Ex Parte Hoy

Board of Patent Appeals and Interferences

Aug 31, 2010

11023922 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEPHEN B. HOY
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Appeal 2009-012358
Application 11/023,922
Technology Center 1700
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Before CHUNG K. PAK, LINDA M. GAUDETTE, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-012358
Application 11/023,922

A. Introduction2
Stephen B. Hoy (“Hoy”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection3 of claims 22-25, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6. We affirm.
The subject matter on appeal relates to an edible pet treat comprising a
plurality of panels made from meat or a meat by-product and gluten meal.
A graphical image of a pet is formed on at least one of the panels.
Representative Claim 22 reads:
22. An edible treat for a pet, comprising:
a plurality of panels forming a three-dimensional edible
article,
each panel including meat or a meat by-product
and gluten meal; and
a graphical image of a pet formed on at least one of the
panels.
(Claims App., Br. 5; paragraphing and indentation added.)

2 Application 11/023,922, Edible Animal Greeting Cards and Treats, filed
27 December 2004, claiming the benefit through mesne applications to an
application filed 12 March 2002, which was filed as a continuation-in-part of
an application filed 31 March 2000. The three prior applications have been
patented. The real party in interest is listed as Stephen B. Hoy, the named
inventor. (Appeal Brief, filed 27 August 2008 (“Br.”), 1.)
3 Office action mailed 25 October 2007 (“Final Rejection”; cited as “FR”).
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Application 11/023,922

The Examiner has maintained the following ground of rejection:4
A. Claims 22-25 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Brown 714,5
{French 770,6 French 184,7 Brandweek 93,8 Product
Alert,9 Brandweek 92,10 {Moreau,11 Carlson,12 Hack13}},
{Krubert,14 Gieβler,15 Adachi,16 Newsteder,17
Schroeder18}, {Bone,19 Brown 336,20 and Marino.21}

4 Examiner’s Answer mailed 3 December 2008 (“Ans.”). The references
have been grouped by curly braces to indicate essentially cumulative
materials. Citations, e.g., to {French}, should be understood to refer to all of
the references in the group beginning with French.
5 Meyer M. Brown, Cutter for Complementary Cookie Components, U.S.
Patent 2,876,714 (1959).
6 Harold S. French, U.S. Patent Des. 240,770 (1976)
7 Harold S. French, U.S. Patent Des. 241,184 (1976).
8 Robert McMath, Brandweek (8 February 1993) (Full Text).
9 Product Alert (27 July 1992) (Full Text).
10 Robert McMath, Brandweek vol. 34, n.6, 36 (14 Sept. 1993) (Full Text).
11 Claude R.M. Moreau, U.S. Patent 4,943,063 (1990).
12 Ethel G. Carlson, U.S. Patent 5,579,582 (1996).
13 Harald Hack, DE 27 03 900 A1 (1978)
14 Krubert U.S. Patent 4,578,273 (1986).
15 Hans Jürgen Gieβler, DE 28 34 641 A1 (1980) (USPTO translation).
16 Itaru Adachi, Edible Book for Eating While Reading, JP 63-291538 A
(1988) (USPTO translation).
17 Robert Newsteder, U.S. Patent 4,778,683 (1988).
18 John E. Schroeder, U.S. Patent 4,560,562 (1985).
19 David P. Bone et al., Method of Making a Dry Type Pet Food Having a
Meat-Like Texture and Composition Therefore, U.S. Patent 3,883,672
(1975).
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Appeal 2009-012358
Application 11/023,922

B. The Dispute
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
According to Hoy, the Examiner states that edible panels to form three
dimensional edible articles are conventional, providing images on edibles is
conventional, and that it would have been obvious to employ conventional
animal food ingredients in an animal food. (Br. 3.) Hoy argues that the
Examiner’s rejection “boils down to:
CONVENTIONAL+CONVENTIONAL+CONVENTIONAL=OBVIOUS”
(Br. 3.) Hoy urges that “[t]he Examiner has presented no factual evidence in
support of the combination,” and merely substitutes language such as “well
established,” etc. (Id.) Moreover, in Hoy’s view, even if the combination of
references were justified, the limitation of “a graphical image of a pet” is not
taught by the prior art. Therefore, Hoy argues, not every limitation of the
claim has been properly rejected. (Id. at para. bridging 3-4.)
In the Reply,22 Hoy argues that “the Examiner has done nothing to
demonstrate that those of ordinary skill in the art would have had some
“apparent reason to combine the known elements in the fashion claimed.”
(Reply 2, quoting KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741
(2007).) The many references relied on by the Examiner, according to Hoy,
merely “skirt all around” but do not as a whole suggest the claimed

20 Arthur V. Brown, Jr., et al., U.S. Patent 4,162,336 (1979).
21 Richard P. Marino, U.S. Patent 5,552,176 (1996).
22 Reply Brief filed 3 February 2009 (“Reply”).
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Appeal 2009-012358
Application 11/023,922

invention. (Reply 3, quoting Hybritech Inc. v. Monoclonal Antibodies,
802 F.2d 1367, 1383 (Fed. Cir. 1986).)
The Examiner finds—and Hoy does not dispute—that Brown 714
teaches an edible product made from a plurality of panels and a graphical
representation on at least one of the panels. (Ans. 5.) The Examiner finds
further that Brown teaches that the terms “cookie” and “dough” are intended
to encompass any edible material that lends itself to produce small shaped
edible portions. (Id., citing Brown 714, col.3, ll. 59-67.) The Examiner
concludes that a person having ordinary skill in the art would have applied
the teachings of Brown 714 to suitable shapeable food materials for any sort
of consumer. (Id., para. bridging 5-6.) The Examiner finds—and Hoy does
not dispute—that {Bone} teaches that meat, meat by-products, and gluten
meal are well known ingredients for pet foods. (Id. at 6, last four lines.)
The Examiner concludes that it would have been obvious to substitute one
conventional edible composition for another conventional edible
composition, depending on the intended consumer. (Id. at 7, ll. 1-4.) The
Examiner cites {French} as evidence that it was known to provide edible
foods for pets in a great variety of recognizable three-dimensional shapes
(id. at 6) and {Moreau} as further evidence that it was known to provide
edible parts that can be used to form three-dimensional articles (id. at 8).
Again, Hoy does not dispute the Examiner’s findings with respect to these
references. Finally, the Examiner finds—and again, Hoy does not dispute—
that {Krubert} shows that providing edibles with graphic images is also well
known. (Id. at 7-8.) In particular, the Examiner cites Adachi—a reference
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Application 11/023,922

originally provided by Hoy during prosecution23—as describing printed
edible materials in book form. (Id. at 8, ll. 3-4.)
Accordingly, the Examiner concludes that it would have been obvious
to use conventional pet food materials in place of the cookie dough materials
taught by Brown 714 to make three dimensional edible articles from a
plurality of panels, and that it would have been obvious to provide images of
a pet or a part of a pet on at least one of the panels, as suggested by
{French}, {Krubert}, and {Moreau}. (Ans. 8.) The Examiner also opines
that “as a general principle, it is not seen that graphical representations per
se, are anything more than an obvious matter of choice and/or design, for
which patentability cannot be predicated on.” (Id. at 7.)
C. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
As the Appellant, Hoy bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make
clear that courts have correlated review of ordinary administrative
proceedings to appellate review of civil cases in this respect. . . . [T]he party
seeking reversal normally must explain why the erroneous ruling caused
harm.”) See also, In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010)
(discussing the role of harmless error in appeals from decisions of the Board

23 Adachi is listed on the Information Disclosure Citation filed 7 November
2005.
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Appeal 2009-012358
Application 11/023,922

of Patent Appeals and Interferences (“Board”)). Arguments not timely made
have been waived. 37 C.F.R. § 41.37(c)(1)(vii) (second sentence); see also
In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first
raised in the brief to the Board is waived on appeal).
Hoy does not dispute that all of the elements of the claimed edible
treat are known in the context of edible items. The substitution of one
material for another, when both materials are known to be useful for similar
properties and for similar reasons, is a classical instance of prima facie
obviousness. In the present case, as the Examiner points out, Brown 714
alerts the artisan that other materials may be substituted for the “cookie” and
“dough.” Hoy has not come forward with any credible evidence that the
ordinary cook would have limited their consideration to confections, even
though those are the only sorts of materials suggested by Brown 714. In
view of the other references, such as Bone or Adachi, it is not credible that
such a person would exclude meat or meat by-products and gluten meal
from consideration as materials for forming panels and three-dimensional
edible articles.
Hoy’s criticisms of the Examiner’s alleged errors in failing to give
appropriate patentable weight to the “graphical image of a pet” are not well
taken. It is well established in the law of utility patents that “the critical
question is whether there exists any new and unobvious functional
relationship between the printed matter and the substrate.” In re Gulack,
703 F.2d 1381, 1386 (1983), citing In re Miller, 418 F.2d 1392, 1396
(CCPA 1969), and quoted with approval in In re Ngai, 367 F.3d 1336, 1338
(Fed. Cir. 2004). Hoy has not argued, nor is it apparent, that there is any
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Appeal 2009-012358
Application 11/023,922

functional relationship between the image of the pet and the substrate panels.
Moreover, the Examiner has come forward with numerous examples in
which images of various sorts have been placed on panels of edible
materials. In the absence, as here, of a functional relationship with the
substrate, the epithet “obvious matter of choice or design” (e.g., Ans. 9, 10)
is well-applied.
D. Order
We AFFIRM the rejection of claims 22-25 under 35 U.S.C. § 103(a)
in view of the combined teachings of Brown 714, {French}, {Krubert}, and
{Bone}.
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
tc

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