Ex Parte Tsengas

Board of Patent Appeals and Interferences

Mar 28, 2007

11009165 (B.P.A.I. Mar. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN TSENGAS
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Appeal 2007-0710
Application 11/009,165
Technology Center 1700
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Decided: March 28, 2007
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and PETER F.
KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This appeal involves claims 1-14. We remand the application to the
Examiner for obtaining the Examiner’s considered response to Appellant’s
arguments raised in the Reply Brief, which were not presented in the
principal Brief. 37 C.F.R. §§ 41.35(b) and 41.50(a)(1)(2006).

Appeal 2007-0710
Application 11/009,165

Appellant’s invention is directed to a so called “chew toy;” that is, a
chewable item and a method of making such an item. The claimed item has
“bone” and “meat” portions with the meat portion being impregnated with a
liquid with the simulated taste of meat and the bone portion being
impregnated with a soft solid along an interior thereof with the simulated
taste and texture of bone marrow. The claimed chewable item does not
otherwise specify the material of which the item is made.
Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Axelrod (U.S. Patent No. 3,871,334) in view of
Hernandez (U.S. Patent No. 6,896,924).
Appellant’s Reply Brief presents arguments directed to independent
claim 1 and dependent claim 13 that do not appear in the main Brief. For
example, Appellant highlights the claim 1 requirement for a “soft solid”
situated along an interior of the bone portion, and the property of the “soft
solid” with respect to simulating the texture of bone marrow as unobvious
distinctions over the chew items taught or suggested by the applied
references (Reply Br. 2-3). 1 In essence, Appellant basically asserts that the
claimed chew toy item requires a soft solid insertion in the bone portion
interior thereof in addition to a liquid impregnated meat portion. Id.
Appellant maintains that the applied prior art does not teach or suggest the
claimed chew toy involving a “third texture”, a soft solid texture which
results from the soft solid insertion.(Id.).

1 Method claims 10-12 and 14 do not include such an argued limitation and
we note that Appellant does not furnish any additional arguments respecting
these method claims in the Reply Brief.

2
Appeal 2007-0710
Application 11/009,165

The main Brief does not include that argument and the Examiner
correspondingly does not address that point in the Answer. Similarly, the
method of dependent claim 13 includes an impregnation step involving such
a soft solid, which is specifically argued as a patentable distinction in the
Reply Brief, unlike in the main Brief were no such detailed argument
appears. In particular, the Examiner should further explain how one of
ordinary skill in the art at the time of the invention would have been led to
modify the the nylon-containing pet food product of Axelrod based on the
further teachings of Hernandez respecting a two texture pet food so as to
result in a product corresponding to appellant’s three texture chew toy.
Accordingly, jurisdiction of this application is being returned to the
Examiner for the Examiner to respond to the new arguments presented in the
Reply Brief.
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is
made for further consideration of a rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) applies if a Supplemental Examiner’s Answer is written in
response to this remand.

REMANDED

cam

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