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 .
Claims 1-11 pending and are currently under consideration.
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 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.
Claim(s) 1-11 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Mao et al (WO2016/176466)(IDS Reference) and Kern (Whole Dog Journal).
Mao teaches a pet food composition comprising a fat content of 2-13%, an amino acid content of at least 0.01% of the product and at least 5% based on the weight of the dry matter (see entire document, for instance, [0052] and [0049]). The amino acid is taught as being selected from the group including glycine (see entire document, for instance, [0050]). The composition further comprises protein in an amount of 5-50% (see entire document, for instance, [0054] and [0055]). The composition can be in the form of a loaf or pate with a volume of 20-2,000 cm3 (see entire document, for instance, [0057]). The protein component is taught as being from animal meat (see entire document, for instance, [0056]). It is noted that Applicant has not established a material difference between animal meat and reconstituted animal meat. Mao teaches that the wet pet food can further comprise fat, antioxidants, and carbohydrates (see entire document, for instance, [0034]). The meat pieces are taught as having a density of 0.8-1.2 g/ml (see entire document, for instance, [0051]). The composition can be in the form of slices with dimensions of 10mm x 7mm x 6 mm (see entire document, for instance, [0015]). The pet food can have 30-90% of the meat pieces (see entire document, for instance, [0059]). The water content of the composition is taught as being 50-75% (see entire document, for instance, [0035]). The composition is taught as being a wet pet food, wherein Mao teaches that the moisture content of wet pet foods is greater than 50% (see entire document, for instance, [0002]). Mao teaches that the protein content of the meat pieces can be 20-42% (see entire document, for instance, [0054]). The meat pieces can comprise 50% animal protein (see entire document, for instance, [0055]). The fat is taught as comprising animal fat, vegetable oil, marine oil, or combinations thereof (see entire document, for instance, [0053]). The meat pieces are taught as comprising at least 50% triglycerides (see entire document, for instance, [0053]).
Mao, while teaching all of the instantly claimed components and ranges that overlap the instantly claimed ranges, does not provide a singular example with the claimed components all within the instantly claimed ranges and ratios. Further, Mao does not indicate the amount of fiber present.
Kern teaches that most dog foods range from 1-10% in fiber content, but moderate levels of fiber, in the 2-4% range, may be a realistic goal when selecting a dog food (see entire document, page 5, first paragraph).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to utilize the components taught by Mao, in the amounts taught by Mao, and thereby arrive at the instantly claimed invention. One would have been motivated to do so since Mao directly teaches the instantly claimed components and amounts, wherein it would have required no more than merely following the guidance of Mao in order to arrive at the instantly claimed composition.
It further would have been obvious to one of ordinary skill in the art to utilize a moderate level of fiber in the composition of Mao, namely 2-4% as taught by Kerns. One would have been motivated to do so since Kerns teaches the benefits of fiber in a dog food composition, but also teaches the disadvantages of too much fiber. Therefore, one of ordinary skill in the art would look to the moderate range taught by Mao of 2-4%.
Regarding the amounts of the components and the ratio of the fat component to the protein component, it is noted that the prior art teaches amounts that overlap said ratio, thereby rendering the amounts and ratio obvious. It is noted that MPEP 2144.05 states: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Further, MPEP 2144.05 states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,167,739. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued patent is also directed to a pet food composition comprising similar amounts of fat, protein, glycine, and with the same density, dimensions, and water content.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611
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