DETAILED CORRESPONDENCE
Application Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Applicant’s amendment to the claims filed on 12/22/2025 in response to the Non-Final Rejection mailed on 09/30/2025 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
3. Claims 1-20 are pending.
4. Claims 13-20 stand withdrawn pursuant to 37 CFR 1.142(b).
5. Applicant’s remarks filed on 12/22/2025 in response to the Non-Final Rejection mailed on 09/30/2025 have been fully considered and are deemed not persuasive to overcome the rejections and/or objections as previously applied.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in the prior Office Action.
Claim Rejections - 35 USC § 101
6. The rejection of claims 1-12 under 35 U.S.C. 101 because the claimed invention is directed to a nature based product without significantly more is maintained for the reasons of record and the reasons set forth below.
The claim(s) recite(s) a processed animal food and/or treat composition comprising an undenatured type II collagen; wherein the processed animal food and/or treat is processed at a temperature of about 37oC or greater. This judicial exception is not integrated into a practical application because undenatured type II collagen is a natural component of chicken cartilage and plants as evidenced by Schilling et al. (US Patent No. 7083820, 2006; cited on IDS filed on 08/30/2022) and Moore et al. (US Patent Application Publication 2019/0208770 A1; cited on IDS filed on 08/30/2022). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because “wherein the processed animal food and/or treat is processed at a temperature of about 37oC or greater” only serves to limit how the collagen is obtained and provides no evidence that the obtained product is structurally different from it’s natural counterpart. Additionally, dependent claims 6-9 only further limit the process by which it is made and do not structurally change the product into something markedly different from what is found in nature. Furthermore, dependent claims 2-3 further define the product by its intended use; however, these limitations do not further transform the natural product into something significantly more than its natural counterpart. Claims 4-5 and 10-11 recite additional components such as collagen peptides, proteins, fats, and fiber; however, these components are naturally found in the chicken cartilage and plant material that are source of the type II undenatured collagen and are not sufficient to transform the nature-based product into something that is significantly more than its natural counterpart. For these reasons, claims 1-12 are not patent eligible under 35 U.S.C. 101.
RESPONSE TO REMARKS: Beginning on p. 5 of applicants remarks, applicants contend that the claims interpreted in light of the specification, recite a composition having markedly different characteristics from naturally occurring undenatured type II collagen. Applicants contend that undenatured collagen is sensitive to high temperatures and that in order to incorporated into a processed animal food and/or treat composition that has been processed at a temperature of about 37oC or greater would have to demonstrate markedly different characteristics.
These arguments are found to be not persuasive because the fact that the inventor has added an additional component to the composition that prevents the undenatured type II collagen from denaturing when formed at 37oC or greater does not change that the finished product of undenatured type II collagen is of the same structure of that found in nature. Applicants have provided no evidence that the undenatured type II collagen demonstrates a different structure and/or function from that which is found in nature. As stated above, “wherein the processed animal food and/or treat is processed at a temperature of about 37oC or greater” only serves to limit how the collagen is obtained and provides no evidence that the obtained product is structurally different from its natural counterpart. MPEP 2113.I states “[e]ven 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. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. There is no limitation to suggest that the composition is at a temperature of 37oC or greater, it only recites the product was formed this way, but an undenatured type II collagen formed by any other manner absent evidence otherwise would be identical.
Claim Rejections - 35 USC § 102
7. The rejection of claims 1-3 and 6-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ben Yosef (US Patent Application Publication 2013/0052175 A1; cited on IDS filed on 08/30/2022) is maintained for the reasons of record and the reasons set forth below.
8. Claims 1-3 and 6-12 are drawn to a processed animal food and/or treat composition comprising: an undenatured type II collagen; wherein the processed animal food and/or treat is processed at a temperature of about 37oC or greater.
9. With respect to claim 1, Ben Yosef teach a processed animal food and/or treat composition comprising an undenatured type II collagen [see Abstract; paragraphs 0042-0044]. Regarding the limitations “wherein the processed animal food and/or treat is processed at a temperature of about 37oC or greater”, these are product-by-process limitations. MPEP 2113.I states “[e]ven 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. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Nevertheless, Ben Yosef teach processing of the animal food composition at temperatures of about 37oC or greater [see paragraphs 0060-0063].
With respect to claims 2-3, Ben Yosef teach a processed animal food and/or treat composition comprising an undenatured type II collagen [see Abstract; paragraphs 0042-0044].
With respect to claims 6-9, the recitation of “incorporated into the composition prior to processing and at least about 30% or more…”, “wherein 60% or more of the undenatured type II collagen is recovered…”, “undergoes processing that includes withstanding…”, and “processing lasts from 6 seconds to about 2 hours” only further limit the product by process limitations recited in claim 1. As stated above, MPEP 2113.I states “[e]ven 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. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Nevertheless, Ben Yosef teach processing of the animal food composition at temperatures of about 37oC or greater [see paragraphs 0060-0063].
With respect to claim 10, Ben Yosef teach the composition wherein the animal food and/or treat includes one or more of a protein source, a flavoring, or a coloring [see paragraphs 0010-0015].
With respect to claim 11, Ben Yosef teach the composition wherein the animal food and/or treat includes protein, fat and dietary fiber [see paragraphs 0007-0015, 0052-0054].
With respect to claim 12, Ben Yosef teach a processed animal food and/or treat composition comprising an undenatured type II collagen, which is interpreted as a processed animal meal given that the composition is intended for consumption [see Abstract; paragraphs 0042-0044].
Claim Rejections - 35 USC § 103
10. The rejection of claims 4-5 under 35 U.S.C. 103 as being unpatentable over Ben Yosef (US Patent Application Publication 2013/0052175 A1; cited on IDS filed on 08/30/2022) in view of Lin et al. (Journal of Functional Foods, 2018; cited on PTO-892 mailed on 09/30/2025) is maintained for the reasons of record and the reasons set forth below.
11. The relevant teachings of Ben Yosef as applied to claims 1-3 and 6-12 are set forth above.
With respect to claims 4-5, Ben Yosef teach a processed animal food and/or treat composition comprising an undenatured type II collagen [see Abstract; paragraphs 0042-0044]. Regarding the limitations “wherein the processed animal food and/or treat is processed at a temperature of about 37oC or greater”, these are product-by-process limitations. MPEP 2113.I states “[e]ven 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. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Nevertheless, Ben Yosef teach processing of the animal food composition at temperatures of about 37oC or greater [see paragraphs 0060-0063].
However, Ben Yosef does not teach the composition of claim 4, wherein the composition comprises one or more different types of collagen in addition to the undenatured type II collagen and the composition of claim 5, wherein the one or more different types of collagen include native type II collagen, collagen peptide, or a mixture thereof.
Lin et al. teach the purification of collagen peptides from chicken cartilage that counteract Cd-induced osteoporosis and have an application as functional foods for the prevention of osteoporosis [see Abstract; p. 131, p. 136].
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to combine the teachings of Ben Yosef and Lin et al. to include additional collagen peptides in the food compositions of Ben Yosef because Ben Yosef teach high protein food compositions comprising type II undenatured collagen. Lin et al. teach that collagen peptides counteract Cd-induced osteoporosis and have an application as functional foods for the prevention of osteoporosis. One of ordinary skill in the art would have had a reasonable expectation of success, a reasonable level of predictability, and would have been motivated to combine the teachings of Ben Yosef and Lin et al. because Lin et al. acknowledges that collagen peptides have an application as functional foods for the prevention of osteoporosis. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Response to Remarks Regarding Prior Art Rejections
12. Beginning on p. 6 of applicants’ remarks, applicants in summary contend that Yosef fails to teach a processed animal food and/or treat that includes an undenatured type II collagen that has been process at a temperature of about 37oC or greater and rather teach that the active ingredients are added after thermal processing. Applicants further contend that the structure implied by the process steps should be considered when assessing patentability and that manufacturing process steps as required by the claims would be expected to impart distinctive structural characteristics to the final product.
These arguments are found to be not persuasive because the claims require a processed food composition comprising an undenatured type II collagen. As stated above, MPEP 2113.I states “[e]ven 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. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Nevertheless, Ben Yosef teach processing of the animal food composition at temperatures of about 37oC or greater [see paragraphs 0060-0063]. Furthermore, the “wherein” clause states that the processed animal food is processed at a temperature of about 37oC or greater, but does not define which step in the process this temperature is applied.
Double Patenting
13. The provisional non-statutory double patenting rejection of claims 1-12 over claims 1-10 of copending Application No. 18/009359 is maintained for the reasons of record set forth in the Non-Final Rejection mailed on 09/30/2025.
14. The provisional non-statutory double patenting rejection of claims 1-12 over claims 1-12 of copending Application No. 17/908015 is maintained for the reasons of record set forth in the Non-Final Rejection mailed on 09/30/2025.
RESPONSE TO REMARKS: Beginning on p. 8 of applicants’ remarks, applicants request the rejection be held in abeyance until indication of allowable subject matter is received.
For these reasons, the rejections are maintained for the reasons already of record.
Conclusion
15. Status of the claims:
Claims 1-20 are pending.
Claims 13-20 stand withdrawn pursuant to 37 CFR 1.142(b).
Claims 1-12 are rejected.
No claims are in condition for an allowance.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL J HOLLAND whose telephone number is (571)270-3537. The examiner can normally be reached Monday to Friday from 8AM to 5PM.
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/PAUL J HOLLAND/Primary Examiner, Art Unit 1656