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 Application
Claims 11, 12, 17 and 18 are pending. Claims 1-10, 13-16 and 19 have been cancelled. The previous 103 rejections have been modified in view of applicant’s amendments to the claims.
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.
Claims 11-12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sunvold (US 2010/0303978 A1).
Regarding claims 11-12 and 17, Sunvold discloses a process of making a pet food comprising extruding a mixture to form a core pellet, providing a coating, wherein the coating comprises a vitamin; and applying the coating to the core pellet to form a coated kibble (Abstract). Sunvold discloses the pet may be a dog [0020]. Sunvold discloses the coating is applied to increase animal preference of the food (a palatable dog food/obtaining a palatable dog food) [0039].
Sunvold discloses the kibble can be coated with a vitamin coating [0104] and the vitamin can be ascorbic acid (PECa) [0051]. Sunvold discloses the vitamin coating can include a palatant component [0104]. Sunvold does not require ascorbyl palmitate in the composition, therefore the process of Sunvold meets the claim limitation of ascorbyl palmitate is excluded as a derivative of ascorbic acid.
Sunvold discloses the coating can comprise several coating components including 1-10 wt% a palatant component and the palatant can be liquid digest derived from chicken livers (a palatability enhancer in liquid form) [0058]. Sunvold discloses brewers dried yeast as an optional ingredient [0037] and yeast is therefore not a required ingredient.
Sunvold does not disclose a specific embodiment with a coating comprising ascorbic acid and the palatant component of liquid digest derived from chicken livers, however, since Sunvold discloses the coating can comprise several components [0040] and the kibble can have more than one coating and each of these coatings can be comprised of any of the coating components described in the document [0041], it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make a coating of ascorbic acid and the palatant component because Sunvold discloses making multiple coatings comprised of mixtures of the coating components disclosed.
Sunvold’s disclosure of 1-10 wt% of the palatant component in the coating results in greater than 90-99 wt% of the coating comprising the ascorbic acid, which falls within the claimed range of 0.01-99.99 wt % of the PECa (ascorbic acid) in the PECb.
Sunvold discloses the kibble can have more than one coating and each of these coatings can be comprised of any of the coating components described in the document [0041]. Sunvold discloses the coating can be a binder and the binder can be lipids and lipid derivatives such as plant and animal fats [0048].
Sunvold discloses the finished coated kibble comprises less than 0.2 wt% of the vitamin component [0110], which overlaps with the claimed range of 0.0016-0.3 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Additionally, Sunvold discloses the coating from 10-20 wt% of the finished coated kibble and the coating can comprise 1-10 wt% palatant (animal digest) [0058], which results in a finished coated kibble comprising 0.1-2 wt% palatant (animal digest). When combined with the disclosure that the finished coated kibble comprises less than 0.2 wt% of the vitamin component, the finished coated kibble of Sunvold comprises 0.1-2.2 wt% of palatant and vitamin component combined (PECb), which falls within the claimed range of 0.001-5 wt%.
Regarding the claim language “palatable dog food” this language is deemed to be an intended use of the composition prepared by the claimed method. In method claims, a claimed intended use must result in a manipulative difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the pet food of Sunvold is identical to that of the presently claimed in terms of process, it meets the intended use of the claimed method.
Additionally, Sunvold discloses the coating is applied to increase animal preference of the food which is considered to provide a palatable dog food [0039].
Regarding the order of steps, Sunvold does not disclose the order of coating with the fat, palatant and vitamin component. However, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. MPEP 2144.04 IV. C.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sunvold (US 2010/0303978 A1) as applied to claim 11 above, and further in view of Yamka (US 2012/0289598 A1).
Regarding claim 18, Sunvold discloses the dog food of claim 11, including the coating comprising animal digest and ascorbic acid.
Sunvold does not disclose the ascorbic acid salts.
Yamka, in the field of enhancing palatability of edible food compositions for companion animals (Abstract), discloses the companion animal may be a dog [0027]. Yamka discloses the food may comprise antioxidants to stabilize the food and increase shelf life [0105] and the antioxidant may be vitamin C, ascorbic acid, or can be administered as ascorbic acid phosphate salts and cholesteryl salt which will function in a vitamin C like activity after ingestion by the pet [0107].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substituted the ascorbic acid phosphate salts or cholestryl salt of Yamka for the ascorbic acid of Sunvold because Yamka discloses the ascorbic acid salts will function with vitamin C (ascorbic acid) like activity after ingestion by the pet and the substitution of equivalents known for the same purpose (here to provide vitamin C activity) is obvious. MPEP 2144.06 II.
Response to Arguments
Applicant's arguments filed 01 July 2026 have been fully considered but they are not persuasive.
Applicant argues Sunvold is concerned with improving stability of pet food by coating and the examples relate to vitamin A and vitamin E only. Vitamin C is only generically mentioned as a vitamin or antioxidant in a long list of vitamins and no examples in Sunvold relate to vitamin C. Remarks p3.
This argument is not persuasive. 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)). MPEP 2123 I. Therefore the lack of examples in Sunvold related to the inclusion of vitamin C does not negate Sunvold’s disclose of vitamin C as a vitamin that can be included in the pet food coating.
Additionally, 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). MPEP 2132 II.
Applicant argues Sunvold discloses vitamin is better preserved in an extruded pet food as opposed to a coated pet food. Applicant argues Sunvold teaches away from the use of vitamin E and therefore one of ordinary skill in the art would also have no proper reason, rationale, or motivation to apply the concept to other vitamins let alone vitamin C. Applicant argues Sunvold does not contemplate how to determine the quantity of vitamin C in the sample, therefore vitamin C is excluded from measurements. Remarks p4.
This argument is not persuasive. Sunvold’s disclosure of the effectiveness of vitamin E in a coated pet food or not measuring the vitamin C value in the pet food does not discourage one of ordinary skill in the art from selecting vitamin C as an ingredient in the coating as disclosed by Sunvold. As discussed above, 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)). MPEP 2123 I. In the instant case, Sunvold discloses vitamin C as a vitamin that can be included in the pet food coating.
Additionally, 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). MPEP 2132 II.
Applicant argues the Examiner has participated in impermissible “obvious to try” analysis. Remarks pp4-5.
This argument is not persuasive. As discussed above, 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)). MPEP 2123 I. In the instant case, Sunvold discloses vitamin C as a vitamin that can be included in the pet food coating.
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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/C.L.G./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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