Ex Parte English

Board of Patent Appeals and Interferences

Feb 9, 2009

10296349 (B.P.A.I. Feb. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL MARTIN ENGLISH
____________

Appeal 2008-4452
Application 10/296,349
Technology Center 1700
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Decided:1 February 9, 2009
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-9 and 11-20. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Appellant claims a foodstuff for pet animals, a method for forming a
foodstuff, and a method of enabling a pet owner to associate a flavor
visually with a foodstuff. Appellant states “there is a need for dry pet food
that provides nutrition or at least conveys, by appearance, that it contains
nutritive particles” (Spec. 2:2-4).
Representative claim 1 reads as follows:
1. A foodstuff for pet animal wherein the foodstuff is in the form of a
biscuit comprising a body,
the body including a body substance having a core, a surface zone at
least partially surrounding the core, and one or more irregularly shaped
nutritive particles visibly in contrast with the body substance,
the particles simulating a nutritive entity and embedded in a
distributed relationship in the surface zone to be visibly exposed on at least
one surface of the body,
wherein the core of the body substance is homogeneous and free of
nutritive particles.

The prior art set forth below is applied by the Examiner in the § 103
rejections before us as evidence of unpatentability:
Messmann FR 2 083 217 Nov. 15, 1971
Palmer US 3,808,340 Apr. 20, 1974
Gellman US 4,743,461 May 10, 1988
Cavadini EP 0 862 863 Sep. 9, 1998
Froseth US 6,592,915 Jul. 15, 2003

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows2:
1) claims 1-9, 11-14, and 16-19 as being unpatentable over Palmer in
view of Gellman, Messmann, and Cavadini;

2 The Examiner has withdrawn the rejection of claim 17 under 35 U.S.C.
112, 2nd paragraph (Ans. 3).
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2) claims 15 and 20 as being unpatentable over Palmer in view of
Gellman, Messmann, and Cavadini and further in view of Froseth.
Within the first ground of rejection, Appellant has not separately
argued any of the claims therein with any reasonable degree of specificity
(App. Br. 13-16; Reply Br. 1-5). Thus, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii)3, we select claim 1 as representative for the first ground of
rejection. Furthermore, Appellant does not provide separate arguments for
claims in the second ground of rejection. Therefore, our discussion will
focus on representative claim 1.
ISSUE
The sole issue on appeal is: has Appellant shown that the Examiner
reversibly erred in establishing a prima facie case of obviousness of claim 1
because the cited references fail to disclose or suggest all the elements of
claim 1; specifically, do the cited references fail to disclose or suggest
“irregularly shaped nutritive particles visibly in contrast with the body”, the
particles “simulating a nutritive entity” and “embedded in a distributed
relationship”, with the core of the body “free of the nutritive particles” as
required by claim 1?
We answer this question in the negative.
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.

3 As set out in 37 C.F.R. § 41.37(c)(1)(vii), “A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”
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Appellant’s Specification includes as the definition of “biscuit” that
“the term ‘biscuit’ is commonly used interchangeably and in relation to dry
pet food in general.” (Spec. 1: 20-22).
Appellant’s state “[b]y homogeneous is meant that the core does not
contain said nutritive particles.” (Spec. 2:14-15).
Palmer describes that a pet food product (i.e., a biscuit) may have an
inexpensive central core covered by a cover layer “presenting the
appearance, taste, and texture of a natural meat product” (col. 1, ll. 24-30).
The cover layer is formed of, e.g., meat, particles that are coated onto the
central core (col. 2, ll. 38-42). The particles which form this covering, as
well as the covering per se, clearly “[simulate] a nutritive entity” as required
by claim 1.
The core of Palmer is homogeneous since it does not contain these
nutritive particles.
While Palmer does not explicitly state that the nutritive particles are
“irregularly shaped”, one of ordinary skill would have readily appreciated
that meat “by-products” and “scraps” that have been “comminuted” would
have reasonably been irregularly shaped particles (e.g. col. 2, ll. 39-41).
As found by the Examiner, Palmer teaches or suggests all the claim
limitations of claim 1 except that Palmer does not teach that the particles are
“embedded in a distributed relationship in the surface zone” (Ans. 5); rather,
the particles are in the form of a cover layer. To overcome this deficiency,
the Examiner relies upon Gellman, Messmann, and Cavadini each of which
describes pet foods having visible particles distributed at the surface (Ans. 6-
10).
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In particular, Gellman describes a pet food biscuit with visually
apparent, discrete, nutritive particles located uniformly throughout the pet
food biscuit (abstract). Gellman teaches the discrete particles may contain
meat and have a color indicative of meat protein (e.g., col. 7, ll. 1-3). One of
ordinary skill in the art would have readily appreciated that these particles
thus “simulate a nutritive entity” as recited in claim 1. Indeed, as the
Examiner pointed out, the prior art described in Gellman also teaches pet
food pieces “may simulate vegetables, grains and red meats” (Ans. 5;
Gellman, col. 3, ll. 31-33).
Gellman describes “mixtures of particles within [a] size range”, thus
one of ordinary skill in the art would have readily appreciated that these
particles reasonably would have been irregular in shape (Gellman; e.g., col.
5, ll. 40-45; emphasis provided).
As also found by the Examiner, one of ordinary level of skill in the art
would have appreciated that distributed particles in a pet food biscuit may be
either distributed throughout the biscuit or concentrated at the surface (see
e.g., Ans. 16).
Cavadini describes a food product suitable for animal consumption
that includes a “dry mix” of probiotic and nutritive carrier substrate (p. 3, ll.
20-24; p. 5, ll. 47-50) which is then “agglomerated” onto “dried pieces” of
animal food/cereal (p. 5, ll. 7-17). One of ordinary skill in the art would
have readily appreciated that such an agglomeration would have been
“irregularly shaped”.
Messmann teaches distributed particles (in the form of
microreceptacles 14) may be “upon the surface and/or the inside” of a pet
food “biscuit for dogs” (translation p. 3, last paragraph; emphasis provided;
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see also e.g., Figs. 1, 5, 6). The particles/microreceptacles may be filled
with a solid or liquid “taste substance”. One of ordinary skill in the art
would have readily appreciated that a solid or liquid “taste substance” may
include a nutritive substance.
The particles of Messmann may be embedded in a layer of coating
substance and/or bonding agent on the pet food biscuit body, or “dusted”
upon the coating substance and/or bonding substance (p. 7). The
particles/microcapsules 14 are clearly depicted as distributed on the surface
of the biscuit (see, e.g., Figs. 1, 5, 6). Fig. 5 is a “biscuit whose surface is
equipped with capsules” (p. 5).
PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). Therefore, we look to Appellant’s Brief to determine if Appellant
has shown error in the proffered prima facie case.
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1734 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 3
(1966).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966).
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It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co. Inc., v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989).
Nor is it necessary that suggestion or motivation be found within the
four corners of the references themselves. “The obviousness analysis cannot
be confined by [the] formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of . . . the
explicit content of issued patents.” KSR, 127 S. Ct. at 1741. The Supreme
Court also noted in KSR that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
ANALYSIS
We agree with the Examiner that the claimed invention would have
been obvious over the combined teachings of Palmer, Gellman, Cavadini,
and Messmann.
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A person having ordinary skill in the art would have found it obvious
to modify the pet food stuff of Palmer to distribute the meat particles as
discrete meat particles as suggested by Gellman, rather than as a coating
layer, especially as necessary in view of the teachings of Messmann and
Cavadini which suggest distributed and/or irregularly shaped nutritive
particles at the surface of a pet food biscuit, and thus arrive at Appellant's
claimed invention as set forth in claim 1 (Ans. 3-4). Furthermore, a person
of ordinary skill in the art would have equally found it obvious to modify the
pet food biscuit of Gellman to locate the nutritive particles only in the
surface thereof and leave the body free of the particles as suggested by each
of Palmer and Messmann.
The only argument made by Appellant is that the cited references fail
to disclose all the elements of the present claims. In particular they contend
that “irregular shaped nutritive particles visibly in visual contrast with the
outer surface” and a “core that is free of the nutritive particles”, wherein the
nutritive particles “simulate a nutritive food entity” are not taught or
suggested by the cited references (App. Br. 14; Reply Br. 2).
Appellant’s contentions, as well as their conclusion that the
combination would not result in the limitations of claim 1 (App. Br. 14) is
not well taken, since Appellant is attacking the obviousness of the
combination merely by improperly attacking the references individually,
when the rejection is instead based upon the combined teachings of the
references.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. Once
one combined the teachings of the prior art, this claim would indeed
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encompass the modified prior art foodstuff biscuit (see, e.g., Ans. 17-18; see
also Findings of Facts section above). This is further supported by the
breadth of the claim limitation “one or more irregularly shaped nutritive
particles visibly in contrast”, as this plainly encompasses only one particle
not being entirely symmetrical in shape visibly in contrast, and/or a mixture
of particles of differing sizes.
The Supreme Court noted in KSR that although the teaching,
suggestion, and motivation test “captured a helpful insight,” an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 127 S. Ct. at 1741.
Gellman teaches that particles that simulate meat may be distributed
throughout a pet food biscuit, including embedded at the surface. The
knowledge that pet food biscuits may contain nutritive particles distributed
at the surface as an alternative to being located within the body is amply
suggested by Messmann. Messmann teaches distributed particles may be
“upon the surface and/or the inside” of a pet food “biscuit for dogs”
(translation p. 3, last paragraph; emphasis provided).
Although Gellman does not teach that the core is “free of the nutritive
[e.g., meat] particles”, both of at least Palmer and Messmann suggest this
feature. Furthermore, one of ordinary skill in the art “is also a person of
ordinary creativity, not an automaton”. KSR, 127 S. Ct. at 1742. All of the
applied references are to pet food products. These disclosures would have
led one of ordinary skill in the art, through no more than ordinary creativity,
to distribute irregularly shaped nutritive particles that simulate a nutritive
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entity (e.g., meat) at the surface and not within the core of the biscuit. See
KSR, 127 S. Ct. at 1741.
Further, one of ordinary skill in the art is presumed to have skills apart
from what the prior art references expressly disclose. See In re Sovish, 769
F.2d 738, 742 (Fed. Cir. 1985).
One of ordinary skill in the art would have been well aware that many
food products are made with irregularly shaped particles, decorative and/or
nutritive (e.g., dried fruit, chocolate chunks, chopped nuts) distributed at the
surface of the product for visual appeal, such as but not limited to food bars,
biscuits, cakes, cookies, etc. Indeed, it is within every day experience to
encounter such food products with irregularly shaped particles embedded at
the surface thereof (and not in the body). This further bolsters the
obviousness conclusion.
It is also well settled that it is not necessary for a finding of
obviousness that all the features of one reference be bodily incorporated into
the invention of another reference. In re Griver, 354 F.2d 377, 381 (CCPA
1966); see also In re Billingsley, 279 F.2d 689, 691 (CCPA 1960)
Appellant contends that the portions of the art that “teach away” have
not been considered (e.g., Gellman’s uniform distribution of particles
throughout the biscuit) (see, App. Br. 15; Reply Br. 5). However, Appellant
has not cited anything in the prior art references that would discourage or
dissuade one from the path followed by Appellant. In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (“a reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant”). Contrary to Appellant’s
contention, Gellman’s disclosure of uniform distribution of the nutritive
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particles in a biscuit does not, per se, teach away from the known alternative
use of nutritive particles on the surface of pet food products.
Furthermore, Appellant has presented no evidence that the use of
distributed nutritive particles that simulate a nutritive entity only at the
surface and not within the core of the pet biscuit was “uniquely challenging
or difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” See, e.g., Leapfrog Enter., Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
We have considered Appellant’s other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive.
We therefore determine that Appellant has not shown that the
Examiner reversibly erred in establishing a prima facie case of obviousness
for claim 1. Since all other claims in this rejection were not separately
argued, they fall with claim 1. Since no further arguments were presented
regarding the rejection of claims 15 and 20, the § 103 rejection of these
claims is also sustained.
CONCLUSION
Appellant have not shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of claim 1 because the cited
references fail to disclose or suggest all the elements of claim 1.
ORDER
The rejection of claims 1-9, 11-14, and 16-19 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Palmer, Gellman,
Messman, and Cavadini is affirmed.
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The rejection of claims 15 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Palmer, Gellman, Messman, Cavadini,
and Froseth is affirmed.
The decision of the Examiner 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)(iv).

AFFIRMED

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