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 regard to the application filed on June 23, 2023 and in response to Applicant’s Amendments and Arguments/Remarks filed on October 28, 2025.
Status of Application
The amendment filed October 28, 2025 has been entered. Claims 1-13 are currently pending in the application. Claims 1-13 have been amended. Claims 1-13 are hereby examined on the merits.
The previous 112(b) rejections of claims 1-13 have been withdrawn in view of applicant’s claim amendments, however, the claims remain rejected over 112(b) under a new grounds of rejection. The previous objection to the abstract of the disclosure has been withdrawn in light of applicant’s replacement abstract.
Claim Objections
Claims 2 and 3 are objected to because of the following informalities:
Claim 3 starts on the same line that claim 2 ends. Each claim should start on its own line.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a pet food with a specific moisture content, does not reasonably provide enablement for the claimed technical properties when the pet food is immersed in water or liquid. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The specification does not reasonably provide enablement for any of the “wherein” clauses in the instant claims for a pet food with a certain moisture content.
The specification is not enabling when weighed upon the Wands factors as shown in MPEP 2164.01(a), a test stated in In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). Upon applying this test to the instant claims, it is believed that the specification is not enabling and commensurate in scope with the claims because:
The breadth of the claims is broad, as the claims read “a dry-type kibble having 70 mass% or more of cereals and meats as main ingredients” and “a moisture content of 15 mass% or less,” with no other limits as to the components of the pet food. Reciting that the kibble contains “cereals and meats” is not particularly specific where it is already well known in the art that a dry kibble pet food typically contains mainly grain and/or meat.
The nature of the invention is a dry-type kibble pet food with the claimed “cereals and meats,” moisture content, and hardness properties. Other than the moisture content, and the fact that the kibble contains cereals and meats, there is no other limit on the composition of the pet food. There is also a claimed shape and “surface opening area ratios,” however, these do not impact the composition of the pet food.
There is a lack of predictability in the art as one skilled in the art cannot readily anticipate the water absorption capability of a pet food based on only the moisture content and the ingredients of “cereals and meats.” The instant specification further defines the pet food as comprising raw materials [0130], the raw materials being only define by broad categories [0132], yet forgoes defining the work-up of the pet food that is claimed. The information provided in the instant claims and specification is not enough to predict the water absorption properties of the claimed pet food.
There is little direction and guidance provided by the inventor for how a pet food with a moisture content and ingredients as claimed is able to exemplify the claimed properties when the pet food is immersed in water/liquid. In comparison examples, the inventor only states a “commercially available pet food” without giving specifics to the composition and how these commercial pet foods differ from the pet foods of the claimed invention.
There are no sufficient working examples to enable one skilled in the art to be able to practice the invention without an undue amount of experimentation. The example in the specification does not adequately define the components of the pet food, and in any case, the example is not commensurate in scope with that of the claims. Table 1 in the instant specification shows only a composition of the raw materials of the pet food, but not the composition of the pet food itself, as shown in [0130].
The quantity of experimentation needed to make or use the invention based on the content of the disclosure is substantial since the claim reads on a pet food with a specific moisture content and broad ingredients with specific properties when immersed in water/liquid, while there is nothing disclosed in the specification as to how one would achieve these properties by adjusting the moisture content and ingredients.
In light of the Wands factors, the disclosure fails to provide sufficient information regarding the subject matter of the claims as to enable one skilled in the art to make and use the claimed invention commensurate in scope with these claims. The specification does not reasonably provide enablement to make and use the invention of claims 1-13. See MPEP 2164 and 2161.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the pet food" in lines 9 and 12. There is insufficient antecedent basis for this limitation in the claim.
Claims 1 and 12 claim surface opening area ratios of multiple surfaces of the kibble that are projected in different directions (claim 1: lines 8-13; claim 12: lines 8-13), which renders the claims indefinite, as the meaning of these claimed limitations are unclear. The claim later goes on to recite that “the surface opening area ratio is a value obtained by photographing an image of the kibble using a digital microscope and measuring the surface opening area ratio excluding a circle-equivalent diameter of less than 50 μm in automatic area measurement as measurement/scale tool of the digital microscope using the image;” however, this does little, if any, to clarify the earlier claim limitations. The claims and specification merely state that a “surface opening area ratio” is a value and that it’s obtained by “measuring the surface opening area ratio,” without actually explaining what this value is or what it represents. What is the ratio, what are the two measurements that make up this ratio? What is a “surface opening area?” Does it mean that the kibble is porous and this is a measurement of the pores on the surface? Moreover, does the difference in these values on different surfaces of the same kibble piece indicate that the kibble has different textures throughout the piece? For the purposes of examination, these limitations will be interpreted as that the claimed kibble has a textured (i.e., not smooth) surface.
Claims 1 and 12 also recite that “the hardness is a value measured for a surface on which the surface opening area ratio of the surface on which the kibble is projected in one direction is the lowest,” which renders the claim indefinite as the meaning of which is unclear. Do the different surfaces on the kibble have different hardnesses? If so, how is that possible? For the purposes of examination, the claims will be interpreted such that the kibble has one hardness value for the entire piece of kibble.
Claims 4 and 5 recite that “when the kibble is immersed in the water…a dough of the kibble expands,” and relatedly, claim 8 recites that “when the kibble is immersed in the water…a dough area in a cross section of a central portion of the kibble increases,” which renders the claim indefinite as it’s unclear how the kibble could be immersed in water but the dough of the kibble expands/increases, since “dough” in its ordinary meaning is considered to be a mixture of flour/meal and a liquid prior to forming/baking the dough into its final form (i.e., a dough would be made, then baked/dried to form the kibble). In other words, both kibble and a dough of the kibble shouldn’t exist in the same composition. Once you have kibble, you no longer have dough. For the purposes of examination, the claims will be interpreted as “the kibble is immersed in the water…a piece of the kibble expands/increases.”
Claims 2, 3, 6, 7, 9-11 and 13 are rejected as being dependent on a rejected base claim.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (US PG Pub 2016/0338382; cited on PTO-892 dated July 30, 2025), herein after referred to as Ikeda.
The following rejections of the claims are interpreted and rendered obvious as best understood in view of the lack of enablement to make and use the invention commensurate in scope with the claims with respect to the 112(a) rejections above and the lack of clarity with respect to the 112(b) rejections above.
Regarding claims 1-13, Ikeda teaches a granulated pelleted pet food (i.e., a dry-type kibble) (claim 1) having:
39.7 wt.% corn, 22.8 wt.% wheat flour/bread crumbs, and 19.8 wt.% animal protein (i.e., 82.3 mass% cereals and meats as main ingredients with respect to 100 mass% of the kibble),
a moisture content of 8.4 wt.% with respect to 100 wt.% of the kibble (Table 1, Example 1),
a cylindrical shape [0038],
a hardness of 49 N (Table 2, Example 1), and
bubbles contained in the pellets (i.e., a textured surface) [0037].
Regarding the claimed properties (e.g., hardness after immersion, absorption, expansion, etc.), where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See MPEP 2112.01(I).
Given that the prior art pet food composition is substantially similar to the kibble pet food composition as claimed, the pet food of the prior art is considered to have the properties as claimed in the absence of convincing arguments or evidence to the contrary.
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejections of claims 1-13 from the previous office action and therefore these rejections have been withdrawn. However, the claims remain rejected under 112(b) over a new grounds of rejection. Applicant’s amendment has not overcome the 112(a) rejections of claims 1-13 and thus these rejections have been maintained.
Applicant's arguments filed October 28, 2025 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the examiner for the following reasons.
Applicant argues that the cited prior art does not teach the amended claim limitations and that the claimed invention shows advantageous results as compared to commercially available pet foods (Remarks, p. 8-9).
This argument is not persuasive. Since the claims have been amended, the rejection has also been amended; the cited prior art renders obvious the new claim limitations. The results shown by applicant are not persuasive because where applicant, and the instant claims, show only properties, applicant has not shown nor provided any evidence that these same properties would not also show up in the pet food of the prior art. Applicant has compared the results of the instant invention to that of “commercially available” pet food, but has no comparison to that of the prior art, which is required to successfully rebut the rejection.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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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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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791