Ex Parte SternDownload PDFPatent Trial and Appeal BoardJan 11, 201813329736 (P.T.A.B. Jan. 11, 2018) Copy Citation 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. 13/329,736 12/19/2011 Mark Stern 04709.0507USC1 5153 127749 7590 M&G Spectrum P.O. Box 2903 Minneapolis, MN 55402 01/16/2018 EXAMINER HUSON, JOSHUA DANIEL ART UNIT PAPER NUMBER 3644 NOTIFICATION DATE DELIVERY MODE 01/16/2018 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): US PTO127749 @ merchantgould .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK STERN Appeal 2016-000639 Application 13/329,736 Technology Center 3600 Before JOHN C. KERINS, KEN B. BARRETT, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mark Stem (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-6 and 9-14. An oral hearing pursuant to 37 C.F.R. § 41.47 was held on January 4, 2018. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2016-000639 Application 13/329,736 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method of forming an edible pet chew, said method comprising: providing a plant based mixture that is substantially rawhide free, extrudable, and initially malleable; forming said initially malleable plant based mixture into a first sheet that is dimensioned large enough and thin enough to be initially malleable for use as a wrap by flexing, folding or rolling into a shape; providing a second sheet made from flavor material that is substantially rawhide free; placing said first and second sheets in superimposed relation and rolling said first and second sheets up to have said first sheet and second sheet forming alternating layers with no intervening rawhide layers; and hardening said first sheet after it is wrapped with said second sheet such that said first sheet provides a hardened chewable wrap. REJECTION Claims 1-6 and 9-14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sherrill (US 5, 673,653, issued Oct. 7, 1997) and Axelrod (US 2005/0153040 Al, issued July 14, 2005). DISCUSSION The Examiner finds that Sherrill discloses most of the limitations of claim 1 except for providing a plant based mixture and forming the plant based mixture into a first sheet as recited in claim 1. Final Act. 3—4. The Examiner finds that Axelrod discloses a substantially rawhide free plant 2 Appeal 2016-000639 Application 13/329,736 based mixture that “is extradable and initially malleable; forming the initially malleable plant based mixture into a first sheet,” and “a second sheet of different material may be superimposed on the first plant based sheet.” Id. at 4 (citing Axelrod, 12, 38). The Examiner concludes it would have been obvious to modify Sherrill by replacing its first sheet of rawhide with a sheet of “plant based material that is substantially rawhide free as taught by Axelrod ... in order to provide the animal with both plant based nourishment as well as animal based nourishment for greater nutritional value.” Id. at 4. The Examiner also concludes that this modification of Sherrill would have been an obvious selection of a known material on the basis of it suitability for the intended use. Id. at 4-5. Appellant contends that the rejection is based on a misinterpretation of Axelrod. Appeal Br. 7. Appellant argues that Axelrod “discloses an unformed and unshaped malleable material that can be extruded into a sheet bar or other molded shape” but that Axelrod “does not disclose that once the sheet is formed that the sheet is still malleable and can be further flexed, folded or knotted.” Id. In the Answer, the Examiner submits that “Appellant has provided NO evidence proving or supporting appellant’s conclusion” that Axelrod’s sheet is not initially malleable and is incapable of being flexed, folded or rolled. Ans. 7. For the following reasons, we do not sustain the rejection of claim 1. Claim 1 requires the plant based mixture to be “initially malleable” prior to being formed into the first sheet and the first sheet must also be “initially malleable for use as a wrap by flexing, folding, or rolling into a shape.” Axelrod discloses “a method of manufacturing an animal chew.” Axelrod ^ 12. The method involves forming a mixture of “binder and base 3 Appeal 2016-000639 Application 13/329,736 material. . . which can all be selected depending upon the needs of any given animal.” Id. The base material can be selected from plant based materials including “starch, rice meal, soybean.” Id. The mixture disclosed in Axelrod is passed through a screw conveyor and then through rollers to form a sheet. See id. 21-22. The sheets are then hardened by heating in a temperature controlled tunnel. Id. at 22-23. The Examiner relies on paragraphs 12 and 38 of Axelrod to support a finding that Axelrod’s plant based material is “extrudable and initially malleable.” Final Act. 4; Ans. 5. Appellant does not dispute that Axelrod’s plant based material is malleable prior to being formed into a sheet (Appeal Br. 7). However, neither paragraph 12 nor paragraph 38 of Axelrod supports a finding that Axelrod’s formed sheet is “initially malleable for use as a wrap by flexing, folding, or rolling into a shape,” and the Examiner does not explain adequately otherwise how Axelrod discloses a sheet being malleable after formation. We, thus, do not sustain the rejection of claim 1. The Examiner rejects independent claim 9 based on the same findings and reasoning as claim 1. Final Act. 5-6. We do not sustain the rejection of claim 9 for the same reasons as claim 1. Claims 2-6 depend directly or indirectly from claim 1 and claims 10-14 depend directly or indirectly from claim 9. Appeal Br. 22-24 (Claims App.). We do not sustain the rejection of claims 2-6 and 10-14 for the same reasons. DECISION The Examiner’s decision rejecting claims 1-6 and 9-14 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation