Ex Parte SingerDownload PDFPatent Trials and Appeals BoardMay 2, 201914955932 - (D) (P.T.A.B. May. 2, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/955,932 12/01/2015 69099 7590 05/06/2019 Nestle Purina Petcare Global Resources, Inc Checkerboard Square Intellectual Property Patents ST. LOUIS, MO 63164 FIRST NAMED INVENTOR Ryan H. Singer 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. 15866-US-NP 8467 EXAMINER MAEWALL, SNIGDHA ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 05/06/2019 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): purinapatentmail@purina.nestle.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN H. SINGER Appeal 2018-0081 71 Application 14/955,932 Technology Center 1600 Before JEFFREY N. FRED MAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-0081 71 Application 14/955,932 Introduction Appellant1 seeks our review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-19 and 21.2 (Appeal Brief filed March 22, 2018 ("App. Br.") 9.) We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appellant's Specification is directed to an orally administered composition that can improve delivery of an active agent, such as a vitamin, nutrition supplement, or pharmaceutical, to a pet. (Specification dated December 1, 2015 ("Spec.") ,-J 4.) The composition includes a delivery matrix and a plurality of water-soluble film pieces, which contain the active agent and are dispersed homogenously throughout the matrix. (See Spec. ,-J 5.) The water-soluble film pieces dissolve in the pet's mouth upon contact with saliva, allowing delivery of the active agent. (See id.) Appellant's claim 21 recites: A composition formulated for oral delivery to a dog or a cat compnsmg: a delivery matrix comprising at least 15% by weight of crude protein, a flavoring agent palatable to the dog or the cat, and water; and at least about 0.01 % by weight of a plurality of water-soluble film pieces dispersed homogeneously throughout the delivery matrix, the plurality of water-soluble film pieces comprise an active agent and a coloring agent therein, the active agent being rapidly releasable from the composition upon contact with saliva from the dog or the cat, wherein the water in the delivery matrix is in an amount selected for mixing with the plurality of water-soluble film pieces without causing aggregation of the water-soluble film pieces. 1 Appellant identifies the real party in interest as Nestec, S.A. (App. Br. 4.) 2 Claim 20 was withdrawn from prosecution. (App. Br. 5.) 2 Appeal 2018-0081 71 Application 14/955,932 (App. Br. 23-24.) Appellant also presents independent claim 1, which is also drawn to a composition for oral delivery to a dog or cat. (See App. Br. 20.) The composition of claim 1 comprises at least 3% yogurt instead of at least 15% crude protein. (See App. Br. 20.) Our analysis focuses on claim 21, but applies to claim 1 as well because the teaching in the prior art of the type or amount of protein is not at issue. Analysis Obviousness over Barnvos, Teconchuk, and Gu The Examiner rejects claims 1-19, and 20 under 35 U.S.C. § 103 as obvious over Bamvos,3 Teconchuk,4 and Gu. 5 (See Examiner's Final Rejection mailed October 27, 2017 ("Final Act.") 2-7.) Bamvos teaches an animal chew with a chewable matrix that includes protein, starch, and water. (See Bamvos ,i 7; see Final Act. 3.) Bamvos teaches that the chewable matrix may also include flavorants, vitamins, colorants, and minerals. (Final Act. 3, citing Bamvos ,i,i 151, 153, 162, 295-298.) Teconchuk teaches a pet treat that includes dried yogurt, among other milk and cheese products. (See Teconchuk 7:1-11; see Final Act. 3.) T econchuk further teaches that the pet treat may include nutraceuticals, vitamins, and antioxidants. (Id., citing Teconchuk 8: 1-7.) The Examiner acknowledges that the combination of Bamvos and T econchuk does not teach using hydrophilic films comprising starch or polysaccharide. (See Final Act. 4.) However, the Examiner cites Gu, which 3 Bamvos et al., US 2013/0273125 Al, published October 17, 2013. 4 Teconchuk et al., US 8,697,174 B2, issued April 15, 2014. 5 Gu et al., WO 2012/082103 Al, published June 21, 2012. 3 Appeal 2018-0081 71 Application 14/955,932 teaches water-soluble films made of polysaccharides, e.g., natural starches. (Final Act. 4, citing Gu ,i,i 1, 31.) Gu relates to dentifrices (e.g., toothpaste) that comprise polymer matrix films with flavorant, such as menthol. (See Gu ,i 18.) Although the dentifrices Gu teaches are for both humans and animals (see Final Act. 7, citing Gu ,i 10), Gu does not teach other items for pets, such as treats. The Examiner determines that it would have been obvious to one of ordinary skill in the art to have used hydratable starches in the matrix of Bamvos because Bamvos teaches a matrix with starch and Gu teaches specific hydratable starches to make a matrix with added hydrophilic and lipophilic additives. (Final Act. 4-5.) Appellant argues that this is not a sufficient rationale for combining the elements of claimed composition because Gu is in a different field from Bamvos and Teconshuk and provides a solution to a problem that doesn't exist in the chews/treats of Bamvos. (See App. Br. 17.) Appellant argues that the Examiner has failed to explain why one of ordinary skill in the art would have chosen the specific components claimed to provide a chew product, when the prior art teaches using the components for different purposes. (See Reply Br. 4.) Appellant's argument is persuasive because an invention "is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The Examiner has not provided a sufficient reason to combine the water-soluble film pieces of Gu with the chewable matrix of Bamvos. The Examiner states that "the instant claims recite polysaccharides 4 Appeal 2018-0081 71 Application 14/955,932 and starch making hydrophilic films and Bamvos explicitly discloses use of natural or modified starch in the chewable matrix." (Ans. 3.) But this rationale relies solely on the materials used to form a film matrix, e.g., starch film formers and various hydrophilic and lipophilic additives, not on the reasons why they would be combined. (See Reply Br. 6.) Furthermore, the Examiner bases the rationale for combining the references solely on the combination of the ingredients and does not address the structure of the composition. (See Final Act. 7). As Appellant notes, were one to start with the matrix of Benvos and add the polymer films of Gu for the purpose taught in Gu (to provide flavor), the resulting chewable matrix would have flavorant only in the films, not in the delivery matrix as recited in Appellant's claims. (See App. Br. 17; see also Reply Br. 6-7.) Thus, the reason polymer films were used in Gu is contrary to their role in the claimed composition. The Examiner has not provided any other reason why an ordinarily skilled artisan would modify the matrix of Benvos with the polymer films of Gu. Accordingly, we agree with Appellant that the Examiner erred in rejecting the claims as obvious over the teachings of Bamvos, Teconchuk, and Gu. Conclusion Upon consideration of the record and the reasons given, we do not sustain the rejection of claims 1-19 and 21. Therefore, we reverse the decision of the Examiner. REVERSED 5 Copy with citationCopy as parenthetical citation