Ex Parte Franks et al

Patent Trial and Appeal Board

Sep 25, 2018

12202120 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/202,120 08/29/2008
132446 7590 09/27/2018
Mars, Inc. c/o The Nutro Company
Theresa Shearin
1550 W. McEwen Drive
1st Floor
Franklin, TN 37067
FIRST NAMED INVENTOR
Jerry Franks
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BRN0046US 1688
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
09/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mars.patents@effem.com
theresa.shearin@effem.com
becca.barnett@effem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY FRANKS, TIFFANY BIERER,
FRANCIS SHIELDS, and ALESSANDRA COLLIER
Appeal 2017-011458
Application 12/202,120
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-16. 3 We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm.
1 In this Decision, we refer to the Specification filed August 29, 2008
("Spec."), the Final Office Action dated May 18, 2016 ("Final Act."), the
Appeal Brief filed October 10, 2016 ("Appeal Br."), the Examiner's Answer
dated January 13, 2017 ("Ans."), and the Reply Brief filed March 10, 2017
("Reply Br.").
2 Appellants identify the real party in interest as Mars, Incorporated. Appeal
Br. 2.
3 Claim 34 stands "withdrawn from consideration as being directed to a non-
elected invention" (Final Act. 2-3). We note Appellants' contentions
Appeal 2017-011458
Application 12/202, 120
The subject matter of the claims on appeal relates to a complete and
balanced semi-moist or wet cat food product in a serving size that is suited
for consumption according to a cat's natural feeding pattern. Spec. ,r,r 2, 4.
According to Appellants' Specification, the smallest serving size available
for a complete and balanced, semi-moist or wet cat food is about 3 to 4
ounces (85 grams to 113 grams), whereas Appellants' cat food is packaged
in a 10 gram to 40 gram serving size. Id. ,r,r 3, 6.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the claims on appeal.
1. A packaged, multi-meal, unitized cat food product
compnsmg:
a plurality of sealed containers, each one of the
containers assembled into a single package;
each one of the containers including a single serving unit
of commercially sterile, complete and balanced cat food
having a mass of at least 10 grams and no more than
40 grams; and
wherein the cat food has a moisture content of at least
15 percent by weight of the food.
Appeal Br. 18 (Claims App.).
regarding Examiner's restriction requirement (Appeal Br. 6-8). However,
as the Examiner explains (Ans. 8), reconsideration of the Examiner's
restriction requirement is a petitionable matter under 37 C.F .R. § 1.181,
which is not within the jurisdiction of the Board. See 37 C.F.R. § 1.144.
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Appeal 2017-011458
Application 12/202, 120
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1-16 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Bruce et al. (US 2004/0005388 Al, published
January 8, 2004) ("Bruce") (Ans. 4); and
Rejection 2: Claims 1-16 are rejected under 35 U.S.C. I03(a) as
being unpatentable over Bruce in view of Jean C. Buzby and Joanne F.
Guthrie, Plate Waste in School Nutrition Programs: Final Report to
Congress, Economic Research Service/USDA (2002),
https://www.ers.usda.gov/webdocs/publications/43131/31216_efan02009 .pd
f?v=O (Ans. 6).
DISCUSSION
Appellants do not present separate substantive arguments for the
patentability of any claim apart from the others. Appeal Br. 8-16.
Consequently, we confine our discussion to claim 1, and the remaining
claims on appeal will stand or fall with claim 1. See 3 7 C.F .R. § 41.3 7
( C )(1 )(iv).
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections."). After considering
the evidence presented in this Appeal and each of Appellants' arguments, we
are not persuaded that Appellants identify reversible error. Thus, we sustain
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Application 12/202, 120
the Examiner's rejections for the reasons expressed in the Final Office
Action, the Answer, and below.
In each of Rejections 1 and 2, the Examiner finds that Bruce discloses
all elements of claim 1 's packaged, multi-meal, unitized cat food product
except for the sealed container "having a mass of at least 10 grams and no
more than 40 grams." Final Act. 4, 5---6. The Examiner finds, however, that
"adjusting the portion size offered to cats per meal, in order to maintain the
cat's health and weight, ... [and] ... reduce leftovers, was well known in
the art before the time of the current invention." Final Act. 8; Ans. 13. The
Examiner relies on Dr. Larry Siegler, What You Need to Know About Your
Pet's Food, (2004), https://www.onlynaturalpet.com/holistic-healthcare-
library/food-diet---general/4/what-you-need-to-know-about-your-pets-
food.aspx ("Siegler"), and Food & Nutrition & Elderly Cats, (2005),
http://feralcatcaretakers.org/PDFs/FCCC_ElderlyCatNutrition.pdf
("Feralcatcaretakers") in both Rejections 1 and 2 to support this finding.
Final Act. 7-8. The Examiner thus determines that it would have been
obvious for a skilled artisan to adjust the portion size of cat food in Bruce's
food pack to maintain the cat's health and weight and/or reduce leftovers
and arrive at the portion size recited in claim 1. See Ans. 13.
Appellants' argument that Bruce does not teach sterile containers
housing single servings of cat food is not persuasive. Appeal Br. 8, 12.
Bruce discloses a food pack comprising at least two sealed containers (i.e.,
vessels) comprising food for a companion animal (e.g., a cat), wherein the
first vessel holds a first pet food product. Bruce, Abstract, ,r,r 16-18. Bruce
further discloses that one pet food product is used as the morning meal, and
the other pet food product is used as the afternoon/ evening meal. Bruce ,r 7.
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Thus, a preponderance of the evidence supports the Examiner's finding that
Bruce teaches a food pack comprising containers housing a single serving of
cat food for a single meal. Ans. 11.
Appellants argue that the Examiner has improperly substituted his
unsubstantiated opinion for a teaching within the art to remedy the
deficiency of Bruce, i.e., not disclosing the exact mass of the food in each
sealed container. Appeal Br. 9--10.
Appellants' argument is not persuasive of reversible error because, as
discussed above, and acknowledged by Appellants, the Examiner has added
two evidentiary references, Siegler and Feralcatcaretakers, to support the
finding that adjusting the size/amount of cat food to control a cat's health
and weight and to reduce leftovers was well-known in the art as a result-
effective variable. Compare Final Act. 8, with Appeal Br. 12 (Siegler,
Feralcatcaretakers, and Buzby "teach ... that adjustment of portion size is
one strategy for weight maintenance, or that portion size can be adjusted to
reduce waste and maintain freshness."); In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012) (A recognition in the prior art that a
property is affected by the variable is sufficient to find the variable result-
effective.). Thus, we are not persuaded of reversible error in the Examiner's
determination that one of ordinary skill in the art would have determined,
through no more than routine experimentation, the optimum portion size of
cat food for Bruce's food pack, i.e., at least 10 grams and no more than 40
grams, to maintain a cat's health and weight and/or reduce leftovers.
Ans. 12; In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (A particular
parameter must first be recognized as a result effective variable, i.e., a
variable which achieves a recognized result, before the determination of the
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Appeal 2017-011458
Application 12/202, 120
optimum or workable ranges of the variable may be characterized as routine
experimentation.); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955)
("[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.").
Appellants also argue that the claimed invention satisfies a long-felt
need in the art. Appeal Br. 14.
The burden rests with Appellants to establish long-felt need with
objective evidence that an art-recognized problem existed in the art for a
long period of time without solution. In particular, the evidence must show
that the need was a persistent one that was recognized by those of ordinary
skill in the art. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Further,
the claimed invention must in fact satisfy the asserted long-felt need. In re
Cavanagh, 436 F.2d 491,496 (CCPA 1971). The Declaration under
37 C.F.R. § 1.132 executed by Dr. Tiffany L. Bierer on September 10, 2015
("Bierer Declaration"), states that "it is my opinion that there was a long felt,
but unmet need for a product such as that described and claimed in the
Application." Deel. ,r 13. However, on this record, Appellants have not
provided objective evidence of a persistent need that was recognized by
those of ordinary skill in the art that went unsatisfied prior to Appellants'
claimed invention.
Appellants' argument that the Examiner's rejections under 35 U.S.C.
§ 103(a) are based upon hindsight and constitute legal error and/or are
arbitrary and capricious agency action is not persuasive. Appeal Br. 15.
Contrary to Appellants assertion, the Examiner's rejection is based on the
prior art and knowledge which was within the level of ordinary skill in the
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art at the time of the claimed invention, as evidenced by F eralcatcaretakers
and Siegler.
Accordingly, considering the totality of the appeal record, including
due consideration of Appellants' arguments and evidence, including
Appellant's evidence of second considerations, against the evidence cited by
the Examiner, we determine a preponderance of the evidence weighs in
favor of the Examiner's conclusion of obviousness. Therefore, we sustain
Rejections 1 and 2.
DECISION
The rejections of claims 1-16 are 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).
AFFIRMED
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