Ex Parte Stern et al

Patent Trials and Appeals Board

May 17, 2019

13749892 - (D) (P.T.A.B. May. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/749,892 01/25/2013
127749 7590 05/21/2019
M&G Spectrum
P.O. Box 2903
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Mark Stern
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.
04709.0507USI1 7255
EXAMINER
HUSON, JOSHUA DANIEL
ART UNIT PAPER NUMBER
3642
NOTIFICATION DATE DELIVERY MODE
05/21/2019 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):
US PTO 1277 49@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK STERN and PETER B. WHEELER
Appeal 2018-002757
Application 13/749,892
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 and Peter B. Wheeler ("Appellants") 1 appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 5, 6, 12-14,
and 17. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Spectrum Brands, Inc. is identified as the real party in interest. Appeal Br.
1.
2 Claims 1--4, 7-10, 15, 16, 18, and 19 are withdrawn. Final Act. 1.
Appeal2018-002757
Application 13/749,892
THE CLAIMED SUBJECT MATTER
Appellants' invention relates to an edible pet chew. Spec. ,r 2.
Independent claim 5 and 13, reproduced below, are illustrative of the
claimed subject matter.
5. An edible pet chew consisting of:
a single sheet of a hardened edible chewable rawhide free and
animal hide free material dimensioned large enough and thin enough
to be initially malleable for flexing, folding or rolling into a final
shape;
said single sheet shaped by flexing, folding or rolling before
hardening into said final shape; and
said single sheet having co-extruded first and second areas with
a different appearance or flavor from each other.
13. An edible pet chew comprising:
a co-extruded sheet of hardened edible chewable material
dimensioned large enough and thin enough to be initially malleable
for flexing, folding or rolling into a final shape;
a first section of said co-extruded sheet having a first
appearance or first flavor;
a second section of said co-extruded sheet having a second
appearance or second flavor; and
said co-extruded sheet being shaped by flexing, folding or rolling
before hardening into said final shape.
REJECTIONS 3
1) The Examiner rejected claims 5, 6, 12-14, and 17 under 35 U.S.C.
§ 102(b) as anticipated by Greene (US 4,419,372, issued Dec. 6,
1983).
2) The Examiner rejected claims 5, 13, 14, and 17 under 35 U.S.C.
3 Appellants contest the Examiner's objection to claims 6 and 12. Appeal
Br. 7; Final Act. 3. This is a petitionable matter not properly before us for
review.
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Application 13/749,892
§ I02(b) as anticipated by Axelrod (US 2005/0153040 Al,
published July 14, 2005).
3) Claims 13, 14, and 17 are rejected under 35 U.S.C. § I02(b) as
unpatentable over Greene and Sherrill (US 5,673,653, issued Oct.
7, 1997).
DISCUSSION
Rejection 1
The Examiner found that Greene teaches all of the limitations of
independent claims 5 and 13 including a "single sheet having co-extruded
first and second areas with a different appearance or flavor from each other
(See Example 1 Line 40-55 'the bone was blasted [with walnut shells] on
one side only.')" Final Act. 4. Appellants contend that Greene does not
anticipate because Greene's "product is not produced by a co-extrusion
process." Appeal Br. 8 (citing Greene 2:55---63). Appellants argue that "[a]
person of ordinary skill in the art reading pending claims 5 and 13 would
understand that a recited feature of the claimed pet chews is that they
possess two separate co-extruded areas of distinct appearance or flavor" and
that "Greene teaches extrusion of a single material: 'this mix [ a single
composition] was extruded as a light tan, pliable product."' Id. at 8-9
( citing Greene, 6:42).
The Examiner responds that the references to "co-extruded" in claim 5
and claim 13 are product by process limitations. Ans. 4--5. According to the
Examiner, "the product as taught by Greene is substantially identical to
Appellants claimed edible pet chew" and asserts that "the burden shifts to
the Appellants to show an unobvious difference." Id. at 5 ( citing MPEP §
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Application 13/749,892
2113 II). The Examiner also asserts that Appellants have not produced
"evidence establishing an unobvious different[ sic] between the claimed
product and the prior art." Id. In the Reply Brief, Appellants argue that
neither claim 5 nor claim 13 contain product by process limitations but
rather describe "distinct structural characteristics of the product" due to the
use of the past tense "co-extruded." Reply Br. 4 (citing Hazani v. US. Int'!
Trade Comm 'n, 126 F. 3d 1473, 1479 (Fed. Cir. 1997); In re Garnero, 412
F.2d 276, 279 (CCPA 1969)). For the following reasons, we do not sustain
this rejection.
Appellants' Specification describes a "co-extruded sheet" as having
"two layers" or "multiple sheets." Spec. ,r,r 9, 54. Appellants' Figure 11
illustrates a co-extruded sheet with two layers 612 and 614. Id. Fig. 11, ,r
54. Appellants' Specification also describes "a single extruded sheet 810"
having one layer. Id. ,r 54, Fig. 14. Greene discloses an extruded layer that
is "treated by impacting the surface thereof with particles until a leather-like
appearance is achieved" after "it exits the extruder." Greene, 2:55-62.
Greene further discloses a "mix ... extruded as a light tan pliable product.
This product was then immediately fed into a blasting apparatus, where it
was blasted with walnut shells." Id. 6:41--43. Because Greene's surface
treatment occurs after extrusion, the Examiner's findings that Greene
discloses "co-extruded first and second areas" as recited in claim 5 and "a
coextruded sheet" as recited in claim 13 are not supported by a
preponderance of the evidence, nor has the Examiner explained adequately
why "the product as taught by Greene is substantially identical to Appellants
claimed edible pet chew." See Ans. 5. In particular, the Examiner has not
explained adequately how walnut blasting yields a product having different
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Application 13/749,892
areas of appearance in a manner like that of two areas of a single sheet
formed by co-extrusion. Therefore, we do not sustain the rejection of claims
5 and 13 as anticipated by Greene. We also do not sustain the rejection of
claims 6 and 12 which depend from claim 5 and claims 14 and 17 which
depend from claim 13 for the same reasons.
Rejection 2
The Examiner found that Axelrod discloses a "single sheet having co-
extruded first and second areas" as recited in claim 5 and "a co-extruded
sheet" as recited in claim 13. Final Act. 5 (citing Axelrod, ,r,r 37-38).
Appellants contend that there is no disclosure in Axelrod of "a co-extruded
pet chew." Appeal Br. 14. The Examiner responds that the "co-extruded
limitations" are not given patentable weight and, further, according to the
Examiner, Appellants ignore paragraph 3 8 of Axelrod. Ans. 9-10. The
Examiner asserts that paragraph 3 8 of Axelrod discloses "the exact claimed
product and the exact same method of manufacture of such a product
according to claims 5, 13-14 and 17." Id. at 9-10. In the Reply Brief,
Appellants argue that Axelrod "does not discuss extrusion." Reply Br. 8.
For the following reasons, we do not sustain this rejection.
Axelrod discloses an animal chew "formed by rolling a mixture of
binder and base material into a sheet." Axelrod, Abstract. We appreciate
the Examiner's reference to paragraph 38 of Axelrod that discloses "a layer
of a second material may be laminated on or consolidated with the produced
sheetstock. Such second layer may include a composition with different
components than a first sheet layer." Id. ,r 38. We note, however, that
Axelrod also discloses that "the preferred screw/auger type conveyor does
not contain a die nor does it develop pressure within a barrel as in
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Application 13/749,892
conventional extrusion." Id. ,r 21. Consequently, we determine that the
Examiner's finding that Axelrod discloses "the exact claimed product"
recited in claims 5 and 13 is not supported by a preponderance of the
evidence because it is not clear that the product resulting from the process
described in paragraph 3 8 of Axelrod is a "single sheet having co-extruded
first and second areas" required by claim 5 or is, or has the properties of, "a
co-extruded sheet" required by claim 13, or whether the product is even
extruded. Therefore, we do not sustain the rejection of claims 5, 13, 14, and
1 7 as anticipated by Axelrod.
Rejection 3
The Examiner found that Greene discloses "a coextruded sheet" as
required by claim 13. Final Act. 7. The Examiner relied on Sherrill for
disclosing a co-extruded sheet having a first section with a first appearance
or first flavor and a second section having a second appearance or second
flavor. Id. The Examiner concluded that it would have been obvious to one
of ordinary skill in the art "to have provided the sheet as taught by
Greene ... with the first and second section having different appearance or
flavor as taught by Sherrill to provide the treat with specific locations,
sections and layers of flavor to entice the animal." Id.
As discussed above in connection with Rejection 1, we determine that
the Examiner's finding that Greene discloses a co-extruded sheet as required
by claim 13 is not supported by the requisite preponderance of the evidence.
The Examiner does not rely on Sherrill to cure this deficiency in Greene.
Consequently, this rejection is based on an erroneous factual finding and the
conclusion of obviousness cannot stand. See In re Warner, 379 F .2d 1011,
1017 (CCPA 1967) (holding that "[t]he legal conclusion of obviousness
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must be supported by facts. Where the legal conclusion is not supported by
facts it cannot stand."). Therefore, we do not sustain the rejection of claims
13, 14, and 17 as unpatentable over Greene and Sherrill.
DECISION
The Examiner's decision rejecting claims 5, 6, 12-14, and 17 is
reversed.
REVERSED
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