DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. certified copies of the priority documents have been received in Application No. 15/778185.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 28-39 are rejected under 35 U.S.C. 103 as being unpatentable over Gautier et al (US 2010/0055253) in view of Bravo et al (US 2010/0330187 A1) and Sunvold et al (US 2010/0233756 A1).
Independent claim 28 recites the following:
A method of improving the zootechnical performance of a ruminant, the method comprising:
feeding the ruminant an encapsulated feed additive comprising oleoresin capsicum such that the ruminant receives from 0.05 mg to 700 mg/day of capsicum oleoresin;
wherein the oleoresin capsicum is incorporated in liquid hydrogenated rapeseed oil;
wherein the oleoresin capsicum and the liquid hydrogenated rapeseed oil are encapsulated with a solid palm oil coating; and
wherein the encapsulated feed additive is able to pass through the rumen of the ruminant, be introduced into the ruminant's abomasum or intestine and improves at least one of the following performances: milk production, milk quality, milk composition, feed consumption, eating behavior, average weight gain, and food efficiency.
Independent claim 33 recites similar limitation only the range for received capsicum oleoresin by ruminant is 0.0005 mg to 1750 mg per kg of animal feed.
In regard to claims 28 and 33, Gautier et al discloses “[t]he present invention relates, in general, to compositions for animal feed, food additives for animals, and methods for increasing the zootechnic performance levels of animals” ([0001]). More specifically in regard to the recitation of the “method of improving the zootechnical performance of a ruminant”, Gautier et al discloses:
[0027] In general, the invention aims to improve the zootechnic performance levels of animal feed, both for animals having rapid transits, such as poultry, and for animals having slower transits, such as pigs, sheep or cattle.
[0002] In livestock farming, the performance levels of the animal feed are generally characterized by the Average Daily Gain (ADG) and/or the food conversion ratio (FCR). The reproductive efficiency of the animals can also be considered.
In regard to the recitation of ruminant, Gautier et al discloses sheep or cattle ([0027], [0046] , [0047], [0104], claims 17 and 18). It is noted that cattle is large ruminant animals such as cows. It is further noted that sheep is also a ruminant mammal. Therefore, Gautier et al meets he limitation of improvement of the zootechnical performance of a ruminant.
Further in regard to claims 28 and 33, Gautier et al discloses a food additive or feed ration for an animal comprising at least one capsaicinoid incorporated/encapsulated in fat (Abstract).
In regard to the recitation of “oleoresin capsicum”, Gautier et al discloses capsicum oleoresins as capsaicinoids:
[0014] Capsaicinoids may be available in the form of a resin extracted from capsicum, called capsicum oleoresin, which is defined as "an exudate composed mainly of resinous compounds and of volatile compounds". The capsicum oleoresin is a more or less viscous liquid which is hydrophobic in nature and extremely irritant.
[0015] The capsicum oleoresin generally contains 0.1% to 20% by weight of natural capsaicin and of capsaicinoids. Higher concentrations can be obtained with a synthetic capsaicin.
[0018] The capsicum oleoresin is easier to use, although it is still a highly irritant product, which limits its direct use as an additive for animal feed. Since it is liquid, the oleoresin is difficult to disperse homogeneously in a feed at the concentrations conventionally used for additives (from a few ppm to a few hundred ppm).
[0019] Galenic formulation of the capsicum oleoresin therefore proves to be necessary in order i) to facilitate its homogeneous incorporation into the feed (solid or liquid), ii) to limit the risks of irritation that it can cause, iii) to control its kinetics and its site of release in the digestive tract.
In regard to the recitation of “wherein the oleoresin capsicum is incorporated in liquid hydrogenated rapeseed oil”, Gautier et al discloses hydrogenated rapeseed oil as encapsulation fat ([0040], [0075], [0079], [0083], [0097], claim 22). In regard to fat/oil coating, Gautier et al teaches multilayer onion-type formed by multiple coatings:
[0069] The granulating steps have been illustrated on FIG. 6: the microdroplets 5a of sprayed encapsulation fat are projected onto grains of initiating powder 5b, and adhere thereto in 5c. The microdroplets distribute and solidify, forming a first layer 5d on the grain of initiating powder 5b. Other microdroplets are then added, resulting in a multilayer onion-type structure 5e.
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In regard to the nature of the encapsulation fat/oil, Gautier et al teaches:
[0072] The encapsulation fats that can be used are those based on fats (hydrogenated plant oil, hydrogenated animal oil, wax, . . . ) which are solid at ambient temperature.
Therefore, Gautier et al meets the limitation of “wherein the oleoresin capsicum is incorporated in liquid hydrogenated rapeseed oil”.
In summary, Gautier et al teaches a method of improving the zootechnical performance of a ruminant (such as weight gain), the method comprising:
feeding the ruminant an encapsulated feed additive comprising oleoresin capsicum
wherein the oleoresin capsicum is incorporated in liquid hydrogenated rapeseed oil;
Gautier et al does not teach:
--the ruminant receives from 0.05 mg to 700 mg/day of capsicum oleoresin;
--the feed additive being encapsulated by a coating comprising palm oil;
--wherein the encapsulated feed additive is able to pass through the rumen of the ruminant, be introduced into the ruminant's abomasum or intestine.
Another prior art reference to Bravo et al is made as a teaching of a daily consumption of capsicum oleoresin by a ruminant. Bravo et al discloses:
The invention relates to a food additive that includes, relative to the total weight thereof: about 3.5 wt % of capsicum oleoresin containing 6 wt % of a capsaicine and dihydrocapsaicine mixture; about 5.5 wt % of cinnamaldehyde; about 9.5 wt % of eugenol; the balance up to 100% consisting of hydrogenated vegetable oils. The invention also relates to the uses of said additive for improving the daily distribution of food ingestion by animals, for increasing the amount of water drunk by animals, or for preparing a food product intended for the preventive or therapeutic treatment of animal digestive disorders, such as acidosis or bloating. This food additive is particularly adapted for ruminants such as bovine cattle (Abstract).
Bravo et al discloses capsicum oleoresin are encapsulated and could be released on different sites of digestive tract:
[0017] The particles can advantageously be completely encapsulated by an external encapsulating layer. The encapsulation thus limits the irritant effect of the capsicum. In addition, it makes it possible to obtain microspheres that can release the oleoresin on different sites of the digestive tract, depending on the desired objective, by virtue of suitable adaptation of the parameters of the method of encapsulation. Such a method of encapsulation is described in the French patent application filed under No. 06 55035 (FR20060055035).
Bravo et al discloses a method of improving the zootechnical performance of a ruminant by feeding the ruminant an encapsulated feed additive comprising oleoresin capsicum that can release the oleoresin on different sites of the digestive tract, depending on the desired objective.
In regard to the amounts/concentrations of the food additive containing capsicum oleoresin Bravo et al discloses:
[0021] As an example of animal feeds, mention may be made of that constituted of:
[0022] 0 to 50 parts by weight of feed concentrate;
[0023] 0 to 50 parts by weight of fodder; and
[0024] 5x10-5 to 2x10-4 part by weight of additive according to the invention.
In regard to the amounts/concentrations of capsicum oleoresin received by a ruminant as recited in claims 28-30 and 33-35, Bravo et al discloses:
[0030] The food additive according to the invention was tested on four Holstein heifers having an average initial live weight of 360 kg. These heifers were given a 1 centimeter canula. They were used in a 4.times.4 latin square. Each of the four periods lasted 3 weeks, one week of adaptation, one week of recording consumption and one week of sampling the ruminal fluid. The heifers were individually housed in connecting stalls.
Diets
[0031] The animals were fed once a day at 8 a.m. The ration was constituted of 90% feed concentrate and 10% barley straw distributed ad libitum, to 110% of the consumption of the previous day. If the consumption changed, the amount offered was adjusted. The concentrate composition is given in detail in table 1.
Food Additives Tested
[0033] The following food additives were used: [0034] CAP: a food additive according to the invention constituted of 2.75 g of capsicum oleoresin (of Capsicum frutescens) containing 6 wt % of a mixture of capsaicin and dihydrocapsaicin; [0035] CIE: a food additive which serves as a food additive for comparison and which is constituted of 3.24 g of a mixture containing 17 wt % of cinnamaldehyde and 28 wt % of eugenol, the balance up to 100% being constituted of hydrogenated vegetable oils; [0036] CAP+CIE: 5.99 g of a food additive according to the invention constituted of a mixture of CAP (2.75 g) and CIE (3.24 g) as defined above.
[0037] The food additives were added manually to the food made available daily.
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Food Additives Tested
[0033] The following food additives were used: [0034] CAP: a food additive according to the invention constituted of 2.75 g of capsicum oleoresin (of Capsicum frutescens) containing 6 wt % of a mixture of capsaicin and dihydrocapsaicin; [0035] CIE: a food additive which serves as a food additive for comparison and which is constituted of 3.24 g of a mixture containing 17 wt % of cinnamaldehyde and 28 wt % of eugenol, the balance up to 100% being constituted of hydrogenated vegetable oils; [0036] CAP+CIE: 5.99 g of a food additive according to the invention constituted of a mixture of CAP (2.75 g) and CIE (3.24 g) as defined above.
[0037] The food additives were added manually to the food made available daily.
One of ordinary skill in the art would have been motivated to modify Gautier et al in view of Bravo et al and to employ the diets containing concentrations of capsicum oleoresin to ruminants as suggested by Bravo et el. One of ordinary skill in the art would have been motivated to vary the concentrations of capsicum oleoresin administered to ruminants based on the weight of the particular ruminant and desired improvement of the zootechnical performance of a ruminant.
Further in regard to the temperature recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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, 105 USPQ 233, 235(CCPA 1955) (MPEP 2144.05, II A).
Another prior art reference to Sunvold et al was made as a teaching of the ruminant feed additive being encapsulated by a coating comprising palm oil. Sunvold et al teaches animal feed particles in fat coating (Abstract). Sunvold et al teaches animals such as domestic cows, i.e., ruminants ([0026]). Sunvold et al teaches multiple intermediate coatings ([0039]). Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes:
A coating comprising partially hydrogenated plant oil may assist in the stability of the kibble and the probiotic, thereby increasing shelf life of the animal feed. For example, partially hydrogenated plant oil, such as soybean oil, corn oil, cottonseed oil, cocoa butter, palm kernel oil, palm oil, canola oil, rapeseed oil, peanut oil, butter oil, and the like (including oil mixtures), may prevent transmission of water, oxidation or other degradation processes ([0049]).
Both Gautier et al and Sunvold et al references are directed to the fat covered/incorporate/encapsulated ruminant feed. Gautier et al teaches a ruminant feed additive comprising at least oleoresin capsicum incorporated in hydrogenated rapeseed oil. Gautier et al teaches multilayer onion-type formed by multiple coatings. Sunvold et al teaches ruminant feed particles in fat coating such as palm oil and/or hydrogenated rapeseed oil. Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes. One of ordinary skill in the art would have been motivated to modify Gautier et al in view of Sunvold et al and to further employ additional palm oil coating in order to increase shelf life of the ruminant feed additive and to prevent transmission of water, oxidation or other degradation processes.
In regard to the recitations the “release of a feed additive past the rumen of the ruminant, in the ruminant’s abomasum or intestine”, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The combination of references discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the “release of a feed additive past the rumen of the ruminant, in the ruminant’s abomasum or intestine among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Further in regard to the recitation of the “release of a feed additive past the rumen of the ruminant, in the ruminant’s abomasum or intestine”, Gautier et al discloses:
The cold-state atomization or the granulation act on the nature of the encapsulating fat, on the particle size, and on the temperature of the atomization step in order to control the capsaicinoid release kinetics in the digestive tract of animals (Abstract).
[0029] It is noted that the cold-state atomizing or granulating step makes it possible to encapsulate concentrations of capsicum oleoresins that can range up to 40%, while at the same time limiting the irritant effect thereof. In addition, these techniques used make it possible to obtain microspheres that can release the capsaicinoids at different sites of the digestive tract depending on the desired objective, by adjusting the parameters of the cold-state atomizing process.
[0038] As an alternative or additionally, in order to delay the release of the capsaicinoids in the digestive tract, the size of the particles can be increased by advantageously choosing a particle size of greater than 350 µm, preferably greater than 600 µm.
[0039] As an alternative or additionally, in order to delay the release of the capsaicinoids in the digestive tract, the cold-state atomizing or granulating temperature can be reduced by advantageously choosing a temperature of less than -10 °C, which can advantageously be of the order of -30°C to -40°C. This temperature reduction concerns more especially relates to the cold-state atomizing method.
[0047] Moreover, in order to improve the zootechnic performance levels of animal feed in animals with slow gastrointestinal transit, such as pigs, sheep or cattle, by promoting an antimicrobial action, capsaicinoids galenically formulated by means of a method of preparation as defined above by choosing parameters aimed at delaying the release of the capsaicinoids in the digestive tract will be administered to the animals in the feed ration.
[0105] The slow-release particles may be used in order, for example, to promote an antimicrobial action in animals with a slow gastrointestinal transit.
[0106] Thus, the techniques used make it possible to obtain microspheres that can release capsaicinoids at different sites of the digestive tract depending on the desired objective, by adjusting only three parameters (nature of the coating matrix, size of the particles, and temperature applied for the manufacture thereof during atomizing or granulating).
In regard to claims 32 and 37-39, Gautier et al discloses:
In livestock farming, the performance levels of the animal feed are generally characterized by the Average Daily Gain (ADG) and/or the food conversion ratio (FCR). The reproductive efficiency of the animals can also be considered ([0002]).
In regard to claims 32 and 37-39, Bravo et al discloses:
The invention also relates to the uses of said additive for improving the daily distribution of food ingestion by animals, for increasing the amount of water drunk by animals, or for preparing a food product intended for the preventive or therapeutic treatment of animal digestive disorders, such as acidosis or bloating (Abstract).
In regard to claims 31 and 36, Gautier et al discloses:
Claim 23. Animal food additive or animal feed according to claim 19, wherein the solid particles have a size greater than 350 µm, preferably greater than 600 µm.
In regard to claims 31 and 36, Bravo et al discloses:
[0016] The food additive is generally in the form of a powder which is generally constituted of particles having a size that can range from 90 µm to 1000 µm.
Further in regard to the recitation of increased milk production, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that increased milk production among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Response to Arguments
Applicant's arguments filed January 7, 2026, have been fully considered but they are not persuasive.
In response to Applicant's arguments on pages 7-8 of the Reply, it is noted that Bravo et al is relied upon as a teaching of a daily consumption of capsicum oleoresin by a ruminant. Bravo et al discloses:
The invention relates to a food additive that includes, relative to the total weight thereof: about 3.5 wt % of capsicum oleoresin containing 6 wt % of a capsaicine and dihydrocapsaicine mixture; about 5.5 wt % of cinnamaldehyde; about 9.5 wt % of eugenol; the balance up to 100% consisting of hydrogenated vegetable oils. The invention also relates to the uses of said additive for improving the daily distribution of food ingestion by animals, for increasing the amount of water drunk by animals, or for preparing a food product intended for the preventive or therapeutic treatment of animal digestive disorders, such as acidosis or bloating. This food additive is particularly adapted for ruminants such as bovine cattle (Abstract).
Bravo et al discloses capsicum oleoresin are encapsulated and could be released on different sites of digestive tract:
[0017] The particles can advantageously be completely encapsulated by an external encapsulating layer. The encapsulation thus limits the irritant effect of the capsicum. In addition, it makes it possible to obtain microspheres that can release the oleoresin on different sites of the digestive tract, depending on the desired objective, by virtue of suitable adaptation of the parameters of the method of encapsulation. Such a method of encapsulation is described in the French patent application filed under No. 06 55035 (FR20060055035).
Bravo et al discloses a method of improving the zootechnical performance of a ruminant by feeding the ruminant an encapsulated feed additive comprising oleoresin capsicum that can release the oleoresin on different sites of the digestive tract, depending on the desired objective.
In regard to the amounts/concentrations of the food additive containing capsicum oleoresin Bravo et al discloses:
[0021] As an example of animal feeds, mention may be made of that constituted of:
[0022] 0 to 50 parts by weight of feed concentrate;
[0023] 0 to 50 parts by weight of fodder; and
[0024] 5x10-5 to 2x10-4 part by weight of additive according to the invention.
In regard to the amounts/concentrations of capsicum oleoresin received by a ruminant as recited in claims 28-30 and 33-35, Bravo et al discloses:
[0030] The food additive according to the invention was tested on four Holstein heifers having an average initial live weight of 360 kg. These heifers were given a 1 centimeter canula. They were used in a 4.times.4 latin square. Each of the four periods lasted 3 weeks, one week of adaptation, one week of recording consumption and one week of sampling the ruminal fluid. The heifers were individually housed in connecting stalls.
Diets
[0031] The animals were fed once a day at 8 a.m. The ration was constituted of 90% feed concentrate and 10% barley straw distributed ad libitum, to 110% of the consumption of the previous day. If the consumption changed, the amount offered was adjusted. The concentrate composition is given in detail in table 1.
Food Additives Tested
[0033] The following food additives were used: [0034] CAP: a food additive according to the invention constituted of 2.75 g of capsicum oleoresin (of Capsicum frutescens) containing 6 wt % of a mixture of capsaicin and dihydrocapsaicin; [0035] CIE: a food additive which serves as a food additive for comparison and which is constituted of 3.24 g of a mixture containing 17 wt % of cinnamaldehyde and 28 wt % of eugenol, the balance up to 100% being constituted of hydrogenated vegetable oils; [0036] CAP+CIE: 5.99 g of a food additive according to the invention constituted of a mixture of CAP (2.75 g) and CIE (3.24 g) as defined above.
[0037] The food additives were added manually to the food made available daily.
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Food Additives Tested
[0033] The following food additives were used: [0034] CAP: a food additive according to the invention constituted of 2.75 g of capsicum oleoresin (of Capsicum frutescens) containing 6 wt % of a mixture of capsaicin and dihydrocapsaicin; [0035] CIE: a food additive which serves as a food additive for comparison and which is constituted of 3.24 g of a mixture containing 17 wt % of cinnamaldehyde and 28 wt % of eugenol, the balance up to 100% being constituted of hydrogenated vegetable oils; [0036] CAP+CIE: 5.99 g of a food additive according to the invention constituted of a mixture of CAP (2.75 g) and CIE (3.24 g) as defined above.
[0037] The food additives were added manually to the food made available daily.
One of ordinary skill in the art would have been motivated to modify Gautier et al in view of Bravo et al and to employ the diets containing concentrations of capsicum oleoresin to ruminants as suggested by Bravo et el. One of ordinary skill in the art would have been motivated to vary the concentrations of capsicum oleoresin administered to ruminants based on the weight of the particular ruminant and desired improvement of the zootechnical performance of a ruminant.
Further in regard to the temperature recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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, 105 USPQ 233, 235(CCPA 1955) (MPEP 2144.05, II A).
In response to Applicant's arguments regarding Sunvold teaching food for pets, in particular dogs and cats, it is noted that “[a] reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (see MPEP 2123 as cited below). Sunvold et al teaches animal feed particles in multiple intermediate fat coatings wherein the animals are domestic cows, i.e., ruminants. Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes. Sunvold et al teaches ruminant feed particles in fat coating such as palm oil and/or hydrogenated rapeseed oil. Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes. One of ordinary skill in the art would have been motivated to modify Gautier et al in view of Sunvold et al and to further employ additional palm oil coating in order to increase shelf life of the ruminant feed additive and to prevent transmission of water, oxidation or other degradation processes.
2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments [R-07.2022]
I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
See also MPEP § 2131.05 and § 2145, subsection X.D., which discuss prior art that teaches away from the claimed invention in the context of anticipation and obviousness, respectively.
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have “relatively acceptable dimensional stability” and “some degree of flexibility,” but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since “Gurley asserted no discovery beyond what was known in the art.” Id. at 554, 31 USPQ2d at 1132.). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Further in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Sunvold et al is not relied upon as a teaching of the amount of oleoresin capsicum. Sunvold et al is relied upon as a teaching of palm oil. Another prior art reference to Bravo et al is relied upon as a teaching of a daily consumption of capsicum oleoresin by a ruminant.
In response to Applicant arguments regarding the recitations the “release of a feed additive past the rumen of the ruminant, in the ruminant’s abomasum or intestine”, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The combination of references discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the “release of a feed additive past the rumen of the ruminant, in the ruminant’s abomasum or intestine among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Further in response to Applicant arguments, it is noted that the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious (MPEP 2145):
“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc.v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) (“The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.”).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Gautier et al is not relied upon as a teaching of palm oil. Sunvold et al is relied upon as a teaching of palm oil. Sunvold et al teaches animal feed particles in multiple intermediate fat coatings wherein the animals are domestic cows, i.e., ruminants. Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes. Both references are directed to the fat covered/incorporate/encapsulated ruminant feed. Gautier et al teaches a ruminant feed additive comprising at least oleoresin capsicum incorporated in hydrogenated rapeseed oil. Gautier et al teaches multilayer onion-type formed by multiple coatings. Sunvold et al teaches ruminant feed particles in fat coating such as palm oil and/or hydrogenated rapeseed oil. Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes. One of ordinary skill in the art would have been motivated to modify Gautier et al in view of Sunvold et al and to further employ additional palm oil coating in order to increase shelf life of the ruminant feed additive and to prevent transmission of water, oxidation or other degradation processes.
In n response to Applicant’s arguments regarding the recitation of increased milk production, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that increased milk production among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Further in response to Applicant arguments, it is noted that Gautier et al is relied upon as a teaching of particles having multiple coating in addition to a rapeseed oil encapsulating material. As stated in the rejection above, Gautier et al discloses hydrogenated rapeseed oil as encapsulation fat ([0040]). In regard to fat/oil coating, Gautier et al teaches multilayer onion-type formed by multiple coatings:
[0069] The granulating steps have been illustrated on FIG. 6: the microdroplets 5a of sprayed encapsulation fat are projected onto grains of initiating powder 5b, and adhere thereto in 5c. The microdroplets distribute and solidify, forming a first layer 5d on the grain of initiating powder 5b. Other microdroplets are then added, resulting in a multilayer onion-type structure 5e.
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In regard to the nature of the encapsulation fat/oil, Gautier et al teaches:
[0072] The encapsulation fats that can be used are those based on fats (hydrogenated plant oil, hydrogenated animal oil, wax, . . . ) which are solid at ambient temperature.
Sunvold et al teaches animal feed particles in fat coating (Abstract) in multiple intermediate coatings ([0039]). Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes:
A coating comprising partially hydrogenated plant oil may assist in the stability of the kibble and the probiotic, thereby increasing shelf life of the animal feed. For example, partially hydrogenated plant oil, such as soybean oil, corn oil, cottonseed oil, cocoa butter, palm kernel oil, palm oil, canola oil, rapeseed oil, peanut oil, butter oil, and the like (including oil mixtures), may prevent transmission of water, oxidation or other degradation processes ([0049]).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both references are directed to the fat covered/incorporate/encapsulated ruminant feed. Gautier et al teaches a ruminant feed additive comprising at least oleoresin capsicum incorporated in hydrogenated rapeseed oil. Gautier et al teaches multilayer onion-type formed by multiple coatings. Gautier et al Further in response to Applicant’s arguments, it is noted that “[a] reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (see MPEP 2123 as cited below). Gautier et al teaches a feed additive comprising at least oleoresin capsicum incorporated in hydrogenated rapeseed oil, intended to improve the zootechnical performance of a ruminant. Gautier et al teaches multilayer onion-type formed by multiple coatings. Sunvold et al teaches animal feed particles in multiple intermediate fat coatings wherein the animals are domestic cows, i.e., ruminants. Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes. Both references are directed to the fat covered/incorporate/encapsulated ruminant feed. Gautier et al teaches a ruminant feed additive comprising at least oleoresin capsicum incorporated in hydrogenated rapeseed oil. Gautier et al teaches multilayer onion-type formed by multiple coatings. Sunvold et al teaches ruminant feed particles in fat coating such as palm oil and/or hydrogenated rapeseed oil. Sunvold et al teaches palm oil as a suitable coating that may prevent oxidation or other degradation processes. One of ordinary skill in the art would have been motivated to modify Gautier et al in view of Sunvold et al and to further employ additional palm oil coating in order to increase shelf life of the ruminant feed additive and to prevent transmission of water, oxidation or other degradation processes.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/VERA STULII/Primary Examiner, Art Unit 1791
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