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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/06/2026 has been entered.
Status of the Claims
Receipt of Remarks/Amendments filed on 04/06/2026 is acknowledged. Claims 2-4, 7-8, 10, and 14 are cancelled. Claim 1 is amended. Claims 1, 5-6, 9, 11-13 and 15 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 9, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Purina Gourmet Wet Cat Food Perle Mini Fillets Chicken In Gravy 85g (Obtained from URL: https://www.amazon.co.uk/Gourmet-Fillets-chicken-Connoisseurs-Collection/dp/B005R0IK4G?th=1 on 05/12/2026; Review date as early as Nov. 21, 2020), hereinafter Purina Perle, and in view of Al-Murrani, S. (US 9,861,116 B2), hereinafter Al-Murrani, and Go Solutions (Should I Feed My Cat Wet or Dry Food? Obtained from URL: <https://go-solutions.com/en-ca/blog/should-i-feed-my-cat-wet-or-dry-food> on 05/12/26, posted Aug. 12, 2021).
Regarding Claim 1, Purina Perle teaches a wet cat food comprising chicken mini fillets in gravy (p. 1), which the Examiner interprets to be the same as chunks-in-gravy because this product is the same product used in the Instant Specification ([0070], [0074]).
Purina Perle does not teach incorporating tomato and/or spinach in the wet cat food.
Al-Murrani is in the pet food composition, and discloses the invention designed to induce the animal to cease feeding upon consumption of the appropriate nutritional amount by inducing satiety response (Abstract). Al-Murrani teaches that the satiety inducing agents produce an accelerated onset of the satiety response which is triggered at an earlier point in time than would a similar pet food composition without the satiety inducing agent (Col. 2, lines 62-65). Satiety inducing agent suitable for cats are beta-carotene, tomato powder and resveratrol (Col. 3, lines 17). Al-Murrani teaches the method of feeding a pet a food composition with the satiety inducing agent, rendering obvious the incorporation of tomato powder claimed (Col. 3, lines 33-39; Table 2). Compositions can be prepared in a canned or wet form using conventional pet food processes (Col. 3, lines 40-42). Regarding the amount of tomato powder, Al-Murrani teaches that a skilled artisan would determine the effective amount of satiety inducing agent according to animal body weight, and in the case of cats, food is generally prepared according to different specifications for cats of different age classes (Col. 3, line 59 to Col. 4, line 5). Effective amounts of tomato powder for an animal weighing 1 kg to 15 kg are in the range of 30 mg to 4500 mg (Col. 5, lines 24-28). A sample calculation was also taught by Al-Murrani based on the weight of a 1 kg cat (Col. 4, lines 9-20).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Al-Murrani with Purina Perle and add tomato powder to the chunks-in-gravy cat food composition of Purina Perle Purina as satiety inducing agent to trigger an accelerated onset of the satiety response in cats with reasonable expectations of success. One would optimize the amount based on factors such as the weight and age of the cat.
In the event that Al-Murrani does not sufficiently render the amount of tomato powder obvious, Go Solution assists by teaching that wet cat food generally comprises 78-82% moisture to ensure increased hydration (p. 3, last paragraph). The Examiner interprets this moisture to comprise the gravy, and therefore by calculation, the 85 g pouch of Perle comprises 68 g gravy. Calculating the tomato powder at 30 mg to 4,500 mg in cat food as taught by Al-Murrani would give 0.04%-6.2%, which overlaps with the claimed range. One of ordinary skill in the art would find it obvious to start with this amount taught by Go Solution, and adjust the amount of tomato powder as a matter of experimentation and optimization as described by Al-Murrani, based on factors such as weight and age of the cat. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Regarding the incorporation of the tomato in the gravy vs. into the chunks, there appears to be no criticality in the placement of the tomato as evidenced by the recitation of both options in the alternative in Claim 1, i.e. the tomato or the spinach may be present by themselves in the gravy, or together in the chunks.
Regarding Claim 9, Purina Perle and Al-Murrani do not teach adding sugar to the wet cat food.
Regarding Claim 13, Al-Murrani teaches a method of inducing a satiety response comprising feeding the animal an effective amount of the pet food composition of Composition 1, e.g., wherein the pet food composition is formulated to deliver the nutritional requirements of animals in the size and age class appropriate to the animal.
Regarding Claim 15, Purina Perle does not require adding phosphates to the cat food composition.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Purina Perle, in view of Al-Murrani and Go Solutions, as applied to Claim 1 above, and further in view of EFSA (Of record), hereinafter EFSA.
Regarding Claim 5, Purina Perle is silent on the cysteine.
EFSA teaches that the addition of L-cysteine to cat/dog food is safe as long as the balance of cysteine methionine in the complete diet is maintained (p. 2, Summary). EFSA describes how cysteine is converted to taurine, homocysteine, and S-adenosylmethionine in dogs and other omnivores, whereas cats require higher amount as cysteine serves as a precursor for energy production, and its role in the formation of hair and feline, which is a sulfur-containing amino acid found in cat urine (p. 8).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of EFSA with that of Purina Perle and incorporate free cysteine in the pet food of Purina Perle in order to supply essential amino acids that cannot be synthesized de novo. One would have been motivated to supplement free cysteine, which will be converted to essential amino acid taurine, which is particularly important in energy production of cats and in the formation of cat hair and feline, per the teaching of EFSA.
Claims 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Purina Perle, in view of Al-Murrani and Go Solutions, as applied to Claim 1 above, and further in view of Dixon (Of record).
Purina Perle does not teach spinach. However, Dixon cures the deficiency.
Regarding Claim 6, Dixon expressly teaches the process of making chunk by adding the dry ingredients to ground meat, and mixing, and chunk forming (Fig. 2). Dixon teaches embodiments wherein wet food compositions further comprise one or more nutritional ingredients, including spinach and tomato, to increase the visual appeal and demonstrate the nutritional aspects of the composition [0039]. Because Dixon teaches that the goal is visual appeal, one skilled in the art would add the nutritional ingredients in the chunks of Purina Perle for visibility.
Regarding Claim 12, Purina Perle teaches a packaged container but silent on the retorting step. Dixon expressly teaches sealing the products in containers and sterilizing by retorting (Example 2; [0055]; Fig. 2). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date and with reasonable expectations of success to combine the teachings of Dixon to that of Purina Perle and seal and sterilize the product by retorting in order to obtain a sterilized commercial product. Packaging and retorting are known techniques in the art. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Purina Perle, in view of Al-Murrani and Go Solutions, as applied to Claim 1 above, and further in view of Qiu et al. (Of record), hereinafter Qiu.
Regarding Claim 11, Purina Perle does not expressly teach soy sauce in the cat food.
Qiu also teaches pet food, and incorporates food additive and auxiliary materials with nutritional function (Claim 1). The auxiliary materials include vitamins, minerals, pigments, soy sauce etc.(Claim 7).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to add auxiliary materials such as soy sauce in the cat food of Purina Perle. Attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Further, as a general principle 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, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
Response to Remarks:
Applicant amended Claim 1, and traverses the argument over the amendment which now indicates the amount of each of tomato and spinach are at least a wt%. Applicant submits that the combination of Purina1, Purina2, and Dixon does not teach, disclose or suggest all the features of the amended independent Claim 1.
Applicant’s arguments have been considered but are moot because the new ground of rejection necessitated by the amendment does not rely on Purina1 and Purina2 for any teaching or matter specifically challenged in the argument. While the new rejection still relies on Dixon, it does not cite Dixon to teach the claimed amounts, as argued by Applicant.
Applicant remarked that the presently claimed compositions provide unexpected results for palatability. Applicant states that for tomato (Example 1 ), a palatability increase was achieved when tomato was specifically added to the gravy but not the chunk; for spinach (Example 2), a palatability increase was achieved when spinach was specifically added to the gravy but not the chunk; and for the combination of spinach and tomato (Example 3), a palatability increase in the chunk was observed when tomato and spinach were used together.
Firstly, any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. Applicant indicated that “when tomato powder was added to the chunk alone, the palatability enhancement was limited and non-systematic and overall non-significant” in [0071]. However, no conditions or data was shown, therefore, the Examiner cannot ascertain if the claimed unexpected result was truly significant and unexpected without any kind of statement as to exactly how the experiment was performed with regards to the chunks. Similarly, [0074] of the Specification recites that “Adding spinach flakes at 4% in the chunks did not significantly positively impact the palatability…” but does not indicate any other conditions, or testing information and data. Without any statement as to exactly how the experiment was run with regards to the chunks no significant correlation can be determined with regards to patentability. An unexpected property or result must actually be unexpected and of statistical and practical significance. The burden is on the applicant to establish the results are in fact unexpected, unobvious and of statistical and practical significance. See MPEP 716.02.
Additionally, the rejection supra now relies on Purina Perle. Applicant also used Purina Perle. As such, the same consistency and palatability as that of the instant Application will be achieved when one of ordinary skills in the art adds tomato powder to Purina Perle.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 5-6, 9, 11-13 and 15 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1, 5, and 9-15 of co-pending Application No. 18/333,364, hereinafter ‘364, in view of Al-Murrani. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The instant claims are drawn to a method of making a wet food formulated for administration to a pet, method comprising incorporating at least one of spinach flake/powder or tomato powder into the wet food in an amount effective to enhance palatability of the wet food and/or reduce added sugar in the wet food. ‘364 is drawn to a wet food formulated for administration to a pet, the wet food comprising an amount of at least one of spinach or tomato effective to enhance palatability of the wet food and/or reduce sugar in the wet food; a product comprising a container and the wet food; a method of providing nutrition to a pet comprising administering the wet food to the pet. The claims overlap almost in entirety.
While ‘364 does not teach the tomato/spinach powder feature, Al-Murrani cures the deficiency. The teachings of Al-Murrani have been set forth supra.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Al-Murrani with ‘364 and add tomato powder to the wet cat food composition of ‘364 to trigger an accelerated onset of the satiety response in cats with reasonable expectations of success.
Therefore, the claims are drawn to the same subject matter and are not patentably distinct from the instant claims.
Response to Remarks:
Applicant traversed the rejection over co-pending ‘364 on the grounds that ‘364 has not been granted a patent.
The rejections are maintained since applicant has not made any substantive arguments traversing the double patenting rejection. Applicant is reminded that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 714.02 and CFR 1.111(b)).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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