64DETAILED 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 7-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the pet food comprising the recipe of Table I, does not reasonably provide enablement for the claimed thickness, ratio of thickness, hardness, and breaking strength as claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
At the outset, it is acknowledged that the level of skill (D) is high as the claims are directed to a food product.
However, as to the breadth of the claims (A) in the present invention, the claims are directed to pet food only defined by their thickness, ratio of thickness, hardness, and breaking strength . The claims do not recite the ingredients or amounts that result in the claimed properties. Thus, the claims are very broad.
As to the nature of the invention (B), state of the prior art (C) and level of predictability (E), people have been working with food for thousands of years and pet food producers seek to use ingredients that are predictable, offer consistent quality and ensure product stability, safety, and performance.
As to the amount of direction provided by the inventor (F) and quantity of experimentation (H), it is noted that the broadest claims do not recite do not recite any ingredients or amounts that result in the claimed properties.
While the Examples starting on pg. 22 of the present specification test the thickness of the varying major and minor axes and hardness, the only examples rely on a composition as set forth in Table 1 on pg. 21 of the present specification. Table 1 is as follows:
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Thus, there is no indication what ingredients or amounts would provide the claimed properties. The examples are very limited.
In view of the above, it is most respectfully submitted that although the level of skill in the art is high, the evidence available to date indicates that the level of experimentation needed to make or use the claimed invention in its current breadth is undue.
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.
Claims 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020074740A (11/26/2024 IDS; A translation of the description from ESPACENET.com is provided with this Official Action).
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JP2020074740 teaches a pet food designed for cats (lines 305-311). The food is nutritionally balanced (lines 399-402).
As to the thickness, JP2020074740 teaches that the major axis and the minor axis of the food particles for pet food are both in the range of 3 to 30 mm. The major axis and the minor axis of the food product are more preferably 6 to 16.5 mm. Thus, the claimed ranges falls within that taught by JP20200744740 (lines 296-300). Given the major (i.e., the thickness) and minor axes can be the same, it would have been obvious to provide a 1:1 ratio.
As to the hardness, JP2020074740 teaches the hardness is in a range of 15 to 50N (lines 404-407). This falls within that claimed.
JP2020074740 is silent as to the breaking strength. However, JP does teach the concept of an expanded food product. The expanded food product comprises particles obtained by molding the raw material mixture into granules, and are particles obtained through the expansion step of foaming inside the raw material mixture. The "puffing step" refers to a step of generating a gas inside the raw material mixture by a method such as heating, fermentation, chemical reaction or pressure reduction (lines 362-373). In the expansion step, the volume of the raw material mixture increases due to the generation of gas, and the raw material mixture becomes porous. As the volume of the raw material mixture increases, the bulk density decreases. By forming the raw material mixture into granules before the expansion step, after the expansion step, or simultaneously with the expansion step, "expanded particles" are obtained. "Non-expanded granules" are granules produced without undergoing the expansion step (lines 362-373). Thus, JP20200744740 teaches that as the product expands, a lower bulk density results. This would naturally result in a product where the more expanded portion of the product (i.e., thickest part of the product) also has a breaking strength lower than the breaking strength in a minimum thickness direction (i.e., less expanded, not as thick/wide but higher bulk density).
Moreover, as to the dimensions and shape of the product, it is noted that these parameters would be obvious absent evidence to the contrary. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
It is also noted that the Patent Office does not have the facilities to measure the dimensions or breaking strength of prior art products. Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
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As to claims 2-3, JP2020074740 teaches that the shape can vary (lines 455-461). Given the shape can vary and that product has expanded and non-expanded portions (lines 362-373), the product would naturally have central portions smaller than the outer portion of the food and recessed portions in a thickness direction. It is also noted that lines 246-248 discuss a whole in the center of the base which also naturally provide a recessed portion on thickness direction.
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As to claims 4 and 8-10, JP2020074740 teaches that the pet food can have 6-8 holes. The 6 to 8 through holes may have substantially the same size or different sizes. The size of the through hole is not particularly limited (lines 205-210). The major axis/thickest portion of the whole is preferably in the range of 0.01 to 0.25 mm (lines 205-210). However, the purpose and size of the holes is so that the product is easy to crush when the pet bites on the food (lines 205-210). In this regard, it would have been obvious to vary the size and number of holes so that the pet can easily crush the pet food when it bites, and to give an appropriate chewing response (lines 215-220).
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JP2020074740 also teaches a nutritionally balanced/complete (lines 305-311) pet food with similar dimensions. As noted above, JP2020074740 teaches that the major axis and the minor axis of the food particles for pet food are both in the range of 3 to 30 mm. The major axis and the minor axis of the hood grains are more preferably 6 to 16.5 mm. Thus, the claimed range falls within that taught by JP20200744740 (lines 296-300).The pet food would naturally weight the same. Moreover, generally, differences in concentrations/amounts 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("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 of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
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JP2020074740 teaches a pet food. It can be designed for cats (lines 305-311). The food is nutritionally balanced (lines 399-402).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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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.
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/PHILIP A DUBOIS/ Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
