Ex Parte Buchanan

Board of Patent Appeals and Interferences

Mar 21, 2012

10752898 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/752,898 01/06/2004 Brett J. Buchanan BBUCP101USA 5093
57608 7590 03/21/2012
ERIC D. JORGENSON
1457 KING ROAD
HINCKLEY, OH 44233
EXAMINER
LEFF, STEVEN N
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
03/21/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRETT J. BUCHANAN
____________

Appeal 2010-003046
Application 10/752,898
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, 5-10, 13, 15, 16, 19, 21-23, and 25-27. We have
jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Claims 1, 10, 19, and 21 are representative of the subject matter on
appeal and are set forth below:
1. An edible toy for an animal, comprising:
a shell for oral interaction with the animal; and
at least one underlying layer formed of an edible material
encased by the shell, the toy is edible in its entirety;
wherein the at least one underlying layer comprises a
layer binding material that provides consistency to retain form,
the binding material releases layer materials upon penetration,
and the edible material including catnip.
10. An edible toy for a cat, comprising:
an outside shell for oral interaction with the cat, the shell
comprises an edible material and catnip for stimulation of the
cat to interact therewith; and
an inner edible material encased by the shell, the inner
edible material comprises a binding material that provides
consistency and rigidity, thereby resulting in a time release of
the inner edible material accessible by the cat, the inner edible
material made of edible components and catnip, wherein the
entire toy is of edible material and thereby edible in its entirety.
19. An edible toy for a cat, comprising:
a shell for interaction by the cat, the shell made of an
edible material that includes catnip, maintains freshness of
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underlying material and that gradually wears away as the cat
interacts therewith; and
an inner edible material that is the underlying material
and which is encased by the shell and accessible by the cat over
an extended period of time, wherein the shell and inner edible
material include an edible binding material that provides
consistency and rigidity, so as to release inner edible material
upon penetration, such that the toy is composed of edible
material in its entirety.
21. A method of providing an edible toy for an animal,
comprising:
providing an edible material;
providing a binding material that provides consistency to
retain form;
mixing the edible material and binding material into a
homogeneous mixture of an inducement and at least one of a
nutrient or a treatment;
forming an outer shell for housing the homogenous
mixture; and
encasing the edible material within the outer shell.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith US 1,022,113 Apr. 2, 1912
Fisher US 4,260,635 Apr. 7, 1981
Baikie US 6,238,715 B1 May 29, 2001
THE REJECTIONS
1. Claim 5 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
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2. Claims 1, 2, 5-10, 13, 19, 21-23, 25, and 27 are rejected under
35 U.S.C. § 103(a) over Fisher in view of Smith.
3. Claims 1, 2, 5, 10, 13, 15, 16, 21-23, 26, and 27 are rejected under
35 U.S.C. § 103(a) over Baikie in view of Smith.

ANALYSIS
(with Findings of Fact and Principles of Law)
As an initial matter, Appellant has not presented separate arguments
for all of the rejected claims. Any claim not separately argued will stand or
fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).
We essentially adopt the Examiner’s findings pertinent to the issue(s)
raised by Appellant for these rejections. We therefore incorporate the
Examiner’s position as set forth in the Answer. We add the following for
emphasis only.

Rejection 1
We summarily affirm the 35 U.S.C. § 112, second paragraph rejection
of claim 5 because Appellant does not contest this rejection and indicates
that the language at issue in claim 5 as discussed by the Examiner will be
corrected upon favorable reconsideration of the prior art rejections. Br. 4.

Rejection 2
Appellant sets forth arguments related to his assertion that there is no
motivation to combine Fisher in view of Smith because Fisher is related to a
toy for a dog, whereas Smith is related to a toy for a cat. Br. 5-6. We are
not convinced by such arguments for the reasons stated by the Examiner on
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pages 9-11 of the Answer, which we incorporate herein. We add that one of
ordinary skill in the art, armed with the knowledge provided by both Fischer
(which discloses a pet feeding product in general, wherein a dog is
specifically disclosed) and Smith (a catnip ball played by a cat), would have
been led to Appellant’s claimed subject matter by incorporating the
teachings of Smith into Fischer as proposed by the Examiner, with a
reasonable expectation of successfully making the toy product as claimed.
Under 35 U.S.C. § 103(a), claimed subject matter can be shown to be
obvious, and thus unpatentable, if it is shown that a person having ordinary
skill in the art would have had a reasonable expectation of successfully
achieving the claimed invention. See, e.g., Velander v. Garner, 348 F.3d
1359, 1379 (Fed. Cir. 2003).
Appellant also argues that claims 1, 10 and 19 each similarly recite at
least one underlying layer that comprises a binding material wherein the
binding material releases edible materials upon penetration, and that the
applied art does not teach such subject matter. Br. 7. However, we agree
with the Examiner’s position on this issue. That is, it is a reasonable
position that Fischer suggests this subject matter since Fisher includes layers
of fibers (col. 4, l. 38 through col. 5, l. 54) mixed with animal food
components, including additives (col. 4, ll. 12-37). Appellant has not
convincingly explained how these materials would not provide for release of
edible materials upon penetration.
Appellant then argues that claim 19 recites that the shell maintains
freshness of the underlying layer, and that Fischer does not suggest this
aspect of claim 19. Br. 7. However, Appellant does not offer an explanation
of why the material of the shell (which is made of the fibers and food
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components and additives as mentioned, supra) would not help maintain
freshness of the underlying material. As pointed out by the Examiner,
Fischer does indicate that the materials have a satisfactory shelf-life (col. 4,
ll. 12-15) and no packaging is needed (col. 3, l. 58), which suggests the
materials that make up the shell would more likely than not maintain
freshness of underlying layers.
In view of the above, we determine that the Examiner has set forth a
prima facie case of obviousness. Appellant’s Declaration evidence offered
to rebut the prima facie case of obviousness is discussed, infra.

Rejection 3
Appellant sets forth arguments related to his assertion that there is no
motivation to combine Baikie in view of Smith because Baikie is related to a
toy for a dog, whereas Smith is related to a toy for a cat. Br. 11-12. We are
not convinced by such arguments for the reasons stated by the Examiner on
page 14 of the Answer, which we incorporate herein. We add that one of
ordinary skill in the art, armed with the knowledge provided by both Baikie
(which discloses a chew toy for dogs) and Smith (a catnip ball played by a
cat), would have been led to Appellant’s claimed subject matter by
incorporating the teachings of Smith into Baikie as proposed by the
Examiner, with a reasonable expectation of successfully making the toy
product as claimed. Velander v. Garner, 348 F.3d at 1379.
Appellant also argues that claims 1, 10, and 19 each similarly recite at
least one underlying layer that comprises a binding material wherein the
binding material releases edible materials upon penetration, and that the
applied art does not teach such subject matter. Br. 12-13. However, we
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agree with the Examiner’s position on this issue. That is, it is a reasonable
position that Baikie suggests this subject matter since Baikie includes hollow
casing 19 (col. 2, l. 3-9) and filling 30 having the ingredients as described
therein (col. 2, ll. 32 through col. 3, l. 15). Appellant argues that the meat
filling of Baikie is not a disclosure of a binding material that effects release
of inner edible material upon penetration. Br. 13. However, filling 30
includes an animal fat, a thickener, a gelling agent, and meat mixture (col. 2,
ll. 32-64), among other ingredients. Appellant has not convincingly
explained how these materials would not provide for a binding material that
releases edible materials upon penetration.
Appellant also argues that Baikie does not suggest releasing, encasing
or replacing edible material as recited in the subject claims. Br. 13-14. For
example, claim 15 recites that the shell includes “one or more holes for
releasing the inner edible material”, claim 21 recites “encasing the edible
material with the outer shell”, and claim 26 recites “forming a hole in the
outer shell such that the edible material can be replaced therethrough”. We
refer to the Examiner’s response made on pages 15-16 of the Answer, and
based upon such response, are unconvinced by Appellant’s arguments in this
regard.
In view of the above, we also determine that the Examiner has
presented a prima facie case with respect to Rejection 3. Appellant’s
Declaration evidence offered to rebut the prima facie case of obviousness is
discussed, infra.

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Rebuttal Evidence
In presenting evidence of secondary indicia, the burden is on
Appellant to show how such evidence establishes nonobviousness. See, e.g.,
In re Heyna, 360 F.2d 222, 228 (CCPA 1966).
Also, after evidence or argument is submitted by the Appellant
in response to the Examiner’s case, patentability is determined on the
totality of the record, by a preponderance of evidence with due
consideration to persuasiveness of argument. In re Spada, 911 F.2d
705, 707 n.3 (Fed. Cir. 1990); In re Corkill, 771 F.2d 1496, 1500
(Fed. Cir. 1985); In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985);
In re Johnson, 747 F.2d 1456, 1460 (Fed. Cir. 1984).
We refer to Appellant’s arguments on pages 8-10 and 14 of the Brief
and to Mr. Buchanan’s Declaration, for details regarding the contents of the
Declaration evidence. In general, the Declarant, Mr. Buchanan, makes an
effort to show commercial success and long felt need.
With regard to the commercial success, Appellant needs to show that
the success is linked to the claimed invention and not to some extraneous
factor. See, e.g., In re Huai-Hung Kao, 639 F.3d 1057, 1069-70 (Fed. Cir.
2011). It is thus helpful to provide a description of what was sold, a
description of the relevant market for the product, sales results that should
include evidence of market share, and information on advertising within the
relevant market. See, e.g., Cable Elec. Prods., Inc. v. Genmark, Inc., 770
F.2d 1025 (Fed. Cir. 1985) (Gross sales figures do not show commercial
success absent evidence as to market share); Pentec, Inc. v. Graphic
Controls Corp., 776 F.2d 309 (Fed. Cir 1985) (heavy promotion or
advertising, or position as market leader before the introduction of the
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patented product). Notably absent from the Declaration is information
related to sales results, including evidence of market share, and information
on advertising within the relevant market, which diminishes the value of the
Declaration regarding commercial success.
Also, merely showing that there was commercial success of an article
which embodied the invention is not sufficient. In re Huang, 100 F.3d 135,
139-140 (Fed. Cir. 1996) In the instant case, one of the testimonials by
Franny Syufy (page 2 of the Declaration) discusses how the exact right
shape and size of the product sold under the trade name of “Pawbreakers”
was attained. Yet, the shape and size of the Pawbreakers product is not
recited in the claims. The commercial success must be due to the claimed
features, and not due to unclaimed features. In re Paulsen, 30 F.3d 1475,
1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (“It has not been shown that
such evidence is relevant to a computer within the scope of these claims, i.e.,
that it is attributable to the inventions of these claims, rather than to
extraneous factors such as advertising and marketing or to the features
possessed by the computers of claims 1 and 18.”)
With regard to the showing of long felt need, a convincing showing of
long-felt need includes consideration of the following evidence.
The need must have been a persistent one that was recognized by
those of ordinary skill in the art. See In re Gershon, 372 F.2d 535 (CCPA
1967). See also Monarch Knitting Machinery v. Sulzer Morat GMBH, 139
F.3d 877, 884 (Fed. Cir. 1998) (“The relevant secondary consideration is
‘long-felt but unsolved need,’ not long-felt need in isolation”) (emphasis
original). This can be shown, e.g., by evidence showing unsuccessful efforts
to solve the problem. See Orthopedic Equip. Co., Inc. v. All Orthopedic
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Appliances, Inc., 707 F.2d 1376 (Fed. Cir. 1983) (Although the claimed
invention achieved the desirable result, there was no evidence of any prior
unsuccessful attempts to do so). The failure to solve a long-felt need may be
due to factors such as lack of interest or lack of appreciation of an
invention’s potential or marketability rather than want of technical know-
how. Scully Signal Co. v. Elecs. Corp. of Am., 570 F.2d 355 (Fed. Cir.
1977). In the instant case, Appellant does not explain how the Declaration
shows unsuccessful efforts to solve a problem.
Also, the long-felt need must not have been satisfied by another
before the invention by applicant. See Newell Cos. v. Kenney Mfg. Co., 864
F.2d 757 (Fed. Cir. 1988). In the instant case, discussion as to whether or
not the invention of Smith, e.g., did not satisfy this need, would have been
helpful.
In view of the above, we agree with the Examiner’s conclusion that
the Declaration evidence is not convincing.
CONCLUSIONS OF LAW AND DECISION
Each rejection is affirmed.
TIME PERIOD FOR RESPONSE
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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