Ex Parte Saxe et al

Patent Trial and Appeal Board

Feb 9, 2017

12703133 (P.T.A.B. Feb. 9, 2017)

United States Patent and Trademark Office
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.
12/703,133 02/09/2010 Lucas Saxe 808-001 3455
85154 7590 02/09/2017
LAW OFFICE OF GERARD F. DUNNE, PC
41 Union Square West
Suite 1125
NEW YORK, NY 10003
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
02/09/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte LUCAS SAXE and MICHAEL FARMER1
Appeal 2016-003184
Application 12/703,133
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejection of claim 21 under 35 U.S.C. § 112, second paragraph, as being
indefinite, (Final Rej. 2; Ans. 2) and the Examiner’s rejections under 35
U.S.C. § 103(a) of claims 1, 5, 7, 9, 12-15, 17-19, 21, 23, 24, and 27-32 as
unpatentable over Laura Duclos, {The Benefits of Rotation Feeding, URBAN
PAWS HOUSTON, PET LIFESTYLE MAGAZINE, Jul. 31, 2008, at 1—4;
1 Global One Pet Products, LLC is identified as the real party in interest.
App. Br. 1.
Appeal 2016-003184
Application 12/703,133
hereinafter “Duclos”), in view ofBebiak et al., (US 6,576,280 B2 issued
Jun. 10, 2003; hereinafter “Bebiak”) (Final Rej. 3, Ans. 2—3); claims 25 and
33—39 as unpatentable over these references in combination with R. G.
Brown, {Digestibility of Pet Foods, CAN VET J., Vol. 28, No. 6, June, 1987;
hereinafter “Brown”) (Final Rej. 6; Ans. 6); claim 16 as unpatentable over
Duclos and Bebiak in combination with Shields, Jr. et al., (US 6,156,355
issued Dec. 5, 2000; hereinafter “Shields”) (Final Rej. 8; Ans. 7), and claim
20 as unpatentable over Duclos and Bebiak in combination with Bui et al.,
(US 2003/0124219 Al published Jul. 3, 2003; hereinafter “Bui”) (Final Rej.
8; Ans. 8).
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
BACKGROUND
The invention relates generally to the field of pet nutrition, and
specifically to compositions and methods for providing a rotational pet-food
diet to a pet (Specification, hereinafter “Spec.”| 1; Abst.). Representative
claim 1 is reproduced from page 17 of the Appeal Brief (Claims App’x.),
with key limitations indicated in italicized text, as follows:
A method of feeding a pet, the method comprising:
feeding a pet a first formula during a first period of time;
feeding a pet a second formula during a second period of
time; wherein the second formula is formulated to achieve
complementary nutritional and digestive compatibility with the
first formula; and
feeding a pet a third formula during a third period of time;
wherein the third formula is formulated to achieve
complementary nutritional and digestive compatibility with the
first formula and the second formula;
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Application 12/703,133
wherein said period of time[2] 3is no longer than 90 days;
wherein the first, second, and third formulas comprise
approximately the same percentage of fats, carbohydrates and
protein;
wherein, each of said first, second and third formulas
comprises at least one meat ingredient that is not found in either
of the other two formulas;
wherein each of said first, second and third formulas
comprises no more than five whole food ingredients which are
found in either of the other two formulas P^ and
said whole food ingredients include fruits, vegetables,
grains, starches, poultry, meat, fish, seeds and animal fats.
1. Rejection of claim 21 under 25 U.S.C. § 112, second paragraph
The Examiner rejects claim 21 as being indefinite for reciting
“wherein the period of time for feeding the first formula overlaps with the
period of time for feeding the second formula” because claim 1 from which
claim 21 depends “requires three periods of time during which three
formulae are fed” and it is “not clear what the time overlap may be.” Final
Act. 2.
2 It is not immediately apparent to us whether “said period of time” is the
“first period of time”, the “second period of time”, or the “third period of
time”, or a combination of any or all of these periods of time. In the event of
further prosecution, we leave it to the Examiner to determine whether a
rejection under 35 U.S.C. § 112, second paragraph for this and/or other
claims is appropriate.
3 Because Appellants failed to specify the portions of the original disclosure
supporting the amendments to claim 1 filed on November 22, 2013 (entered
on January 17, 2014) and December 10, 2014, it is not immediately clear to
us whether sufficient written description support appears in the Specification
for this limitation. In the event of further prosecution, we leave it to the
Examiner to determine whether a rejection under 35 U.S.C. § 112, first
paragraph, for this and/or other claims is appropriate.
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Application 12/703,133
Appellants contend “[t]he ending of the period of time for the feeding
of the first formula is the point that triggers the end of the ‘first period of
time,’ regardless of whether the ‘second period of time’ has begun.”
We agree with Appellants. The claimed overlap between the periods
of time is neither ambiguous nor unclear. As noted in the Specification in
reference to Figure 2,
if the quantity of pet food remaining in the bag of Formula A
[during the first period of time] is not enough for a complete
feeding, the pet owner may proceed to . . . [open] the bag of
Formula B and [mix] the remainder of the bag of Formula A with
the pet food at the top of the bag of Formula B.
Spec. 14H64, 65.
Thus, the Specification outlines how the period of time for feeding the
first formula can overlap with the period of time for feeding the second
formula. Indeed, the Examiner recognizes the concept of overlapping time
periods in a separate rejection of claim 21, where the Examiner states the
claimed overlap “means that toward the end of the first period, the second
formula is started.” Final Act. 5.
Therefore, we reverse the indefiniteness rejection of claim 21.
2. Rejections under 35 U.S.C. § 103(a)
The Examiner makes four separate rejections under 35 U.S.C.
§ 103(a). Final Act. 3—8. Appellants argue against these four rejections as a
group, and only present arguments against the Duclos and Bebiak
references, which are germane to each rejection under § 103(a). App. Br. 6—
16, Reply Br. 2—5. Because Appellants have argued against all four § 103(a)
rejections as a group under the same heading in their Briefs, we select and
decide this appeal on the basis of claim 1 alone. 37 C.F.R. §41.37(c)(l)(iv).
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Application 12/703,133
We sustain each of the § 103(a) rejections advanced in this appeal
based on the findings of fact, conclusions of law, and rebuttals to arguments
expressed by the Examiner in the Final Action and in the Answer. The
following comments are added for emphasis.
We begin by pointing out that Appellants make several erroneous
assertions regarding the scope of the claimed invention. Specifically, we
note Appellants’ statement that the “problem solved by the present invention
[is] a freely interchangeable diet including a variety of foods, where each
formula has substantially different wholefood components.” App. Br. 10
(emphasis added). Appellants also state, in an attempt to distinguish over
one of the cited references, that “the problem the present invention solved”
is developing a method of feeding pets “without causing gastric upset while
still varying all the ingredients in a pet’s diet.” Id. at 7 (emphasis added).
Further, Appellants state “the present invention is built around the idea of
varying as many ingredients in a pet’s diet as possible” {id. at 11) and that it
is “the first pet food diet of its kind to substantially change all ingredients”
{id. at 14).
We note, however, that “ [i]t is a bedrock principle of patent law that
the claims of a patent define the invention to which the patentee is entitled
the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration
Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (emphasis added). As
that principle applies even in district courts, it also holds true in patent
prosecution, where claims are given their broadest reasonable interpretation
consistent with the remainder of the Specification. In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
In this case, claim 1 recites, inter alia, that “each of said first, second
and third formulas comprises at least one meat ingredient that is not found in
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Application 12/703,133
either of the other two formulas;” and “each of said first, second and third
formulas comprises no more than five whole food ingredients which are
found in either of the other two formulas.” Other than the “at least one meat
ingredient that is not found in either of the other two formulas” limitation,
claim 1 does not establish an additional limitation on the minimum number
of whole food ingredients that each formula must have.
Therefore, each of the three claimed formulae recited in the method of
claim 1 could have a total of five or fewer whole food ingredients other than
a meat ingredient, wherein each of the five or fewer whole food ingredients
are identical. Such a scope does not comport with Appellants ’ statements
regarding the substantial or complete variability of ingredients amongst the
three formulae. Thus, because Appellants’ claim 1 reads on a method where
only the meat ingredient is varied amongst the three pet food formulae, we
find each of Appellants’ contentions (App. Br. 6—16; Reply Br. 2—5)
regarding the lack of variability of the prior art diets unavailing.
We further note Appellants’ arguments regarding the claimed
invention solving the long felt need of providing a rotational pet diet while
avoiding gastric disruption. App. Br. 6—7. This argument is not persuasive
for several reasons. First, we note that the Duclos reference cited by the
Examiner discloses a rotational pet diet wherein the protein source is varied,
with one of the four major benefits being listed as reduction of food
intolerance which “may appear as digestive upset.” Duclos 13. Further, the
claims do not recite the avoidance of gastric disruption. In re Self, 671 F.2d
1344, 1348 (CCPA1982) (“[AJppellant’s arguments fail from the outset
because... they are not based on limitations appearing in the claims.”).
Additionally, it is “error... to foreclose [an obviousness] reasoning by
holding that courts and patent examiners should look only to the problem the
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[applicant] was trying to solve.” KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007).
Thus, for the reasons given by the Examiner and emphasized above,
Appellants fail to show that the Examiner erred in rejecting claims 1, 5, 7, 9,
12-21, 23-25, and 27-39 under 35 U.S.C. § 103(a).
SUMMARY
The Examiner’s rejection under 35 U.S.C. § 112, second paragraph of
claim 21 as indefinite is reversed.
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1, 5, 7,
9, 12—21, 23—25, and 27—39 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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