Ex Parte Wiens

Patent Trials and Appeals Board

Mar 29, 2019

10589135 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/589,135 06/23/2008
23529 7590
ADE & COMPANY INC.
2157 Henderson Highway
WINNIPEG, MB R2GIP9
CANADA
04/02/2019
FIRST NAMED INVENTOR
Tim Wiens
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.
85492-102 5450
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
uspto@adeco.com
djones@adeco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM WIENS
Appeal2017-006240
Application 10/589, 135 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134(a) from an
Examiner's decision finally rejecting claims 19-26. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims on appeal are directed to a method of increasing the
amount of omega-3 fatty acids, conjugated linoleic acids (CLA), or DHA in
an edible animal product. Independent claim 19 is reproduced below from
1 The real party in interest is said to be O&T Farms. Appeal Brief dated July
11, 2016 ("Br."), at 1.
Appeal2017-006240
Application 10/589,135
the Claims Appendix to the Appeal Brief. The limitation at issue is
italicized.
19. A method of increasing the amount of omega-3 fatty
acids or CLA or DHA in an edible animal product comprising:
feeding an animal a standard feed ration wherein at least 1-40%
of the feed ration is replaced by a feed prepared by
grinding a quantity of a pulse crop selected from the group
consisting of peas, lentils, chick peas, fababeans, white beans
and mixtures thereof into a powder, said powder being ground
to a consistency such that at least half of the pulse crop product
has a diameter of 5 microns or less;
mixing a quantity of intact oilseeds selected from the group
consisting of flax, sunflower, safflower, rapeseed, canola,
soybean and combinations thereof with the powder, thereby
forming a mixture, said mixture being 15-55% pulse crop and
45-85% oil seed;
subjecting the mixture to a temperature between about 230F to
about 350F and a pressure of between about 200 psi to about
400 psi, thereby gelatinizing the mixture;
extruding the mixture; and
forming the mixture into feed components; and
harvesting the edible animal product from the animal,
characterized in that the edible animal product has at least 1.5-5
fold increased omega-3 levels or at least 1.5-2 fold increased
CLA levels compared to an edible animal product harvested
from a similar animal fed a standard feed ration.
Br. 18.
2
Appeal2017-006240
Application 10/589,135
Claims 19--26 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Thacker2 in view of Buchs, 3 Harrison, 4 and Wallis et al. 5
We sustain the Examiner's rejection for the reasons set forth in the
Final Office Action dated May 20, 2015 ("Final Act") and the Examiner's
Answer dated December 14, 2016 ("Ans."). We add the following for
emphasis.
B. DISCUSSION
The Examiner finds Thacker discloses a method of increasing the
amount of omega-3 fatty acids, CLA, or DHA in an edible animal product.
Final Act. 3. The Examiner finds the method includes feeding an animal a
standard feed ration comprising between 0% and 25% of a prepared feed
(i.e., Linpro ), wherein the prepared feed comprises a pulse crop (i.e.,
powdered or ground peas) and an intact oilseed (i.e., whole flax seed). Final
Act. 3. Although the Examiner finds that "Thacker discloses the prepared
feed comprises a powdered pulse crop," the Examiner finds "Thacker does
not disclose the pulse is ground such that at least half of the pulse crop
product is ground to a diameter of less than 5 microns" as recited in claim
19. Final Act. 5; see also Hart Affidavit ,r 6 (stating that the LinPro product
described in Thacker was a coarse grind (i.e., 1100-1300 microns)). 6
2 P.A. Thacker, Peiformance of Broiler Chicks Fed Wheat-Based Diets
Supplemented with Linpro (Extruded Whole Flax Seed and Peas), 2 J. of
Animal and Veterinary Advances 620-25 (2003) ("Thacker").
3 US 5,270,062, issued December 14, 1993 ("Buchs").
4 US 5,897,886, issued April 27, 1999 ("Harrison").
5 US 6,244,528 Bl, issued June 12, 2001 ("Wallis").
6 Affidavit of Jeffrey Lyle Hart dated December 17, 2010 ("Hart Affidavit").
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Appeal2017-006240
Application 10/589,135
The Examiner finds Wallis discloses a method of making legume
powder for use in food products, wherein the legume is ground to a size
between about 5 to 25 microns which overlaps the claimed range. 7 Final
Act. 5. The Examiner finds "Wallis discloses the grinding increases the
surface area, which results in improved functionality of proteins, starches,
carbohydrates, and fats." Final Act. 5.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to use a pulse powder having a size between about 5
to 25 microns in Thacker's method for the reasons disclosed in Wallis (i.e.,
to improve functionality of proteins, starches, carbohydrates, and fats).
Final Act. 5.
The Appellant does not direct us to any error in the Examiner's
finding that one of ordinary skill in the art would have modified the size of
Thacker's pulse powder, as disclosed in Wallis, to improve the functionality
of proteins, starches, carbohydrates, and fats. See Br. 11 (stating that "the
'improved functional and behavioral characteristics' of Wallis are clearly
increased solubility and dispersability"). Rather, the Appellant argues that
"nowhere does Wallis suggest that use of a fine powder of a pulse product
with intact oilseeds in an extrusion process will result in increased
gelatinization and increased oil absorption" as found by the Appellant. Br.
10 ( emphasis added).
7 See 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.").
4
Appeal2017-006240
Application 10/589,135
The Appellant's argument is not persuasive of reversible error. It is
well settled that "[a]s long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). Thus, it is of
no moment in the obviousness rejection on appeal that the Appellant uses a
pulse powder having the claimed size for a different reason than Wallis.
In an attempt to rebut the prima facie case of obviousness, the
Appellant argues that the claimed invention exhibits unexpected results and
has achieved commercial success.
"[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art." In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991).
The Appellant argues that "the unexpected discovery [is] that when at
least half of the pulse crop product had a diameter of 5 microns or less, the
gelatinization process was greatly improved and much more of the oil from
the oilseed was retained in the end product." Br. 12. The Appellant relies
on the Hart Affidavit for support. Mr. Hart, however, does not direct us to
any evidence comparing an edible animal product according to the claimed
method wherein "at least half of the pulse crop product has a diameter of 5
microns or less"8 with any prior art product, let alone the edible animal
product disclosed in Thacker. See Hart Affidavit ,r 17 ( stating that "[ o ]ur
first attempts with smaller particle sizes were with particles approximately
500 microns[; g]radually the particle size decreased from this initial level");
8 Br. 18 ( claim 19).
5
Appeal2017-006240
Application 10/589,135
see also Final Act. 10 (finding that "[t]here is no information on whether a
particle size of 5 microns or less ... was tested"); Ans. 9 (finding that the
Hart Affidavit does not provide any actual data).
The Appellant also contends that the application as filed describes
results obtained with an edible animal product wherein "at least half of the
pulse crop product had a diameter of 5 microns or less." Br. 13. The
Specification, however, does not compare the disclosed product with the
edible animal product disclosed in Thacker.
As for commercial success, the Appellant directs our attention to the
Affidavit of Mr. Wiens. 9 Br. 13. The Appellant argues that "[a]s discussed
therein, purchasers are prepared to pay more for LinPro compared to similar
products." Br. 13.
According to Mr. Wiens, "[t]he product that is currently sold as
LINPRO uses a mixture of oil seeds and the 5 micron pulse powder as
discussed herein and as recited in the pending claims." Wiens Affidavit ,r 23
( emphasis added). Mr. Wiens states that (1) "[ t ]he product is used primarily
in the specialty egg market, specifically for the production of Omega-3
eggs;" (2) "[ o ]ur LINPRO product's primary competition is flax;" (3) "flax
currently sells for $554.72;" and (4) "LINPRO sells for $619." Wiens
Affidavit ,r,r 24, 26.
Mr. Wiens also states:
27. In 2009, we sold 198 tonnes ofLINPRO for $85,855.
28. In 2010, we sold 1,580 tonnes of LINPRO for $643,065.
29. In 2011, we sold 745 tonnes ofLINPRO for $364,263.
9 A copy of the Wiens Affidavit is included in the Evidence Appendix to the
Appeal Brief.
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Application 10/589,135
30. In 2012, we sold 3,330 tonnes of LINPRO for
$1,552,359.
31. In 2013, we sold 2,813 tonnes ofLINPRO for
[$]1,468,546.
32. In 2014, we sold 3,207 tonnes ofLINPRO for
$1,666,337.
Wiens Affidavit ,r,r 27-32.
Mr. Wiens states that "[ w ]e estimate that this represents
approximately 10-20% of the current sales of Omega-3 feed ingredients to
the Omega-3 specialty egg market, with almost all of the remaining 80-90%
constituting flax." Wiens Affidavit ,r 34.
Significantly, neither Mr. Wiens nor the Appellant directs us to any
evidence establishing that the alleged commercial success from 2009-2014
was due to unique characteristics in the method of claim 19. See Sjolund v.
Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) ("Commercial success is
relevant only if it flows from the merits of the claimed invention."); In re
DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) ("the proponent must offer proof
'that the sales were a direct result of the unique characteristics of the claimed
invention-as opposed to other economic and commercial factors unrelated
to the quality of the patented subject matter"') ( quoting In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996)); see also Final Act. 11 (explaining that "care
should be taken to determine that the commercial success alleged is directly
derived from the invention claimed ... and ... is not the result of heavy
promotion or advertising, shift in advertising, ... or other business events
extraneous to the merits of the claimed invention").
Moreover, neither Mr. Wiens nor the Appellant has established that
the compositions of the LINPRO product(s) sold from 2009-2014 are within
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Application 10/589,135
the scope of claim 19. See In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)
("objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support"). In that regard,
Mr. Hart states that "[ w ]e named our product LinPro and kept the name with
the product for all variations during our development process." Hart
Affidavit ,r 5 ( emphasis added).
In sum, having weighed all of the evidence of record, we find that a
preponderance of the evidence supports the Examiner's conclusion of
obviousness. For that reason, the obviousness rejection of claims 19--26 is
sustained. 10
C. DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
10 The Appellant states that claims 20-26 stand or fall with claim 19. Br. 3.
8