DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response, and Amendment filed 07/06/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: (1) the 35 U.S.C. §112(b) rejection of claim 22 has been withdrawn; and (2) the 35 U.S.C. §103 rejection of claim 22 over Niceron, Didzbalis, and Tricarico has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-21, 23
Withdrawn claims: None
Previously cancelled claims: None
Newly cancelled claims: 22
Amended claims: 1, 5, 11, 15, 20
New claims: 23
Claims currently under consideration: 1-21, 23
Currently rejected claims: 1-21, 23
Allowed claims: None
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/06/2026 has been entered.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-21 and 23 are rejected under 35 U.S.C. 112(b) 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.
Claims 1-2, 5-6, 9, 11-12, 15-17, and 20 recite the term “about” in association with concentrations of ingredients. However, neither the claims nor the present specification defines a range of deviation implied by the term “about”. Therefore, the claims are indefinite.
For the purpose of this examination, the term “about” will be interpreted as meaning a ±10% deviation from the stated concentration.
Claims 1, 5, 11, and 15 recite ratios of dry yeast extract and edible phosphate. However, the claims do not recite a unit of measurement from which to obtain the ratio (e.g., weight ratio, volume ratio). Therefore, the claims are indefinite.
For the purpose of this examination, the ratios will be interpreted as being weight ratios.
Claims 3-4, 7-8, 10, 13-14, 18-19, 21, and 23 are rejected by reason of dependency from claims 1, 11, or 16.
Claim Rejections - 35 USC § 103
Claims 1-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Niceron (WO 2013/007639; IDS citation) in view of Didzbalis (US 2007/0071860; previously cited) and Brent (US 2006/0263416).
Regarding claims 1, 5, 11, and 15, Niceron teaches a pet food composition (corresponding to dry pet food) comprising a core (corresponding to dried particles or pieces) (page 18, lines 21-24); and an external coating (page 19, lines 13-19), wherein the external coating comprises: (a) fat-based layer disposed on the core (page 19, lines 13-15); and (b) a covering layer (corresponding to palatability-enhancing compositions as a dry powder for dusting) disposed on the fat-based layer. Niceron teaches that the fat can be mixed with a palatability-enhancing composition and applied to the kibble concurrently or that a dry palatability-enhancing composition can be dusted on top of the fat-based layer (page 19, lines 17-19); therefore, it is within the ambit of a skilled practitioner to determine the mixing and application of dry and liquid palatability-enhancing ingredients in multiple coatings. Niceron discloses that palatability-enhancing ingredients can be mixed with the fat-based layer (page 19, lines 19-21) and that proteinaceous matter (corresponding to amino acids) (page 14, lines 3-4) is required in the coating composition (Abstract) in an amount of about 5-50 wt.% (page 14, lines 3-4 ), which overlaps the claimed content of proteinaceous matter in the fat-based layer. Since fat alone can be sprayed directly onto the core (page 19, lines 13-15), the fat-based layer does not require water meaning the water content would be 0 wt.%, which falls within the claimed content of water in the fat-based layer. Since the proteinaceous matter comprises 5-50 wt.% of the fat-based layer, then the fat comprises 50-95 wt.% of the fat-based layer, which falls within the claimed fat content of the fat-based layer.
Niceron also teaches that a dusting of a palatability-enhancing composition may be applied to the fat-based layer (page 19, lines 17-19) which can include yeast extract (page 10, lines 7-9) and pyrophosphates (page 15, lines 9-10 and lines 14-19) dried to a powder (page 18, lines 1-2), rendering the claimed dried yeast extract obvious. Niceron discloses a coating in a total amount of 8 wt.% (corresponding to 6 wt.% poultry fat and 2 wt.% of a dry palatability enhancing composition) (page 23, lines 20-21). As such, the core would comprise 92 wt.% of the pet food composition, which places the core content and coating content within the claimed ranges. Niceron also discloses that the pet food composition has a total water content of less than about 15% (page 18, lines 21-23), which falls within the claimed total water content range.
Although Niceron does not specifically disclose the covering layer as comprising the claimed amounts of dry yeast extract and edible phosphate salts, the disclosed concentrations for the two layers of the coating relative to the total composition would provide a basis for determining a suitable amount of phosphate salts and dry yeast extract in the coating layer, thereby rendering the claimed amounts of dry yeast extract and edible phosphate salts in the covering layer as obvious. Phosphate salts in the palatability enhancing composition are about 0.01-75 wt.% (page 15, lines 22-23). As such, for a layer of 2 wt.% dry palatability enhancing composition, phosphate salt content range would be 0.0002-1.5 wt.% in the overall pet food composition, which overlaps the claimed phosphate salt content range in the overall pet food composition. Yeast extract in the palatability enhancing composition is about 0.01-99 wt.% (page 16, lines 7-9). As such, for a layer of 2 wt.% dry palatability enhancing composition, yeast extract content range would be 0.0002-1.98 wt.% in the overall pet food composition, which overlaps the claimed yeast extract content range in the overall pet food composition.
Also in disclosing that the palatability enhancing may include yeast extract (page 10, lines 7-9) in an amount of 0.01-99% by weight of the covering layer (page 16, lines 7-9) and phosphate salts in an amount of 0.01-75% by weight of the covering layer (page 15, lines 22-23), Niceron discloses amounts of yeast extract and phosphate salt which provide a range of weight ratios of yeast extract to phosphate salts that at least overlaps the claimed ratio ranges recited in present claims 1, 5, 11, and 15 (e.g., a covering layer comprising 66 wt.% yeast extract and 11 wt.% phosphate salt has a weight ratio of yeast extract to phosphate salt of 6:1).
In regards to the overlapping ranges disclosed or suggested by Niceron as described above, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Niceron discloses that the external coating is applied to the core comprising dry pet foods (corresponding to “dry nutritionally-balanced cat foods”) (page 20, lines 15-17, 20-21), which are “widely known and used in the art” (page 5, line 14). Niceron also discloses that a coating containing the dry yeast extract and phosphate salt may be in the form of a dry powder (page 15, lines 9-10; page 16, line 7; page 19, lines 16-17). Niceron does not teach that the core comprises the contents of carbohydrates, starch, protein, and fat recited in lines 3-7 of present claims 1 and 11. Niceron also does not teach that the dry yeast extract has a mass weighted average particle size of about 50 µm to about 1000 µm as recited in present claims 1 and 11.
However, Didzbalis teaches “a nutritionally balanced pet food” as is known in the art contains carbohydrates in a concentration of 35-50 wt.%, protein in concentration of 15-35 wt.%, and fat in a concentration of 3-20 wt.% [0044]. These disclosed concentrations of carbohydrates, protein, and fat fall within the claimed carbohydrate, protein, and fat concentrations in the core recited in present claims 1 and 11.
It would have been obvious for a person of ordinary skill in the art to have modified the core of Niceron to have the carbohydrate, protein, and fat contents taught by Didzbalis. Since Niceron discloses that its core comprises a nutritionally-balanced pet food known in the art (page 20, lines 15-17, 20-21; page 5, line 14), but does not disclose the composition of such a pet food, a skilled practitioner would have been motivated to consult an additional reference such as Didzbalis in order to determine a suitable pet food, thereby rendering the claimed concentrations of carbohydrates, protein, and fat in the claimed core of the pet food composition obvious. In regard to the core comprising the claimed amount of starch, Niceron discloses that carbohydrates may be starches (page 11, lines 11-12). It would have been obvious to have selected the starch of Niceron as the carbohydrate of Didzbalis since Didzbalis does not specify a type of carbohydrate in its composition. As such, the 35-50 wt.% carbohydrate in the core disclosed by Didzbalis may comprise starches disclosed by Niceron so that the core comprises 35-50 wt.% starches, which falls within the claimed starch concentration in the core.
The combination of Niceron and Didzbalis does not teach that the dry yeast extract has a mass weighted average particle size of about 50 µm to about 1000 µm as recited in present claims 1 and 11.
However, Brent teaches a coated pet food product wherein a layer of particulates is applied to the core of the pet food product [0002], [0046]. Brent teaches that a suitable particle size for particulates applied to the surface of a core of a pet food product may be at least about 5 µm to about 50,000 µm [0046]. This disclosed particle size range is considered to encompass the claimed mass weighted average particle size of the dry yeast extract recited in present claims 1 and 11. The selection of a value within the encompassing range renders the claimed range obvious. MPEP §2144.05.I.
It would have been obvious for a person of ordinary skill in the art to have modified the dry powder coating containing the dry yeast extract and phosphate salt of Niceron to have a particle size within the range taught by Brent. Since Niceron teaches applying a coating to a core of a pet food product, wherein the coating contains dry yeast extract and phosphate salt and wherein the coating may be in the form of a dry powder (page 15, lines 9-10; page 16, line 7; page 19, lines 16-17), but does not disclose a suitable particle size for a dry powder applied to the surface of a core of a pet food product, a skilled practitioner would have been motivated to consult an additional reference such as Brent in order to determine a suitable particle size, thereby rendering the claimed mass weighted average particle size of the dry yeast extract recited in present claims 1 and 11 obvious.
Regarding claims 2 and 12, Niceron teaches the inventions as disclosed above in claims 1 and 11, including phosphate salts in the palatability enhancing composition are about 0.01-75 wt.% (page 15, lines 22-23) and the overall pet food composition contains 2 wt.% of a palatability enhancing composition in the overall pet food composition (page 23, lines 20-21). As such, the pet food composition containing 2 wt.% palatability enhancing composition would contain 0.0002-1.5 wt.% phosphate salt, which overlaps the claimed range. The selection of a value within the overlapping range renders the claimed range obvious. MPEP §2144.05.I.
Regarding claims 3, 4, 13, and 14, Niceron teaches the inventions as disclosed above in claims 1 and 11, including the pyrophosphates comprising tetrasodium pyrophosphate, trisodium pyrophosphate, disodium pyrophosphate, tetrapotassium pyrophosphate, tripotassium pyrophosphate, dipotassium pyrophosphate, or a combination thereof (page 15, lines 14-19).
Regarding claim 6, Niceron teaches the inventions as disclosed above in claim 1, including the palatability-enhancing composition in the covering layer comprising hydrolyzed protein (corresponding to digests) (page 9, lines 4-5; page 10, lines 25-27) in the amount of 0.5- 80% by weight of the covering layer (page 15, line 31-page 16, line 1), which encompasses the claimed range. The selection of a value within the encompassing range renders the claimed range obvious. MPEP §2144.05.I.
Regarding claim 7, Niceron teaches the inventions as disclosed above in claim 1, including the core is formed by steaming and cooking the ingredients at an elevated temperature and pressure during extrusion (page 18, lines 12-18). The combination of Niceron and Didzbalis discloses starch as the carbohydrate in the core (Niceron, page 11, lines 11-12; Didzbalis [0044]). Therefore, the starch in the core of the pet food composition is gelatinized by being steamed and cooked during extrusion so that the final pet food composition comprises gelatinized starch in its core as presently claimed.
Regarding claim 8, modified Niceron teaches the inventions as disclosed above in claim 1, including the core of the pet food composition comprises protein (Didzbalis [0044]). Niceron discloses protein to be animal proteins (page 11, lines 3-5). Therefore, 100 wt.% of the protein in the core is of animal origin, which falls within the claimed concentration.
Regarding claim 9, modified Niceron teaches the inventions as disclosed above in claim 1, including the core of the pet food composition comprises carbohydrates in a concentration of 35-50 wt.%, protein in concentration of 15-35 wt.%, and fat in a concentration of 3-20 wt.% (Didzbalis [0044]) and that the core may comprise other ingredients such as minerals, preservatives, and antioxidants (Niceron, page 10, lines 19-22; page 20, lines 4-10). Based on the amounts of carbohydrates, protein, and fat in the core disclosed by Didzbalis [0044], 53-100 wt.% of the core has been accounted for so that 0-47 wt.% of the core has not been accounted. It would have been obvious to have included the additional ingredients disclosed by Niceron (page 20, lines 9-10) in the core in order to account for the remaining 0-47 wt.% of the core. As such, the inclusion of minerals, preservatives, and antioxidants from an amount of 0 wt.% to an amount of 47 wt.% in the core, which falls within the claimed concentration, is rendered obvious.
Regarding claim 10, Niceron teaches the inventions as disclosed above in claim 1, including fat alone can be sprayed directly onto the core (page 19, lines 13-15), so that the fat-based layer does not require water. Therefore, the water content in the fat-based layer would be 0 wt.%. Since the proteinaceous matter comprises 5-50% of the fat-based layer (page 14, lines 3-4 ), then the fat comprises 50-95 wt.% of the fat-based layer. Therefore, the total concentration of fat, water, and proteinaceous matter in the fat-based layer is 55-100 wt.%, which encompasses the total concentration of fat, water, and proteinaceous matter in the fat-based layer. The selection of values within the encompassing ranges renders the claimed ranges obvious. MPEP §2144.05.I.
Regarding claims 16, 17, 20, 21, and 23, Niceron teaches a pet food composition (corresponding to dry pet food) comprising a core (corresponding to dried particles or pieces) (page 18, lines 21-24); and an external coating (page 19, lines 13-19), wherein the external coating comprises: a covering layer in the form of a dusting of a palatability-enhancing composition (page 19, lines 17-19). Niceron teaches that the palatability enhancing composition may include yeast extract (page 10, lines 7-9), pyrophosphates (page 15, lines 9-10 and lines 14-19), and hydrolyzed protein (corresponding to animal digest) (page 9, lines 4-5; page 11, lines 3-5; page 15, lines 27-28) dried to a powder (page 17, line 30- page 18, line 2). Therefore, the claimed yeast extract being dry is rendered obvious. Niceron discloses that the pet food composition may further comprise a fat-based coating layer in addition to the covering layer and the core (page 23, lines 20-21), wherein the combination of the fat-based coating layer and the covering layer creates an external coating on the pet food composition (page 19, lines 11-17). Niceron discloses that the external coating is present in a total amount of 8 wt.% of the pet food composition (corresponding to 6 wt.% poultry fat and 2 wt.% of a dry palatability enhancing composition) (page 23, lines 20-21). As such, the core would comprise 92 wt.% of the pet food composition, which places the core content and external coating content within the claimed ranges. Niceron also discloses that the pet food composition has a total water content of less than about 15% (page 18, lines 21-23), which falls within the claimed total water content range.
Although Niceron does not specifically disclose the covering layer as comprising the claimed amounts of dry yeast extract, edible phosphate salts, and hydrolyzed protein based on the total weight of the pet food composition, the disclosed concentration for the coating layer relative to the total composition would provide a basis for determining a suitable amount of phosphate salts, dry yeast extract, and hydrolyzed protein in the coating layer. Phosphate salts in the palatability enhancing composition are about 0.01-75 wt.% (page 15, lines 22-23). As such, for a layer of 2 wt.% dry palatability enhancing composition, the phosphate salt content range would be 0.0002-1.5 wt.% in the overall pet food composition, which overlaps the claimed phosphate salt content range in the overall pet food composition recited in present claims 16 and 17 and encompasses the claimed phosphate salt content range in the overall pet food composition recited in present claim 20. Yeast extract in the palatability enhancing composition is about 0.01-99 wt.% (page 16, lines 7-9). As such, for a layer of 2 wt.% dry palatability enhancing composition, the yeast extract content range would be 0.0002-1.98 wt.% in the overall pet food composition, which overlaps the claimed yeast extract content range in the overall pet food composition recited in present claim 16. Hydrolyzed protein in the palatability enhancing composition is about 0.01-99 wt.% (page 15, lines 31-32). As such, for a layer of 2 wt.% dry palatability enhancing composition, the hydrolyzed protein content range would be 0.0002-1.98 wt.% in the overall pet food composition, which overlaps the claimed hydrolyzed protein content range in the overall pet food composition recited in present claim 16.
Also in disclosing that the palatability enhancing coating may include yeast extract (page 10, lines 7-9) in an amount of 0.01-99% by weight of the covering layer (page 16, lines 7-9) and phosphate salts in an amount of 0.01-75% by weight of the covering layer (page 15, lines 22-23), Niceron discloses amounts of yeast extract and phosphate salt which provide a range of weight ratios of yeast extract to phosphate salts that at least overlaps the claimed ratio ranges recited in present claims 16 and 21 (e.g., a covering layer comprising 66 wt.% yeast extract and 11 wt.% phosphate salt has a weight ratio of yeast extract to phosphate salt of 6:1).
Wherein the prior art teaches or suggests a range which overlaps or encompasses the claimed range, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Niceron also discloses that the external coating is applied to the core comprising dry pet foods (corresponding to “dry nutritionally-balanced cat foods”) (page 20, lines 15-17, 20-21), which are “widely known and used in the art” (page 5, line 14). Niceron also discloses that a coating containing the dry yeast extract, phosphate salt, and hydrolyzed protein may be in the form of a dry powder (page 15, lines 9-10; page 16, line 7; page 19, lines 16-17). Therefore, Niceron discloses that the external coating is in the form of particulates as recited by present claim 23.
Niceron does not teach that the core comprises the contents of carbohydrates, starch, protein, and fat recited in lines 3-7 of present claim 16. Niceron also does not teach that the dry yeast extract has a mass weighted average particle size of about 50 µm to about 1000 µm as recited in present claim 16; or that the particulates in the external coating have a diameter of 10-1000 µm as recited in present claim 23.
However, Didzbalis teaches “a nutritionally balanced pet food” as is known in the art contains carbohydrates in a concentration of 35-50 wt.%, protein in concentration of 15-35 wt.%, and fat in a concentration of 3-20 wt.% [0044]. These disclosed concentrations of carbohydrates, protein, and fat fall within the claimed carbohydrate, protein, and fat concentrations in the core.
It would have been obvious for a person of ordinary skill in the art to have modified the core of Niceron to have the carbohydrate, protein, and fat contents taught by Didzbalis. Since Niceron discloses that its core comprises a nutritionally-balanced pet food known in the art (page 20, lines 15-17, 20-21; page 5, line 14), but does not disclose the composition of such a pet food, a skilled practitioner would have been motivated to consult an additional reference such as Didzbalis in order to determine a suitable pet food, thereby rendering the claimed concentrations of carbohydrates, protein, and fat in the claimed core of the pet food composition obvious. In regard to the core comprising the claimed amount of starch, Niceron discloses that carbohydrates may be starches (page 11, lines 11-12). It would have been obvious to have selected the starch of Niceron as the carbohydrate of Didzbalis since Didzbalis does not specify a type of carbohydrate in its composition. As such, the 35-50 wt.% carbohydrate in the core disclosed by Didzbalis may comprise starches disclosed by Niceron so that the core comprises 35-50 wt.% starches, which falls within the claimed starch concentration in the core.
The combination of Niceron and Didzbalis does not teach that the dry yeast extract has a mass weighted average particle size of about 50 µm to about 1000 µm as recited in present claim 16; or that the particulates in the external coating have a diameter of 10-1000 µm as recited in present claim 23.
However, Brent teaches a coated pet food product wherein a layer of particulates is applied to the core of the pet food product [0002], [0046]. Brent teaches that a suitable particle size for particulates applied to the surface of a core of a pet food product may be at least about 5 µm to about 50,000 µm [0046]. This disclosed particle size range is considered to encompass the claimed mass weighted average particle size of the dry yeast extract recited in present claim 16; and to encompass the particulate diameter recited in present claim 23. The selection of a value within the encompassing ranges renders the claimed ranges obvious. MPEP §2144.05.I.
It would have been obvious for a person of ordinary skill in the art to have modified the dry powder coating containing the dry yeast extract, phosphate salt, and hydrolyzed protein of Niceron to have a particle size within the range taught by Brent. Since Niceron teaches applying a coating to a core of a pet food product, wherein the coating contains dry yeast extract, phosphate salt, and hydrolyzed protein and wherein the coating may be in the form of a dry powder (page 15, lines 9-10, 31-32; page 16, line 7; page 19, lines 16-17), but does not disclose a suitable particle size for a dry powder applied to the surface of a core of a pet food product, a skilled practitioner would have been motivated to consult an additional reference such as Brent in order to determine a suitable particle size, thereby rendering the claimed mass weighted average particle size of the dry yeast extract and the particulate diameter recited in present claims 16 and 23 obvious.
Regarding claims 18 and 19, Niceron teaches the inventions as disclosed above in claim 16, including the pyrophosphates comprising tetrasodium pyrophosphate, trisodium pyrophosphate, disodium pyrophosphate, tetrapotassium pyrophosphate, tripotassium pyrophosphate, dipotassium pyrophosphate, or a combination thereof (page 15, lines 14-19).
Response to Arguments
Claim Rejections – 35 U.S.C. §112(b) of claim 22: Applicant canceled the claim. Therefore, the rejection is moot.
Claim Rejections – 35 U.S.C. §103 of claims 1-21 over Niceron and Didzbalis: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that brewer’s yeast and yeast extract are not interchangeable. Applicant pointed to the Declaration filed 09/06/2019 in parent application U.S. 15/024,971 and to Exhibit B filed in the present application on 07/18/2025 as demonstrating that animals preferred the diet with yeast extract over diets with brewer’s yeast. Applicant argued that the substantially improved results demonstrated in these documents are sufficient to establish unexpected results so that the present invention is not obvious over Niceron and Didzbalis (Applicant’s Remarks, page 7, 1st paragraph under section III – page 8, 2nd paragraph).
However, as stated in the “Response to Arguments” section of the Non-Final Office Action filed 10/04/2019 in the parent application US 15/024,971, “Given that the prior art had established that yeast extract was flavorful, it would have been obvious to select yeast extract from the list of yeast ingredients that Niceron discloses as being palatability enhancers”. As stated in the “Response to Amendment” section of the Non-Final Office Action filed 09/05/2025 for the present application, “the present claims do not require any level of palatability to be obtained by the claimed pet food composition as a whole or by any individual component of the pet food composition. The claims merely require the recited ingredients to be present in the recited concentrations. The present specification broadly describes the function of the yeast extract as enhancing palatability (specification, page 18, lines 12-15). Therefore, the only function of the claimed yeast extract that may be gleaned from the present disclosure is that of enhancing palatability of a pet food composition, which is the same function for the brewer’s yeast and the yeast extract taught by Niceron (page 10, lines 5-10; page 16, lines 7-12). As such, the degree of palatability enhancement is irrelevant, especially wherein Niceron is shown to broadly disclose the inclusion of yeast extract in the pet food composition at the claimed concentrations. Therefore, not only are brewer’s yeast and yeast extracts functional equivalents, but the inclusion of yeast extract is rendered obvious by the broad disclosure of Niceron.”
The Examiner also points to the PTAB decision filed 03/04/2024 in parent application U.S. 15/024,971, wherein PTAB agrees with the Examiner in that brewer’s yeast and yeast extracts are functional equivalents as taught by Niceron (PTAB Decision, page 11, 1st paragraph).
Applicant then argued that Examples 2 and 7 of Niceron show that increasing the amount of brewer’s yeast in the pet food composition decreases palatability so that a skilled practitioner would not increase the amount of brewer’s yeast in palatability-enhancing composition of Niceron to the now-claimed amount of 0.8-4 wt.% by weight of the pet food composition recited in amended claims 1, 11, and 16. Applicant argued that the weight ratios of dry yeast extract to edible phosphate salt disclosed in the examples of Niceron are outside of the claimed ranges. Applicant argued that Niceron teaches away from achieving the claimed ratios as the examples of Niceron show that decreasing the inorganic phosphate content in relation to brewer’s yeast decreases palatability of the pet food product (Applicant’s Remarks, page 8, 3rd paragraph-page 10, 2nd paragraph).
However, the Examiner points out that in both Examples 2 and 7, Niceron compares diets not containing amino acids (i.e., Control Diets) with diets containing amino acids (i.e., Experimental Diets) wherein the diets containing amino acids were shown to be more palatable than diets not containing amino acids. Due to the presence of amino acids in the Experimental Diets and the absence of amino acids in the Control diets, these Examples do not provide sufficient basis to determine that the concentration of brewer’s yeast and/or phosphate salt is the cause of the difference in palatability between the Control and Experimental Diets and thus, the results of these diets do not sufficiently support Applicant’s argument that increased levels of brewer’s yeast/decreased levels of phosphate salt result in decreased palatability of the pet food composition.
Furthermore, “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). “The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).” MPEP 2123.II. Applied to the present situation. Applied to the present situation, Niceron broadly discloses that the palatability enhancing coating may include yeast extract (page 10, lines 7-9) in an amount of 0.01-99% by weight of the covering layer (page 16, lines 7-9) and phosphate salts in an amount of 0.01-75% by weight of the covering layer (page 15, lines 22-23). As such, Niceron broadly discloses amounts of yeast extract and phosphate salt which provide a range of weight ratios of yeast extract to phosphate salts that at least overlaps the claimed ratio ranges recited in present claims 1, 11, and 16 (e.g., a covering layer comprising 66 wt.% yeast extract and 11 wt.% phosphate salt has a weight ratio of yeast extract to phosphate salt of 6:1). Wherein Niceron discloses ratios which overlap the claimed ratios, the product of the prior art is expected to have the same features as the product of the claimed invention. The Examiner also points to the PTAB decision filed 03/04/2024 in parent application U.S. 15/024,971, wherein PTAB agreed with the Examiner’s position (PTAB Decision, page 9, 1st paragraph – page 10, 1st paragraph).
Applicant then argued that Didzbalis does not cure the aforementioned deficiencies of Niceron. Applicant argued that the composition of Didzbalis does not include additional components such as yeast such that a skilled practitioner would not find motivation to combine the disclosures of Didzbalis and Niceron to arrive at the claimed invention (Applicant’s Remarks, page 10, 3rd paragraph- page 11, 1st paragraph).
However, Niceron is shown to render the claimed yeast extract and ratios/amounts of yeast extract and phosphate salts obvious as described in the claim rejections and in the responses written above. Therefore, Didzbalis is continued to be relied on merely for its disclosure regarding the carbohydrates, starch, protein, and fat content of the core of the pet food composition. Since the prior art has been shown to render the present claims obvious, Applicant’s arguments have been shown to be unpersuasive, and the rejections of the claims stand as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 22 over Niceron, Didzbalis, and Tricarico: Applicant’s arguments with respect to claim(s) 22 are moot due to the cancellation of claim 22 and due to none of the current rejections relying on the Tricarico reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
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.
/KELLY P KERSHAW/Examiner, Art Unit 1791
Prosecution Insights