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
Status of the Claims
Receipt of Remarks and Affidavit filed on 08/05/2026 is acknowledged. Claims 2-4, 7-8, 10, and 14 are cancelled. 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Rejection(s) not reiterated from the previous Office Action are hereby withdrawn.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.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn.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 (Of record), hereinafter Purina Perle, and in view of Al-Murrani, S. (Of record), hereinafter Al-Murrani.
Regarding Claim 1, Purina Perle teaches a wet cat food comprising chicken mini fillets in gravy with 80% moisture (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.
The moisture in Purina Perle comprises 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. and one would 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, 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 (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, 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, 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.
Claims 1, 5, 9, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over ZooPlus (James Wellbeloved Adult Cat Hypoallergenic Pouches – Turkey in Gravy. Obtained on 07/28/2026 from URL: <https://www.zooplus.co.uk/shop/cats/canned_cat_food_pouches/ james_wellbeloved_cat/james_wellbeloved_adult_cat/407605?activeVariant=407605.5>; Review date as early as 07/07/2014), hereinafter ZooPlus, and in view of Buckholz et al. (US 4,999,207), hereinafter Buckholz, as evidenced by EFSA.
Regarding Claim 1, ZooPlus teaches a tasty, complete wet cat food comprising turkey in gravy, and ingredients include tomato powder (p. 1, Title; p. 2, Ingredients).
ZooPlus does not teach the amount of tomato powder.
Buckholz discloses the use of a compound in augmenting the organoleptic properties of foodstuffs, including in cat foods (Abstract; Col. 14, lines 5-11). Buckholz teaches producing gravy comprising 1% tomato powder (Example XXVIII).
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 Buckholz with that of ZooPlus and use the gravy with tomato powder starting at 1% as the gravy of ZooPlus to enhance the organoleptic properties of ZooPlus’ cat food.
Regarding Claim 5, Buckholz teaches conventional flavoring adjuvants known in the art, and relates cysteine as one of the preferred co-flavoring adjuvants (Col. 14, lines 12-24 and 68). As such, It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to add the cysteine in the gravy with the turkey chunks, as cysteine is a known adjuvant, and precursor of taurine, which plays a role in the formation of hair, as evidenced by EFSA (vide supra).
Further, 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.
Regarding Claim 9, ZooPlus does not contain nor require sugar.
Regarding Claim 13, ZooPlus teaches a complete cat food, and the reviews relate customers giving the food to cats (pp 1 and 5-6).
Regarding Claim 15, ZooPlus does not contain nor require adding phosphates to the cat food composition (p. 2 ingredients).
Claims 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over ZooPlus in view of Buckholz, as applied to Claim 1 above, and further in view of Dixon (Of record).
ZooPlus 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 comprising turkey of ZooPlus for visibility.
Regarding Claim 12, ZooPlus 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 ZooPlus 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 ZooPlus in view of Buckholz, as applied to Claim 1 above, and further in view of Qiu et al. (Of record), hereinafter Qiu.
Regarding Claim 11, ZooPlus 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 ZooPlus. 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:
The Applicant traversed the rejections under 35 U.S.C. §103 as outlined below, and the Examiner’s response follows.
1. Applicant argues that Al-Murrani teaches away from the Applicant’s invention because its pet food is designed to induce animal to cease feeding upon consumption of the appropriate nutritional amount by inducing a satiety response, thereby discouraging the result the Applicant seeks, i. e. enhance palatability, i.e. increase preference and consumption.
The Examiner has considered this argument but traverses. The motivation in the prior art does not have to be the same as the instant Application. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996)(“[T]he motivation in the prior art…does not have to be identical to that of the applicant to establish obviousness.” Applicant is further reminded that “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls… [A]ny need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
Applicant is further reminded that the claims are drawn to a method of making cat food formulated for administration to a cat and are examined in accordance to the active steps recited, which in this case is the incorporation of spinach and/or tomato into the wet cat food. The steps have been rendered obvious by the prior art.
2. Applicant argues that Al-Murrani do not teach the claimed placement or amounts of the components. Specifically, Al-Murrani expresses tomato powder in absolute mass (30 mg to 4,500 mg per animal) as a satiety dose keyed to body weight, not as a weight-percent of a defined gravy or chunk component. Additionally, the Office calculates based on the assumption that the entire moisture content of an 85 g Purina Perle pouch ("68 g gravy") constitutes a flowable gravy phase.
The Examiner is not convinced. Firstly, in both these cases, Applicant has not shown criticality of the claimed amounts. An improvement in the art would have been obvious if “it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Finding workable or optimal ranges is generally understood as within the capabilities of the ordinary artisan. See Pfizer Inc. v. Apotex Inc., 82 USPQ2d 1321 (Fed. Cir. 2007) (discovery of an optimum value of a variable in a known process is usually obvious.). The idea that optimizing an ordinary variable does not by itself constitute a patentable advance was also stated in In re Geisler, 43 USPQ2d 1362: “…“it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Only if the “results of optimizing a variable” are “unexpectedly good” can a patent be obtained for the claimed critical range. In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977); see also In re Dillon , 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed.Cir. 1990) (in banc).” Note MPEP §2144.05(II)(A) on this issue. Likewise, optimization of a range or other variable within the claims flows from the “normal desire of scientists or artisans to improve upon what is already generally known.” In re Peterson, 65 USPQ2d 1379, 1382. In this case, it is well within the skills of an ordinary artisan to examine and start with the amounts of spinach/tomato taught by the prior art based on the cat’s weight, and adjusting based on the desired consistency, color, and other factors.
Applicant appears to argue that the total moisture content ~80% recited by Purina Perle is not equivalent to gravy content because moisture is distributed in the meat/chunk phase, therefore the calculated values based on the gravy is incorrect. However, in a Chunks-in-Gravy product, the Examiner interpret any liquid to comprise the gravy, unless shown otherwise.
3. Applicant remarks that before an amount can be characterized as the product of routine optimization, the prior art must recognize the variable as one that achieves the relevant result, and that Al-Murrani does not teach the tomato powder affects palatability.
It is well within the skills of an ordinary artisan to examine and start with the amounts of spinach/tomato taught by the prior art based on the cat’s weight, and adjusting based on the desired consistency, color, taste etc. Applicant is reminded that the variable just has to be an art recognized result effective variable, and does not have to be an art recognized result effective for the same reason that Applicant is using it.
4. Applicant argues that Buckholz teaches sclareolide as the operative organoleptic agent; it does not teach tomato powder as a palatant, nor does it recognize the amount of tomato powder as affecting palatability. To the extent an example formulation incidentally includes tomato powder as a conventional base ingredient of a foodstuff being flavored with sclareolide, such incidental
presence is not a teaching to select tomato powder (rather than sclareolide) for palatability, and
provides no recognition of tomato powder amount as a result-effective variable.
Applicant acknowledges that Buckholz teaches tomato powder, but does not appear to acknowledge its role as palatant. The Examiner again directs Applicant to the argument supra, i.e. that the claims are drawn to a method of making cat food, and Buckholz does not need to identify the role of the tomato powder in the gravy. The motivation in the prior art does not have to be the same as the instant Application. Vide supra.
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5. Applicant remarked that Zooplus does not teach the placement or amounts of the tomato and does not teach spinach; and that tomato powder is listed low in the ingredient listing, which Applicant interprets to indicate low quantity.
As discussed above, Zooplus is not relied on to teach the amount of tomato powder; Buckholz teaches the amount in gravy. (See Example XXVIII). 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 Buckholz with that of ZooPlus and use the gravy with tomato powder starting at 1% as the gravy of ZooPlus to enhance the organoleptic properties of ZooPlus’ cat food.
With regards to the spinach, Dixon was relied on to cure the deficiency of Zooplus.
6. Applicant appears to argue there is no reason to combine ZooPlus with Buckholz, and that characterizing ZooPlus as "tasty" is not a teaching that the claimed component-specific amount of tomato powder in a gravy produces a statistically significant palatability enhancement.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Zooplus already teaches the cat food product with tomato powder. As such, making a cat food with tomato powder would be obvious to a skilled artisan because it already exists before the effective filing date of the instant Application. One would only need to find out the amount of the tomato powder, which Buckholz provides, i.e. tomato powder in gravy in a foodstuff composition that is suitable to cats.
7. Applicant appears to claim that spinach would have been expected to reduce, not enhance, palatability, and argues that Dixon discloses spinach only for visual appeal, and therefore teaches away from using spinach to enhance palatability.
As above, the motivation in the prior art does not have to be the same as the instant Application. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996)(“[T]he motivation in the prior art…does not have to be identical to that of the applicant to establish obviousness.” Applicant is further reminded that “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls… [A]ny need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
Applicant is reminded that the claims are drawn to a method of making cat food formulated for administration to a cat and are examined in accordance to the active steps recited, which in this case is the incorporation of spinach and/or tomato into the wet cat food regardless of the motivation, i.e. palatability vs. visual appeal. The steps have been rendered obvious by the prior art.
8. Applicant appears to point to criticality of placement of tomato in gravy vs. chunks because tomato powder added to chunks alone produced limited, non-systematic, non-significant results; spinach powder/flakes added to gravy produced repeated significant enhanced palatability; and tomato plus spinach together in chunks produced significant enhancement, whereas spinach alone in chunks did not.
It appears from this argument that Applicant is claiming criticality of the amount of tomato/spinach powder in the gravy or the tomato and spinach together in the chunks. However, the Examiner cannot ascertain the criticality because there was no data presented, but rather only a statement in the specification: “When tomato powder was added to the chunk alone, the palatability enhancement was limited and non-systematic and overall non-significant” [0071]. Of note, only 1% was used for the tomato/spinach in the gravy (Tables 1 and 2). Similarly, statements were made on how spinach flakes at 4% in the chunks did not significantly positively impact the palatability, that tomato powder does not impact palatability when added solely at 4% in the chunks (no data shown), but that the combination of spinach flakes and tomato powder creates a palatability boost [0074]. The Examiner notes that the data in Table 3 shows spinach powder in the chunks vs. spinach flakes when used in combination with tomato powder. Furthermore, it appears that the consumption data for the combination of 1% tomato powder and 1% spinach flakes in the chunk is higher than the combination of 2% tomato powder and 2% spinach flakes in the chunk. No test was made for spinach powder with tomato powder. Nevertheless, Applicant takes the conclusion that the combination of the two ingredients when added in the chunks generates the palatability effect. The Examiner remains unconvinced.
9. Applicant claims that the Vanacker declaration directly addresses the Office Action's concern that the specification lacks detail regarding how the palatability tests were conducted and confirms the statistical significance of the reported results. The Totlani declaration already of record confirms that the prior Purina Fancy Feast Medleys product cited in the previous rejection does not have vegetables blended into the meat chunk or gravy, but rather visible inclusions admixed with meat pieces and gravy, and underscores that visible inclusions or product label ingredients cannot be equated with the presently claimed incorporation into a defined gravy or chunk component at the claimed component-specific levels.
The Applicant, hereinafter Declarant in this section, submitted the Vanacker declaration, describing how the tests were conducted. However, no data was provided, but rather only a statement saying that “Statistical analyses to assess for difference in percent consumption between pairs of food were conducted and the difference for significance was p-value < .05”, and therefore does not address the lack of showing cited above. _
The Examiner has reviewed the Totlani declaration filed 04/06/2026, which alleges that the Purina Perle product does not have vegetable in the meat chunk or blended into the gravy but that “the tomato, carrot, and spinach are admixed with the meat pieces and the gravy…having distinct visible carrot, tomato, and spinach inclusions”. In response, the Examiner points out that a Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
Any differences between the claimed invention and the prior art is expected to result in some difference in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. The burden is on the Declarant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). It is not sufficient for the Declarant to say that the products of the process claims are more palatable to that of Purina Perle’s (or ZooPlus) without showing consumption data comparing the instant product with the commercial products. As such, with lack of data of side-by-side comparison, the Office cannot ascertain the difference in degree of palatability compared to the prior art, and its statistical and practical significance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 5-6, 9, 11-13 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 5, and 9-18 of co-pending Application No. 18/333,364, hereinafter ‘364. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to the same subject matter and composition components.
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.
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 are product claims directed to a wet food comprising an amount of at least one of spinach or tomato, and neither the '364 claims nor Al-Murrani nor ZooPlus renders obvious the presently claimed method requiring tomato powder or spinach powder/flake incorporated into a flowable gravy at about 1-3 wt.%, or both tomato and spinach in the chunks each at about 1-3 wt.%. Applicant alleges that Al-Murrani teaches away (satiety), and ZooPlus does not teach spinach or the claimed component-specific amounts, and neither recognizes the amount of tomato/spinach in the gravy or chunks as affecting palatability.
The Examiner no longer relies on Al-Murrani and ZooPlus because co-pending '294 has been modified and new claims teaching spinach flakes and tomato powder within the claimed amounts have been added.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Pickering, G. J. ("Optimizing the sensory characteristics and acceptance of canned cat food: Use of a human taste panel." Journal of animal physiology and animal nutrition 93.1 (2009): 52-60). Pickering teaches binary samples containing meat chunk (MC) and gravy/gel (GG), and cats display preference for one or another of the components of binary systems depending on the flavour and texture in the MC and GG, indicating the importance in assessing each component separately (Abstract; T1-T3; p. 59, R. Col., 2nd paragraph).
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 JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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