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 .
This office action is in response to applicant’s submission dated July 2, 2025. Any objections and/or rejections made in the previous action, and not repeated below, are hereby withdrawn.
Claims 1-15 are pending, and claims 12-15 remain withdrawn from consideration as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yamka et al. (US 9848622 B2).
With respect to Claims 1 and 10, Yamka et al. presents a pet food composition useful for enhancing the immune function of an animal comprising omega-3 fatty acids of EPA and DHA [Col 1, Lines 61-62], carbohydrates, proteins, fats [Col 2, Lines 30-32] and soy isoflavones [Col. 6, Line 21]. Additionally, one embodiment of the composition is described as comprising between 20 and 60% protein and between 5 and 55% by weight carbohydrates [Col 2, Lines 40-44]. This would provide a range of possible ratios of protein to carbohydrates between 0.36:1 to 12:1, which encompasses the range provided in claim 1 and claim 10.
According to MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have created a pet food composition with protein, fats, carbohydrates, omega-3 fatty acids, and isoflavones with a protein to carbohydrate ratio as recited in claim 1 or claim 10.
With respect to Claims 2, 3, and 4, Yamka et al. teaches the composition comprises omega-3 fatty acids of 0.1-0.7% EPA and 0.1-0.5% DHA [Col 1, Lines 61-62], for a total omega-3 content of between 0.2% and 1.2%. According to MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced the composition as recited in claim 2, 3, and 4.
With respect to Claims 8 and 9, Yamka et al. teaches one embodiment of the composition is described as comprising between 20 and 60% protein and between 5 and 55% by weight carbohydrates [Col 2, Lines 40-44]. According to MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced the composition as recited in claim 8 and 9.
With respect to Claim 11, Yamka et al. states the foods are formulated for canine growth [Col. 7, Line 2]. Additionally, It is noted that “formulated for a canine” is a recitation of the intended use of the product and does not further limit the claim, see MPEP 2111.02 II.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamka et al. (US9848622B2) in view of Cerundolo et al. (Identification and concentration of soy phytoestrogens in commercial dog foods).
With respect 5-7, Yamka et al. describes the invention recited in claim 1. Yamka et al is silent to which soy isoflavones would be present as well as the concentration of isoflavones in the product.
Cerundolo et al. presents a study to determine the concentrations of phytoestrogens in commercial dogfoods [Page 592, Col. 2, Par. 1]. Of those phytoestrogens being studied are Genistein, Daidzein, Glycitein, and Biochanin A [Figure 1]. Cerundolo et al. presents the results of the study as a measurement of individual values of each soy isoflavone in 24 dog foods [Table 1]. Of those dog foods containing isoflavones, the lowest total amount was 28 mg/kg and the highest total amount was 1,328 mg/kg based on dry weight.
Yamka et al. and Cerundolo et al. exist within the same field of endeavor in that they are both concerned with pet food compositions, specifically those containing isoflavones. Yamka et al. presents a composition with soy isoflavones, but is silent to the specific composition of soy isoflavones. Cerundolo et al. presents some commercially available pet food compositions and presents the exact amounts of soy isoflavones, specifically genistein, daidzein, and glycitein. Of those pet foods presented, some contained ranges that overlapped with the ranges recited in claims 6 and 7.
According to MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced the pet food composition described by Yamka et al. with the isoflavones selected from the group recited in claim 5 and within the ranges recited in claims 6 and 7.
Response to Arguments
Applicant's arguments filed July 2, 2025 have been fully considered but they are not persuasive.
With respect to Claim 1-4 and 8-11, applicant asserts unexpected results from the invention, however asserted benefits are not commensurate in scope with the limitations of the instantly presented claims, and are therefore not persuasive.
With respect to Claims 1-4 and 8-11, applicant argues, “that the present invention provides data showing that the present compositional elements are critical and provide unexpected results over the art.” [Page 2, Par. 4] Applicant presents the data from the instant specification, providing Examples 1 through 5. Applicant continues, “that the present data is completely unexpected and surprising in light of the understanding of the prior art prior to Applicant’s filing. While high protein diets have been known, the present compositions having a specific protein to carbohydrate ratio supplemented with omega-3 fatty acids and isoflavones provide unexpected results over previously known compositions including those disclosed in Yamka.” [Page 4, Par. 2]
Applicant’s assertion that the method of feeding the composition recited provides unexpected and surprising results is not commensurate in scope with the limitations of the claims presented. Claims 1-4 and 8-11 recite limitations pertaining to the composition itself, and not a method for feeding.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the retention of lean body mass in a high protein diet) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant asserts that the composition taught by Yamka does not possess the same properties as the composition in the instant application. Additionally, according to the MPEP 2145 II, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.”
Additionally, Applicant asserts that the provided health benefit in the instant invention does not exist in the invention described by Yamka, but applicant provides no evidence of that claim. After the examiner has made a prima facie case of obviousness, according to the MPEP 2183, “the burden then shifts to the applicant to show that the element shown in the prior art is not an equivalent of the structure, material or acts disclosed in the application.”
With respect to Claims 5-7, applicant renews the arguments provided in defense of claims 1-4 and 8-11 and asserts that Cerundolo provides “no understanding or direction to provide such a composition, and therefore, fails to cure the deficiencies of the primary reference.”
Applicant’s arguments with respect to claim 1-4 and 8-11 have been found to be unpersuasive, and therefore do not overcome the rejection of Yamka in view of Cerundolo. Additionally, applicant’s assertion that Cerundolo fails to cure the deficiencies of Yamka amounts to an attack on the reference individually.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Additionally, Yamka presents a composition comprising isoflavones, and Cerundolo presents a range of isoflavones in publicly available pet foods that overlap with the range recited in the instant application. According to MPEP 2144.05 I, “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 light of the above response, the rejection of claims 5-7 are maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791