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. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/01/2026 has been entered.
3. Applicant’s amendment to the claims filed on 05/01/2026 in response to the Final Rejection mailed on 03/05/2026 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
4. Claims 1-20 are pending.
5. Claims 13-20 stand withdrawn pursuant to 37 CFR 1.142(b).
6. Applicant’s remarks filed on 05/01/2026 in response to the Final Rejection mailed on 03/05/2026 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
7. 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 40oC or greater, wherein an amount of the undenatured type II collagen is incorporated into the composition prior to the processing and at least 60% or more of the undenatured type II collagen is recovered after processing. 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 40oC or greater, wherein an amount of the undenatured type II collagen is incorporated into the composition prior to the processing and at least 60% or more of the undenatured type II collagen is recovered after processing” 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 in summary 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 40oC or greater would have to demonstrate markedly different characteristics. Applicants contend that the claimed requirement that at least about 60% of the undenatured type II collagen is retained after processing does not occur in nature and is markedly different in structure.
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 40oC 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 40oC or greater wherein an amount of the undenatured type II collagen is incorporated into the composition prior to the processing and at least 60% or more of the undenatured type II collagen is recovered after processing” only serves to limit how the collagen is obtained and provides no evidence that the obtained product is structurally different from its natural counterpart. In the end, the processed animal food is “an undenatured type II collagen” that maintains the same structure it has in nature. 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
8. The rejection of claims 1-3 and 6-12 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.
9. As amended, 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 40oC or greater, wherein an amount of the undenatured type II collagen is incorporated into the composition prior to the processing and at least 60% or more of the undenatured type II collagen is recovered after processing.
10. With respect to claim 1, Ben Yosef teach a processed animal food and/or treat composition comprising an amount of 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 40oC or greater, wherein an amount of the undenatured type II collagen is incorporated into the composition prior to the processing and at least 60% or more of the undenatured type II collagen is recovered after processing”, 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 40oC 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 60% or more…”, “wherein 65% 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)”.
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
11. 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.
12. 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].
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
13. Beginning on p. 7 of applicants’ remarks, applicants in summary contend that the present claims require incorporation of undenatured type II collagen into a composition prior to processing and recovery of at least about 60% or more of the undenatured type II collagen after processing. Applicants contend that Yosef fails to teach or suggest either limitation and further contend that the requirement of at least about 60% recovery of undenatured type II collagen is not a mere product-by-process limitation and serves as a measurable structural marker that distinguishes the claimed composition from those where the collagen has been denatured or adding post-processing.
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)”. In the end, there is no evidence to suggest that the undenatured type II collagen prepared by Yosef has any structural distinction from that of the claimed undenatured type II collagen despite them being prepared by a different method.
Double Patenting
14. 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.
15. 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
16. 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.
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
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