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 .
Election/Restrictions
Claims 8-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 9, 2026.
Applicant’s election of claims 1-7 in the reply filed on January 9, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
Claims 4, 5, 6, and 7 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claims have not been further treated on the merits.
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 1-3 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 beef tallow, pork lard, and poultry fat as a first lipid, and saturated monoglyceride or palm stearin as a second lipid does not reasonably provide enablement for any lipid. 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 the invention commensurate in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to: (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Applying these factors to claim 1:
(A) The breadth of the claims
The claim is broad in the scope in the sense that it encompasses any lipid. Lipids are a diverse group of water-insoluble organic compounds, generally categorized into eight groups including fatty acyls, glycerolipids, glycerophospholipids, sphingolipids, sterol lipids, prenol lipids, saccharolipids, and polyketides
(B) The nature of the invention
The invention relates to a pet food product comprising a first lipid and a second lipid.
(C) - (E) State of the prior art/The level of ordinary skill/The level of predictability
Production of pet food products comprising lipids is an old art. However, the art is not without uncertainty. Production of pet food products comprising a modified fat which comprises a first lipid and further comprises a second lipid such that the modified fat has at least one property which is increased relative to the first lipid, the at least one increased property selected from the group consisting of hardness, crystallinity, viscosity, and solid fat content lies somewhere between a predictable art and an unpredictable art. However, when the skilled artisan attempts to calculate all the compositions containing any possible lipids combination, predictability is lost due to the complexity of art.
F. The amount of direction provided by the inventor
The entirety of the direction offered by the specification relates to beef tallow, pork lard, and poultry fat as a first lipid, and saturated monoglyceride or palm stearin as a second lipid There is no direction provided for lipids other than beef tallow, pork lard, poultry fat as a first lipid, and saturated monoglyceride or palm stearin as a second lipid.
G. The existence of working examples
The specification provides no working examples. The specification provides several “palatability trials”:
[0049] Then a first palatability trial demonstrated that conditions leading to fat migration decrease palatability, and conditions reducing fat migration increase palatability. Therefore, without being bound by any theory, it is very likely that modification of the fat that will make it more crystalline (e.g., adding saturated monoglyceride or stearins) will increase palatability.
[0050] Increased palatability from addition of modifiers that solidify the fat was further demonstrated by a second palatability trial. In this trial, saturated monoglycerides or palm stearin were used to modify fats (i.e., chicken and beef fats) to make the fat become harder, with the objective to limit diffusion. FIG. 6 shows the results from the first and second experiments in the second palatability trial (“low monoglycerides”=5 wt. % saturated monoglycerides relative to total lipid in the coating layers on the kibble, “high monoglycerides”=16 wt. % saturated monoglycerides relative to total lipid in the coating layers on the kibble).
[0051] In the first experiment for the second palatability trial, the following sequence of coating was deposited onto the kibbles (animal extrudate). For the reference sample, the following sequence was applied: first, 6% poultry fat (at 60° C.); second, 2% liquid animal digest (LAD); and third, 2% of dried animal digest (DAD). This process is referenced herein as “three tier” coating, i.e., a layer of fat or modified fat on the kibble, then a layer of LAD on the fat or modified fat, then a layer of DAD on the layer of LAD.
[0055] In a second experiment for the second palatability trial, the following sequence of coating was applied to the kibble. For the reference sample: first, 6% poultry fat (at 60° C.); second, 2% LAD; and third, 2% of DAD. For the modified sample: 5% poultry fat was first mixed with 1% saturated monoglyceride (Dimodan® HR) at 70° C. to form the lipid mixture. This was applied onto the kibbles followed by 2% LAD and 2% DAD. The palatability tests were conducted as described earlier. The results showed 70/30 preference for the kibble containing modified fat (poultry fat and HIGH monoglycerides).
[0056] In a third experiment for the second palatability trial (results in FIG. 6), a different sequence of deposition was used. For the reference sample: first, 6% poultry fat (at 60° C.) at the same time as the LAD; and second, 2% DAD. For the modified fat, 5.4% poultry fat was first mixed with 0.6% palm stearin at 60° C. to form the lipid mixture. This lipid mixture was substantially simultaneously applied onto the kibbles as 2% LAD (i.e., about two seconds afterward). Then 2% DAD was applied to the kibble which was already at least partially coated with LAD. The palatability test again showed that the dogs had preference for the kibble with modified fats (60/40).
[0058] In a third palatability trial (results in FIG. 7), the fat and the LAD were applied almost simultaneously in a continuous process (i.e., about two seconds afterward). Specifically, for a given kibble, LAD is deposited while only part of the fat has been deposited, allowing for some degree of interdiffusion. After both fat and LAD were deposited, DAD was applied.
[0059] In a first experiment for the third palatability trial, the modified fat consists in 5.4% poultry fat and 0.6% palm stearin. Kibbles with this modified fat were compared to kibbles with standard poultry fat (6% poultry fat). It was found that there was 69/31 preference by dogs for the kibble containing the modified fat (poultry fat and palm stearin). This result means that dogs ate about 2.3 times more of the product with the modified fat than the reference.
[0060] In a second experiment for the third palatability trial, the modified fat consists of 5.4% beef fat and 0.6% palm stearin. Kibbles with this modified fat were compared to those with standard tallow (6% beef fat). Results showed 72/28 preference (FIG. 8) for the product with modified fat (tallow and palm stearin). This result means that dogs ate about 2.5 times more the product with the modified fat than the reference.
[0061] A fourth palatability trial (results in FIGS. 9 and 10) investigated deposition of only one kind of digest (“two tier” coating, i.e., a layer of fat or modified fat on the kibble, and then a layer of DAD on the fat or modified fat, without the LAD between). Specifically, the results discussed above showed significant palatability improvement of dry dog foods when stearin-modified fats were used in three tier coatings, so a study was executed to further explore effect of such stearin-modified fats on the palatability of dry dog foods and dry cat foods subjected to two tier coating with fat and DAD. In FIGS. 9 and 10, each bar represents feedings with two pets pet panel.
All “palatability trials” are directed to beef tallow, pork lard, and poultry fat as a first lipid, and saturated monoglyceride or palm stearin as a second lipid
H. The quantity of experimentation
A large amount of experimentation, on the order of a number of man-years would be necessary to practice the invention within the full scope of the claims.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fournier et al (US 20150056347 A1).
In regard to claim 1, Fournier et al discloses a pet food product comprising “at least one pet food palatability enhancer” (Abstract). Fournier et al discloses using dry kibble to produce pet food product ([0063]).
Fournier et al discloses a pet food product comprising “at least one pet food palatability enhancer” (Abstract, [0009], [0011]). Hence, Fournier et al suggests a pet food product comprising more than one pet food palatability enhancer. Fournier et al discloses that animal palatability enhancers can be chosen from the group consisting of animal digests, animal fats and dairy products ([0122]). Fournier et al discloses that “[a]nimal fats include tallow, lard, poultry fat, and the like, and by-products thereof, marine oils like tuna oil, sardine oil, salmon oil, anchovy oil, fish oil, and the like, and by-products thereof ([0129]). Fournier et al discloses vegetarian palatability enhancers including “[p]lant oils such as canola oil, soybean oil, corn oil, olive oil, sunflower oil, linseed oil, palm oil, safflower oil, and the like, and by-products thereof” ([0135]). Hence, Fournier et al discloses that more than one oil/fat (i.e. lipids) as listed above could be included in pet food as pet food palatability enhancers.
Fournier et al also discloses including animal digest in the pet food product as a pet food palatability enhancer [0069], [0121], [0122], [0123], [0128]). In regard to the recitation of a liquid and dried digest, Fournier et al discloses “[a]n animal digest may be dried or not” ([0123]). Hence, Fournier et al discloses both liquid and dried animal digests.
In regard to the animal digest, Fournier et al discloses:
[0123] An animal digest may be dried or not. Typically, examples of animal digests are:
[0124] digest of poultry (or pork, beef, sheep, lamb, fish, etc.): material from poultry (pork, beef, etc.) which results from chemical and/or enzymatic hydrolysis of clean and undecomposed tissue;
[0125] digest of pork (or beef, sheep, lamb, etc.) by-products: material from pork (beef, etc.) which results from chemical and/or enzymatic hydrolysis of clean and undecomposed tissue from non-rendered clean parts from cattle (pigs, sheep, lamb, etc.), other than meat and bones, for example lungs, spleen, kidneys, brain, livers, blood, optionally partially-defatted low-temperature fatty tissue, and stomachs and intestines, freed of their contents;
[0126] digest of poultry by-products: material which results from chemical and/or enzymatic hydrolysis of clean and undecomposed tissue from non-rendered clean parts of poultry, other than meat and bones, such as livers, hearts, heads, feet, and viscera. As used herein, "poultry" encompasses any species or kind of bird, preferably chicken, turkey, duck, and the like; and
[0127] digest of fish by-products: material which results from chemical and/or enzymatic hydrolysis of clean and undecomposed tissue from non-rendered clean parts from fish. As used herein, "fish" encompasses any species or kind of fish or crustaceans or molluscs, preferably tuna, salmon, cod, hake, sardine, shrimp, squid, and the like.
[0128] In particular, animal digests can be chosen from the group consisting of poultry digests, pork digests, beef digests, sheep digests, lamb digests, fish digests, pork by-products digests, beef by-products digests, sheep by-products digests, lamb by-products digests, poultry by-products digests, fish by-products digests, more particularly in the group consisting of poultry digests, pork digests and fish digests.
In regard to the recitations of application of digest on the kibble and/or modified fat, Fournier et al discloses:
[0153] For example, one can cite a method for coating dry pet foods such as kibbles. Kibbles of uncoated, extruded basal pet food can be placed in a container such a tub or a coating drum for mixing. A fat, such as pork fat or poultry fat, is heated and then sprayed onto the pet food in a manner to obtain a coating of the kibbles. The coating need not be a continuous layer, but preferably is uniform. After the fat, a PEC may be applied as either a liquid or a powder, while the product is mixing. A liquid PEC is typically sprayed on while a dry PEC is typically dusted on. Alternatively, PECs can be mixed with the fat and applied concurrently. Yet alternatively, PECs are coated before deposition of fat.
In regard to the recitations of increase in hardness, crystallinity, viscosity and solid fat content, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the increase in hardness, crystallinity, viscosity and solid fat content, among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of anticipation, the burden thus shifts to applicant to demonstrate otherwise.
In regard to claim 2, Fournier et al discloses kibbles of extruded basal pet food (0153]) that is formed from proteins, fiber, carbohydrates and/or starch ([0154]).
In regard to claim 3, Fournier et al discloses tallow, lard, poultry fat ([0129]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Weakley (US 20100330251 A1) discloses a pet food product comprising palm stearin and anima fat such as beef tallow.
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/VERA STULII/Primary Examiner, Art Unit 1791