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.
Regarding claim 1, it states that the pet food composition comprises “a palatant selected from…”, which means that the composition may comprise just 1 palatant from the recited list. Claim 1 then recites “wherein the composition has at least one combination of compounds as provided in Table 10….”. As only one palatant is required, it is unclear if each combination in Table 10 should be read as having both combinations of compounds for each numbered combination or just 1. For example, in combination 1, should both the combinations of dimethyl sulphide to 2-acetylthiophene AND isoamyl alcohol to tetrahydrothiophene-3-one be present or just one of those combinations as only one palatant is required in the beginning of the claim. Therefore, it is not clear as to what palatant and/or how many palatants are actually required in the pet food composition.
Additionally, in claim 1, furfuryl alcohol is recited as one of the possible palatants in line 3 of the claim, however, it is absent from Table 10, and therefore it is not clear what palatant is actually present and/or required by claim 1.
Regarding claims 2-7, they are included as they depend from rejected claim 1.
Regarding claim 8, similar to claim 1, it is unclear if each combination in Table 10 should be read as having both combinations of compounds for each numbered combination or just 1. Therefore, it is not clear as to what is actually required by “two combinations” as recited in claim 8.
Regarding claim 9, similar to claim 1, it states that the pet food composition comprises “a palatant selected from…”, which means that the composition may comprise just 1 palatant from the recited list. Claim 9 then recites “incorporating a combination of compounds in Table 10….”. As only one palatant is required, it is unclear if each combination in Table 10 should be read as having both combinations of compounds for each numbered combination or just 1. For example, in combination 1, should both the combinations of dimethyl sulphide to 2-acetylthiophene AND isoamyl alcohol to tetrahydrothiophene-3-one be present or just one of those combinations as only one palatant is require in the beginning of the claim. Therefore, it is not clear as to what palatant and/or how many palatants are actually required in the pet food composition.
Additionally, in claim 9, furfuryl alcohol is recited as one of the possible palatants in line 5 of the claim, however, it is absent from Table 10, and therefore it is not clear what palatant is actually present and/or required by claim 9.
Regarding claims 10-12 and 14-15, they are included as they depend from rejected claim 9.
Regarding claim 13, it is unclear what claim it depends from as it depends from itself.
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 1-4 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Winning et al. (US 2016/0198747 A1; July 14, 2016).
Regarding claim 1, Winning discloses a flavoring agent composition ([0001]) that can be added to pet food ([0221], [0335]), wherein the flavoring agent composition comprises a palatant that can be dimethyl sulphide ([0093]), furfural ([0095]), 2,5-dimethylpyrazine ([0096]), or 2-ethyl-3,5-dimethylpyrazine ([0096]), and combinations thereof ([0087]).
Winning further teaches that the composition can include dimethyl trisulphide and 2-acetylthiophene ([0093]), which are additional components required in combination with a palatant in Table 10.
While Winning fails to teach the specific combination of palatant and compounds as in Table 10, Winning teaches that a mixture of compounds can be used to achieve a flavor impact and flavor profile, wherein the different compounds contribute different flavor attributes ([0046]-[0061]). As Winning teaches that the compounds dimethyl sulphide ([0093]), furfural ([0095]), 2,5-dimethylpyrazine ([0096]), 2-ethyl-3,5-dimethylpyrazine ([0096]), dimethyl trisulphide and 2-acetylthiophene ([0093]), and combinations therefore, can be used in the flavor composition that is then added to a pet food, it would have been obvious to combine the compounds to achieve a desired flavor profile, therefore rendering obvious the combinations 9, 10, 15, 28 and 30 as recited in Table 10.
Furthermore, the examiner notes that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
As stated in MPEP 2144.06 ““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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Winning clearly teaches that the claimed components are known to be useful as palatants for improving flavor in pet food and therefore, it would have been obvious through routine experimentation to combine the palatants as taught by Winning in order to achieved a desired flavor profile as Winning teaches that each compound contributes different flavor attributes.
With respect to the ratios as recited in Table 10, Winning teaches that the compounds are used in a sensorially effective amount to produce a flavor impression upon oral consumption and/or to modify the perception of a flavor of one or more other flavoring agents ([0062]). It would have been obvious to one of ordinary skill in the art to vary the amount of each compound to result in a desired ratio depending on the desired flavor profiled of the composition. This is merely routine experimentation that is well within the ordinary skill in the art, especially as Winning renders obvious combinations 9, 10, 15, 28 and 30 as recited in Table 10.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Therefore, absent a showing of criticality, the claimed ratios are merely an obvious variant over the prior art.
Regarding claim 2, Winning teaches that the pet food composition further comprises protein, carbohydrate, fat and fiber ([0332]-[0336]).
Regarding claim 3, Winning teaches that the pet food composition is formulated for a cat ([0221], [0332]-[0336]).
Regarding claim 4, Winning further teaches that the pet food composition can be a wet cat food ([0334]).
Regarding claim 8, as stated above with respect to claim 1, Winning teaches that the compounds dimethyl sulphide ([0093]), furfural ([0095]), 2,5-dimethylpyrazine ([0096]), 2-ethyl-3,5-dimethylpyrazine ([0096]), dimethyl trisulphide and 2-acetylthiophene ([0093]), and combinations therefore, can be used in the flavor composition that is then added to a pet food. It would have been obvious to combine the compounds to achieve a desired flavor profile, thus rendering obvious the combinations 9, 10, 15, 28 and 30 as recited in Table 10.
Furthermore, the examiner notes that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
As stated in MPEP 2144.06 ““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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Winning clearly teaches that the claimed components are known to be useful as palatants for improving flavor in pet food and therefore, it would have been obvious through routine experimentation to combine the palatants as taught by Winning in at least two combinations as recited in Table 10 in order to achieved a desired flavor profile as Winning teaches that each compound contributes different flavor attributes.
With respect to the ratios as recited in Table 10, Winning teaches that the compounds are used in a sensorially effective amount to produce a flavor impression upon oral consumption and/or to modify the perception of a flavor of one or more other flavoring agents ([0062]). It would have been obvious to one of ordinary skill in the art to vary the amount of each compound to result in a desired ratio depending on the desired flavor profiled of the composition. This is merely routine experimentation that is well within the ordinary skill in the art, especially as Winning renders obvious combinations 9, 10, 15, 28 and 30 as recited in Table 10.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Therefore, absent a showing of criticality, the claimed ratios are merely an obvious variant over the prior art.
Regarding claim 9, Winning further teaches a method of making a pet food composition comprising incorporating a palatant that can be dimethyl sulphide ([0093]), furfural ([0095]), 2,5-dimethylpyrazine ([0096]), or 2-ethyl-3,5-dimethylpyrazine ([0096]), and combinations thereof ([0087]), into the pet food ([0221], [0332]-[0336]).
With respect to incorporating a combination of compounds in Table 10 into the pet food, Winning further teaches that the composition can include dimethyl trisulphide and 2-acetylthiophene ([0093]), which are additional components required in combination with a palatant in Table 10.
While Winning fails to teach the specific combination of palatant and compounds as in Table 10, Winning teaches that a mixture of compounds can be used to achieve a flavor impact and flavor profile, wherein the different compounds contribute different flavor attributes ([0046]-[0061]). As Winning teaches that the compounds dimethyl sulphide ([0093]), furfural ([0095]), 2,5-dimethylpyrazine ([0096]), 2-ethyl-3,5-dimethylpyrazine ([0096]), dimethyl trisulphide and 2-acetylthiophene ([0093]), and combinations therefore, can be used in the flavor composition that is then added to a pet food, it would have been obvious to combine the compounds to achieve a desired flavor profile, therefore rendering obvious the combinations 9, 10, 15, 28 and 30 as recited in Table 10 that can be added directly to the pet food.
Furthermore, the examiner notes that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
As stated in MPEP 2144.06 ““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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Winning clearly teaches that the claimed components are known to be useful as palatants for improving flavor in pet food and therefore, it would have been obvious through routine experimentation to combine the palatants as taught by Winning in order to achieved a desired flavor profile as Winning teaches that each compound contributes different flavor attributes.
With respect to the ratios as recited in Table 10, Winning teaches that the compounds are used in a sensorially effective amount to produce a flavor impression upon oral consumption and/or to modify the perception of a flavor of one or more other flavoring agents ([0062]). It would have been obvious to one of ordinary skill in the art to vary the amount of each compound to result in a desired ratio depending on the desired flavor profiled of the composition. This is merely routine experimentation that is well within the ordinary skill in the art, especially as Winning renders obvious combinations 9, 10, 15, 28 and 30 as recited in Table 10.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Therefore, absent a showing of criticality, the claimed ratios are merely an obvious variant over the prior art.
Winning teaches that the palatant and combination of compounds are present in an amount effective to enhance palatability of the pet food composition ([0062]-[0063]).
Regarding claim 10, Winning teaches that the pet food composition further comprises protein, carbohydrate, fat and fiber ([0332]-[0336]).
Regarding claim 11, Winning teaches that the palatant and combination of compounds formed during manufacturing of the pet food ([0221], [0332]-[0336]).
Regarding claim 12, Winning further teaches that the pet food composition can be a wet cat food ([0334]).
Claims 5-7 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Winning et al. (US 2016/0198747 A1; July 14, 2016) as applied to claims 4 and 9 above, and further in view of Mao et al. (US 2018/0295862 A1; Oct. 18, 2018).
Regarding claims 5-7 and 13-15, Winning teaches that the pet food composition can be a wet cat food, but fails to teach that the wet cat food is a mousse or loaf composition, includes a gravy, or is a chunks-in-gravy composition.
Mao discloses a wet cat food ([0001]) having palatability enhancers that can include 2-ethyl-3,5-dimethylpyrazine ([0142]). Mao further teaches that the wet food can be a mousse or loaf, includes a gravy, or is a chunks-in-gravy composition ([0006]-[0007], [0100], [0102], [0104]).
As Mao teaches that it is well known in the art for a wet cat food that can be a mousse or loaf, includes a gravy, or is a chunks-in-gravy composition to comprise palatability enhancers, it would have been obvious for the wet cat food of Winning to be in a form as taught by Mao. These are merely known wet cat food types and would have been obvious depending on the need/desire of each type of wet cat food.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
Prosecution Insights