Ex Parte Speck et al

Board of Patent Appeals and Interferences

Aug 28, 2009

09795369 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD R. SPECK and STEPHEN R. DAHL
____________

Appeal 2009-006164
Application 09/795,369
Technology Center 1700
____________

Decided: August 31, 2009

____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006164
Application 09/795,369

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 16-47 (Appeal Brief filed January 8, 2008, hereinafter “App. Br.,” at
4; Final Office Action mailed May 17, 2007). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants state that the claimed invention relates to “extruded pet
food that includes particulates” (Specification, hereinafter “Spec.,” ¶
[0001]).
Claims 16, 31, 34, 36, and 37 read as follows:
16. An extruded pet food product formed by an
extruding system including an extruder having a feed section
and a compression section, said pet food product comprising at
least one of a dog food product and a cat food product, said pet
food product comprising:
an extruded basal portion that has been subjected to high
temperatures and shear imparted by the extruder in the
compression section; and
a granular portion including substantially whole grains
that was supplied to said basal portion in the extruder
downstream of the extruder compression section, the granular
portion being mixed with the extruded basal portion, wherein
the granular portion is not subjected to high temperatures and
shear imparted by the compression section.

31. A pet food product comprising at least one of a
dog food product and a cat food product, said pet food product
comprising:
an extruded basal portion that has been cooked in an
extruder including a compression section; and
a granular portion mixed throughout said extruded basal
portion and that was supplied to said basal portion in the
Appeal 2009-006164
Application 09/795,369

3
extruder downstream of the extruder compression section,
wherein the granular portion is not subjected to high
temperatures and shear imparted by the compression section.

34. A pet food product in accordance with Claim 31
wherein said granular portion comprises a particulate dough.

36. A pet food product in accordance with Claim 34
wherein said particulate dough comprises about 25 to about 40
percent by weight of said pet food product.

37. A pet food product in accordance with Claim 34
wherein said particulate dough comprises about 25 percent by
weight of said pet food product.
(Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed April 7, 2008, hereinafter
“Ans.,” 2-3):
Bone 4,029,823 June 14, 1977
Nahm 4,310,558 Jan. 12, 1982
Mori JP 2000-060443 Feb. 29, 2000
(computer-generated translation1)

1 Throughout prosecution, the Examiner has relied on the computer-
generated translation entered October 4, 2004. For consistency and fairness,
we also refer to the computer translation. We note, however, that the
computer-generated translation appears to be substantially identical in
content to a formal translation provided by the United States Patent and
Trademark Office (PTO) on March 11, 2009.
Appeal 2009-006164
Application 09/795,369

4

WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH
LANGUAGE, UNABRIDGED (1961) (page unknown but including
“mix”), hereinafter “Webster’s.”
mix. (2005). In Merriam-Webster Online Dictionary. Retrieved May
20, 2005, from http://www.m-w.com/cgi-bin/dictionary (publication
date unknown), hereinafter “Merriam-Webster.”
The Examiner rejected the claims as follows:
I. claims 16-31, 33-44, and 46 under 35 U.S.C. § 102(a) as
anticipated by Mori as evidenced by Merriam-Webster and
Webster’s (Ans. 3-5);
II. claims 31, 33-35, and 38-45 under 35 U.S.C. § 102(b) as
anticipated by Nahm (Ans. 6-8);
III. claim 32 under 35 U.S.C. § 103(a) as unpatentable over Nahm
(Ans. 8-9);
IV. claims 36 and 37 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Nahm and Bone (Ans. 9); and
V. claims 45 and 47 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Mori and Nahm, with evidence by
Merriam-Webster and Webster’s (Ans. 9-10).

ISSUES
I. Claims 16-31, 33-44, and 46: Anticipation over Mori as Evidenced by
Merriam-Webster and Webster’s
In support of this rejection, the Examiner finds that Mori teaches “the
granular portion being mixed with the extruded basal portion,” as recited in,
e.g., claim 16, because “the [claim] term ‘mixed’, as evidenced by
[Merriam-Webster], may be understood to mean ‘in close association’”
Appeal 2009-006164
Application 09/795,369

5
(Ans. at 3). Also, the Examiner relies on Webster’s as evidence that the
claim term “mixed” means “to bring together (as different kinds of people or
things)” and to “combine with or introduce into a mass already formed” (id.
at 3-4).
Appellants, on the other hand, contend that that the Examiner errs
because Mori “discloses a extruded pet food product having an granular
inner core . . . and an outer core . . . that are only positioned side by side and
not mixed or blended throughout” (App. Br. 12). Appellants argue that “the
skilled artisan viewing Appellants’ [S]pecification would understand that the
term ‘mix’ means to combine or blend one mass throughout another mass
(e.g. not remaining a separate inner and outer core)” (id. at 11). In support
of their interpretation of “mixed” and “mixed throughout,” Appellants assert
that “the [S]pecification teaches numerous . . . examples of a granular
portion being mixed throughout (e.g. blended with) a basal portion” (id.).
Furthermore, Appellants argue that “[t]he skilled artisan understands that
twin screw extruders as described [in a disclosed embodiment] provide a
blending of the components that are added to the extruder to form a
relatively homogenous extruded product” (id. at 11-12).
Also, Appellants assert that the Examiner erred in relying on
particular definitions of “mix” that mean “bringing into close association
(i.e. position together)” but that “the first definition provided by Merriam
(i.e., to combine or blend into one mass) . . . more closely matches the intent
of the Appellants when drafting the [S]pecification and the understanding of
the skilled artisan when reading the [S]pecification” (App. Br. 12).
In addition, Appellants rely on affidavit evidence (Speck Affidavit
dated February 9, 2006, Exhibit H, Evidence App’x of App. Br) in support
Appeal 2009-006164
Application 09/795,369

6
of the argument that “one having ordinary skill in the art would understand
Mori is a co-extruded composition having a distinct inner core and outer
shell that would not be considered ‘mixed’” (App. Br. at 14).
Thus, a dispositive issue arising from the contentions of the Examiner
and Appellants is:
Have Appellants shown reversible error in the Examiner’s finding that
Mori describes a pet food product in which “the granular portion [is] mixed
with the extruded basal portion,” as recited in claim 16?

II. Claims 31, 33-35, and 38-45: Anticipation over Nahm
The Examiner finds that Nahm discloses every limitation of the
rejected claims including the limitation “the granular portion being mixed
with the extruded basal portion, wherein the granular portion is not subjected
to high temperatures and shear imparted by the compression section” recited
in claim 31 (Ans. 6-7 and 12-13). While the Examiner acknowledges that
Nahm “do[es] not expressly teach the granular portion is supplied in the
extruder downstream of the extruder compression section,” the Examiner
holds that this process limitation does not distinguish the claimed pet food
product from Nahm’s pet food product “because the [prior art] granular
portion is mixed throughout the extruded cooked basal portion without the
granular portion passing through the compression section of the extruder that
is used to cook the basal portion” (id. at 6-7).
Appellants, on the other hand, contend that the Examiner errs because
“Nahm fails to disclose or suggest an extruded pet food product having a
granular portion mixed throughout the extruded basal portion and that was
supplied to the basal portion in a metering section of the extruder directly
Appeal 2009-006164
Application 09/795,369

7
adjacent to and downstream of the extruder compression section as required,
in part, by Claim 31” (App. Br. 14). Appellants assert that Nahm, in
contrast, discloses a different process including, for example: (i) adding
fibrous food pieces to the basal matrix mixture “after the basal mixture has
been cooked separately in an extruder (i.e. not in the same extruder
apparatus or system)”; and (ii) a “pellet mill process . . . that takes place
after the extruded basal mixture has been cooled and treated/ground” (App.
Br. 15). On these bases, Appellants assert that claim 31 is distinguishable
over Nahm “[d]ue to the inherently distinctive physical and structural
characteristics imparted to the claimed pet food product by the recited
method” (App. Br. 15-16).
Thus, the issue arising from the contentions between the Examiner
and Appellants is:
Have Appellants shown reversible error in the Examiner’s finding that
Nahm reasonably appears to disclose the same product recited in claim 31
even though the prior art product appears to be made by a different process?

III. Claim 32: Obviousness over Nahm
With respect to the rejection of claim 32 over Nahm, Appellants rely
on the same arguments made against the rejection of claim 31 over Nahm
(App. Br. 16). Thus, the issue is the same as in Rejection II.

Appeal 2009-006164
Application 09/795,369

8
IV. Claims 36 and 37: Obviousness over Nahm and Bone
The Examiner acknowledges that Nahm differs from the claimed
subject matter in that it teaches a particulate dough concentration of 18-22%
by weight, as distinguished from the claimed “about 25 to about 40% by
weight” (claim 36) and “about 25% by weight” (claim 37) (Ans. 9). To
account for these differences, the Examiner relies on Bone, which is said to
teach “a meat simulated dog food comprising an extruded cooked basal
portion (e.g. red-colored dough . . . ) and a granular portion . . . that is white
colored . . . supplied to the basal portion after compression, in an amount of
10-30%” (id.). The Examiner then concludes:
[I]t would have been obvious to increase the level of the dough
portion of Nahm et al., depending on the intended type of pet
that will eat the food product and type of food one wanted to
simulate, since Bone et al. teach a particulate dough from 10-
30% that is colored white when combined with a red-colored
basal portion is used to simulate meat for dogs.
(Id.).
In addition to arguments made against Nahm with respect to claim 31,
Appellants contend that Bone teaches away from the claimed pet food
product because “Bone is entirely directed to a pet food that has a granular
portion heated and sheared by a compression section (e.g. entire dough is
cooked at high temperatures)” (App. Br. 17).
Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s conclusion
that a person having ordinary skill in the art would have been led to combine
Nahm and Bone to arrive at a pet food product encompassed by claims 36
and 37?
Appeal 2009-006164
Application 09/795,369

9

V. Claims 45 and 47: Obviousness over Mori, Nahm, Merriam-Webster,
and Webster’s
With respect to the rejection of claims 45 and 47, Appellants rely on
the same arguments made against Mori in Rejection I and against Nahm in
Rejection II (App. Br. 17). Thus, the issues for this rejection are the same as
those raised in Rejections I and II.

FINDINGS OF FACT (“FF”)
1. Mori’s Figure 2a2 is reproduced below:

Figure 2a depicts an extruded pet food product comprising a
two-layer structure having a granular portion 15 covered with
an outer layer 14 (¶¶ [0004] and [0011]).
2. Nahm discloses an exemplary method (Example IV) of “the
pelleting of a pre-cooked basal matrix and fibrous food pieces,”
wherein “meal [i.e., basal portion] was ground and passed
through an extruder cooker having an elevated temperature of
about 275 and pressure of about 250 psig” (col. 9, ll. 36-53).

2 Figure 2a is reproduced from the original Japanese patent document.
Appeal 2009-006164
Application 09/795,369

10
3. Nahm discloses that after extruding and drying, the “basal
matrix was then ground through a 4/64 Hammermill ® screen
and mixed with . . . fibrous food pieces [granular portion]” (col.
9, ll. 57-59).
4. Nahm discloses:
This mixture [of basal matrix and fibrous food
pieces] was then preconditioned in a California
pellet mill by steam and water injection so that the
moisture content was brought up to 25% by
weight. The conditioned meal was then passed
into the rolls of the pellet mill, and was formed
through a . . . dye [col. 9, ll. 62-67].
5. Nahm discloses that “[p]elleting does not involve mechanically
working the material under conditions of elevated temperature
and pressure to produce a flowable substance for extrusion”
(col. 7, l. 67 – col. 8, l. 2).
6. Merriam-Webster states that one definition of the root term
“mix” includes “to bring into close association.”
7. Webster’s also states that a broad definition of the root term
“mix” includes “to bring together (as different kinds of people
or things) in close association . . . .”
8. Donald R. Speck (Speck) is one of the named inventors of the
subject application (Exhibit H, ¶ 2).
9. Speck declares (Exhibit H, ¶ 5):
As one having ordinary skill in the art, I
believe that Mori clearly discloses a[n] extruded
pet food product having an [sic] granular inner
core (15) and an outer layer (14) that are only
positioned together side by side. Moreover, as one
having ordinary skill in the art, I would not use the
Appeal 2009-006164
Application 09/795,369

11
term “mixed” when describing the relationship of
the inner core and outer shell of the product of
Mori. For example, in the pet industry, mixed
commonly refers to a greater level of integration of
two components rather than placing them next to
each other. Instead, I believe that the Mori product
is made by a co-extrusion process, which differs
from the process used to make the pet food of the
present invention.
10. Speck did not support his testimony regarding the meaning of
the term “mixed” with any documentary evidence, such as
patents or trade literature.

PRINCIPLES OF LAW
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) (citation omitted).
Appeal 2009-006164
Application 09/795,369

12
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product . . . . Whether the rejection is based on ‘inherency’ under
35 USC 102, on ‘prima face obviousness’ under 35 USC 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(footnotes and citations omitted).
“[C]onclusory, unsupported assertions by experts as to the definition
of a claim term are not useful to a court.” Phillips v. AWH Corp., 415 F.3d
1303, 1318 (Fed. Cir. 2005).

ANALYSIS
I. Rejection of Claims 16-31, 33-44, and 46 Under 35 U.S.C. § 102(a) as
Anticipated by Mori, as Evidenced by Merriam-Webster and Webster’s
While Appellants refer to claims 16 and 31, Appellants rely on the
same arguments for all the claims subject to this rejection. Accordingly, we
select claim 16 as representative and confine our discussion to this selected
claim. 37 C.F.R. § 41.37(c)(1)(vii).
We start with claim construction. Claim 16 recites “the granular
portion being mixed with the extruded basal portion.” In support of their
argument that the Examiner’s claim construction is in error, Appellants do
not direct us to any special definition in the Specification that restricts the
claim term “mixed” to any particular degree of mixing between components
Appeal 2009-006164
Application 09/795,369

13
(App. Br. 11-14). Instead, Appellants merely refer to (i) portions of the
Specification that recite “mixed throughout” and “mixes” and (ii) an
embodiment describing a twin screw extruder that is said to provide a
blending of components (App. Br. 11-12). These disclosures, however, are
insufficient to serve as restrictions on the scope of the claim term “mixed.”
Morris, 127 F.3d at 1056 (“The problem in this case is that the appellants
failed to make their intended meaning explicitly clear. Even though the
appellants implore us to interpret the claims in light of the specification, the
specification fails to set forth the definition sought by the appellants.”).
Here, the Examiner has advanced a reasonable claim construction
based on the ordinary meaning of “mixed,” as evidenced by dictionaries
(Ans. 3-4; FF 6-7). That Appellants can point to usages and definitions that
are narrower than the definition used by the Examiner is not persuasive of
reversible error (App. Br. 12). Morris, 127 F.3d at 1056 (“Absent an
express definition in their specification, the fact that appellants can point to
definitions or usages that conform to their interpretation does not make the
PTO's definition unreasonable when the PTO can point to other sources that
support its interpretation.”).
Relying on the Speck Affidavit (Exhibit H), Appellants argue that
“one having ordinary skill in the art would understand that Mori is a co-
extruded composition having a distinct inner core and outer shell that would
not be considered ‘mixed’” (App. Br. 14; FF 8-10). We are unpersuaded by
this argument. Specifically, we do not credit Speck’s testimony (¶ 5)
because it is unclear whether Speck understood the legal standard for claim
construction that must be used in proceedings at the PTO. Furthermore, the
testimony of Speck, who is an interested party, consists of beliefs (as
Appeal 2009-006164
Application 09/795,369

14
distinguished from facts) based solely on conclusory statements that are
neither supported by the Specification, as broadly drafted, nor by any
documentary evidence (e.g., trade or patent literature). Cf. Phillips, 415
F.3d at 1318. In this regard, “mere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent
Office questions the efficacy of those statements.” In re Lindner, 457 F.2d
506, 508 (CCPA 1972).
Therefore, Appellants have failed to show reversible error in the
Examiner’s construction of the claim term “mixed” and in the Examiner’s
finding that Mori describes a “granular portion being mixed with the
extruded basal portion,” as recited in claim 16 (FF 1).

II. Rejection of Claims 31, 33-35, and 38-45 Under 35 U.S.C. § 102(b) as
Anticipated by Nahm
Appellants argue the appealed claims together, focusing only on claim
31 (App. Br. 14-16). Accordingly, we select claim 31 as representative of
all appealed claims subject to this rejection and confine our discussion to
this selected claim. 37 C.F.R. § 41.37(c)(1)(vii).
Again, we start with claim construction. Claim 31, which is directed
to a pet food product, includes a limitation directed to a process for making
the claimed product, wherein “a granular portion mixed throughout said
extruded basal portion and that was supplied to said basal portion in the
extruder downstream of the extruder compression section” (emphasis
added). But the patentability of the claimed pet food product depends on the
product, not on the process by which it is made. In re Thorpe, 777 F.2d at
697 (“If the product in a product-by-process claim is the same as or obvious
Appeal 2009-006164
Application 09/795,369

15
from a product of the prior art, the claim is unpatentable even though the
prior product was made by a different process.”). Therefore, we look to
whether Appellants have shown that the recited process limitation (“supplied
to said basal portion in the extruder downstream of the extruder compression
section”) patentably distinguishes the structure of the claimed product over
the prior art product.
Here, Nahm discloses an exemplary pet food product that comprises:
(i) an extruded basal portion that was cooked in an extruder including a
compression section (FF 2); and (ii) a granular portion mixed throughout the
extruded basal portion, wherein the granular portion is not subjected to high
temperatures and shear imparted by the compression section (FF 3-5).
Furthermore, Nahm discloses adding water when mixing the granular and
basal portions (FF 4). Thus, the Examiner has provided sufficient facts upon
which to assert that the prior art product would reasonably appear to be the
same as that recited in claim 31 (Ans. 13). Accordingly, the burden was
properly shifted to Appellants to show otherwise. See Best, 562 F.2d at
1255.
Appellants failed to meet that burden. Though Appellants rely on the
Speck Affidavit as evidence “that Nahm clearly discloses a distinguishable
pet food product made by a completely different process steps [sic] that
results in the pet food product having inherently different physical
properties” (App. Br. 14-15), this conclusory statement is unpersuasive.
Here, Appellants do not direct us to any persuasive evidence (e.g.,
comparative test data) establishing that the process limitations recited in
claim 31 would provide a product that is different from the prior art pet food
product. See In re Lindner, 457 F.2d at 508.
Appeal 2009-006164
Application 09/795,369

16
Under these circumstances, Appellants failed to show reversible error
in the Examiner’s finding that Nahm discloses the claimed pet food product.

III. Rejection of Claim 32 Under 35 U.S.C. § 103(a) as Obvious over Nahm
Appellants rely on the same arguments for patentability of claim 32 as
discussed above with respect to Rejection II (App. Br. 16). Thus, for the
same reasons as discussed above, we find that Appellants have not shown
reversible error in the Examiner’s obviousness rejection of claim 32 over
Nahm.

IV. Rejection of Claims 36 and 37 Under 35 U.S.C. § 103(a) as Obvious
over Nahm and Bone
Appellants have argued that Bone teaches away from the claimed
invention (App. Br. 16-17). The Examiner did not adequately respond to
this argument. This constitutes reversible error.
Accordingly, we reverse the rejection of claims 36 and 37.

V. Rejection of Claims 45 and 47 Under 35 U.S.C. § 103(a) as Obvious
over Mori and Nahm in View of Evidence by Merriam-Webster and
Webster’s
Appellants rely on the same arguments for patentability of claims 45
and 47, as discussed above in Rejections I and II with respect to claims 16
and 31, respectively (App. Br. 17). Thus, for the same reasons as discussed
above, we find that Appellants have not shown reversible error in the
Examiner’s obviousness rejection of claims 45 and 47 over Mori and Nahm
in view of evidence of Merriam-Webster and Webster’s.
Appeal 2009-006164
Application 09/795,369

17

CONCLUSION
Rejections I and V
Appellants have not shown reversible error in the Examiner’s finding
that Mori describes a pet food product in which “the granular portion [is]
mixed with the extruded basal portion,” as recited in claim 16.

Rejections II, III, and V
Appellants have not shown reversible error in the Examiner’s finding
that Nahm reasonably appears to disclose the same product recited in claim
31 even though the prior art product appears to be made by a different
process.

Rejection IV
Appellants have shown reversible error in the Examiner’s conclusion
that a person having ordinary skill in the art would have been led to combine
Nahm and Bone to arrive at a pet food product encompassed by claims 36
and 37.

DECISION
We affirm the Examiner’s decision to reject:
claims 16-31, 33-44, and 46 under 35 U.S.C. § 102(a) as anticipated
by Mori as evidenced by Merriam-Webster and Webster’s;
claims 31, 33-35, and 38-45 under 35 U.S.C. § 102(b) as anticipated
by Nahm;
claim 32 under 35 U.S.C. § 103(a) as unpatentable over Nahm; and
Appeal 2009-006164
Application 09/795,369

18
claims 45 and 47 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Mori and Nahm, with evidence by Merriam-Webster
and Webster’s.
We reverse, however, the Examiner’s decision to reject claims 36 and
37 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Nahm 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)(1)(v).

AFFIRMED

Bim/mat

K&L GATES, LLP
P.O. BOX 1135
CHICAGO, IL 60690