Ex Parte Yamka et al

Patent Trial and Appeal BoardMar 22, 2016

11621888 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111621,888 01/10/2007 23909 7590 03/24/2016 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 FIRST NAMED INVENTOR Ryan Michael Yamka 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. 8040-00-HL 1987 EXAMINER WESTERBERG, NISSA M ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 03/24/2016 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 RYAN MICHAEL Y AMKA and KIM GENE FRIESEN1 Appeal2014-000130 Application 11/621,888 Technology Center 1600 Before LORA M. GREEN, ULRIKE W. JENKS, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants state the real party-in-interest is Hill's Pet Nutrition, Inc. App. Br. 3. Appeal2014-000130 Application 11/621,888 SUMMARY Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1, 2, 9, and 102 as unpatentable under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Hirabayashi et al. (US 2005/0249781 Al, November 10, 2005) ("Hirabayashi") and S.A. Center et al., The Clinical and Metabolic Effects of Rapid Weight Loss in Obese Pet Cats and the Influence of Supplemental Oral L-Carnitine, 14 J. VET. INTERN. MED. 598---608 (2000) ("Center"). Claims, 1, 2, 9, and 10 also stand rejected as unpatentable under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Laflamme et al. (US 2004/0081743 Al, April 29, 2004) ("Laflamme") and Center. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b) We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to diets useful for promoting fat loss in animals, having a total lysine to metabolizable energy ratio of from about 6 to about 10 g/Mcal. This invention also provides compositions for promoting fat loss in animals, methods for preparing the compositions, methods for using the diets and compositions, articles of manufacture 2 Claims 3-7 and 11 are withdrawn. Claims 8 and 12-24 are canceled. App. Br. 17. 3 Claims 1, 2, 9, and 10 were also rejected as unpatentable under 35 U.S.C. Â§ 102(a) and 102(e) as being anticipated by Hirabayashi and under 35 U.S.C. Â§ 102(b) as being anticipated by Laflamme. Final Act. 3, 4. These rejections have been withdrawn by the Examiner. Ans. 2. 2 Appeal2014-000130 Application 11/621,888 comprising the diets and compositions, and means for communicating information or instructions about such diets, compositions, methods, and articles of manufacture. Abstract. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: App. Br. 17. 1. A method for promoting fat loss in an adult canine or feline in need thereof, comprising feeding the canine or feline a diet that has a total lysine to metabolizable energy ratio of from 6 to about 10 g/Mcal. ISSUES AND ANALYSIS We agree with, and adopt, the Examiner's findings and conclusion that the appealed claims are obvious over the cited prior art references. See Final Act. 7-9. We address the arguments raised by Appellants on appeal below. A. The rejection of claims 1, 2, 9, and 10 under 35 U.S.C. Â§ 103(a) over Hirabayashi and Center Issue Appellants argue the Examiner erred in finding the combination of Hirabayashi and Center teaches or suggests the limitations of claim 1. App. Br. 11. Analysis 3 Appeal2014-000130 Application 11/621,888 Appellants argue Hirabayashi neither teaches nor suggests administration of a composition having the recited total lysine to metabolizable energy to adult canines or felines for the express purpose of promoting fat loss in adult canines or felines in need thereof. App. Br. 11. Appellants further contend that, although the Examiner admits Hirabayashi does not explicitly teach the metabolizable energy (ME) of the recited composition, the Examiner erred in finding "the amount of ME and the lysine additive in a composition administered for the purposes of fat loss and/or weight loss is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize." Id. at 11-12. Appellants assert "[a] particular parameter must first be recognized as a result effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation." Id. at 12 (quoting M.P .E.P. Â§ 2144.05). Appellants argue neither Hirabayashi nor Center discuss the total lysine to metabolizable energy ratio at all, much less recognize that promoting fat loss in an adult canine or feline in need thereof is a function of the total lysine to metabolizable energy ratio. App. Br. 12. Appellants maintain that, to rely on an optimization of parameters argument, the Examiner must first establish that a particular parameter has been recognized as a result effective variable. Id. Appellants contend the Examiner has not complied with that requirement. Similarly, Appellants argue, the Examiner cannot find "[a] ratio of two results effective parameters will also be a results effective parameter." App. Br. 12 (quoting Non-Final Office Act. 11, July 13, 2012). Appellants 4 Appeal2014-000130 Application 11/621,888 contend, the Examiner has provided no support for that statement and, therefore, because the Examiner has not established that the total lysine to metabolizable energy ratio was recognized as a result effective variable, the Examiner may not therefore rely upon an optimization of parameters argument. Id. Finally, Appellants allege the Examiner has impermissibly relied upon hindsight analysis because the Examiner has failed to establish why, without the guidance provided by the instant application, one of ordinary skill in the art when devising a method for promoting fat loss in an adult canine or feline would have even considered the total lysine to metabolizable energy ratio at all. App. Br. 12. According to Appellants, only they recognized the fact that the metabolizable energy of the administered composition can be altered and varied provided the lysine to metabolizable energy ratio is maintained, thereby enabling fat loss in canines and felines. Id. at 13. Consequently, Appellants argue, the Examiner could not have relied on the teachings or suggestions of the combined cited prior art as disclosing this limitation of claim 1. Id. With respect to Appellants' allegation of impermissible hindsight analysis, the Examiner states that, although any obviousness analysis relies to some degree on hindsight, "so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper." Ans. 7-8 (quoting In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). The Examiner finds that Hirabayashi teaches the importance of the total lysine content in preparing an anti-obesity foodstuff; therefore, the 5 Appeal2014-000130 Application 11/621,888 Examiner finds, it was well-known in the art that the total lysine content of the food is a results effective parameter. Ans. 8. The Examiner finds a person of ordinary skill would also recognize that Center teaches the total metabolizable energy is similarly a results effective parameter when it comes to weight gain and/or loss. Id. The Examiner finds that although the ratio of these two variables is not explicitly taught in the applied prior art as a results effective parameter, the total lysine content and metabolizable energy are each results effective parameters and, as such, would be optimizable by a person of ordinary skill in the art. Id. The Examiner also finds Appellants have not presented any evidence of the criticality of the claimed ratios or other evidence that would overcome the prim a f acie case of obviousness. Id. We are not persuaded by Appellants' arguments. As an initial matter, Appellants argument that Hirabayashi fails to teach all of the limitations of claim 1 (see App. Br. 11) is not persuasive because Appellants cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981). Hirabayashi teaches: [W]hen the daily intake of free-form lysine, lysine salts or/and lysine in peptide form (one or more of these being referred to hereinafter collectively as "lysine component(s )") is from 40 to 160 mg per kg of body weight, or the lysine component content in a food or a feeding stuff is from 0. 8 to 3. 0 wt % on the dry matter basis and at the same time, the protein energy composition is 20% or less, it is possible to suppress increases in body weight and body fat and also improve hyperlipidemia, safely and to the fullest extent. 6 Appeal2014-000130 Application 11/621,888 Hirabayashi if 7. Hirabayashi thus teaches various formulations of lysine- based foodstuffs, with the concentrations of lysine based on either body weight or the percent dry weight of the foodstuff and with the protein energy composition being 20% or less. Hirabayashi explicitly teaches using lysine as a fat-suppressing additive and also contemplates calculating at least the protein energy component of the disclosed foodstuff. We consequently agree with the Examiner that Hirabayashi teaches that lysine content is a results effective variable. Center teaches: Energy requirements of cats are influenced by their age, activity level, body condition, environment, and general health status. Although a 70 kcal metabolizable energy requirement (MER)/kg ideal body weight per day has been recommended for inactive cats and an 80 kcal MER/kg has been recommended for active cats, more recent information suggests that the MER of heavier (6.0-6.5 kg) inactive cats may be as low as 40 kcal/kg/d. Center 598. Center teaches that the quantifiable concept of a metabolizable energy requirement ("MER") for animals is well-known in the art and can be quantified as the required energy content per ideal body mass per day. We agree with the Examiner, therefore, that Hirabayashi teaches a results effective variable (i.e., the amount of lysine required for weight gain inhibition as a function of the total food or body mass) and that Center teaches a measurement standard (minimum energy requirement per unit ideal body mass per day) against which the optimal concentration of lysine as an additive could be determined. We further agree with the Examiner that, although the prior art references do not explicitly teach the ratio of lysine to metabolizable energy ratio of 6 to about 10 g/Mcal, determining that ration and optimizing the lysine concentration as a food additive as a 7 Appeal2014-000130 Application 11/621,888 function of the MER would be well within the abilities of a person of ordinary skill in the art. Moreover, we agree that a person of ordinary skill, combining the teachings of Hirabayashi and Center, would reasonably expect predictable results, i.e., weight loss. We consequently agree with the Examiner's conclusion that the limitations of independent claim 1 are obvious over the combination of Hirabayashi and Center. Moreover, because Appellants make no separate arguments on this ground for dependent claims 2, 9, and 10, we similarly affirm the rejections of those claims on the same ground. B. The rejection of claims 1, 2, 9, and 10 under 35 U.S.C. Â§ 103(a) over Laflamme and Center Laflamme teaches a "feline pet food comprising a dietary level of protein and a supplemental amount of at least one amino acid [including lysine] in an amount sufficient to provide a feline lean body mass protection equivalent to about a 50% protein feline pet food." Laflamme Abstr.; i-f 11. Appellants advance the substantially identical arguments with respect to the Examiner's findings and conclusion of obviousness of the claims on appeal over the combination of Laflamme and Center. See App. Br. 12-13. For the same reasons we have set forth with respect the combination of Hirabayashi and Center above, we affirm the Examiner's rejection of claims 1, 2, 9, and 10. 8 Appeal2014-000130 Application 11/621,888 DECISION The Examiner's rejection of claims 1, 2, 9, and 10 as unpatentable under 35 U.S.C. Â§ 103(a) is affirmed. 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)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 9