.]

The Examiner rejected the claims as follows:
I. claims 1-4, 7-11, 13, 14, 16, 17, and 23-28 under 35 U.S.C. § 103(a)
as unpatentable over Abbruzzese,
1
Roberts,
2
Hageman,
3
and Salvati;
4

II. claims 1-4, 7-11, 13, 14, 16, and 23-26 under 35 U.S.C. § 103(a) as
unpatentable over Abbruzzese, Roberts, Allen,
5
Phillips,
6
and
Vickery;
7
and
III. claims 1 and 23-25 under 35 U.S.C. § 103(a) as unpatentable over
Heyland
8
and Vickery.

1
Bonnie Chandler Abbruzzese et al., US 6,077,828, issued June 20, 2000.
2
Willard Lewis Roberts, US 4,112,123, issued Sept. 5, 1978.
3
Robert Johan Joseph Hageman et al., US 6,420,342 B1, issued July 16,
2002.
4
Mark E. Salvati et al., US 6,953,679 B2, filed May, 8, 2000.
5
Ann De Wees Allen, US 2003/0119888 A1, filed Sept. 26, 1997.
6
Bill Phillips, Sports Supplement Review, 3
rd
Issue (1997).
7
Brice E. Vickery, US 6,203,820 B1, issued March 20, 2001.
8
Sven Heyland et al., US 4,544,568, issued Oct. 1, 1985.
Appeal 2011-013218
Application 10/662,678

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I. & II.
The Issue
The dispositive issue for rejections I and II is whether the combined
teachings of the references would have rendered obvious a composition
comprising about 8% to about 10% valine based on the weight of total
amino acids.
Findings of Fact
1. We adopt the Examiner‟s findings concerning the scope and content
of the prior art.
Principles of Law
“[T]he discovery of an optimum value of a variable in a known
process is usually obvious.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1368 (Fed. Cir. 2007). The rationale for determining the optimal parameters
for prior art result effective variables “flows from the „normal desire of
scientists or artisans to improve upon what is already generally known.‟” Id.
(quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)). “[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.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Analysis
The Examiner found that Abbruzzese disclosed the importance of
branched chain amino acids (valine, leucine, and isoleucine) in compositions
for preventing and treating cancer cachexia and anorexia. The Examiner
found that Vickery taught a composition for enhancing protein anabolism, to
include about 7% to about 10% valine based on the total weight of the
Appeal 2011-013218
Application 10/662,678

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composition. Relying on Vickery‟s specific disclosure that valine aids in
muscle growth, the Examiner found that a person of ordinary skill in the art
would have been motivated to optimize the amount of valine in
Abbruzzese‟s composition as “the normal desire of scientist or artisans to
improve upon what is already generally known provides the motivation to
determine where in a disclosed set of percentage ranges is optimum
combination of percentages.” (Ans. 12.) We agree with the Examiner that
the evidence is sufficient to support a prima facie case of obviousness.
Appellants contend that none of the references disclosed or suggested
a composition comprising about 8% to about 10% valine based on the
weight of total amino acids. While none of the references explicitly
suggested that range, although Vickery‟s range appears close, we agree with
the Examiner that the importance of branched chain amino acids was
disclosed for avoiding cachexia in cancer patients, and the importance of
valine for muscle growth was disclosed. Under these circumstances,
optimization would have been within the routine level of skill in the art.
We have considered Appellants‟ Reply Brief arguments about the
pertinence of Hageman, Roberts, Salvati, Allen and Phillips. (Reply Br. 3-
7.) The arguments are unpersuasive because (1) they are unrelated to the
Appeal Brief‟s contentions regarding the amount of valine in the
composition, and (2) each reference is pertinent to nutritional compositions.
See In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992) (prior art is analogous
when (1) it is from the same field of endeavor, regardless of the problem
addressed, or (2) if not within the field of the inventor‟s endeavor, if it still is
reasonably pertinent to the particular problem with which the inventor is
involved.)
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Application 10/662,678

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Claims 2-4, 7-11, 13, 14, 16, 17, and 23-28 have not been argued
separately and therefore fall with claim 1, as grouped in the separate
rejections. 37 C.F.R. § 41.37(c)(1)(vii).

III.
The Examiner found that Heyland described a composition
comprising, among other protein and amino acid constituents, 2% valine.
The Examiner found that “[t]he difference between the reference and the
instant claims is that the reference does not teach about 8% to about 10%
valine.” (Ans. 22.) The Examiner found that Vickery taught a composition
for enhancing protein anabolism and comprising about 7% to about 10%
valine by weight. The Examiner concluded that it would have been obvious
to combine the teachings of the prior art and to optimize the amounts of
valine.
Appellants contend that
Heyland discloses all essential amino [acids] and fails to recite
any non-essential amino acids at any place in the disclosure. As
such, Heyland cannot disclose or suggest a ratio of total
essential amino acids and, optionally, conditionally essential
amino acids to total amino acids ranging from about 0.60 to
about 0.90 as required, in part, by independent Claims 1 and 25.

(App. Br. 24.)
The Examiner responds: “the claims do not recite that the
composition requires non-essential amino acids.” (Ans. 40.) Although
claim 1 does not explicitly recite “non-essential,” it does recite “wherein
said composition provides a ratio of total essential amino acids to total
amino acids ranging from about 0.60 to about 0.90[.]” “Total amino acids”
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Application 10/662,678

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necessarily includes “essential” amino acids and an unnamed other type of
amino acid, because the ratio of essential to total is less than one. The
Examiner has not explained how it can be reasonable to say the other type of
amino acid is other than “essential” but is not “non-essential.” The rejection
is reversed because, prima facie, it relies on an unreasonable claim
interpretation.

SUMMARY
We affirm the rejection of claims 1-4, 7-11, 13, 14, 16, 17, and 23-28
under 35 U.S.C. § 103(a) as unpatentable over Abbruzzese, Roberts,
Hageman, and Salvati.
We affirm the rejection of claims 1-4, 7-11, 13, 14, 16, and 23-26
under 35 U.S.C. § 103(a) as unpatentable over Abbruzzese, Roberts, Allen,
Phillips, and Vickery.
We reverse the rejection of claims 1 and 23-25 under 35 U.S.C.
§ 103(a) as unpatentable over Heyland and Vickery.
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

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