Ex Parte Leyh

Board of Patent Appeals and Interferences

Jul 8, 2009

10437700 (B.P.A.I. Jul. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH CONRAD LEYH JR.
____________

Appeal 2009-003484
Application 10/437,700
Technology Center 1700
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Decided:1 July 08, 2009
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 22 and 29-36. We
have jurisdiction under 35 U.S.C. § 6(b).

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).
Appeal 2009-003484
Application 10/437,700

Claim 22 is illustrative:

22. A pet treat comprising:

a rawhide chew; and

a water-insoluble coating on the surface of the rawhide chew,
the water-insoluble coating comprising from about 25 wt% to about 100
wt% hydrogenated animal fat or hydrogenated vegetable oil, the
hydrogenated fat or oil having a melting point equal to or greater than 100
degrees Fahrenheit and less than about 160 degrees Fahrenheit, the water-
insoluble coating further comprising an additive dispersed within the
hydrogenated animal fat or hydrogenated animal oil.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Williams 3,284,211 Nov. 08, 1966
Greenberg 5,635,237 Jun. 03, 1997

E. A. Baldwin et al., Use of Lipids in Coatings for Food Products, in 51(6)
Foodtechnology 56-61 (June 1997) (hereafter “Baldwin”).

Appellant’s claimed invention is directed to a pet treat comprising a
rawhide chew having a water-insoluble coating on its surface. The coating
comprises hydrogenated animal fat or hydrogenated vegetable oil having a
melting point within the claimed range. The coating also comprising an
additive dispersed therein.
Appealed claims 22 and 29-36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Greenberg in view of Baldwin and
Williams.
Appellant has not set forth separate, substantive arguments for claims
29, 30, 34 and 35. Accordingly, these claims stand or fall together with the
claims upon which they depend.
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Application 10/437,700

We have thoroughly reviewed each of Appellant’s arguments for
patentability, as well as the Declaration evidence relied upon in support
thereof. However, we are in complete agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer.
There is no dispute that Greenberg, like Appellant, discloses a pet
treat comprising a rawhide chew that may be provided with a basting or
coating of well-known mixtures to prevent the chew from being hard (col. 9,
ll. 12-15). Greenberg also teaches the addition of flavoring and coloring, as
well as other additives, to the chew to make it more desirable to the pet (col.
3, ll. 61-65).
As recognized by the Examiner, Greenberg does not expressly teach
that the basting or coating composition for the pet chew is a hydrogenated
animal fat or a hydrogenated vegetable oil. However, Williams evidences
that it was known in the art to add fat to pet foods to enhance the palatability
of the food and limit the development of crumbling and fines during
handling (col. 1, ll. 13-21). Baldwin also teaches that it was known in the art
to add fat and lipid coatings to foods to prevent their dehydration.
Accordingly, based on the collective teachings of Greenberg, Williams, and
Baldwin, we find no error in the Examiner’s legal conclusion that it would
have been obvious for one of ordinary skill in the art to select a fat, in
general, for basting and coating the pet chew of Greenberg with the
expectation of an enhancement in flavor as well as a reduction in crumbling
of the product. We find that Williams’ generic teaching of fats includes all
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Appeal 2009-003484
Application 10/437,700

fats that are well-known additives for food products, including hydrogenated
and non-hydrogenated animal fats and vegetable oils. Manifestly, it was
notoriously well-known to use hydrogenated animal fats and hydrogenated
vegetable oils as additives for foods, snacks and treats that are consumed by
humans and pets.
Appellant argues that “[h]ydrogenated fats and oils have different
characteristics than non-hydrogenated materials, even in the case when the
chemical formulas of the two materials are identical” (Br. 8, fourth para.).
However, we are satisfied that one of ordinary skill in the art, recognizing
the differences in characteristics between hydrogenated and non-
hydrogenated fats and oils, would have found it obvious to select either type
as an additive for a human or pet food product contingent upon the particular
properties desired, bearing in mind, of course, the health concerns associated
with the consumption of hydrogenated fats and oils. Significantly,
Appellant has advanced no reason why one of ordinary skill in the art would
have found it non-obvious to add hydrogenated fats or oils to pet food.
Appellant also argues that Williams and the other cited references fail
“to disclose or suggest a fat or oil of any sort having a melting temperature
equal to or greater than 100°F, as is required in independent claim 22” (Br.
10, second para.). However, we find Williams’ disclosure that the fat is
liquefied at a temperature of about 130°F indicates that some fats, at least,
within the composition have a melting point greater than 100°F. Appellant
has not refuted the Examiner’s factual finding that “[t]allow contains more
than one triglyceride with more than one melting point” (Ans. 6, third para.).
Moreover, we have no doubt that one of ordinary skill in the art would have
found it obvious to select a hydrogenated fat or oil having a melting point
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Appeal 2009-003484
Application 10/437,700

within the claimed range. Appellant makes no assertion that hydrogenated
fats and oils embraced by the appealed claims are not known to be food
additives.
We also agree with the Examiner that Greenberg’s generic teaching of
including flavoring and coloring additives in the pet chew would have
rendered obvious the use of water-soluble, as well as water-insoluble,
additives. Appellant makes no argument why it would have been non-
obvious to use known, water-soluble additives.
Regarding claim 33, we also agree with the Examiner that it would
have been obvious for one of ordinary skill in the art to adhere particles to
the exterior surface of the chew coating to enhance the texture of the pet
chew. We also can’t disagree with the Examiner’s reasoning that it would
have been obvious to incorporate salt particles on the exterior surface of any
food product to enhance taste, including pet foods.
As for the claim 36 recitation of “a stain-free pet treat”, we find that it
would have been obvious for one of ordinary skill in the art to resort to
nothing more than routine experimentation to determine which of the known
hydrogenated fats and oils produce stains and which do not. Again,
Appellant makes no argument that the hydrogenated fats and oils
encompassed by the appealed claims were not known as food additives at
the time of filing the present application. Nor has Appellant argued, or
stated in the Declaration, that the hydrogenated fats and oils used to prepare
the claimed pet chew were not known to be stain-free. It is well settled that
the burden of showing unexpected results rests on the party asserting them.
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
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Also, the burden is on the applicant to establish that the reported
results in a declaration or a specification would have been considered truly
unexpected by one of ordinary skill in the art. In re Merck & Co., 800 F.2d
1091, 1098-99 (Fed Cir. 1986). In the present case, there is absolutely no
evidence that the hydrogenated fats and oils used in Examples 1-5 of the
Declaration were not known in the art to be stain-free. Furthermore, as
pointed out by the Examiner, the Declaration fails to identify the specific
hydrogenated fats and oils used, e.g., the Declaration fails to state the
melting temperature and degree of saturation for the fats and oils. Also, we
agree with the Examiner that the Declaration evidence is not commensurate
in scope with the degree of protection sought by the appealed claims,
particularly in light of the fact that the five Examples representative of the
claimed invention are not identified. As set forth by the Examiner, the
appealed claims encompass all hydrogenated animal fats and hydrogenated
vegetable oils having a melting point within the broadly claimed range of
temperatures, and in amounts of as little as 25 wt% to as much as 100 wt%.
While claim 36 limits the fats and oils to those that are stain-free, no
definition is provided for what qualifies as stain-free, nor has Appellant
established what percentage of known hydrogenated animal fats and
vegetable oils are stain-free such that a meaningful probative value can be
assigned to the Declaration evidence.
As a final point, we note that Appellant has not refuted the
Examiner’s factual finding that the tallow disclosed by Williams is a
hydrogenated fat that has been formed in vivo.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims is affirmed.
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Appeal 2009-003484
Application 10/437,700

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
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