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 5, 6, 12, and 13 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.
Claims 5 and 12 recite a claimed range of base excess. However, no unit is provided for the amount of base excess. For the purposes of examination, the claimed base excess is interpreted to have units of mEq/kg.
Claims 6 and 13 recite a calcium to phosphorous ratio. However, no basis (e.g. molar or weight) is provided.
Claim Rejections - 35 USC § 103
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, 2, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yamka (WO 2008103179 A1) in view of Kaufmannn (EP 3698648 A1) and Chinachoti (US 2005/0085443).
Regarding Claims 1 and 2, Yamka teaches a wet pet food [0007] for cats [0002] comprising methionine [0007], flax seed [0028], and fish oil [0028]. Note that the limitation of “treating or preventing urolithiasis” is directed towards intended use, and does not further limit the claim.
Yamka does not address the addition of calcium sulfate.
Kaufmann teaches the addition of calcium sulfate [0045] to a wet food intended for cats [0002]. Kaufmann teaches that such an ingredient is typical for a cat food.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to include calcium sulfate in the pet food of Yamka. One would have been motivated to make such a modification since Kaufmann teaches that calcium sulfate is a typical component of cat food.
Yamka additionally does not address the addition of sodium acid pyrophosphate.
Chinachoti teaches a wet pet food [0041] for cats [0013] comprising sodium acid pyrophosphate [0034]. Chinachoti teaches that the addition of sodium acid pyrophosphate, along with a biopolymer, facilitates hairball passage [0033-0034].
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to include sodium acid pyrophosphate in the pet food of Yamka. One would have been motivated to make such a modification to formulate a pet food designed for hairball passage.
Regarding Claim 15, Yamka teaches a wet pet food [007] for cats [0002] comprising methionine [007], flax seed [0028], and fish oil [0028]. Note that the limitation of “for treating or preventing urolithiasis” is directed towards intended use, and does not further limit the claim.
Yamka does not address the addition of calcium sulfate.
Kaufmann teaches the addition of calcium sulfate [0045] to a wet food intended for cats [0002]. Kaufmann teaches that such an ingredient is typical for a cat food.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to include calcium sulfate in the pet food of Yamka. One would have been motivated to make such a modification since Kaufmann teaches that calcium sulfate is a typical component of cat food.
Yamka additionally does not address the addition of sodium acid pyrophosphate.
Chinachoti teaches a wet pet food [0041] for cats [0013] comprising sodium acid pyrophosphate [0034]. Chinachoti teaches that the addition of sodium acid pyrophosphate, along with a biopolymer, facilitates hairball passage.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to include sodium acid pyrophosphate in the pet food of Yamka. One would have been motivated to make such a modification to formulate a pet food designed for hairball passage.
Claim 3 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yamka in view of Kaufmann and Chinachoti as applied to Claims 1 and 15, above, and further in view of AAFCO (https://www.aafco.org/wp-content/uploads/2023/01/MBRC_minutes_Attachment_A-1.pdf , 2015) and NRC (“Your Cat’s Nutritional Needs”, https://nap.nationalacademies.org/resource/10668/cat_nutrition_final.pdf, 2006).
Regarding Claim 3, modified Yamka teaches the cat food ingredients as discussed above in regard to Claim 1 but does not discuss specific amounts.
Regarding the amount of flax seed and fish oil, Yamka teaches that flax seed and fish oil are present as fats, and teaches that the composition is nutritionally balanced [0026].
NRC teaches that cat food should have at least “about 9%” of fat based on dry matter (Page 3, Paragraph 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize flax seed and fish oil in the amounts as claimed in the composition of Yamka. One would have been motivated to make such a modification since NRC teaches that fat is an important ingredient in pet food. Note that wet pet food is about 75% moisture (see NRC, Page 12, Paragraph 1). The minimum fat requirement as taught by NRC is therefore 2.25% as an overall mass fraction of the wet pet food. A composition comprising, e.g. 1% fish oil, 1% flax seed, and >0.25% of another fat ingredient meets the limitations of the Claim and is sufficiently motivated by NRC. Additionally, note that where Yamka teaches the use of any suitable fats in the cat food [0028], it would have been obvious to have utilized a combination of fats as claimed.
Regarding the amount of sodium acid pyrophosphate, Chinachoti teaches a wet pet food [0041] for cats [0013] comprising 1-5 wt% sodium acid pyrophosphate [0034], which overlaps the claimed range.
Regarding the amount of methionine, AAFCO teaches that the minimum amount of methionine required for adult cats is 0.2 wt% on a percentage of dry matter (Page 13, “AAFCO CAT FOOD NUTRIENT PROFILES BASED ON DRY MATTER”). Note that wet food is 75% moisture (see evidentiary reference of NRC, Page 12, Paragraph 1). AAFCO therefore teaches greater than .05 wt% of methionine as an overall weight fraction in a wet cat food (.002*25%), which overlaps the claimed range.
Regarding the amount of calcium sulfate, Kaufmann teaches the inclusion of calcium sulfate [0045] in a wet cat food [0002]. Kaufmann additionally teaches that a typical wet cat food comprises 0.8 wt% calcium on a dry basis [0099]. Note that wet food is 75% moisture (see evidentiary reference of NRC, Page 12, Paragraph 1). Kaufmann therefore teaches 0.2% calcium as an overall fraction of the composition. Additionally, note that calcium sulfate is approximately 30% calcium by mass. It would therefore be obvious to include 0.67% of calcium sulfate (0.2/0.3) in the overall composition of Kaufmann, which lies within the claimed range. One would have been motivated to make such a modification since Kaufmann teaches calcium sulfate as a source of calcium, and additionally teaches the overall amount of calcium in the composition.
It additionally would have been obvious to one having ordinary skill to utilize the amount of calcium sulfate as taught by Kaufmann in the composition of Yamka. One would have been motivated to make such a modification since Kaufmann teaches that the calcium levels are “typical” of a wet cat food.
Regarding Claim 16, modified Yamka teaches the cat food ingredients as discussed above in regards to Claim 15 but does not discuss specific amounts.
Regarding the amount of flax seed and fish oil, Yamka teaches that flax seed and fish oil are present as fats, and teaches that the composition is nutritionally balanced [0026].
NRC teaches that cat food should have at least “about 9%” of fat based on dry matter (Page 3, Paragraph 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize flax seed and fish oil in the amounts as claimed in the composition of Yamka. One would have been motivated to make such a modification since NRC teaches that fat is an important ingredient in pet food. Note that wet pet food is about 75% moisture (see NRC, Page 12, Paragraph 1). The minimum fat requirement as taught by NRC is therefore 2.25% as an overall mass fraction of the wet pet food. A composition comprising, e.g. 1% fish oil, 1% flax seed, and >0.25% of another fat ingredient meets the limitations of the Claim and is sufficiently motivated by NRC. Additionally, note that where Yamka teaches the use of any suitable fats in the cat food [0028], it would have been obvious to have utilized a combination of fats as claimed.
Regarding the amount of sodium acid pyrophosphate, Chinachoti teaches a wet pet food [0041] for cats [0013] comprising 1-5 wt% sodium acid pyrophosphate [0034], which overlaps the claimed range.
Regarding the amount of methionine, AAFCO teaches that the minimum amount of methionine required for adult cats is 0.2 wt% on a percentage of dry matter (Page 13, “AAFCO CAT FOOD NUTRIENT PROFILES BASED ON DRY MATTER”). Note that wet food is 75% moisture (see evidentiary reference of NRC, Page 12, Paragraph 1). AAFCO therefore teaches greater than .05 wt% of methionine as an overall weight fraction in a wet cat food (.002*25%), which overlaps the claimed range.
Regarding the amount of calcium sulfate, Kaufmann teaches the inclusion of calcium sulfate [0045] in a wet cat food [0002]. Kaufmann additionally teaches that a typical wet cat food comprises 0.8 wt% calcium on a dry basis [0099]. Note that wet food is 75% moisture (see evidentiary reference of NRC, Page 12, Paragraph 1). Kaufmann therefore teaches 0.2% calcium as an overall fraction of the composition. Additionally, note that calcium sulfate is approximately 30% calcium by mass. It would therefore be obvious to include 0.67% of calcium sulfate (0.2/0.3) in the overall composition of Kaufmann, which lies within the claimed range. One would have been motivated to make such a modification since Kaufmann teaches calcium sulfate as a source of calcium, and additionally teaches the overall amount of calcium in the composition.
It additionally would have been obvious to one having ordinary skill to utilize the amount of calcium sulfate as taught by Kaufmann in the composition of Yamka. One would have been motivated to make such a modification since Kaufmann teaches that the calcium levels are “typical” of a wet cat food.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yamka in view of Kaufmann and Chinachoti as applied to Claim 1, above, and further in view of Yamka (2), “The Prediction of Urine pH Using Dietary Cations and Anions in Cats Fed Dry and Wet Foods”, International Journal of Applied Research in Veterinary Medicine, Volume 4 (1), https://jarvm.com/articles/Vol4Iss1/Vol4Iss1YamkaV4N1pp58-66.pdf, 2006
Regarding Claims 4, modified Yamka does not address the effect of the composition on urine pH.
Yamka (2) teaches that a urine pH of below 6.6 reduces the formation of struvites (stones) in the urinary tract (Page 62, Discussion, Paragraph 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to configure the composition of modified Yamka to maintain a urine pH as claimed. One would have been motivated to make such a modification since Yamka(2) teaches that such a urine pH reduces urinary tract stones.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yamka in view of Kaufmann and Chinachoti as applied to Claim 1, above, and further in view of Jeremias (DOI: 10.1016/j.anifeedsci.2013.04.003, April 2013)
Regarding Claim 5, modified Yamka does not address the base excess of the food.
Jeremias teaches that commercial cat food has a base excess ranging from -180 to 377, which encompasses the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to configure a cat food to have the base excess as claimed. One would have been motivated to make such a modification since Jeremias teaches that such ranges are typical for a commercial cat food.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yamka in view of Kaufmann and Chinachoti as applied to Claim 1, above, and further in view of Hare Today (https://hare-today.com/feline-nutrition/nutrition/dont-let-calcium-phosphorous-ratios-scare-you, June 2019).
Regarding Claim 6, modified Yamka does not address the calcium to phosphorous ratio.
Hare Today teaches that a cat diet should have a calcium to phosphorous ratio of 0.9:1 to 1.5.1 (Page 2, Paragraph 2), which overlaps the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to formulate the cat food of Yamka with the calcium to phosphorous ratio as claimed. One would have been motivated to make such a modification since Hare Today teaches that such a ratio is required for a cat diet.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamka in view of Kaufmann and Chinachoti as applied to Claim 1, above, and further in view of Houston (https://www.cambridge.org/core/services/aop-cambridge-core/content/view/S0007114511000894).
Regarding Claim 7, modified Yamka does not address the RSS struvite or oxalate value.
Houston teaches that an RSS struvite value of less than one, which lies within the claimed range, dissolves struvite stones in cats (Abstract).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to formulate the composition of Yamka to have an RSS struvite value as claimed. One would have been motivated to make such a modification since Houston teaches that such a value dissolves struvite stones.
Claims 8, 9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yu (US 20070122459 A1) in view of Yamka.
Regarding Claims 8 and 9, Yu teaches a method for preventing or treating urolithiasis in cats [0006]. The method comprises adding potassium sulfate to a dry food (Claims 2 and 3).
Yu does not address the addition of methionine, fish oil, or taurine to the pet food.
Yamka teaches a dry pet food [007] for cats [0002] comprising methionine [007], fish oil [0028], and taurine. Yamka teaches that the pet food prevents obesity and preserves lean muscle mass [0005].
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize methionine, fish oil, and taurine in the cat food of Yu. One would have been motivated to make such a modification to formulate a cat food that prevents obesity.
Regarding Claim 15, Yu teaches a method for preventing or treating urolithiasis in cats [0006]. The method comprises adding potassium sulfate to a wet or dry food (Claims 2 and 3 and [0026].
Yu does not address the addition of methionine, fish oil, or taurine to the pet food.
Yamka teaches a pet food [007] for cats [0002] comprising methionine [007], fish oil [0028], and taurine. Yamka teaches that the pet food prevents obesity and preserves lean muscle mass [0005].
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize methionine, fish oil, and taurine in the cat food of Yu. One would have been motivated to make such a modification to formulate a cat food that prevents obesity.
Claims 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Yamka as applied to Claims 8 and 15, above, and further in view of AAFCO and NRC.
Regarding Claim 10, Yu teaches the addition of potassium equivalent to more than about 1 wt% of potassium chloride (Abstract) on a dry basis [0049]. Note that potassium chloride is 52% potassium, and potassium carbonate is 22% potassium. Yu therefore teaches the addition of greater than (0.52/0.22) = 2.3% potassium sulfate on a dry basis.
Yu teaches that the potassium source maybe included in either wet or dry foods [0026]. Note that wet food is 75% moisture (see evidentiary reference of NRC, Page 12, Paragraph 1). Yu therefore teaches the addition of 25% * 0.023 = 0.56% potassium sulfate as an overall fraction of the pet food, which lies within the claimed range.
Regarding the amount of fish oil, Yamka teaches that fish oil is present as fat, and teaches that the composition is nutritionally balanced [0026].
NRC teaches that cat food should have at least “about 9%” of fat based on dry matter (Page 3, Paragraph 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize up to 9% fish oil on a dry basis in the amounts as claimed in the composition of Yamka. One would have been motivated to make such a modification since NRC teaches that fat is an important ingredient in pet food.
Note that wet pet food is about 75% moisture (see NRC, Page 12, Paragraph 1). The minimum fat requirement as taught by NRC is therefore (25% * .09) = 2.25% as an overall mass fraction of the wet pet food. A composition comprising, e.g. 1% fish oil and >1.25% of another fat ingredient meets the limitations of the Claim and is sufficiently motivated by NRC. Additionally, note that where Yamka teaches the use of any suitable fats in the cat food [0028], it would have been obvious to have utilized a combination of fats as claimed.
Regarding the amount of methionine and taurine, AAFCO teaches that the minimum amount of both methionine and taurine required for adult cats is 0.2 wt% on a percentage of dry matter (Pages 13-14, “AAFCO CAT FOOD NUTRIENT PROFILES BASED ON DRY MATTER”). Note that wet food is 75% moisture (see evidentiary reference of NRC, Page 12, Paragraph 1). AAFCO therefore teaches greater than .05 wt% of methionine and greater than .05 wt% of taurine as an overall weight fraction in a wet cat food (.002*25%), which overlaps the claimed range of methionine and encompasses the amount of taurine.
Regarding Claim 17, Yu teaches the addition of potassium equivalent to more than about 1 wt% of potassium chloride (Abstract) on a dry basis [0049]. Note that potassium chloride is 52% potassium, and potassium carbonate is 22% potassium. Yu therefore teaches the addition of greater than (0.52/0.22) = 2.3% potassium sulfate on a dry basis.
Yu teaches that the potassium source maybe included in either wet or dry foods [0026]. Note that wet food is 75% moisture (see evidentiary reference of NRC, Page 12, Paragraph 1). Yu therefore teaches the addition of 25% * 0.023 = 0.56% potassium sulfate, which lies within the claimed range.
Regarding the amount of fish oil, Yamka teaches that fish oil is present as fat, and teaches that the composition is nutritionally balanced [0026].
NRC teaches that cat food should have at least “about 9%” of fat based on dry matter (Page 3, Paragraph 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize up to 9% fish oil on a dry basis in the amounts as claimed in the composition of Yamka. One would have been motivated to make such a modification since NRC teaches that fat is an important ingredient in pet food.
Note that wet pet food is about 75% moisture (see NRC, Page 12, Paragraph 1). The minimum fat requirement as taught by NRC is therefore (25% * .09) = 2.25% as an overall mass fraction of the wet pet food. A composition comprising, e.g. 1% fish oil and >1.25% of another fat ingredient meets the limitations of the Claim and is sufficiently motivated by NRC. Additionally, note that where Yamka teaches the use of any suitable fats in the cat food [0028], it would have been obvious to have utilized a combination of fats as claimed.
Regarding the amount of methionine and taurine, AAFCO teaches that the minimum amount of both methionine and taurine required for adult cats is 0.2 wt% on a percentage of dry matter (Pages 13-14, “AAFCO CAT FOOD NUTRIENT PROFILES BASED ON DRY MATTER”). Note that wet food is 75% moisture (see evidentiary reference of NRC, Page 12, Paragraph 1). AAFCO therefore teaches greater than .05 wt% of methionine and greater than .05 wt% of taurine as an overall weight fraction in a wet cat food (.002*25%), which overlaps the claimed range of methionine and encompasses the amount of taurine.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Yamka as applied to Claim 8, above, and further in view of Yamka (2).
Regarding Claim 11, modified Yu does not address the effect of the composition on urine pH.
Yamka (2) teaches that a urine pH of below 6.6 reduces the formation of struvites (stones) in the urinary tract (Page 62, Discussion, Paragraph 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to configure the composition of modified Yu to maintain a urine pH as claimed. One would have been motivated to make such a modification since Yamka(2) teaches that such a urine pH reduces urinary tract stones.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Yamka as applied to Claim 8, above, and further in view of Jeremias (DOI: 10.1016/j.anifeedsci.2013.04.003, April 2013)
Regarding Claim 12, modified Yu does not address the base excess of the food.
Jeremias teaches that commercial cat food ranges has a base excess ranging from -180 to 377, which encompasses the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to configure the cat food of Yu to have the base excess as claimed. One would have been motivated to make such a modification since Jeremias teaches that such ranges are typical for a commercial cat food.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Yamka as applied to Claim 8, above, and further in view of Hare Today.
Regarding Claim 13, modified Yu does not address the calcium to phosphorous ratio.
Hare Today teaches that a cat diet should have a calcium to phosphorous ratio of 0.9:1 to 1.5.1 (Page 2, Paragraph 2), which overlaps the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to formulate the cat food of Yu with the calcium to phosphorous ratio as claimed. One would have been motivated to make such a modification since Hare Today teaches that such a ratio is required for a cat diet.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Yamka as applied to Claim 8, above, and further in view of Houston.
Regarding Claim 14, modified Yu does not address the RSS struvite or oxalate value.
Houston teaches that an RSS struvite value of less than one, which lies within the claimed range, dissolves struvite stones in cats (Abstract).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to formulate the composition of Yu to have an RSS struvite value as claimed. One would have been motivated to make such a modification since Houston teaches that such a value dissolves struvite stones.
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.
Claim 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-15, and 17-19 of copending Application No. 19/319,905 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending independent claims teach all of the same components as the instant independent claims, and the copending claims have the same or overlapping amounts for dependent claim limitations.
Claim
Limitation
Reference application Claim
Reference Limitation
1
Flaxseed, fish oil, calcium sulfate, methionine, sodium acid pyrophosphate
1
Flaxseed, fish oil, calcium sulfate, methionine, sodium acid pyrophosphate, a source of dietary fiber
2
Wet cat food
2
Wet cat food
3
wt% Flaxseed, 0.1-10 wt% fish oil, .04-4 wt% calcium sulfate, .002-0.2 methionine, .015-1.5 wt% sodium acid pyrophosphate
3
wt% Flaxseed, 0.1-10 wt% fish oil, .04-4 wt% calcium sulfate, .002-0.2 methionine, .015-1.5 wt% sodium acid pyrophosphate, 0.75-2.0 wt% dietary fiber
4
Urine pH 6.15-6.56
4
Urine pH 6.15-6.56
5
Base excess of -80 to -100
5
Base excess of -80 to -100
6
Ca:P ratio of 1-1.15
6
Ca:P ratio of 1-1.15
7
RSS struvite ≤ 1.8, RSS oxalate ≤ 6.0
7
RSS struvite ≤ 1.8, RSS oxalate ≤ 6.0
8
Fish oil, potassium sulfate, methionine, taurine
9
Fish oil, potassium sulfate, methionine, taurine, dietary fiber
9
Dry cat food
10
10
0.1-1 wt% fish oil, 0.1-0.6 wt% potassium sulfate, .002-0.2 wt% methionine, 0.1-1 wt% taurine
11
0.1-1 wt% fish oil, 0.1-0.6 wt% potassium sulfate, .002-0.2 wt% methionine, 0.1-1 wt% taurine, 4-6 wt% dietary fiber
11
Urine pH 6.31-6.85
12
Urine pH 6.31-6.85
12
Base excess -50 to -200
13
Base excess -50 to -200
13
Ca:P ratio of 1-1.15
14
Ca:P ratio of 1-1.15
14
RSS struvite ≤ 1.8, RSS oxalate ≤ 6.0
15
RSS struvite ≤ 1.8, RSS oxalate ≤ 6.0
15
Flaxseed, fish oil, calcium sulfate, methionine, sodium acid pyrophosphate OR Fish oil, potassium sulfate, methionine, taurine
17
Flaxseed, fish oil, calcium sulfate, methionine, sodium acid pyrophosphate , dietary fiber OR Fish oil, potassium sulfate, methionine, taurine, dietary fiber
16
0.1-10 wt% Flaxseed, 0.1-10 wt% fish oil, .04-4 wt% calcium sulfate, .002-0.2 methionine, .015-1.5 wt% sodium acid pyrophosphate
18
0.1-10 wt% Flaxseed, 0.1-10 wt% fish oil, .04-4 wt% calcium sulfate, .002-0.2 methionine, .015-1.5 wt% sodium acid pyrophosphate, 0.75-2.0 wt% dietary fiber
17
0.1-10 wt% fish oil, 0.1-1.0 wt% potassium sulfate, .002-0.2 wt% methionine, 0.1-0.6 wt% taurine
19
0.1-10 wt% fish oil, 0.1-1.0 wt% potassium sulfate, .002-0.2 wt% methionine, 0.1-0.6 wt% taurine, 4-6 wt% dietary fiber
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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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.
/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
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