Ex Parte Abene et al

Board of Patent Appeals and Interferences

Mar 22, 2010

10701795 (B.P.A.I. Mar. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS G. ABENE, MICHAEL J. WILSON, and
STEFANO E. ZANCAN
____________

Appeal 2009-003548
Application 10/701,795
Technology Center 1700
____________

Decided: March 22, 2010
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
CATHERINE Q. TIMM, and LINDA M. GAUDETTE, Administrative
Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 19-26, 28-35, and 37-43 (Final Office
Action (“Final”), mailed Dec. 31, 2007, 1), the only claims pending in the
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Application. (Appeal Brief (“App. Br.”), filed May 27, 2008, 3-4.) We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ “invention generally relates to a customized dietary health
management system for pets and more particularly to a customized pet food
diet selected on the basis of a pet’s attributes and nutritional needs.”
(Specification (“Spec.”) [0002].) The Examiner relies on the following
evidence in rejecting the appealed claims (Examiner’s Answer (“Ans.”),
mailed Jul. 9, 2008, 2-3):
Bone 4,273,788 Jun. 16, 1981
Zamzow 4,712,511 Dec. 15, 1987
Gluck 6,228,418 B1 May 8, 2001
Bebiak 6,358,546 B1 Mar. 19, 2002
Best Breed Premium Pet Foods @
http:llbestbreedpet.comlindex.php?option=content&task=view&id+29<em
id=, accessed on February 14, 2006.

The Examiner maintains (Ans. 3-9), and Appellants request review of
(App. Br. 5), the following grounds of rejection:
1. claims 19, 25, 26, 28, 29, 35, and 37 under 35 U.S.C. § 103(a)
as unpatentable over Bebiak in view of Bone and further in view of
Zamzow; and
2. claims 20-24, 30-34, and 38-43 under 35 U.S.C. § 103(a) as
unpatentable over Bebiak in view of Bone and Zamzow as applied above,
and further in view of Gluck and Best Breed.
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Rejection of claims 19, 25, 26, 28, 29, 35, and 37 under 35 U.S.C. § 103(a)
as unpatentable over Bebiak in view of Bone and further in view of Zamzow

Appellants indicate that separate arguments are presented in support
of patentability of independent claims 19 and 37. (See App. Br. 15.)
Independent claim 37 is directed to a “customized pet food product made by
a process” comprising the same steps recited in independent claim 19.
(Compare claim 19 with claim 37 (Claims Appendix to the Appeal Brief).)
Independent claim 19 is reproduced below (from the Claims Appendix to the
Appeal Brief):
19. A method of producing a customized dry pet food
product comprising the steps of:

a. providing a plurality of batches of different
formulations of pre-made dry kibble pieces;

b. selecting at least two formulations of the premade dry
kibble pieces from the plurality of batches;

c. separating a predetermined volume of each of the at
least two formulations of the pre-made dry kibble pieces from
the selected batches; and

d. feeding the predetermined volumes of pre-made kibble
into a single container and blending the volumes of pre-made
dry kibble;

wherein the selection of the at least two formulations of
the pre-made dry kibble is based on an individual pet's
attributes in order to provide a customized dry pet food product
for the selected individual pet.

The remaining claims subject to the first ground of rejection are
dependent claims and stand or fall with the respective independent claim
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from which they depend, i.e., claims 26, 28, 29 (see infra note 2), and 35
with claim 19, and claim 25 with claim 37. See 37 C.F.R. § 41.37(c)(1)(vii)
(“When multiple claims subject to the same ground of rejection are argued
as a group by appellant, the Board may select a single claim from the group
of claims that are argued together to decide the appeal with respect to the
group of claims as to the ground of rejection on the basis of the selected
claim alone.”).
CLAIM INTERPRETATION
Appellants contend that the Examiner’s rejections are based on an
overly broad interpretation of the claim phrase “individual pet’s attributes”
(independent claims 19 and 37)1 as encompassing texture preferences.
(Reply Brief (“Rep. Br.”), filed Jul. 30, 2008, 4.)2 Therefore, our

1 The disputed claim phrase also appears in claim 39 (see Claims Appendix
to the Appeal Brief), the only other independent claim in this appeal. We
apply the same interpretation of this phrase to claim 39, which is subject to
the second ground of rejection.

2 We do not agree with Appellants’ assertion that this is a new claim
interpretation advanced for the first time in the Response to Argument
section of the Answer. (See, e.g., Final 9-10 (“At page 9, applicant states
that ‘there is nothing in the pending claims that recites that the formulations
have anything to do with []a variety of tastes, flavors, shapes and textures.’
As described in claims 19 and 37, the formulations are based on an
individual pet's attributes.”).) Appellants have not persuasively argued that
the Examiner’s Response to Argument presents a “new basis of rejection”
(Rep. Br. 4), such that they should be entitled to advance new arguments for
patentability directed to dependent claims (see Rep. Br. 9-10.) Therefore,
we decline to consider Appellants’ newly presented arguments in support of
patentability of dependent claims 29 and 43. See 37 C.F.R. §
41.37(c)(1)(vii) (stating that an appeal brief must include “the contentions of
appellant with respect to each ground of rejection presented for review in
paragraph (c)(1)(vi) of this section, and the basis therefor, with citations of
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consideration of the issues in this Appeal begins with interpretation of the
claim language in dispute. See Amazon.com, Inc. v. Barnesandnoble.com,
Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“Only when a claim is properly
understood can a determination be made . . . whether the prior art anticipates
and/or renders obvious the claimed invention.”).
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Portions of
the Specification which are particularly relevant to our interpretation of the
claim phrase “individual pet’s attributes” are indicated in the paragraph
below:
The “invention is directed to a customized dietary health management
system for pets. The pet food diet provides the required level of nutrients
and it includes a customized pet food product formulated from a dry pet food
kibble recipe and selected functional additives.” (Spec. [0009].) The
Specification describes the “formulation of the dry pet food kibble” as
“selected on the basis of an individual pet's attributes and physical
conditions” (Abstract), but does not explicitly define “individual pet’s
attributes” or “attributes” (see generally, Spec.). The information on an
“individual pet’s attributes and physical conditions” is “provided by the

the statutes, regulations, authorities, and parts of the record relied on”); Ex
parte Nakashima, No. 2009-001280, 2010 WL 191183 (BPAI Jan. 7, 2010)
(explaining that arguments and evidence not timely presented in the
principal Brief, will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief).

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owner of the pet, the pet's veterinarian or animal health care provider . . . on
a pet profile form. . . . The information from the pet profile is then analyzed
and a customized diet and health management system is formulated.” (Spec.
[0013].) Table 2 is described as “[a]n example of the kind of information
requested on a pet profile” and includes “Feeding Preference,” e.g. “Meat,”
“Dry,” “Snacks,” and “Table Scraps” and “General Condition,” e.g. “Teeth”
and “Gums.” (Spec. [0013].) “The customized diet and dietary health
management system is adjusted for the[se] parameters.” (Spec. [0014].) For
example, “[i]f a companion animal’s oral condition needs improvement or if
the feeding format includes meaty treats, a treat such as a TARTER
CHEW® would be recommended as part of the diet and caloric intake.
Alternatively, if the feeding format of the companion animal includes
biscuits or table scraps, a NUTRIBISCUIT® would be recommended as part
of the diet and caloric intake.” (Spec. [0016].)
Interpreting the claims in light of the Specification, we determine that
the phrase “individual pet’s attributes” includes preferences for texture3 of
food (see, e.g., Ans. 10). In particular, Table 2 explicitly lists “Feeding
Preference” as forming part of a pet’s profile (i.e., attributes and physical
conditions) and identifies foods having varying textures, e.g. table scraps
and dry food, as indicative of such preference. Moreover, the Specification

3 Contrary to Appellants’ contention, the Examiner’s position is not that
“texture” per se is an individual pet’s attribute. (Rep. Br. 9.) Rather, the
Examiner’s position is that taste (and preference) for texture is an individual
pet’s attribute. (See Ans. 11 (“[A] pet’s individual attributes . . . very well
includes its taste for texture.”).)

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indicates that an animal’s preferences for texture of food have an impact on
its physical condition, e.g., dental health.4
ISSUE
Having interpreted the claim language in dispute, we now consider
whether the Examiner properly established a prima facie case of
obviousness. More specifically, based on the arguments advanced by
Appellants, we consider the following issue:
In reaching a conclusion of obviousness, did the Examiner properly
rely on knowledge which was within the level of ordinary skill in the art at
the time the claimed invention was made rather than on knowledge gleaned
only from Appellants’ disclosure?
We answer this question in the affirmative.
FINDINGS OF FACT (“FF”)
1. Bebiak relates to “a method for customizing pet food to the
health and nutritional requirements of an individual pet.” (Bebiak, col. 1, ll.
39-41.) Bebiak discloses varying the ingredients of the customized pet food
to provide a desired nutritional balance based on a pet’s profile, which
includes age, gender, weight, time of year, and specific health problem.
(App. Br. 8-9 (quoting Final 2-3 (citing Bebiak, col. 3, ll. 22-26 and col. 6,
ll. 23-27)).) The pet food formula may also be based on the pet or pet

4 In addition to the explicit Specification disclosure indicating that the claim
phrase “individual pet’s attributes” encompasses “preference for texture,”
we find that the ordinary artisan would have understood that an “individual
pet’s attributes” includes the animal’s sense of taste and, therefore, its taste
(and preference) for texture. The ordinary artisan would have recognized
that if a pet does not find the food palatable, the animal will not consume the
food, and cannot receive its optimal nutrition and disease prevention
benefits. See FF 2 infra p. 8.

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owner’s preferences with regard to form, flavor, shape and texture. (Bebiak,
col. 3, ll. 11-13; see also, App. Br. 8 (quoting Final 2-3 (citing Bebiak, col.
3, ll. 11-12 and col. 5, ll. 15-35)).)
2. Bone “relates to pet food, and more particularly to bulk
packaged mixtures of hard and soft pet food in which the hard pieces are of
the ‘dry’ pet food type, and the soft pieces are either ‘dry’ or ‘semi-moist’
pet food.” (Bone, col. 1, ll. 6-10; see also, App. Br. 9.) According to Bone,
“[a]lthough proper nutrition is provided by the hard, relatively abrasive pet
food, the pet does not necessarily accept this food due to the hard abrasive
nature. Yet, in many cases, the hard abrasive nature is highly desirable for
teeth cleaning characteristics in addition to the nutritional aspects, and ease
of shipping and storing. Consequently, in spite of all its inherent
advantages, it may be difficult to feed a hard dry pet food because of the
palatability and other acceptance problems.” (Bone, col. 1, ll. 46-55.)
3. In Example I, Bone discloses separately preparing a hard dry
component and a soft dry component, the two components having different
formulations (see Table 1). (Final 3; Ans. 4.) The hard component is
prepared by extrusion and drying until a moisture level of 9-12 percent by
weight is achieved. (col. 4, l. 68 –col. 5, l. 2.) The soft component is
likewise prepared by extrusion and drying to a moisture content of 11-14
percent. (See col. 6, ll. 1-11.) A final product is formed by mixing the two
components. (Bone, col. 6, ll. 12-17.) Bone thus discloses “a plurality of
batches of different formulations of pre-made dry kibble pieces” as recited in
claim 19. (See Spec. [0004] (“Dry pet food (kibble) generally has a moisture
content below 20% and its processing typically includes extruding, drying
and/or baking in heat.”).)
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4. The Examiner acknowledged that “Bebiak ‘is silent as to the
limitation regarding a plurality of batches and preparing different
formulations, selecting at least 2 formulations into a single container and
mixing them.’” (App. Br. 9 (quoting Final 3, ll. 3-5).) However, the
Examiner determined that it would have been obvious to prepare more than
one formulation for the same dog and combine these formulations into a
single container “since it is known that a variety of tastes, flavors, shapes
and textures attract a dog and entice it to its food” as taught by Bone. (Final
3; Ans. 4.) The Examiner further determined it would have been obvious to
combine the different formulations into a single container using Zamzow’s
programmed mix and delivery systems. (Final 4.)5
5. Appellants contend the Examiner has, at best, shown that the
claimed invention “was within the ability of one of ordinary skill in the art,”
i.e., that all aspects of the claimed invention were individually known in the
art. (App. Br. 14.) Appellants argue that Examiner has not established a
prima facie case of obviousness because the Examiner has relied on
improper hindsight reasoning (App. Br. 11) and failed to articulate an
objective reason (App. Br. 14) for combining the teachings of the applied
prior art in the manner claimed.
PRINCIPLES OF LAW
A prima facie case of obviousness is established where the Examiner
demonstrates that the invention is nothing more than the predictable result of
a combination of familiar elements according to known methods. KSR Int'l.

5 Appellants do not dispute the Examiner’s finding that Zamzow discloses “a
means adaptable for executing [claim 19] process step d) ‘feeding’
predetermined volumes of kibbles into a single container.” (Cf. App. Br. 10.)

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Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). When a second reference
identifies the benefits of adding a feature to the primary reference, an
obviousness rejection is proper. In re Thrift, 298 F.3d 1357, 1365 (Fed. Cir.
2002). Cf. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima
facie obvious to combine two compositions each of which is taught by the
prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose.”).
“As long as some motivation or suggestion to combine the references
is provided by the prior art taken as a whole, the law does not require that
the references be combined for the reasons contemplated by the inventor.”
In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). Cf. KSR, 550 U.S. at
421 (explaining that it is erroneous to conclude “that a patent claim cannot
be proved obvious merely by showing that the combination of elements was
‘obvious to try’”).
ANALYSIS
We have considered Appellants’ arguments, but are not convinced of
error in the Examiner’s obviousness determination.6 Contrary to Appellants’
contention, we find the Examiner’s reasons for combining the references are
clearly supported by the disclosure in Bebiak, Bone, and Zamzow. (See
citations to references Ans. 3-6 and 9-13; FF 1-3.) Appellants have not
explained, with any degree of specificity, why the identified disclosure in the
references fails to support the Examiner’s proposed motivation (FF 4) for

6 Regarding Appellants’ contention that the Examiner cannot properly rely
on Bebiak because the parent application was allowed over this reference
(App. Br. 15), Appellants are directed to the Examiner’s Response to
Argument (Ans. 14) which explains why this argument is unpersuasive.

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combining the references in the manner claimed. (See FF 5.) As such, we
are not persuaded that the Examiner’s obviousness determination is based on
improper hindsight reasoning.7
Rejection of claims 20-24, 30-34, and 38-43 under 35 U.S.C. § 103(a) as
unpatentable over Bebiak in view of Bone and Zamzow as applied above,
and further in view of Gluck and Best Breed

The Examiner identified, in the applied references, a teaching or
suggestion of each recited limitation in claims 20-24, 30-34, and 38. (Ans.
7-9.) The Examiner determined that claims 39-43 “recite limitations that are
repetitive to those of the claim list addressed” and, therefore, did not
separately list findings in support of the rejection of these claims. (Ans. 9.)
We are in agreement with the Examiner’s assessment of the
limitations in claims 39-43. In other words, we find that the Examiner
identified, in the applied references, a teaching or suggestion of each recited
limitation in claims 39-43. Appellants have not persuaded us that the mere
absence of a substantially identical, second set of detailed findings in the

7 Although Appellants indicate that separate arguments are provided in
support of patentability of claim 37, we see no need to discuss the merits of
these arguments since Appellants do not dispute that if the claimed process
is obvious, then a product produced by the process is also obvious. (App.
Br. 15 (“The Examiner’s rejection of claim 37 thus hinges on the above
alleged obviousness of the process in view of the cited art.”).) Moreover, as
indicated by the Examiner (Ans. 6-7), Appellants have not provided
persuasive evidence that the claimed product differs from products produced
by the prior art methods. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985) (“If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.”).

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Answer constitutes reversible error on the part of the Examiner in rejecting
claims 39-43, as well as claims 30-34 which depend from claim 39. (See
App. Br. 16.)
Appellants also rely on the arguments made with respect to claims 19
and 37 in traversing the rejection of claims 20-24, 30-34, and 38-43. (App.
Br. 16.) These arguments are not persuasive of error in the Examiner’s
second ground of rejection for the reasons explained above in connection
with the first ground of rejection.
CONCLUSION
Appellant has not persuaded us of error in the Examiner’s obviousness
determination. The decision of the Examiner rejecting claims 19-26, 28-35,
and 37-43 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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