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
The claims dated 07 November 2025 have been entered. Claims 1-2 are pending. Claim 2 has been withdrawn from consideration. The previous 112 rejections have been withdrawn in view of applicant’s amendments to the claims. The previous 103 rejection has been modified in view of applicant’s amendments to the claims.
Claim Interpretation
Claim 1 refers repeatedly to “puffed grains” and “grains.” The specification indicates that the pet food grains are formed by mixing the ingredients, heating, kneading and extruding the mixture to form the food grains (p18, lines 7-9). The specification also indicates the pet food grains comprise cereal, meat, seafood, vitamins and minerals, fats and oils (p12, lines 8-16). Therefore the “puffed grains” and “grains” of claim 1 are interpreted as granular pieces of pet food as opposed to “grains” such as corn, wheat or barley.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 5: insert “puffed” between “each” and “grain”
Appropriate correction is required.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Fumita (US 2009/0280216 A1) in view of Reiser (US 2015/0296837 A1) and Sakoda (US 20140093621 A1).
Regarding claim 1, Fumita recites a pet snack food (pet food) which is a highly foamed bulky formed product (puffed) [0035]. Fumita discloses the bulky formed product is ball shaped or short bar shaped formed with an extruder [0022]. Therefore the highly foamed bulky formed product of Fumita meets the claim limitation of a pet food comprising kibbles which comprise puffed grains.
Fumita discloses the highly foamed bulky formed product has a moisture content between 6-10% by weight (p5, Table 3), which overlaps with the claimed range of 3-12% by mass. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 I.
Fumita discloses dietary fiber as an optional ingredient [0054]. It would have been obvious to one of ordinary skill in the art to have elected to not include dietary fiber in the highly foamed bulky formed product since Fumita discloses it as optional.
Fumita does not disclose the surface roughness of the product.
Reiser, in the field of pet treats, discloses pet chews with surface roughness (Sa) of between 4.845-19.03 µm (p15, Table [0196]). The range of surface roughness discloses by Reiser overlaps with the claimed surface roughness of 14 µm or greater. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 I.
Reiser discloses the pet treats are aerated (or foamed), nutritional, edible pet chews or treats [0002]. Reiser discloses the foaming or aeration can be accomplished during the extrusion process [0002]. Reiser discloses the pet chew is designed to remove plaque and tartar through mechanical abrasion while providing safe occupation and enjoyment [0023]. Reiser discloses the surface roughness refers to the surface texture of the interior cross-section area, where this area makes surface contact with a tooth during the downward bite and upward pull involved in chewing action [0040].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combined the highly foamed bulky formed product of Fumita with the aerated or foamed pet treat of Reiser with a surface roughness between 4.845-19.03 µm since Reiser discloses the surface roughness makes surface contact with a tooth during the downward bite and upward pull involved in chewing action and provides plaque and tartar removal through mechanical abrasion while providing enjoyment to the animal.
The phrase “which is measured using an L-filter having a nesting index of 0.25 mm” is a process limitation in a product claim. As such, the limitation is interpreted as analogous to a process limitation in a product by process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. In the present case, the prior art suggests an overlapping surface roughness. As such the process of measuring the surface roughness does not distinguish the product suggested in the prior art.
Regarding the proportion of grains with the recited surface roughness being 60% or greater, where 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). It is 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. In re Peterson, 315 F.3d at 1330, 65 USPQ2d 1379, 1382.
In the present case, the prior art discloses the conventional nature of making puffed food grains having the claimed ingredients and the claimed moisture content. The prior art suggests the conventional nature of surface roughness. As such, the claimed property of “a surface with an arithmetic average surface roughness Sa of 14 μm or greater which is measured using an L-filter having a nesting index of 0.25 mm, is 60% or greater” represents a mere carrying forward of an known conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means. As such, it is not such an invention as will sustain a patent.
Fumita does not disclose the hardness immediately after being immersed in dilute hydrochloric acid.
Sakoda is drawn to pet food granules (abstract) that reduces vomiting of pets after meals [0002]. Sakoda discloses a pet food comprising an aggregate of granules, wherein 60% or more of the granules in the aggregate have a hardness of 2.5 kgw or lower immediately after being soaked in diluted hydrochloric acid (pH 2.5) having a temperature of 20 to 25 °C for 10 minutes [0012]. Sakoda discloses when a greater number of granules contained in the pet food have a hardness as described above, vomiting after meal can further be suppressed [0025].
It would have been obvious to one of ordinary skill in the art at the time the invention was filed invention to make pet food grains, as taught in Fumita, wherein 60% or more of the granules in the aggregate have a hardness of 2.5 kgw or lower immediately after being soaked in diluted hydrochloric acid (pH 2.5) having a temperature of 20 to 25 °C for 10 minutes, as taught in Sakoda, to obtain pet food grains wherein 60% or more of the granules in the aggregate have a hardness of 2.5 kgw or lower immediately after being soaked in diluted hydrochloric acid (pH 2.5) having a temperature of 20 to 25 °C for 10 minutes. One of ordinary skill in the art at the time the invention was filed would have been motivated to make pet food grains wherein 60% or more of the granules in the aggregate have a hardness of 2.5 kgw or lower immediately after being soaked in diluted hydrochloric acid (pH 2.5) having a temperature of 20 to 25 °C for 10 minutes to suppress vomiting after a meal can be suppressed [0025].
Regarding the “other kibbles” of claim 1, line 12; Fumita recites a pet snack food (pet food) which is a highly foamed bulky formed product (puffed) [0035]. Fumita discloses the bulky formed product is ball shaped or short bar shaped formed with an extruder [0022].
Fumita discloses the highly foamed bulky formed product has a moisture content between 6-10% by weight (p5, Table 3), which overlaps with the claimed range of 3-12% by mass. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 I.
Fumita discloses dietary fiber as an optional ingredient [0054]. Fumita discloses the optional ingredients can be included from 0-40% by weight [0055]. It would have been obvious to one of ordinary skill in the art to have elected to include dietary fiber in the highly foamed bulky formed product since Fumita discloses it as an optional ingredient.
Fumita discloses the bulky formed product may optionally include fiber. Therefore Fumita includes a disclosure of both a bulky formed product with fiber and bulky formed product without fiber, both for use as a pet food. Fumita does not disclose combining these two embodiments (with and without fiber), however, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. MPEP 2144.06 I. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have elected to form both the bulky formed pet food product with fiber of Fumita and the bulky formed pet food product without fiber of Fumita to form a third bulky formed pet food product which has pieces some of which contain fiber and some of which do not contain fiber. These two bulky formed pet food products meet the claim limitation of other kibbles which are different from the kibble comprising the puffed grains wherein the other kibbles are formed of grains comprising a fiber source.
Fumita does not disclose the surface roughness of the other kibbles formed of grains.
Reiser, in the field of pet treats, discloses pet chews with surface roughness (Sa) of between 4.845-19.03 µm (p15, Table [0196]). The range of surface roughness disclosed by Reiser overlaps with the claimed surface roughness of 14 µm or greater. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 I.
As discussed above, Reiser discloses the pet treats are aerated (or foamed), nutritional, edible pet chews or treats [0002]. Reiser discloses the foaming or aeration can be accomplished during the extrusion process [0002]. Reiser discloses the pet chew is designed to remove plaque and tartar through mechanical abrasion while providing safe occupation and enjoyment [0023]. Reiser discloses the surface roughness refers to the surface texture of the interior cross-section area, where this area makes surface contact with a tooth during the downward bite and upward pull involved in chewing action [0040].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combined the highly foamed bulky formed pet food product with fiber of Fumita with the aerated or foamed pet treat of Reiser with a surface roughness between 4.845-19.03 µm since Reiser discloses the surface roughness makes surface contact with a tooth during the downward bite and upward pull involved in chewing action and provides plaque and tartar removal through mechanical abrasion while providing enjoyment to the animal.
The phrase “which is measured using an L-filter having a nesting index of 0.25 mm” is a process limitation in a product claim. As such, the limitation is interpreted as analogous to a process limitation in a product by process claim. It has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. It is the patentability of the product claimed and not of the recited process steps which must be established. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. In the present case, the prior art suggests an overlapping surface roughness. As such the process of measuring the surface roughness does not distinguish the product suggested in the prior art.
Regarding the proportion of other pet food grains with the recited surface roughness being less than 60%, where 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). It is 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. In re Peterson, 315 F.3d at 1330, 65 USPQ2d 1379, 1382.
In the present case, the prior art discloses the conventional nature of making puffed food grains having the claimed ingredients and the claimed moisture content. The prior art suggests the conventional nature of surface roughness. As such, the claimed property of “a surface with an arithmetic average surface roughness Sa of 14 μm or greater which is measured using an L-filter having a nesting index of 0.25 mm, is 60% or greater” represents a mere carrying forward of an known conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means. As such, it is not such an invention as will sustain a patent.
Fumita does not disclose the hardness immediately after being immersed in dilute hydrochloric acid.
Sakoda is drawn to pet food granules (abstract) that reduces vomiting of pets after meals [0002]. Sakoda discloses a pet food comprising an aggregate of granules, wherein 60% or more of the granules in the aggregate have a hardness of 2.5 kgw or lower immediately after being soaked in diluted hydrochloric acid (pH 2.5) having a temperature of 20 to 25 °C for 10 minutes [0012]. Sakoda discloses when a greater number of granules contained in the pet food have a hardness as described above, vomiting after meal can further be suppressed [0025].
It would have been obvious to one of ordinary skill in the art at the time the invention was filed invention to make pet food grains, as taught in Fumita, wherein 60% or more of the granules in the aggregate have a hardness of 2.5 kgw or lower immediately after being soaked in diluted hydrochloric acid (pH 2.5) having a temperature of 20 to 25 °C for 10 minutes, as taught in Sakoda, to obtain pet food grains wherein 60% or more of the granules in the aggregate have a hardness of 2.5 kgw or lower immediately after being soaked in diluted hydrochloric acid (pH 2.5) having a temperature of 20 to 25 °C for 10 minutes. One of ordinary skill in the art at the time the invention was filed would have been motivated to make pet food grains wherein 60% or more of the granules in the aggregate have a hardness of 2.5 kgw or lower immediately after being soaked in diluted hydrochloric acid (pH 2.5) having a temperature of 20 to 25 °C for 10 minutes to suppress vomiting after a meal can be suppressed [0025].
As discussed above Fumita discloses both a kibble comprising puffed grains with no fiber source and kibble comprising grains with a fiber source and these two kibbles may be mixed together.
Regarding the proportion of the two kibbles disclosed by Fumita, Fumita does not disclose the proportion of the two kibbles with and without fiber. However, it is known in the art that the quantity of each kibble is a result effective variable, each kibble will have a different calorie content and fiber content and appeal to the animal. When the relative proportions of the kibble are changed the calorie content, fiber content and overall appeal to the animal are also changed. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. Additionally, 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. MPEP 2144.05 II A. Since Applicant has not disclosed that the specific limitations recited in instant claims are for any particular purpose or solve any stated problem, absent unexpected results, it would have been obvious for one of ordinary skill to discover the optimum workable ranges of the product disclosed by the prior art by normal optimization procedures known in the art.
Response to Arguments
Applicant's arguments filed 07 November 2025 have been fully considered. To the extent they apply to the above rejection they are not persuasive.
Applicant argues the pet food of the instant claims exhibits excellent palatability while reducing regurgitation after a meal. Remarks p5.
This argument is not persuasive. In response to applicant's argument that the pet food of the instant claims exhibits excellent palatability while reducing regurgitation after a meal, the fact that the inventor 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant points to no data supporting the claims of palatability and reduced regurgitation nor does applicant compare the pet food of the instant claims to that of the prior art to demonstrate unexpected results.
Applicant argues the applied references do not teach the mass ratio of the instant claims. Remarks p5.
This argument is not persuasive. The new claim amendment with regards to the mass ratio of the kibbles and the other kibbles is addressed in the rejection above.
Fumita does not disclose the proportion of the two kibbles with and without fiber. However, it is known in the art that the quantity of each kibble is a result effective variable, each kibble will have a different calorie content and fiber content and appeal to the animal. When the relative proportions of the kibble are changed the calorie content, fiber content and overall appeal to the animal are also changed. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. Additionally, 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. MPEP 2144.05 II A. Since Applicant has not disclosed that the specific limitations recited in instant claims are for any particular purpose or solve any stated problem, absent unexpected results, it would have been obvious for one of ordinary skill to discover the optimum workable ranges of the product disclosed by the prior art by normal optimization procedures known in the art.
Applicant has not disclosed in the remarks that the specific limitations as to the mass ratio are for any particular purpose or solve any stated problem.
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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/C.L.G./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793