Societe des Produits Nestle SADownload PDFPatent Trials and Appeals BoardMay 4, 20212020003418 (P.T.A.B. May. 4, 2021) Copy Citation 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. 15/372,561 12/08/2016 Brian M. Zanghi 14173-US-NP 5227 69099 7590 05/04/2021 Nestle Purina Petcare Global Resources, Inc Checkerboard Square Intellectual Property Patents ST. LOUIS, MO 63164 EXAMINER SAYALA, CHHAYA D ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 05/04/2021 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): purinapatentmail@purina.nestle.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN M. ZANGHI ____________ Appeal 2020-003418 Application 15/372,561 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–15 and 17–20 of Application 1 In our Decision, we refer to the Specification (“Spec.”) of Application No. 15/372,561 filed Dec. 8, 2016 (“the ’561 Application”); the Final Office Action dated July 25, 2019 (“Final Act.”); the Appeal Brief filed Dec. 20, 2019 (“Appeal Br.”); the Examiner’s Answer dated Feb. 5, 2020 (“Ans.”); and the Reply Brief filed Apr. 3, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Société Des Produits Nestlé S.A. Appeal Br. 3. Appeal 2020-003418 Application 15/372,561 2 15/372,561, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM IN PART. The ’561 Application describes that hydration can be challenging for companion animals. Spec. ¶ 3. Promoting water intake and maintaining optimal hydration in senior cats and cats with urolithiasis is important for improving health. Id. Stress related to travel, boarding, or illness also compromises hydration status in both cats and dogs, and consequently can diminish overall health. Id. According to the ’561 Application, the described compositions and methods improve hydration and water intake in animals. Id. ¶ 2. REFERENCES The Examiner relies on the following references: Name Reference Date Montner et al. (“Montner”) US 5,811,600 Sept. 22, 1998 Kloti US 2002/0054947 A1 May 9, 2002 Robergs et al. (“Robergs”) US 6,485,764 B2 Nov. 26, 2002 Albert US 8,221,727 B2 July 17, 2012 She et al. (“She”) US 2014/0141119 A1 May 22, 2014 O’Donovan et al. (“O’Donovan”) WO 2008/135960 A2 Nov. 13, 2008 Appeal 2020-003418 Application 15/372,561 3 REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 1033 as obvious: (1) claims 1–5, 7–15, and 17–20 over Kloti, in view of Montner, Robergs, Albert, and further in view of O’Donovan and (2) claims 6 and 17 over Kloti, in view of Montner, Robergs, Albert, and further in view of She. Final Act. 3–8. DISCUSSION Interpretation of claims 1 and 11 During prosecution, an application’s claims are given their broadest reasonable scope consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read in light of the specification, as it would have been interpreted by one of ordinary skill in the art at the time of the invention. Id. Appellant asserts that the Examiner unduly broadens the scope of the invention in giving the transitional phrase “consist[s] of” in claims 1 and 11 little or no weight. Appeal Br. 14; Reply Br. 4. Claims 1 and 11 are reproduced below from the Claims Appendix of the Appeal Brief: 1. A method for improving water intake and hydration in an animal, comprising administering a hydration composition to the animal, wherein the hydration composition comprises water and a hydration additive, wherein the hydration additive consists of glycerol and whey. 3 Because this application claims priority to an application that was filed after the March 16, 2013, effective date of the America Invents Act, we refer to the AIA version of the statute. Appeal 2020-003418 Application 15/372,561 4 11. A hydration composition comprising water and a hydration additive, wherein the hydration additive consists of glycerol and whey. Appeal Br. 20, 21 (emphasis added). The Examiner notes the inclusion of the transitional phrase “consists of” and that it excludes any element, step, or ingredient not specified in the claims. Final Act. 8–9. The Examiner determines that the transitional phrase does not exclude any element not specified in the claims if the function attributed to the unspecified element is not desired or required. Id. at 4. The Examiner notes that dependent claims 6 and 7 recite numerous additional ingredients. Ans. 11 (noting that these dependent claims recite “and mixtures of” the additional ingredients). Our review of the claim language indicates that “consists of” applies to the hydration additive ingredients: “glycerol and whey.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364. The hydration composition comprises water and a hydration additive. Appeal Br. 20, 21. The Examiner finds that claiming a hydration composition comprising water and a hydration additive means that the scope of the claim includes any other ingredients, including those which provide hydration. Ans. 10. In contrast, Appellant argues that use of “consist[s] of” interpreted in light of the Specification limits the hydration additives to at least sugar alcohols, protein, and amino acids. Appeal Br. 14. Appellant contends that the references cited by the Examiner do not disclose use of whey and glycerol. Id. at 16. The open transitional term “comprising” permits elements in addition to those specified to be included in the composition of the claim. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004) (“[I]t is well-established that Appeal 2020-003418 Application 15/372,561 5 ‘[c]omprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” (quoting Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997)). Thus, the hydration composition in the claim must include at least water and a hydration additive. See Appeal Br. 20, 21. However, due to the use of “comprising,” the hydration composition is not limited to water and a hydration additive, and may include other ingredients. The Specification does not require otherwise. The Specification states, “[s]uch hydration compositions and hydration additives can further comprise other ingredients that can serve to promote the health of the animal.” Spec. ¶ 33 (emphasis added). The Specification also states, “the water additives can consist of a sugar alcohol and a protein.” Spec. ¶ 27. The Specification does not limit the hydration additive to only glycerol and whey. See id. ¶¶ 27, 33. Appellant’s arguments are not persuasive of reversible error. Rejection of claims 1 and 11 as obvious The Examiner finds claims 1–5, 7–15, and 17–19 would have been obvious over the combination of Kloti, Montner, Robergs, Albert, and O’Donovan. Final Act. 3–7. The Examiner finds claims 6 and 17 would have been obvious over Kloti, Montner, Robergs, Albert, and She. Id. at 7– 8. Appellant addresses only independent claims 1 and 11. Appeal Br. 9– 16; 18–19. Appellant argues claims 1–15 and 17–19 as a group. See id. Appellant does not argue any dependent claims separately. See id. We select claims 1 and 11 as representative of the group. 37 C.F.R. Appeal 2020-003418 Application 15/372,561 6 § 41.37(c)(1)(iv). Claims 2–10, 12–15, and 17–19 stand or fall with each of their respective independent claims. Regarding claims 1 and 11, the Examiner finds that Kloti discloses a dog beverage made from dissolving, in water, a solid composition comprising minerals, protein, and whey flavoring. Final Act. 3. The Examiner finds that Montner discloses a rehydration formulation, which includes glycerol combined with carbohydrate or sodium. Id. The Examiner determines that it would have been obvious to omit the minerals and protein of Kloti and the carbohydrate and sodium of Montner from a hydration composition because each reference teaches that these ingredients are not required for hydration. Id. at 3–4. The Examiner finds that Robergs discloses beverages for animals comprising glycerol, which is used for enhancing hydration. Id. at 4. According to the Examiner, Robergs “establishes that the inclusion of glycerol in hydrating liquids for animals was old and known.” Id. With respect to claim 11, the Examiner finds that Albert discloses that a daily dosage of a hydration additive can be poured into filtered water. Id. at 7. Based on the combination of references, the Examiner determines that it would have been obvious to add whey flavoring to glycerol in a hydration additive because one of ordinary skill in the art would have known that the addition of flavor attracts a pet to water. Ans. 13. Appellant argues that the transitional term “consist[s] of” excludes the prior art’s use of glycerol and whey in combination with other ingredients. Appeal Br. 14. We explained above why this argument is not persuasive. Consistent with our claim interpretation above, the prior art’s use of other ingredients along with those specified in the claims is not excluded by the limitations of claims 1 and 11. See Appeal Br. 20, 21 (Claims App.). Appeal 2020-003418 Application 15/372,561 7 Appellant argues that the claimed combination of ingredients provided an unexpected hydration benefit, relying on Examples 1 and 2 of the ’561 Application. Appeal Br. 13–16; Reply Br. 4–5. Such results are not commensurate in scope with claims 1 and 11. “Commensurate in scope” means that the evidence provides a reasonable basis for concluding that the untested embodiments encompassed by the claims would behave in the same manner as the tested embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“Here, only one mixture of ingredients was tested. . . . The claims, however, are much broader in scope, . . . and we have to agree with the Patent Office that there is no ‘adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the [single] tested composition.’”) (bracketed material in original). The Specification’s Examples 1 and 2 describe hydration studies in cats, but the claimed subject matter is for “water intake and hydration in an animal.” Appeal Br. 20 (Claims App.) (emphasis added). We agree with the Examiner that the comparisons in Example 1, which include increased xanthan gum levels in Test liquid 1 compared to Test liquid 4, are not commensurate in scope with claims 1 and 11. Ans. 11; see also Spec. Table 1. Such data does not provide unexpected results “commensurate in scope with the degree of protection sought by the claim[s]” on appeal. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Unexpected results must also be “commensurate in scope with the degree of protection sought by the claim[s]” on appeal.); In re Graselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (It is well settled “that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.”). Appeal 2020-003418 Application 15/372,561 8 We further agree with the Examiner that because glycerol is known to enhance hydration and whey is known to enhance flavoring, “any reasonable person would have expected [the combination to] produce an increased liquid intake by the pet drinking the beverage.” Ans. 12; see also Final Act. 10. The Examiner’s findings are supported adequately by the evidence of record. “When the PTO shows prima facie obviousness, the burden then shifts to the applicant to rebut.” In re Harris, 409 F.3d 1339, 1342 (Fed. Cir. 2005) (citing In re Dillion, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc)). Appellant’s arguments and evidence fail to rebut the Examiner’s case. We sustain the rejection of claims 1 and 11 as obvious over the combination of Kloti, Montner, Robergs, Albert, and O’Donovan. Because Appellant fails to argue patentability of the dependent claims separately, we likewise sustain the rejections of claims: (i) 2–5, 7–10, 12–15, and 17–19 over the same references and (ii) 6 and 17 over the same references with She, but without O’Donovan. 37 C.F.R. § 41.37(c)(1)(iv). Rejection of claim 20 as obvious Claim 20 is reproduced below from the Claims Appendix of the Appeal Brief: 20. A hydration additive consisting of glycerol and whey, wherein the glycerol is present in the hydration additive in an amount of about 25% to about 50% by weight, and the whey is present in the hydration additive in an amount of about 50% to about 75% by weight. Appeal Br. 23 (emphasis added). The Examiner finds claim 20 would have been obvious over the combination of Kloti, Montner, Robergs, Albert, and O’Donovan. Final Act. 7; see also Ans. 14–16. Appeal 2020-003418 Application 15/372,561 9 In the Answer, the Examiner finds, inter alia, that O’Donovan discloses a solid or a liquid whey composition that can be mixed into water. Ans. 14. The Examiner finds O’Donovan teaches that the whey protein isolate is present in an amount of 0.01–90% wt. Id. The Examiner reasons that because whey is known to enhance flavor, one of ordinary skill in the art would have known that adding more whey would have increased palatability. Id. at 15. With respect to the claimed glycerol amount, the Examiner finds, “Montner discloses 2 to 8% v/w glycerol in the formulation,” and Robergs discloses that . . . “[t]he glycerol is also that conventionally used and the amounts thereof can vary widely. While amounts up to 6% by weight or higher can be used, . . . in order to avoid certain undesired symptoms for some and an unpleasant taste, it is preferred to maintain the glycerol concentration below 5.5%/by weight, most preferably at 5.1%/by weight. Ans. 14–15 (citing Robergs 2:52–62). According to the Examiner, the determination of the claimed “amounts to obtain a balanced formulation would be within the ambit of ordinary skill.” Id. at 15–16. Appellant argues that the Examiner’s relied-upon references fail to disclose the requisite amounts of whey and glycerol. Appeal Br. 16. Although O’Donovan discloses whey content in a range that overlaps the range claimed in claim 20, the Examiner has not established that the prior art reasonably teaches or suggests the claimed glycerol content. Montmer teaches 2% to 8% v/w glycerol, and Robergs teaches 6% or less glycerol to avoid undesired symptoms and unpleasant taste. The Examiner’s statement that “the [prior art] references disclose that an amount 0.01% to 90% [glycerol] is permissible” is inaccurate and unsupported. See Ans. 15. Appeal 2020-003418 Application 15/372,561 10 We find nothing in the prior art that discloses a glycerol content in amount of about 25% to about 50% by weight, as required by claim 20. We do not sustain the rejection of claim 20 as obvious over Robergs. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–15, 17–20 103 Kloti, Montner, Robergs, Albert, O’Donovan 1–5, 7–15, 17–19 20 6, 17 103 Kloti, Montner, Robergs, Albert, She 6, 17 Overall Outcome 1–15, 17–19 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv)(2019). AFFIRMED IN PART Copy with citationCopy as parenthetical citation