BP NUTRITION (UK) LIMITED

[1988] APO 6

In the Matter of the Patents Act 1952

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In the Matter of Application No. 22684/83 by BP NUTRITION (UK) LIMITED

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In the Matter of a Request under Regulation 19D.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent Application No. 22684/83 is a National Phase application having an International Filing Date of 21 October, 1983 which is entitled "Poultry Feedstuff".
         A decision upon the written record was requested by Mr. B.S. Wellington, patent attorney of E.F. Wellington & Co., after the examiner issued a sixth report which contained objections to claims 1 and 4.
The Specification
         The specification, as proposed to be amended, states that the invention relates to a method of promoting the growth rate and reducing the feed conversion ratio of poultry by feeding the poultry a diet which contains the polyhydric alcohol sorbitol.
         The specification states that UK Patent No. 1428181 describes a food designed for cage birds, such as canaries, which includes sorbitol in order to soften the food so that it resembles the natural grain or seeds normally fed to such birds.  The specification contrasts this prior proposal with the present invention which is based on the finding that sorbitol, when included

in diets for poultry, has a growth promoting effect.  The specification then describes the invention in similar terms to those found in claim 1, which reads as follows:

"A method of promoting the growth rate and reducing the feed conversion ratio of poultry, which comprises feeding to the poultry a poultry feedstuff containing sorbitol in an amount from 0.01 to 1% by weight."

The specification continues that the invention also relates to a poultry feedstuff which is described in similar terms to those found in claim 4 which reads as follows:

"A poultry feedstuff containing sorbitol in an amount from 0.01 to 1% by weight for promoting the growth rate and reducing the feed conversion ratio of the poultry, said feedstuff being free of flavouring agent."

Objections and Submissions
         The examiner in his sixth report maintained an objection that the poultry feedstuff as defined by claim 4 was not novel in the light of disclosures in UK Patent No. 1428181.  The report stated that the citation describes a bird food containing, amongst other ingredients, sorbitol in an amount of 0.1% to 0.5% by weight.  However the report pointed out that the food described in the citation contains a flavouring agent.  Thus the examiner argued that the omission of a flavouring agent from the feedstuff defined in claim 4 made no substantial contribution to the working of the invention since the present specification admits that poultry do not detect flavours.
         The attorney in response submitted that the omission from claim 4 of at least one of the essential components of the composition disclosed in the cited UK Patent 1428181, meant that claim 4 was novel.  This submission was based on the attorney's written responses to previous reports issued by the examiner which included detailed arguments involving the relevant case law.
         The examiner in his sixth report also objected that the claims defined more than one invention.  The examiner argued that claims 1 and 4 would define one invention if the feedstuff in both claims was free of flavouring agents.  The attorney in response submitted that, on the basis of the relevant case law described in the Patent Examiner's Manual, this objection is not sustainable in law.
The Decision
         The invention described in UK Patent No. 1428181 relates to food for birds, particularly granivorous birds raised in cages.  Feeding these birds exclusively on natural grain does not provide all the nutritive elements which are indispensible to them because in the wild state the birds eat fresh green seeds.  Fresh green seeds contain a different balance of elements (amino‑acids or vitamins) from those present in stored grains normally given to caged birds.
         Thus the object of the invention is to make available a complete food useful as a supplement to natural grains, mixed therewith or given separately, and which enables the nutritive deficiencies to which the birds have been subject, to be eliminated.  The general statement of the invention reads as follows:

"The composition of the product is, according to the invention, established in such a manner as to contain as principal components substances or mixtures of substances supplying useful vitamins, substances or mixtures of substances supplying essential amino‑acids, inorganic salts supplying useful trace elements at least one preservative and at least one flavouring agent, and the product has the form of pellets resembling natural grain or seeds in appearance and containing 0.1 to 0.5% by weight humectant."

The softened texture of the pellets, imitating the kernel of natural grains, is provided by a humectant such as sorbitol.
         This general statement of the invention is supported by a practical example which lists parsley (as a "flavouring and colouring factor") within a list of ingredients entitled "I Essential components ...".  In comparison, some other ingredients (described as "non‑essential components") are listed under the title, "II Various components".  Claim 1 of the citation reads as follows:

"1.Food for granivorous birds comprising at least one substance supplying vitamins, at least one substance supplying amino acids, inorganic salts supplying trace elements, at least one preservative and at least one flavouring agent, the food having the form of pellets resembling natural grain or seeds in appearance and containing 0.1 to 0.5% by weight humectant which confers on the pellets a softened texture resembling the kernel of natural grains."

Thus, in my opinion, UK Patent No. 1428181 teaches that the flavouring agent is an essential component of the feedstuff for granivorous birds.  Moreover the cited specification does not teach that any of the components of the feedstuff are optional for other kinds of birds.
         The examiner relied on a statement in the present specification which reads as follows:

"The other components of the diet may be the normal components for poultry feed and include sources of carbohydrate, protein, lipids (i.e. fats and oils), fibre, vitamins, amino‑acids, and minerals.  The principles of poultry feeding are well understood in the industry and the term "poultry diet' would be understood as differentiating the diet from that of other livestock such as cattle or pigs.  Poultry are omnivorous, rather than granivorous, and do not detect flavours.  There is no point, therefore, in including any flavouring agent in the feed, as required by the above‑mentioned prior art."

This statement, it seems to me, concedes that the principles of poultry feeding are well understood in the industry but does not admit that it is common general knowledge in the art of bird food formulation that poultry are omnivorous, rather than granivorous and do not detect flavours.  However I understand that it is well known that poultry are omnivorous rather than granivorous.
Thus I think that a person skilled in the art of bird food formulation, on reading UK patent No. 1428181, would understand that the food for granivorous birds, which is described in the citation, could be used as a poultry feedstuff. However I think that this same skilled person would require ingenuity to recognise that the flavouring agent was redundant in the case of poultry. Moreover, even if the fact that poultry do not detect flavours is common general knowledge in the art of bird food formulation, it does not follow that this lack of inventive content over and above the citation is in itself a sufficient test of lack of novelty (R.D. Werner Co. Inc. v. Bailey Aluminium Products Pty. Ltd. 8 IPR 339 at page 346). I consider that the poultry feedstuff defined in claim 4 does not have the same merit as the bird food disclosed in the citation because the flavouring agent is an essential component of the food for granivorous birds. Consequently, after applying the test for novelty set out by Dixon J. in Griffin v. Isaacs (1942 AOJP 739 at 740), I am satisfied that the poultry food defined in claim 4 is novel in the light of UK patent No. 1428181.
         Turning to the objection that the claims define more than one invention I note the Patent Office practice which is summarised in paragraph 35.122 of the most recent edition of the Patent Examiner's Manual.  The relevant portion of this paragraph reads as follows:

"Where a statement of claim is characterized by a common element of novelty or a single inventive concept, there is clear unity of invention."

The invention as defined by claim 4 is a poultry feedstuff which contains 0.01 to 1% by weight sorbitol, for promoting the growth rate and reducing the feed conversion ratio of poultry.  The invention defined by claim 1 is a method of promoting the growth rate and reducing the feed conversion ratio of poultry which comprises the steps of feeding to poultry a poultry feedstuff containing sorbitol in an amount from 0.01 to 1% by weight.
         It seems to me that the inventive concept is described in a statement in the present specification which reads as follows:

"It has now been found that the inclusion of sorbitol in diets for poultry, particularly meat‑producing poultry has a growth promoting effect."

Thus, in my opinion, the lack of flavouring agent in the feedstuff defined in claim 4 does not change the character of the inventive concept.  Consequently I am of the opinion that claims 1 and 4 define a single inventive concept.  Therefore I am satisfied that claims 1 and 4 do not define more than one invention.
         Claim 1 of the present specification relates to a method of promoting the growth rate and reducing the feed conversion ratio of poultry.  The poultry feedstuff, which is used in this method contains .01 to 1% by weight of sorbitol and may include a flavouring agent. 
         UK patent No. 1428181 is directed to food for granivorous birds which contains 0.1 to 0.5% by weight of sorbitol.  The citation does not disclose that the food is suitable for birds other than granivorous birds.  It seems to me that the citation does not teach the skilled reader that the food can be used for the purpose of promoting the growth rate and reducing the feed conversion ratio of poultry as claimed in claim 1.  Thus I consider that the citation does not contain clear and unmistakable directions to perform the claimed method.  Consequently the  citation does not prior publish the method defined in claim 1.
         I consider that there is no ingenuity involved in  feeding poultry, rather than granivorous birds, the food described in the citation because the fact that poultry are omnivorous is well known.  However the method defined in claim 1 is for the specific purpose of promoting the growth rate and reducing the feed conversion ratio of poultry.
         A method of promoting the growth rate and reducing the feed conversion ratio of poultry which comprises feding to the poultry a poultry feedstuff containing sorbitol in an amount from 0.1 to 0.5% by weight has the same process steps as merely feeding poultry the food which is disclosed in the citation.  Therefore I think that claim 1, as presently worded, includes within its scope the method which is disclosed in the citation.  Consequently I consider that the method defined in the present claim 1 lacks ingenuity and has the same merit as the method disclosed in the citation.  Therefore I am satisfied that the method claimed in claim 1 lacks novelty in respect of the use of a feedstuff which contains 0.1 to 0.5% by weight of sorbitol.
         I also note the specification as originally lodged discloses that the poultry diet includes from 0.01 to 5% of one or more polyhydric alcohols, including sorbitol, by weight of the total feed.  Claim 1 as lodged defines the method as including in the poultry diet from 0.01 to 5% by weight of one or more polyhydric alcohols.
         I conclude that the specification as lodged discloses that the growth promoting effect of sorbitol occurs when sorbitol forms 0.01 to 5% of the total feed or diet of the poultry.  However the present claim 1 claims that the promotion of the growth rate and reduction of the feed conversion ratio of poultry occurs by merely feeding the poultry a feedstuff which contains sorbitol in an amount from .01 to 1% by weight.  Thus claim 1 does not place any restrictions on the minimum amount of sorbitol included in the overall diet of the poultry.  This means, for example, that the method of claim 1 includes within its scope feeding poultry the claimed feedstuff such that sorbitol forms less than .01% by weight of the total feed.  Thus I consider that claim 1, as presently drafted, claims matter not in substance disclosed in the specification as lodged.
         Therefore I am satisfied that there are still lawful grounds of objection to application No. 22684/83 and I afford the applicant an opportunity to lodge a statement of proposed amendments to my satisfaction within the time remaining for acceptance.

(M. KENDALL)