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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 11 May 2026 is acknowledged.
Applicant has overcome the following by virtue of amendment of the specification and claims: (1) the objections to the specification and claims have been withdrawn; (2) the rejections under 35 U.S.C. § 112(b) have been withdrawn; (3) the rejection of claims 1, 4, 10, and 12-13 under 35 U.S.C. § 102(a)(1) has been withdrawn; (4) the nonstatutory double patenting rejections have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-16
Withdrawn claims: 11 and 14
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 1-10 and 12-13
New claims: 15-16
Claims currently under consideration: 1-10, 12-13, and 15-16
Currently rejected claims: 1-10, 12-13, and 15-16
Allowed claims: None
Claim Interpretation
Independent claims 1 and 9 recite, “A method for boosting the activity of a carbohydrase in an animal feed” in the preamble. Independent claim 10 recites, “A method for improving hydrolyzation of a carbohydrate in an animal feed” in the preamble. The preamble limitations are not necessary to breathe life into the claims because the effect recited necessarily flows from performing the positively recited method steps in the claims. Therefore, there is no manipulative difference between adding the claimed serine protease and carbohydrase with the intention of boosting carbohydrase activity or improving hydrolyzation of a carbohydrate in an animal feed, as recited in the instant claims, and prior art disclosing adding serine protease and carbohydrase to animal feed for any other purpose. See MPEP § 2111.02 and Id. (II).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4-5, 8-10, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over De Beer et al. (US 2016/0158326 A1, cited on the IDS filed on 17 August 2023).
Regarding claim 1, De Beer teaches a method for increasing the availability of at least one dietary nutrient and/or increasing the metabolizable energy from an animal feed comprising adding to the animal feed a feed supplement comprising a mixture of enzymes having enzyme activities selected from the group including glucanase, xylanase, cellulase, protease, and phytase activities, and at least one further enzyme selected from the group consisting of amylases, arabinases, galactosidase, and debranching enzymes (i.e., carbohydrases and proteases) (see claim 33 with reference to claims 17 and 21). De Beer teaches that preferred proteases are acid-stable serine proteases ([0114]).
wherein the carbohydrase comprises an amylase and/or a xylanase, wherein the carbohydrase is provided in a dosage of between 10 units/kg animal feed and 5,000 units/kg of animal feed – In Table 1, De Beer discloses the composition of feed supplements for corn-soybean meal type of diets ([0064]). The diets comprise xylanase, reading on the carbohydrase of claim 1. The xylanase is provided in an amount ranging from 135 to 674 units/kg feed of xylanase. The disclosed range lies inside the claimed range of 10 to 5,000 units/kg of animal feed.
Although De Beer does not provide a specific arrangement of all elements of the claim, (i.e., De Beer is not explicit that the protease from Bacillus licheniformis is a serine protease) the disclosed range of xylanase represents an obvious choice for the amount of xylanase to include in the feed supplement of De Beer. Further, De Beer teaches that preferred proteases are acid-stable serine proteases ([0114]), indicating that acid-stable serine proteases are also an obvious choice for the feed supplement.
wherein the animal feed contains at least one component comprising arabinoxylan and/or starch – The corn-soybean meal type of diets disclosed in Table 1 ([0064]) necessarily comprise arabinoxylan and starch as described by De Beer in paragraph [0008], which reads:
The NSP composition in an animal feed varies according to the age of bird. In general, three types of diet are fed to a poultry over its life time: starter diet, grower diet and finisher diet. For corn-soybean meal type of diet, the percentage of soybean meal content declines with the age of bird while the corn content increases. The types and amount of NSPs change from starter diet to finisher diet. For example, in one type of corn-soybean meal, corn content increase results in a 22% increase of arabinoxylans and starch content in the finisher diet, while there is a 20-30% decrease of oligosacchrises and pectins with reduction in soybean meal.
Thus, De Beer teaches that corn comprises arabinoxylans and starch. The disclosed corn-soybean meal feed therefore also comprises arabinoxylan and starch.
and wherein adding the protease increases arabinoxylan and/or starch hydrolysis – This recitation is a recognition of a latent property obtained by performing the method step of adding a serine protease to the animal feed comprising an amylase and/or a xylanase and at least one component comprising arabinoxylan and/or starch. As provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he 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)”.
Additionally, when the method steps recited in the prior art reference are substantially identical to those of the claims, claimed properties of the resulting composition are presumed to be present in the composition of the prior art. The burden of proof shifts to the applicant to provide objective evidence (i.e., test data) to the contrary. See In re Best, 562, F.2d 1252, 1254, 195 USPQ 403, 433 (CCPA 1977). MPEP § 2112.01(I).
As discussed above, the effect of boosting the activity of a carbohydrase in an animal feed necessarily flows from performing the positively recited method steps. Therefore, De Beer teaches a method for boosting the activity of a carbohydrase in an animal feed comprising adding to the animal feed a serine protease, wherein the carbohydrase comprises an amylase and/or a xylanase, wherein the carbohydrase is provided in a dosage of between 10 units/kg animal feed and 5,000 units/kg of animal feed, wherein the animal feed contains at least one component comprising arabinoxylan and/or starch, and wherein adding the protease increases arabinoxylan and/or starch hydrolysis.
Claim 1 is therefore rendered obvious.
Regarding claim 2, De Beer teaches the method of claim 1.
De Beer also teaches that the serine protease is selected from the group consisting of:
a. proteases derived from Nocardiopsis sp. NRRL 18262, and Nocardiopsis alba – ([0118]; see also [0114], “N. prasinia (previously alba)”).
b. proteases of at least 60, 65, 70, 75, 80, 85, 90, or at least 95% amino acid identity to any of the proteases of (a) – ([0118]).
Although De Beer does not provide a specific arrangement of all elements of the claim, the claimed acid-stable serine proteases are disclosed as being suitable for use in the disclosed feed supplement ([0114], [0118]). MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Therefore, the claimed proteases represent obvious choices for inclusion in the feed supplement of De Beer.
Claim 2 is therefore rendered obvious.
Regarding claim 4, De Beer teaches that the serine protease is provided in a dosage of between 1,000 units/kg animal feed and 1,000,000 units/kg animal feed – De Beer teaches, “…the protease is administered in one of the following amounts (dosage ranges): 10,000 units/kg feed, 11,000, 12,000, 13,000, 14,000, 15,000, 16,000, 17,000, 18,000, 19,000, 20,000 units/kg feed.” ([0122]). These amounts lie inside the claimed range.
Although De Beer does not provide a specific arrangement of all elements of the claim (i.e., De Beer is not explicit that the protease from Bacillus licheniformis is a serine protease), De Beer teaches that preferred proteases are acid-stable serine proteases ([0114]), indicating that acid-stable serine proteases are also an obvious choice for the feed supplement, and indicates that the protease is added in the amounts disclosed in paragraph [0122].
Claim 4 is therefore rendered obvious.
Regarding claim 5, De Beer teaches that the carbohydrase is provided in an amount selected from the list consisting of: 10, 20, 40, 50, 60, 80, 100, 200, 500, 800, 1,000, 2,000, 3,000, 4,000 and 5,000 units/kg animal feed – In Table 1, De Beer discloses the composition of feed supplements for corn-soybean meal type of diets ([0064]). The diets comprise xylanase, reading on the carbohydrase of claim 1. The xylanase is provided in an amount ranging from 135 to 674 units/kg feed of xylanase. The claimed amounts of 200 and 500 units/kg animal feed lie inside the disclosed range of 135 to 674 units/kg feed.
It is noted that an enzyme amount is a known result effective variable. If the amount were too low, it would result in slow and/or negligible substrate conversion, and too high of an amount would result in wasting the enzyme additive and unnecessarily increasing costs. MPEP § 2144.05(II)(A) states, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to determine the optimal value for the amount of carbohydrase used in the method of De Beer, through routine experimentation, to provide the food composition with adequate xylanase activity, including amounts of 200 and 500 units/kg feed, as claimed.
Moreover, it is considered that the claimed list of carbohydrase amounts is so broad as to constitute a range of from 10 units/kg animal feed to 5,000 units/kg of animal feed, and fails to indicate any criticality of these specific values. The disclosed range of 135 to 674 units/kg feed lies inside this range.
Claim 5 is therefore rendered obvious.
Regarding claim 8, De Beer teaches that the animal feed is an animal diet based on corn and/or wheat – “In some embodiments, the diets are a wheat diet. In certain embodiments, the diets are a corn-soybean meal diet.” ([0016]). As described regarding claim 1, De beer discloses corn-soybean meal type of diets in Table 1 ([0064]). De Beer discloses similar, wheat type diets in Table 2 ([0070]).
MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Therefore, the claimed wheat represents an obvious choice for inclusion in the animal feed of De Beer.
Claim 8 is therefore rendered obvious.
Regarding claim 9, De Beer teaches a method for increasing the availability of at least one dietary nutrient and/or increasing the metabolizable energy from an animal feed comprising adding to the animal feed a feed supplement comprising a mixture of enzymes having enzyme activities selected from the group including glucanase, xylanase, cellulase, protease, and phytase activities, and at least one further enzyme selected from the group consisting of amylases, arabinases, galactosidase, and debranching enzymes (i.e., carbohydrases and proteases) (see claim 33 with reference to claims 17 and 21). De Beer teaches that preferred proteases are acid-stable serine proteases ([0114]). As such, De Beer teaches adding carbohydrases and an acid stable serine protease to an animal feed.
As discussed above, the effect of boosting the activity of a carbohydrase in an animal feed necessarily flows from performing the positively recited method steps. Therefore, De Beer teaches a method for boosting the activity of a carbohydrase in an animal feed comprising adding to the animal feed a protease,, wherein:
a) the protease is a serine protease ([0114]) in a dosage of between 10,000 units/kg feed and 30,000 units/kg feed – “…the protease is administered in one of the following amounts (dosage ranges): 10,000 units/kg feed, 11,000, 12,000, 13,000, 14,000, 15,000, 16,000, 17,000, 18,000, 19,000, 20,000 units/kg feed.” ([0122]).
b) the carbohydrase is amylase and/or xylanase – as described above (see claim 33 with reference to claims 17 and 21; see also [0090]).
c) the animal feed is an animal diet based on corn and/or wheat – “In some embodiments, the diets are a wheat diet. In certain embodiments, the diets are a corn-soybean meal diet.” ([0016]).
Although De Beer does not provide a specific arrangement of all elements of the claim, the claimed serine protease, xylanase, amylase, and corn and/or wheat are disclosed as being suitable for use as part of the feed supplement and the feed to which the supplement is added. MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Therefore, the claimed serine protease, xylanase, amylase and corn and/or wheat represent obvious choices for inclusion in the animal feed of De Beer.
Regarding “d)”, the effect of increasing the carbohydrase activity by 5% or more is the result of performing the method steps. De Beer discloses the claimed steps and elements to produce the animal feed. When the method steps recited in the prior art reference are substantially identical to those of the claims, claimed properties of the resulting composition are presumed to be present in the composition of the prior art. The burden of proof shifts to the applicant to provide objective evidence (i.e., test data) to the contrary. See In re Best, 562, F.2d 1252, 1254, 195 USPQ 403, 433 (CCPA 1977). MPEP § 2112.02(I). Indeed, Examples 4 and 5 of the instant specification indicate that adding a xylanase (RONOZYME® WX) or an amylase (RONOZYME® HiStarch) in combination with a protease (ProAct360) increases the carbohydrase activity by over 20% (p. 13, lines19-24 and p. 14, lines 11-16).
Claim 9 is therefore rendered obvious.
Regarding claim 10, De Beer teaches a method for increasing the availability of at least one dietary nutrient and/or increasing the metabolizable energy from an animal feed comprising adding to the animal feed a feed supplement comprising a mixture of enzymes having enzyme activities selected from the group including glucanase, xylanase, cellulase, protease, and phytase activities, and, optionally, at least one further enzyme selected from the group consisting of amylases, arabinases, galactosidase, and debranching enzymes (i.e., carbohydrases and proteases) (see claim 33 with reference to claims 17 and 21). Any combination of these enzymes would have been an obvious choice for one of ordinary skill in the art, including xylanase and protease. De Beer teaches that preferred proteases are acid-stable serine proteases ([0114]). As such, De Beer teaches adding to an animal feed a serine protease and a carbohydrase, as claimed.
wherein the carbohydrase is provided in a dosage of between 10 units/kg animal feed and 5,000 units/kg of animal feed – In Table 1, De Beer discloses the composition of feed supplements for corn-soybean meal type of diets ([0064]). The diets comprise xylanase, reading on the carbohydrase of claim 1. The xylanase is provided in an amount ranging from 135 to 674 units/kg feed of xylanase. The disclosed range lies inside the claimed range of 10 to 5,000 units/kg of animal feed.
Although De Beer does not provide a specific arrangement of all elements of the claim, (i.e., De Beer is not explicit that the protease from Bacillus licheniformis is a serine protease) the disclosed range of xylanase represents an obvious choice for the amount of xylanase to include in the feed supplement of De Beer. Further, De Beer teaches that preferred proteases are acid-stable serine proteases ([0114]), indicating that acid-stable serine proteases are also an obvious choice for the feed supplement.
wherein the animal feed contains at least one component comprising arabinoxylan and/or starch – The corn-soybean meal type of diets disclosed in Table 1 ([0064]) necessarily comprise arabinoxylan and starch as described by De Beer in paragraph [0008], which reads:
The NSP composition in an animal feed varies according to the age of bird. In general, three types of diet are fed to a poultry over its life time: starter diet, grower diet and finisher diet. For corn-soybean meal type of diet, the percentage of soybean meal content declines with the age of bird while the corn content increases. The types and amount of NSPs change from starter diet to finisher diet. For example, in one type of corn-soybean meal, corn content increase results in a 22% increase of arabinoxylans and starch content in the finisher diet, while there is a 20-30% decrease of oligosacchrises and pectins with reduction in soybean meal.
Thus, De Beer teaches that corn comprises arabinoxylans and starch. The disclosed corn-soybean meal feed therefore also comprises arabinoxylan and starch.
and wherein adding the protease increases hydrolysis of amylase and/or xylanase – This recitation is a recognition of a latent property obtained by performing the method step of adding a serine protease to the animal feed comprising an amylase and/or a xylanase and at least one component comprising arabinoxylan and/or starch. As provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he 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)”.
Additionally, when the method steps recited in the prior art reference are substantially identical to those of the claims, claimed properties of the resulting composition are presumed to be present in the composition of the prior art. The burden of proof shifts to the applicant to provide objective evidence (i.e., test data) to the contrary. See In re Best, 562, F.2d 1252, 1254, 195 USPQ 403, 433 (CCPA 1977). MPEP § 2112.01(I).
As discussed above, the effect of improving hydrolyzation of a carbohydrate in an animal feed necessarily flows from performing the positively recited method steps. Therefore, De Beer teaches a method for improving hydrolyzation of a carbohydrate in an animal feed comprising adding to the animal feed a serine protease and a carbohydrase selected from the group consisting of amylase and xylanase, wherein the carbohydrase is added in a dosage of between 10 units/kg animal feed and 5,000 units/kg of animal feed, wherein the animal feed contains at least one component comprising arabinoxylan and/or starch, and wherein adding the protease increases hydrolysis of amylase and/or xylanase.
Claim 10 is therefore rendered obvious.
Regarding claim 12, De Beer teaches the method of claim 10.
De Beer also teaches that the serine protease is an acid stable serine protease – De Beer teaches that preferred proteases are acid-stable serine proteases ([0114]), indicating that acid-stable serine proteases are an obvious choice for the feed supplement.
Claim 12 is therefore rendered obvious.
Regarding claim 15, De Beer teaches the method of claim 1.
De Beer also teaches that the serine protease is an acid stable serine protease – De Beer teaches that preferred proteases are acid-stable serine proteases ([0114]), indicating that acid-stable serine proteases are an obvious choice for the feed supplement.
Claim 12 is therefore rendered obvious.
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over De Beer et al. as applied to claim 1 above, and further in view of Haahr et al. (US 2020/0229463 A1, cited on the IDS filed on 17 August 2023, matching WO 2019/043191 A1 published on 7 March 2019).
Regarding claim 3, De Beer teaches the method of claim 1.
De Beer does not discuss that the serine protease is defined by polypeptides having S8 protease activity selected from the list consisting of:
a.) a polypeptide having a sequence identity of at least 70% to any one of SEQ ID NOs 3-6;
b.) a variant of any one of SEQ ID NOs: 3-6, wherein the variant has protease activity and comprises one or more substitutions, and/or one or more deletions, and/or one or more insertions or any combination thereof in positions 1-50;
c.) a polypeptide comprising the polypeptide of (a) or (b) and a N-terminal and/or C- terminal His-tag and/or HQ-tag;
d.) a polypeptide comprising the polypeptide of (a) or (b) and a N-terminal and/or C- terminal extension of up to 10 amino acids; and
e.) a fragment of the polypeptide of (a) or (b) having protease activity and having at least 90% of the length of the mature polypeptide.
However, Haahr teaches that when a protein source such as soybean meal is included in the feed of mono-gastric animals such as pigs and poultry, a significant proportion of the soybean meal is not digested efficiently, and by improving the digestibility of protein, the animal can uptake more of the protein thereby improving performance, such as increased body weight gain ([0004]). Haahr teaches that proteases which are highly acid stable are especially desirable in improving the digestibility of protein ([0005]). Haahr teaches a method for improving the nutritional value of animal feed (i.e., improving the availability of nutrients in the feed) ([0438]), comprising adding an animal feed additive to the feed ([0439]). The animal feed additive comprises an S8 protease ([0007]) and one or more additional enzymes selected from a group comprising carbohydrases including amylase, alpha-amylase, beta-amylase, beta-glucanase, xylanase, and other carbohydrases ([0132]; [0502]).
Haahr provides polypeptide SEQ ID NOs: 1-9. SEQ ID NO: 1 of Haahr has 95.3% identity with SEQ ID NO: 3 of the instant application (see alignment below). SEQ ID NO: 4 of Haahr is the conserved motif TGXK[V/T][I/V]X[N/S]MSLG ([0033]). This corresponds to SEQ ID NO: 6 of the instant application, which is the motif TGXKV[I/V]XXMSLG.
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As related to the elements of the instant claim 3, where SEQ ID NO: 1 of Haahr has 95.3% identity with SEQ ID NO: 3 of the instant application, and SEQ ID NO: 4 of Haahr matches SEQ ID NO: 6 of the instant application, Haahr teaches that protease is defined by polypeptides having S8 protease activity selected from the list consisting of:
a.) a polypeptide having a sequence identity of at least 70% to any one of SEQ ID NOs 3-6 – see Haahr [0008] and [0011].
b.) a variant of any one of SEQ ID NOs: 3-6, wherein the variant has protease activity and comprises one or more substitutions, and/or one or more deletions, and/or one or more insertions or any combination thereof in positions 1-50 – see Haahr [0017].
c.) a polypeptide comprising the polypeptide of (a) or (b) and a N-terminal and/or C- terminal His-tag and/or HQ-tag – see Haahr [0025].
d.) a polypeptide comprising the polypeptide of (a) or (b) and a N-terminal and/or C- terminal extension of up to 10 amino acids – see Haahr [0026].
e.) a fragment of the polypeptide of (a) or (b) having protease activity and having at least 90% of the length of the mature polypeptide – see Haahr [0027].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the serine protease of De Beer with the S8 protease of Haar by simple substitution of one known element for another to obtain predictable results. First, De Beer teaches a method for increasing the availability of at least one dietary nutrient and/or increasing the metabolizable energy from an animal feed comprising adding to the animal feed a feed supplement comprising a mixture of carbohydrases and an acid stable protease (see claim 33 with reference to claims 17 and 21, and [0114]). Haahr teaches a method for improving the nutritional value of animal feed (i.e., improving the availability of nutrients in the feed) ([0438]), comprising adding an animal feed additive to the feed ([0439]). The animal feed additive comprises an S8 protease ([0007]) and one or more additional enzymes, including carbohydrases ([0132]; [0502]). Since both De Beer and Haahr teach similar methods using similar enzymes, one of ordinary skill in the art could have substituted one protease for the other and would have expected an increase in availability of nutrients in the feed. See MPEP § 2143(I)(B).
Claim 3 is therefore rendered obvious.
Regarding claim 13, De Beer teaches the method of claim 10.
De Beer does not discuss that the serine protease is an S8 protease.
However, Haahr teaches that when a protein source such as soybean meal is included in the feed of mono-gastric animals such as pigs and poultry, a significant proportion of the soybean meal is not digested efficiently, and by improving the digestibility of protein, the animal can uptake more of the protein thereby improving performance, such as increased body weight gain ([0004]). Haahr teaches that proteases which are highly acid stable are especially desirable in improving the digestibility of protein ([0005]). Haahr teaches a method for improving the nutritional value of animal feed (i.e., improving the availability of nutrients in the feed) ([0438]), comprising adding an animal feed additive to the feed ([0439]). The animal feed additive comprises an S8 protease ([0007]) and one or more additional enzymes selected from a group comprising carbohydrases including amylase, alpha-amylase, beta-amylase, beta-glucanase, xylanase, and other carbohydrases ([0132]; [0502]).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the serine protease of De Beer with the S8 protease of Haar by simple substitution of one known element for another to obtain predictable results. First, De Beer teaches a method for increasing the availability of at least one dietary nutrient and/or increasing the metabolizable energy from an animal feed comprising adding to the animal feed a feed supplement comprising a mixture of a carbohydrase and an acid stable protease (see claim 33 with reference to claims 17 and 21, and [0114]). Haahr teaches a method for improving the nutritional value of animal feed (i.e., improving the availability of nutrients in the feed) ([0438]), comprising adding an animal feed additive to the feed ([0439]). The animal feed additive comprises an S8 protease ([0007]) and one or more additional enzymes, including carbohydrases ([0132]; [0502]). Since both De Beer and Haahr teach similar methods using similar enzymes, one of ordinary skill in the art could have substituted one protease for the other and would have expected an increase in availability of nutrients in the feed. See MPEP § 2143(I)(B).
Claim 13 is therefore rendered obvious.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over De Beer et al. as applied to claim 1 above, as evidenced by Amarson (Amarson, A. (2023, June 14). Corn 101: Nutrition acts and Health Benefits. Healthline. Retrieved June 25, 2026 from https://www.healthline.com/nutrition/corn).
Regarding claim 6, De Beer teaches the method of claim 1.
De Beer does not explicitly discuss that the at least one component comprising arabinoxylan and/or starch comprises fiber, cellulose, hemicellulose, pectin, or a mixture thereof.
However, as described regarding claim 1 above, De Beer teaches that corn comprises arabinoxylans and starch. The disclosed corn-soybean meal feed therefore also comprises arabinoxylan and starch. As evidenced by Amarson, “Corn contains a fair amount of fiber. The predominant fibers in corn are insoluble ones, such as hemicellulose, cellulose, and lignin.” (see p. 2, “Fiber”). Where De Beer teaches that the animal feed comprises corn as a component comprising arabinoxylan and starch, the limitation of claim 6 is necessarily met by De Beer.
Claim 6 is therefore rendered obvious.
Regarding claim 7, De Beer teaches the method of claim 6.
De Beer also teaches that the at least one component comprising arabinoxylan and/or starch comprises corn – As described regarding claim 1 above, De Beer teaches that corn comprises arabinoxylans and starch. The disclosed corn-soybean meal feed therefore also comprises arabinoxylan and starch.
Furthermore, regarding the claimed wheat, rye, and barley, De Beer teaches, “The animal diet can be an animal feed which includes sources of protein and carbohydrates. Examples of sources of protein and carbohydrates include corn, soya, wheat, barley, and rye. Corn-soybean, wheat-soybean, and wheat-corn-soybean, sorghum-soybean, and corn-sorghum-soybean represent other non-limiting examples of suitable animal feeds according to the present invention.” ([0051]).
MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Therefore, the claimed wheat, rye, and barley also represent obvious choices for inclusion in the animal feed of De Beer.
Claim 7 is therefore rendered obvious.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over De Beer et al. as evidenced by Amarson, as applied to claim 7 above, and further in view of Walker et al. (Walker, A., & Gordon, S. (2003). Intake of nutrients from pasture by poultry. Proceedings of the Nutrition Society, 62(2), 253-256. https://doi.org/10.1079/PNS2002198).
Regarding claim 16, De Beer teaches the method of claim 7.
De Beer does not discuss that the at least one component comprising arabinoxylan and/or starch comprises roughages, wherein the roughages comprise hay, pasture plants, or a mixture thereof.
However, Walker teaches that pasture grass may be incorporated into poultry feed formulations at up to 5% to reduce feed costs while reducing risk of impairing performance (Abstract).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of De Beer with the teachings of Walker to incorporate pasture grass into the feed compositions. One of ordinary skill in the art would have been motivated to do so in order to reduce the cost of the feed compositions while reducing the risk of impaired performance. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention because DeBeer teaches the method of claim 7 with a poultry feed being the feed composition, and Walker teaches adding pasture grass (i.e., a pasture plant) to poultry feed.
Claim 16 is therefore rendered obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 102: Applicant made no substantive arguments concerning the 35 U.S.C. § 102 rejections of claims 1, 4, 10, and 12-13 (p. 9, ¶¶ 2-4). Applicant’s amendments to claims 1 and 10 filed on 11 May 2026 are sufficient to overcome the rejections under 35 U.S.C. § 102. Accordingly, the 35 U.S.C. § 102 rejections have been withdrawn. However, upon consideration of the amendments, the new grounds of rejection under 35 U.S.C. § 103 presented in this Office action are made.
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 11 May 2026 have been fully considered, but they are not persuasive.
Applicant first argued that the data of Examples 4 and 5 demonstrate a dramatic synergistic effect when an amylase or a xylanase is combined with a protease compared to when just the amylase or xylanase is used and compared to when a glucanase is combined with a protease as in Example 3 (p. 10, ¶¶ 1-3). Applicant argued that De Beer’s disclosure of adding to an animal feed a feed supplement comprising a mixture of enzymes having enzyme activities selected from the group including glucanase, xylanase, cellulase, protease, and phytase activities and a further enzyme selected from an amylase, arabinose, galactosidase, and debranching enzymes makes no distinction nor selection between the listed carbohydrases (p. 10, ¶ 4). Applicant argued that De Beer does not teach or suggest that the protease specifically boosts carbohydrases’ ability to hydrolyze carbohydrates, even less that the protease boosts an amylase’s or xylanase’s ability to hydrolyze starch and arabinoxylan, respectively, and glucanase is presented as an equal alternative option to use in combination with a serine protease (pp. 10-11 bridging ¶). Applicant further argued that while Haarh teaches S8 proteases of similar sequences to those recited in claim 3, Haarh is not concerned with the S8 proteases’ ability to boost carbohydrases’ ability to hydrolyze carbohydrates, even less that the protease boosts an amylase’s or xylanase’s ability to hydrolyze starch and arabinoxylan, respectively, and that the specific combinations as claimed lead to an effect that could not have been foreseen based on De beer and Haahr (p. 11, ¶¶ 2-3).
Applicant’s assertion of unexpected synergistic properties is acknowledged. Applicant’s argument has been considered, but it is not found to be persuasive. MPEP § 2145 states, “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)”, and “[r]ebuttal evidence may include evidence of ‘secondary considerations,’ such as ‘commercial success, long felt but unsolved needs, [and] failure of others.’ Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997)”.
However, as provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he 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)”. Furthermore, “[e]vidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).” See MPEP § 716.02(c)(I). “‘Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.; In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)”. See MPEP § 716.02(c)(II).
“Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating "synergism"). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1848 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.). MPEP § 716.02(a)(I).
“Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. See MPEP § 716.02(d).
In the present case, Applicant has recognized a latent property of the obvious addition of a protease to an animal feed comprising an amylase and/or a xylanase as disclosed by De Beer. Even if De Beer does not specifically recognize that such addition boosts carbohydrase activity of amylase or xylanase, that function is a latent property resulting from the combination of those enzymes. “‘[t]he 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)”.
Furthermore, Applicant’s evidence is not commensurate in scope with the claimed invention. The examples are not commensurate in scope with the claimed invention because it cannot be ascertained whether the alleged unexpected synergistic property occurs over the entire claimed ranges and combinations of the claimed ingredients from the examples provided, and none of the claims are directed toward the specific embodiment provided by any of the examples.
For at least these reasons, Applicant’s arguments are not persuasive, and claims 1-10, 12-13, and 15-16 are rejected under 35 U.S.C. § 103 as presented hereinabove.
Double Patenting:
Applicant’s amendments to claims 1 and 10 filed on 11 May 2026 to include the subject matter of claim 5 are sufficient to overcome the nonstatutory double patenting rejections. Accordingly, the nonstatutory double patenting rejections have been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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