DETAILED ACTION
Background
Claims 1-15 as filed with the instant application on April 30, 2024 stand pending in the instant application and have been examined. No amendments have been filed.
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 .
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 1-3, 6-8 and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-14 of copending Application No. 18/635,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the recited dry kibble average thickness of about 8 mm to about 2 cm in claims 1 and 11 of the reference application overlap with or are not patentably distinct from the claimed average thickness of about 3 mm to about 8 mm in claim 1 and the claimed average thickness of about 3 cm to about 5 cm in claim 11; further, the recited average thickness of from about 1.1 cm to about 1.8 in claim 4 the reference application is not patentably distinct from the claimed thickness of from about 3 mm to about 8 mm in claim 1; and, the recited average thickness of from about 1.1 cm to about 1.8 in claim 14 the reference application is not patentably distinct from the claimed thickness of from about 3 cm to about 5 cm in claim 11. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. See also MPEP 2144.04.IV.A.
The recited average diameter of from about 1.1 cm to about 2 cm in claim 2 of the reference application encompasses the claimed average diameter of from about 1.3 cm to about 1.6 cm in claim 2; further, recited average diameter of from about 1.4 cm to about 2 cm in claim 3 of the reference application encompasses the claimed average diameter of from about 1.6 cm to about 2 cm in claim 3; still further, the recited average diameter of from about 1.4 cm to about 2 cm in claim 13 of the reference application encompasses the claimed average diameter of from about 1.3 cm to about 1.6 cm in claim 14. See MPEP 2144.05.I.
Claim 5 of the reference application is identical to claim 7.
Claim 6 of the reference application is identical to claim 8.
Claim 9 of the reference application is not patentably distinct from claim 6 because both claims cover the first three minutes of the feeding of a small adult dog in comparison to a smaller dry kibble including one having an average diameter of about 1 cm or less.
Claim 10 of the reference application is identical to claim 10.
Claim 11 of the reference application is a combination of claims 11 and 12, with overlapping or patentably indistinct and the average diameter of about 1.1 cm to about 2 cm encompasses the claimed average diameter of about 1.3 cm to about 2 cm.
Claim 12 of the reference application is identical to claim 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
In claim 1, The recited percentage (%) of individual dry kibble pieces is indefinite for lacking % units. Is the recited % a weight %, a volume % or a % in some other unit of measure?
The Office interprets the recited % of individual dry kibble pieces as being a weight%, based on the total weight of a serving of the dry kibble pieces.
In each of claims 5 and 6, the recite “comparative” kibble is indefinite for two reasons because the scope of the comparative kibble composition is not defined or limited and the shape of the comparative kibble is not defined or limited. Both of these may or do influence the outcome of the comparison, such as where either or the inventive kibble or the comparative kibble is harder than the other or comprises a more filling material than the other like more soy protein; and, therefore the claim scope is not clear. See also Wall, T. “Kibble tech matches dog, cat food shape to pets’ biology” at https://www.petfoodindustry.com/print/content/15466344 (2019) (Wall), at the paragraph bridging pages 2-3 disclosing that small kibble encourages dogs to east too fast. The Office would consider the recitation of a comparative solid round dry kibble which is made from the same kibble composition and has the same out dimensions as the recited donut-shaped kibble as being reasonably clear and definite.
The recited average thickness of 3 cm to 5 cm for donut-shaped dry kibble pieces having an average diameter of about 1.3 to about 2 cm is confusing and indefinite because a cylinder is not a donut-shaped piece. Nevertheless, the Office interprets the claims are as they are written.
The recited percentage (%) of donut-shaped dry kibble pieces in each of claims 11 and 15 is indefinite both for lacking % units and for lacking a basis or denominator for the recited %. Regarding units, is the recited % a weight %, a volume % or a % in some other unit of measure? Regarding % basis, is the recited amount of dry kibble pieces based on a total of a serving of the dry kibble pieces, the amount of dry kibble pieces in a package or container, some fraction thereof, or is it based on some other total amount?
The Office interprets all claimed %s as weight %s, based on the total weight of a dry kibble composition, piece or serving as appropriate.
Claims 2-4, 7-10 and 12-14 are rejected as depending from a rejected base claim.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over US2025/0122476 A1 to Janousek et al. (Janousek) in view of US 2023/0148630 A1 to Trassy et al. (Trassy), of record, and Wall, T. “Kibble tech matches dog, cat food shape to pets’ biology” downloaded on February 20, 2026 from https://www.petfoodindustry.com/print/content/15466344 (2019) (Wall).
Unless otherwise indicated, Office interprets all recited %s as weight %s.
The Office interprets all claimed %s as weight %s, based on the total weight of a dry kibble composition, piece or serving as appropriate.
Unless otherwise stated, all dimensions are interpreted as average dimensions for a sample of dry kibble pieces.
Regarding instant claims 1-4, 7 and 9, Janousek at [0050] discloses pet food formulation for animals including cats and small breed dogs (“small adult dog”) and use as pet food (“dispensing a serving of dry kibble to a small adult dog weighing up to about 11 kg”). Janousek at [0970] discloses ring shaped dry kibble pieces (as “100 wt% of individual donut-shaped dry kibble pieces” - claims 1 and 9) in a serving of dry kibble having a diameter (“average diameter”) tailored to the size of the animal and having an average diameter including 15 to 20 mm (1.5 to 2.0 cm), which the claimed average diameter of 1.3 to 1.6 cm in claims 2 and 4 overlaps and which the claimed average diameter of 1.6 to 2.0 in claim 3 lies within. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. Further, at [0969] Janousek discloses the dry food with a water content of less than 14%, which the claimed about 4 wt% to about 10 wt% lies within. The ordinary skilled artisan in Janousek would have desired to form its dry kibble pieces to have the claimed average diameter of from about 1.3 to about 2.0 cm in claim 1, or from about 1.3 to about 16 cm as in claim 2 and 4, or from about 1.6 to 2.0 cm as in claim 3, and to dry its dry kibble pieces to have a moisture content of from about 4 wt% to about 10 wt% as in claim 7 because Janousek discloses that the claimed average diameter and moisture content are suitable for making desirable dry kibble pieces.
Janousek does not disclose its dry kibble pieces having an average inner-hole diameter from about 3 mm to about 8 mm or an average thickness from about 3 mm to about 6 mm; and, further, does not disclose its donut-shaped dry kibble pieces having an average thickness from about 3 mm to about 5 mm as in claim 4.
Trassy at [0008]-[0009] discloses a highly aerated pet food that can slow down food intake by an animal, wherein at [0037] the pet food comprises elements (“dry kibble pieces”) having a central hole and (at [0039] a substantially circular cross-section with an external diameter (“average diameter”) of from about 10 mm to about 20 mm and an internal diameter (“average inner-hole diameter”) of about 2 to about 12 mm, within which range the claimed average inner-hole diameter of from about 3 to about 8 mm lies within, and (at [0041]) discloses a longitudinal dimension (“average thickness”) of from about 5 to about 22 mm, within which range the claimed average thicknesses of about 3 to 8 and of about 3 to 5 mm in claim 4 both lie. See MPEP 2144.05.I. Further, Trassy at [0102] discloses kibble having less than about a 20 wt% moisture content.
Wall discloses at page 2, 3rd full paragraph that dry food such as Royal Canin dry kibble pieces that are made as larger dry kibble pieces and have a large hole in the middle (are ”donut-shaped”). In the paragraph bridging pages 2 and 3, Wall discloses that the shape of the dry kibble pieces slows down an eater that otherwise eats too fast, and discloses (at page 3, 2nd full paragraph) a surprisingly large donut-shaped dry kibble piece that also makes the eater chew its food.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Wall for Janousek to include a hole in the middle of its dry kibble pieces for dispensing them a small adult dog. Further, and before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Trassy for Janousek to form its donut-shaped dry kibble pieces in accordance with the dimensions of Trassy having an average inner-hole diameter of from about 3 to 8 mm or from about 3 to 6 mm as well as a thickness of from about 3 to 8 mm as in Trassy to increase the volume of the food without increasing the weight or caloric value of the food. All references disclose donut-shaped dry kibble pieces for dogs. The ordinary skilled artisan in Janousek would have desired to use the donut-shaped dry kibble pieces of Wall to include an inner hole and to increase the size of that dry kibble piece to slow down the dog’s pace of eating and make the dog chew and, at the same time, to adopt the dimensions in Trassy as claimed to increase the volume of the kibble and its outer average diameter so that a dog eats the dry kibble over a longer period of time.
Regarding instant claims 5-6, 8 and 10, the donut-shaped dry kibble pieces of Janousek as modified by Trassy and Wall appear to be substantially the same thing as the claimed dry kibble pieces. Accordingly, absent a clear showing as to how the method of feeding dry kibble pieces and the small adult dog in Janousek as modified by Trassy and Wall differs from that of the method and dog as claimed, the Office considers the method and the dry kibble pieces disclosed in Janousek at [0969]-[0970] as modified by Trassy at [0008], [0009], [0039] and [0041] and Wall at paragraph bridging pages 2 and 3 and page 3, 2nd full paragraph to comprise each of:
A method wherein a small adult dog eating the donut-shaped dry kibble pieces exhibits a reduced feeding speed and increased eating duration on average compared to the feeding speed of the same volume of a comparative solid round dry kibble having a diameter of about 1 cm or less as in claim 5;
a method wherein during feeding, the small adult dog exhibits a lower frequency of labored swallowing and increased chewing duration on average compared to when the small adult dog is feeding on the same volume of a comparative solid round dry kibble having a diameter of about 1 cm or less as in claim 6;
a dry kibble having an average stiffness from about 40 N/mm to about 120 N/mm as in claim 8; and,
to comprise a method wherein the small adult dog has an average oral cavity area from about 12 cm2 to about 22 cm2 as in claim 10. See MPEP 2112.01.I.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US2025/0122476 A1 to Janousek et al. (Janousek) in view of US 2023/0148630 A1 to Trassy et al. (Trassy), of record, and Wall, T. “Kibble tech matches dog, cat food shape to pets’ biology” downloaded on February 20, 2026 from https://www.petfoodindustry.com/print/content/15466344 (2019) (Wall) as applied to claim 1 above, and further in view of US 2017/0150740 A1 to Miyamoto et al. (Miyamoto).
As applied to claim 1, Janousek at [0969]-[0970] as modified by Trassy at [0008], [0009], [0039] and [0041] and Wall at paragraph bridging pages 2 and 3 and page 3, 2nd full paragraph discloses a method comprising dispensing a serving of individual dry kibble pieces to a small adult dog weighing up to about 11 kg, wherein from 20 to 100 wt% of the serving comprises donut-shaped dry kibble pieces having an average diameter of from about 1.3 to 2.0 cm, an average inner-hole diameter from about 3 mm to about 8 mm and an average thickness from about 3 mm to about 6 mm.
Janousek as modified by Trassy and Wall does not provide a specific example of dry kibble pieces having a moisture content of from about 4 wt% to about 10 wt%.
Miyamoto at [0017]-[0018] discloses a pet food having enhanced palatability comprising granular compositions with (at [0075]) a moisture content of 10 wt% or less that comprise (at [0062]) a donut shape.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Miyamoto for Janousek as modified by Trassy and Wall to form and use dry kibble pieces that have a moisture content of 10 wt% or less. All references disclose donut-shaped dry kibble pieces and methods of feeding them to pets. The ordinary skilled artisan in Janousek as modified by Trassy and Wall would have desired to limit its moisture content to insure a stable dry kibble product.
Claims 11-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0148630 A1 to Trassy et al. (Trassy).
Unless otherwise indicated, Office interprets all recited %s as weight %s.
The Office interprets all claimed %s as weight %s, based on the total weight of a dry kibble composition, piece or serving as appropriate.
Unless otherwise stated, all dimensions are interpreted as average dimensions for a sample of dry kibble pieces.
Regarding instant claims 11, 14 and 15, Trassy at [0008]-[0009] discloses a highly aerated pet food that can slow down food intake by an animal [0009] as a dry kibble Trassy at [0037] discloses pet food as elements (“dry kibble”) having a central hole and (at [0039]) a substantially circular cross-section (is “donut-shaped”) and comprises 100 wt% donut-shaped dry kibble pieces (claims 11 and 15). The dry kibble of Trassy disclosed at [0037] and [0039] has an external diameter (“average diameter”) of from about 10 mm to about 20 mm, within which the claimed average diameter of 1.3 to 2.0 cm and the average diameter of from about 1.3 to 1.6 cm as in claim 14 lies, an internal diameter (“average inner-hole diameter”) of about 2 to about 12 mm, within which range the claimed average inner-hole diameter of from about 3 to about 8 mm lies within, and (at [0042]) has a length (“average thickness”) over width ratio of from 1.0 to 1.5 which converts to about 10 to about 30 mm, which the claimed average thicknesses of about 3 cm to about 5 cm overlaps. Further, Trassy at [0102] discloses dry kibble having less than about a 20 wt% moisture content, which the claimed moisture content of up to about 10 wt% in claim 12 lies within.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Trassy would have found it obvious to form its dry kibble pieces to have the claimed average diameter of from about 1.3 to about 2.0 cm, average inner-hole diameter of from about 3 to about 8 mm and an average thickness of from about 3 cm to about 5 cm as in claim 11, and to dry its kibble pieces to have a moisture content of up to about 10 wt% as in claim 12 because Trassy discloses that the claimed average diameter and moisture content are suitable for making desirable dry kibble pieces.
Regarding instant claim 12, the dry kibble disclosed in Trassy and the claimed dry kibble appear to be substantially the same thing. Accordingly, absent a clear showing as to how the dry kibble disclosed in Trassy differs from that of the dry kibble as claimed, the Office considers the dry kibble disclosed in Trassy at [0008], [0009], at [0037], [0039] and [0042] to have an average stiffness from about 40 N/mm to about 120 N/mm as in claim 12. See MPEP 2112.01.I.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0148630 A1 to Trassy et al. (Trassy) as applied to claim 11 above, and further in view of US 2017/0150740 A1 Miyamoto et al. (Miyamoto).
As applied to claim 11, Trassy at [0008], [0009], at [0037], [0039] and [0042] discloses a dry kibble comprising from about 20 wt% to about 100 wt% donut-shaped dry kibble pieces having an external diameter of from about 1.3 to 2.0 cm, an average inner-hole diameter of from about 3 to about 8 mm, and an average thickness of about 3 cm to about 5 cm.
Trassy does not disclose an example of a dry kibble having a moisture content of up to about 10 wt%. However, the dry kibble disclosed in Trassy appears to be substantially the same thing as the claimed dry kibble. Accordingly, absent a clear showing as to how the dry kibble disclosed in Trassy differs from that of the dry kibble as claimed, the Office considers the dry kibble disclosed in Trassy at [0008], [0009], at [0037], [0039] and [0042] to have an average stiffness from about 40 N/mm to about 120 N/mm. See MPEP 2112.01.I.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Miyamoto Trassy to dry kibble that has a moisture content of up to about 10 wt%. All references disclose donut-shaped dry kibble pieces and methods of feeding them to pets. The ordinary skilled artisan in Trassy would have desired to limit its moisture content to insure a stable product of donut-shaped dry kibble pieces.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0148630 A1 to Trassy et al. (Trassy) as applied to claim 11 above, and further in view of US 2002/0081356 A1 to Bebiak et al. (Bebiak).
As applied to claim 11, Trassy at [0008], [0009], at [0037], [0039] and [0042] discloses a dry kibble comprising from about 20 wt% to about 100 wt% donut-shaped dry kibble pieces having an external diameter of from about 1.3 to 2.0 cm, an average inner-hole diameter of from about 3 to about 8 mm, and an average thickness of about 3 cm to about 5 cm.
Trassy does not disclose a dry kibble is formulated for small adult dogs and that is packaged with indicia indicating that the dry kibble is for small adult dogs.
Bebiak discloses at Abstract a method for customizing pet food comprising (at [0010]) inputting pet weight, breed, age, food shape and form and other information including medical history into a database storing nutritional information. At [0011], Bebiak discloses generating a customized pet food formula and assembling printed material (“indicia”) indicating what dog the product is intended for. At [0017]-[0018], Bebiak discloses donut-shaped product as dry kibble pieces having a desired moisture content of from about 5 wt% to about 15 wt%.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Bebiak for Trassy to formulate a dry kibble for small adult dogs and package it with indicia indicating that the dry kibble is for small adult dogs. All references disclose donut-shaped dry kibble designed specifically for dogs. The ordinary skilled artisan in Trassy would have desired to formulate its dry kibble for a dog of any size and age as in Bebiak and to label the package for its custom food for that particular dog as in Bebiak.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki H 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.
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/ANDREW E MERRIAM/ Examiner, Art Unit 1791