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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koen et al. (EP 1314358; published: 5/28/03).
Koen et al. is directed to antimicrobial composition for animals (Title). Koen et al. teach a composition comprising medium-chain fatty acids (MCFAs) component at least one growth-promoting component selected from group comprising organic acids, inorganic acids, animal feed antibiotics, conventional growth promoters, and plant extracts (limitation of instant claims 1 and 7; Abstract). Koen et al. teach that the presence of a MCFA component in combination with the growth-promoting component (e.g., organic acid such as formic acid) has a synergistic effect on feed conversion improvement leading to much reduced FDRs (limitation of instant claims 1 and 8; [0023], [0042], [0062] and Tables 1-2). Koen et al. teach the use of said composition is used as an antimicrobial agent in animal feed; such is used in a method to improve the growth and/or for reduction of feed conversion and/or to improve feed value and/or to improve health and well-being of an animal by providing said animal with a feeding comprising the composition (limitation of instant claims 1, 5 and 9-10; Abstract). Koen et al. teach that the animal feed is provided for use as feed for meat-producing animals such as chickens, pigs and cows (limitation of instant claim 6; [0054]). Koen et al. teach that the MCFA in the composition according to the present invention is selected from the group of medium chain saturated fatty acids. Useful medium chain saturated fatty acids include but are not limited both even and odd fatty acids such as caproic acid (C6), heptanoic acid (C7), caprylic acid (C8), pelargonic acid (C9), and capric acid (C10), including mixtures of each other and wherein fatty acids with a chain length of 8 to 10 carbon atoms show optimal antimicrobial activity ([0026-0027]). Furthermore, Koen et al. teach that undecanoic acid and lauric acid are suitable medium chain saturated fatty acids ([0028]).
With regards to the limitations of instant claims 2-3 (the pKa of the acid oil (i.e., the MCFA’s from, for example, coconut oil or palm kernel oil taught by Koen et al. ([0038])), the MPEP states the following (MPEP §2112(I)):
I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY
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“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, Koen et al. teach the same acid oils (e.g., coconut and/or palm) as the instantly described invention (see [0026] of the instant specification). Therefore, in view of MPEP §2112, claiming a new use/function/property for such known composition (e.g., pKa ranging from 2.5-4 or 2.5-3), which is inherently present in the prior art, does not necessarily make the claim patentable.
Therefore, by teaching all the limitations of claims 1-3 and 5-10, Koen et al. anticipate the instant invention as claimed.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Koen et al. (EP 1314358; published: 5/28/03), in view of Hollander et al. (WO 2013/184879; published: 12/12/13).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
As noted in the anticipation rejection above Koen et al. anticipates claims 1-3 and 5-10 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103(a) over Koen et al. for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Koen et al. is directed to antimicrobial composition for animals (Title). Koen et al. teach a composition comprising medium-chain fatty acids (MCFAs) component at least one growth-promoting component selected from group comprising organic acids, inorganic acids, animal feed antibiotics, conventional growth promoters, and plant extracts (limitation of instant claims 1 and 7; Abstract). Koen et al. teach that the presence of a MCFA component in combination with the growth-promoting component (e.g., organic acid such as formic acid) has a synergistic effect on feed conversion improvement leading to much reduced FDRs (limitation of instant claims 1 and 8; [0023], [0042], [0062] and Tables 1-2). Koen et al. teach the use of said composition is used as an antimicrobial agent in animal feed; such is used in a method to improve the growth and/or for reduction of feed conversion and/or to improve feed value and/or to improve health and well-being of an animal by providing said animal with a feeding comprising the composition (limitation of instant claims 1, 5 and 9-10; Abstract). Koen et al. teach that the animal feed is provided for use as feed for meat-producing animals such as chickens, pigs and cows (limitation of instant claim 6; [0054]). Koen et al. teach that the MCFA in the composition according to the present invention is selected from the group of medium chain saturated fatty acids. Useful medium chain saturated fatty acids include but are not limited both even and odd fatty acids such as caproic acid (C6), heptanoic acid (C7), caprylic acid (C8), pelargonic acid (C9), and capric acid (C10), including mixtures of each other and wherein fatty acids with a chain length of 8 to 10 carbon atoms show optimal antimicrobial activity ([0026-0027]). Furthermore, Koen et al. teach that undecanoic acid and lauric acid are suitable medium chain saturated fatty acids ([0028]).
With regards to the limitations of instant claims 2-3 (the pKa of the acid oil (i.e., the MCFA’s from, for example, coconut oil or palm kernel oil taught by Koen et al. ([0038])), the MPEP states the following (MPEP §2112(I)):
I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY
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“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, Koen et al. teach the same acid oils (e.g., coconut and/or palm) as the instantly described invention (see [0026] of the instant specification). Therefore, in view of MPEP §2112, claiming a new use/function/property for such known composition (e.g., pKa ranging from 2.5-4 or 2.5-3), which is inherently present in the prior art, does not necessarily make the claim patentable.
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Koen et al. do not teach wherein the acid oil includes at least 40% fatty acids as required by instant claim 4. However, this deficiency is cured by Hollander et al.
Hollander et al. is directed to pumpable fat compositions used in feed (Title). Hollander et al. teach wherein the composition comprises an MCFA-rich composition and lecithin (Abstract). Just like Koen et al., Hollander et al. teach that the term "MCFA" as used herein will be understood, in the context of the present invention, as referring to fatty acids with a carbon chain length from 6-12 carbon atoms (i.e. caproic acid (C6), caprylic acid (C8), capric acid (C10) and lauric acid (C12)) ([0015]). Hollander et al. teach MCFA-rich compositions and that such may be from any available source such as split lauric oil, a split acid oil, a lauric oil fatty acid distillate (FAD) or a mixture of two or more thereof, wherein lauric oils will generally be understood to be oils rich in MCFAs (e.g., coconut oil or palm kernel oil; i.e., same as Koen et al.) and wherein acid oils are free fatty acid (FFA)-rich compositions obtained by saponification and then protonation of an oil ([0015-0017]). Hollander et al. teach that the MCFA-rich compositions will preferably comprise 90% or more, by weight ([0020]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Koen et al. and Hollander et al. are both directed to MCFA-rich compositions for use in animal feed. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the composition used in the method of Koen et al. by using at least 90% by weight of the MCFA to achieve the predictable result of obtaining a composition suitable for providing an antimicrobial effect in animal feed. One of ordinary skill in the art would have been motivated to do so because Hollander et al. teach that microorganisms can cause significant disruption to the animal’s digestive system and an imbalance in the microbial ecosystem of their GI tract; such can result in less efficient digestion and nutrient absorption which, in turn, will affect growth rates. The abovementioned compositions were tested and improved growth rates in animals.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617