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 .
Claim Rejections - 35 USC § 112
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 1-15 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.
With respect to Claim 1, the recitation of “about 20% to 100% of individual dry kibble pieces of the serving” is indefinite due to the lack of clarification as to what the percentage is describing. For the purposes of examination, “%” will be interpreted as percentage on a weight/total weight basis.
Due to their dependency on claim 1, claims 2-10 are also rejected as indefinite.
With respect to Claim 11, the recitation of “about 20% to 100% of individual dry kibble pieces of the serving” is indefinite due to the lack of clarification as to what the percentage is describing. For the purposes of examination, “%” will be interpreted as percentage on a weight/total weight basis.
Due to their dependency on claim 11, claims 12-15 are also rejected as indefinite.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Trassy et al. (WO 2021163719 A1).
With respect to Claim 1, Trassy et al. teaches a dog food composition comprising cylindrically shaped kibble pieces comprising a central empty cavity. [Pg. 6, Ln. 12-13] The kibble pieces can have an external diameter of between 8-25mm, an internal diameter of between 2-15mm, [Pg. 6, Ln. 16-19] and a longitudinal dimension between 5-22mm. [Pg. 6, Ln. 24] The external diameter taught in Trassy et al. corresponds to the average diameter of the instant claim, the internal diameter and inner-hole diameter is likewise equivalent, and the longitudinal dimension is interpreted as the same as thickness. Additionally, Trassy et al. teaches a composition comprising entirely the cylindrical kibble as described, [Pg. 48, Ln. 4-6] and feeding to a group of dogs weighing about 6.5kg. [Pg. 56, Ln. 9]
The dimensions recited in the instant claim of inner-hole diameter, average diameter, and average thickness, all lie inside the ranges disclosed in Trassy et al. According to MPEP 2144.05 II, “In the case where the claimed ranges ‘overlap with or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Additionally, the weight of the subject and the amount of donut-shaped kibble in the composition taught in Trassy et al. lie inside the claimed ranges.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Trassy et al. in order to devise a method of feeding a small adult dog weighing up to 11kg, wherein between 20-100% of the dry kibble comprises donut-shaped pieces with an inner hole between 3-8mm, and average diameter between 8-20mm, and an average thickness between 8-20mm, thereby rendering claim 1 obvious.
With respect to Claims 2-4, Trassy et al. teaches the invention recited in claim 1 as described above. Additionally, the recitation of an average diameter between 1.1-2cm and 1.4-2cm, as recited in claims 2 and 3 respectively, and the recitation of an average thickness between 1.1-1.8cm, as recited in claim 4, all lie within the ranges of external diameter and longitudinal dimension taught by Trassy et al., as described in the rejection of claim 1 above. According to MPEP 2144.05 II, “In the case where the claimed ranges ‘overlap with or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Trassy et al. in order to produce the invention recited in claim 1, wherein the average diameter is between 1.1-2cm and 1.4-2cm and the average thickness is between 1.1-1.8cm, thereby rendering claims 2-4 obvious.
With respect to Claim 5, Trassy et al. teaches the invention recited in claim 1, as described above. Additionally, Trassy et al. teaches an embodiment of the invention wherein the moisture content is between 5-9%. [Pg. 7, Ln. 22] Therefore, Trassy et al. reads on the invention recited in claim 5.
With respect to Claim 6, Trassy et al. teaches the invention recited in claim 1, as described above. Trassy et al. does not teach a specific hardness of the composition, but does teach controlling the hardness through the manufacturing process through drying and adjusting the moisture content of the kibble. [Pg. 42, Ln. 5-12] Along with the overlapping ranges of the inner-hole diameter, average diameter, thickness, and moisture content of the composition taught by Trassy et al. as discussed above, it is the position of the examiner that the composition taught by Trassy et al. is substantially identical to the composition recited in the instant set of claims.
According to MPEP 2112.01 I, “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”. The composition taught by Trassy et al. would therefore possess the same physical properties of the composition recited in the instant claims, including a stiffness between 40-120 N/mm.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Trassy et al. in order to produce the invention recited in claim 1, wherein the kibble pieces have a stiffness between 40-120 N/mm, thereby rendering claim 6 obvious.
With respect to Claims 7-9, Trassy et al. teaches the invention recited in claim 1, as described above. Trassy et al. is silent to the amount of chewing, the amount of prehension time, and the frequency of labored swallowing exhibited by a subject administered the composition within the first three minutes of feeding. As described above, it is the position of the examiner that the invention taught by Trassy et al. is substantially identical to the invention recited in the instant claims.
According to MPEP 2112.01 I, “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”. The composition taught by Trassy et al. would therefore possess the same physical properties of the composition recited in the instant claims, including average chew time, prehension time, and frequency of labored swallowing as compared to a kibble without a hole within the first three minutes of feeding.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Trassy et al. in order to produce the invention recited in claim 11, wherein the invention possesses the properties of, within the first three minutes of feeding, about 45-75% of includes chew time, less than 50% includes prehension time, and the subject exhibits a lowered frequency of labored swallowing as compared to a kibble without a hole and having a smaller diameter and thickness, thereby rendering claims 7-9 obvious.
With respect to Claim 10, Trassy et al. teaches the invention recited in claim 1, as described above. Trassy et al. does not teach the oral cavity area of the subject, but does teach a subject that lies within the size recited in claim 1, of up to 11 kg. [Pg. 56, Ln. 9] MPEP 2112.01 I states, “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”. A subject of the same size and animal type would possess identical properties to those recited in the instant claim, including oral cavity area.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Trassy et al. in order to produce the invention recited in claim 1, wherein the small adult dog has an oral cavity area from about 12-22 cm2, thereby rendering claim 10 obvious.
With respect to Claim 11, Trassy et al. teaches a dog food composition comprising cylindrically shaped kibble pieces comprising a central empty cavity. [Pg. 6, Ln. 12-13] The kibble pieces can have an external diameter of between 8-25mm, an internal diameter of between 2-15mm, [Pg. 6, Ln. 16-19] and a longitudinal dimension between 5-22mm. [Pg. 6, Ln. 24] The external diameter taught in Trassy et al. corresponds to the average diameter of the instant claim, the internal diameter and inner-hole diameter is likewise equivalent, and the longitudinal dimension is interpreted as the same as thickness. Additionally, Trassy et al. teaches an embodiment of the invention wherein the moisture content is between 5-9%. [Pg. 7, Ln. 22]
The dimensions recited in the instant claim of inner-hole diameter, average diameter, and average thickness, all lie inside the ranges disclosed in Trassy et al. According to MPEP 2144.05 II, “In the case where the claimed ranges ‘overlap with or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Additionally, the moisture content and the amount of donut-shaped kibble in the composition taught in Trassy et al. lie inside the claimed ranges.
Trassy et al. does not teach a specific hardness of the composition, but does teach controlling the hardness through the manufacturing process through drying and adjusting the moisture content of the kibble. [Pg. 42, Ln. 5-12] Along with the overlapping ranges of the inner-hole diameter, average diameter, thickness, and moisture content of the composition taught by Trassy et al. as discussed above, it is the position of the examiner that the composition taught by Trassy et al. is substantially identical to the composition recited in the instant set of claims.
According to MPEP 2112.01 I, “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”. The composition taught by Trassy et al. would therefore possess the same physical properties of the composition recited in the instant claims, including a stiffness between 40-120 N/mm.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Trassy et al. to produce a composition comprising 20-100% donut-shaped dry kibble, wherein the kibble pieces have an inner-hole diameter of 3-8mm, an average diameter of between 1.1-2cm, an average thickness between 8-20mm, a moisture content up to 10%, and an average stiffness from about 40-120 N/mm, thereby rendering claim 11 obvious.
With respect to Claim 12, Trassy et al. teaches the invention recited in claim 11, as described above. Trassy et al. teaches that the kibble composition is formulated for small adult dogs. [Pg. 56, Ln. 9] Additionally, the recitation of “is packaged with indicia indicating that the dry kibble is for small adult dogs” equates to a recitation of printed matter that does not functionally affect the composition. MPEP 2112.01 III, states, “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art”. Therefore, Trassy et al. reads on the invention recited in claim 12.
With respect to Claims 13-15, Trassy et al. teaches the invention recited in claim 11, as described above. Additionally, the recitation of an average diameter between 1.4-2cm, as recited in claims 13 and 15, and the recitation of an average thickness between 1.1-2cm and 1.1-1.8cm, as recited in claims 14 and 15 respectively, all lie within the ranges of external diameter and longitudinal dimension taught by Trassy et al., as described in the rejection of claim 11 above. According to MPEP 2144.05 II, “In the case where the claimed ranges ‘overlap with or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Trassy et al. in order to produce the invention recited in claim 11, wherein the average diameter is between 1.4-2cm and the average thickness is between 1.1-2cm or 1.1-1.8cm, thereby rendering claims 13-15 obvious.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, 10, and 12 of co-pending Application No. 18/650,697. Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to Claim 1, The instant claim recites the limitation “A method of feeding a small adult dog, comprising dispensing a serving of dry kibble to a small adult dog weighing up to about 11 kg, wherein from about 20% to 100% of individual dry kibble pieces of the serving are donut-shaped having an average inner-hole diameter from about 3 mm to about 8 mm, wherein the individual dry kibble pieces of the serving are about 8 mm to about 2 cm in average diameter and about 8 mm to about 2 cm in average thickness”.
Claim 1 of co-pending application 18/650,697 recites the limitation of, “A method of feeding a small adult dog, comprising dispensing a serving of dry kibble to a small adult dog weighing up to about 11 kg, wherein from about 20% to 100% of individual dry kibble pieces of the serving are donut-shaped having an average inner-hole diameter from about 3 mm to about 8 mm, an average diameter from about 1.3 cm to about 2.0 cm, and an average thickness from about 3 mm to about 6 mm”.
The serving size and percent of serving size comprising donut shaped pieces is identical in both claims, as well as the inner hole diameter of the kibble pieces. Additionally, the range of the average diameter of the reference claim lies within the range of the average diameter of the instant claim.
The average thickness of the kibble pieces in the instant claim and the reference claim are not overlapping, but the recitation of 8mm to 2cm in the instant claim, is close to the recitation of 3mm to 6mm in the reference claim. MPEP 2144.05 II states, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to have produced the invention taught by the reference claim, wherein the average diameter of the kibble is between 8-20mm and the average thickness is between 8-20mm.
With respect to Claim 2, The instant application recites the limitation “The method of claim 1, wherein the average diameter is from about 1.1 cm to about 2 cm” and claim 2 of the reference application recites the limitation “The method of claim 1, wherein the average diameter is from about 1.3 cm to about 1.6 cm”. The average diameter of the reference claim lies within the range recited in the instant claim, and therefore reads on the instant claim.
With respect to Claim 3, The instant application recites the limitation “The method of claim 1, wherein the average diameter is from about 1.4 cm to about 2 cm” and claim 3 of the reference application recites the limitation “The method of claim 1, wherein the average diameter is from about 1.6 cm to about 2 cm”. The average diameter of the reference claim lies within the range recited in the instant claim, and therefore reads on the instant claim.
With respect to Claim 4, The instant application recites the limitation “The method of claim 1, wherein the average diameter is from about 1.1 cm to about 1.8 cm” and claim 3 of the reference application recites the limitation “The method of claim 1, wherein the average diameter is from about 1.6 cm to about 2 cm”. The average diameter of the instant claim overlaps with the average diameter of the reference claim. MPEP 2144.05 I, states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to have produce the invention taught by the reference claim, wherein the average diameter is between 1.1-1.8cm.
With respect to Claim 5, The instant application and claim 7 of the reference application both recite the limitation “The method according to claim 1, wherein the dry kibble has a moisture content from about 4 wt% to about 10wt%”.
With respect to Claim 6, The instant application and claim 8 of the reference application both recite the limitation “The method of claim 1, wherein the dry kibble has an average stiffness from about 40 N/mm to about 120 N/mm”.
With respect to Claim 10, Claim 10 of both the instant application and the reference application recite the limitation, “The of claim 1, wherein the small adult dog has an average o5ral cavity area from about 12 cm-2 to about 22 cm2”.
With respect to Claim 11, The instant claim recites the limitation, “Dry kibble, comprising from about 20% to 100% donut-shaped dry kibble pieces having an average inner-hole diameter from about 3 mm to about 8 mm, wherein the individual dry kibble pieces of the serving are about 1.1 cm to about 2 cm in average diameter and about 8 mm to about 2 cm in average thickness, and wherein the dry kibble has a moisture content up to about 10 wt% and an average stiffness from about 40 N/mm to about 120 N/mm”
Claim 11 of the reference application recites the limitation “Dry kibble, comprising from about 20% to 100% donut-shaped dry kibble pieces having an average inner-hole diameter from about 3 mm to about 8 mm, an average diameter of about 1.3 cm to about 2 cm, and an average thickness of about 3 cm to about 5 cm” and Claim 12 of the reference application recites the limitation “The dry kibble of claim 11, wherein the dry kibble has a moisture content up to about 10 wt% and an average stiffness from about 40 N/mm to about 120 N/mm”.
The percent of kibble comprising donut shaped pieces is identical in both claims, as well as the inner hole diameter, moisture content, and average stiffness of the donut shaped kibble pieces. Additionally, the range of average diameter of the reference claim lies inside the range of average diameter of the instant claim.
The average thickness of the kibble pieces in the instant claim and the reference claim are not overlapping, but the recitation of 8mm to 2cm in the instant claim, is close to the recitation of 3cm to 5cm in the reference claim. MPEP 2144.05 II states, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to have produced the invention taught by the reference claim, wherein the average diameter of the kibble is between 1.1-2cm and the average thickness is between 8-20mm.
With respect to Claim 12, MPEP 2112.01 III, states, “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art”. Claim 12 of the reference application is substantially identical to the invention recited in instant claim 11. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have produced the invention recited in reference claim 12, wherein the packaging is labeled to indicate the subject for the dry kibble.
With respect to Claim 13, The instant claim recites the limitation “The dry kibble of claim 11, wherein the average diameter is from about 1.4 cm to about 2 cm”. The average diameter as recited in reference claim 12, described above, lies within the range recited in the instant invention.
With respect to Claim 14, The instant claim recites the limitation “The dry kibble of claim 11, wherein the average thickness is from about 1.1 cm to about 2 cm”. The average thickness of the kibble pieces in the instant claim and reference claim 12 are not overlapping, but the recitation of 1.1cm to 2cm in the instant claim, is close to the recitation of 3cm to 5cm in the reference claim. MPEP 2144.05 II states, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to have produce the invention taught by the reference claim, wherein the average thickness is between 1.1-2cm.
With respect to claim 15, The instant claim recites the limitation “The dry kibble of claim 11, wherein the individual pieces of the serving are about 1.4 cm to about 2 cm in average diameter and about 1.1 cm to 1.8 cm in average thickness”. The range of average diameter of the reference claim 12 lies inside the range of average diameter of the instant claim.
The average thickness of the kibble pieces in the instant claim and the reference claim are not overlapping, but the recitation of 1.1cm to 1.8cm in the instant claim, is close to the recitation of 3cm to 5cm in the reference claim. MPEP 2144.05 II states, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to have produced the invention taught by the reference claim 12, wherein the average diameter of the kibble is between 1.4-2cm and the average thickness is between 1.1-1.8cm.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791