Nestec SA

Patent Trials and Appeals Board

Sep 17, 2020

2019006710 (P.T.A.B. Sep. 17, 2020)

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.
14/946,185 11/19/2015 Yuanlong Pan 13731-US-NP 6812
69099 7590 09/17/2020
Nestle Purina Petcare Global Resources, Inc
Checkerboard Square
Intellectual Property Patents
ST. LOUIS, MO 63164
EXAMINER
SAYALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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 YUANLONG PAN, HUI XU, and
SANDEEP BHATNAGAR
____________________

Appeal 2019–006710
Application 14/946,185
Technology Center 1700
____________________

Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–3, 5–8, and 10–12. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).2
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nestec
S.A. (Appeal Br. 2).
2 A Decision affirming the Examiner’s § 103 rejections of related subject
matter in a co-pending application was mailed concurrently with this one
(Appeal 2019–006721).
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2
Independent claim 1 below is illustrative of the subject matter on
appeal:
1. A method for preserving lean body mass and
promoting fat loss during weight loss, the method comprising
identifying a cat or dog that is obese or overweight and
administering to the cat or dog a pet food composition in an
amount from 70% to about 80% of the baseline maintenance
energy requirement (MER) of the cat or dog, the pet food
composition comprising:
from about 30% to about 65% protein,
from about 10% to about 20% carbohydrate,
from about 10% to about 15% fat, and
a moisture content from about 5% to about 20%;
wherein the protein and carbohydrate are in a ratio from
about 4:1 to about 10:1.3
The following rejections under 35 U.S.C. § 112 are on appeal:
1) claims 1–3, 5–8, and 10–12, under first paragraph, as failing to
comply with the written description requirement; and
2) claims 1–3, 5–8, and 10–12, under second paragraph, as indefinite.
The following rejections under 35 U.S.C. § 103 are on appeal:
3) claims 1–3, 5–8, 11, and 12 as unpatentable over the combined
prior art of Schoenherr (US 2005/0025857 A1, published Feb. 3,
2005), Jewell (US 6,410,063 B1, issued June 25, 2002), Pan (US
8,193,240 B2, issued June 5, 2012), Blanchard (Geraldine Blanchard
et al., Rapid Weight Loss with a High-Protein Low-Energy Diet
Allows the Recovery of Ideal Body Composition and Insulin

3 Note, Appellant’s Specification states that “about” encompasses plus or
minus 20% (Spec. ¶ 26).
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Sensitivity in Obese Dogs. (n.d.)) and Bierer (US 8,029,819 B2, issued
Oct. 4, 2011);
4) claim 10 as unpatentable over the combined prior art of
Schoenherr, Jewell, Pan, Jones ( US 5,962,043, issued Oct. 5, 1999)
and Changing Times (Changing Times The Kiplinger Magazine, Vol.
31 (1977 ));4
5) claims 1–3, 5, 6, 8, 11, and 12 as unpatentable over the combined
prior art of Bui (US 2007/0286889 A1, published Dec. 13, 2007),
Jewell, and Pan;
6) claims 7 and 10 as unpatentable over the combined prior art of
Bui, Jewell, and Pan, Krammer (US 2008/0085338 A1, published
Apr. 10, 2008), and Changing Times.
ANALYSIS
The § 112 rejection for failing to comply with the written description
requirement

For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)

4 The Examiner did not list Blanchard and Bierer in the rejection of
dependent claim 10 (Non-final Action 11), and these references were only
discussed with respect to dependent claims 3 and 4 respectively (Non-final
Action 9, 10).
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(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991)).
Claim 1 recites that the pet food composition of claim 1 is fed in an
amount “from 70% to about 80% of the baseline energy requirement (MER)
of the cat or dog” (Appeal Br. 21, Claims App.). There is no dispute that the
Specification explicitly describes this limitation (e.g., Spec. ¶ 39). The
Examiner’s rejection is based on the circumstances that MER is at best an
estimate that may be difficult to establish or calculate with precision (Ans. 4,
5). The Examiner relies on paragraph 38 of the Specification which gives
various non-limiting examples of how to calculate the MER of humans and
animals (Ans. 4). The Examiner also questions the examples for a dog and a
cat set out in that paragraph (id.).
Appellant contends that even though there are various ways to
determine the MER, one of ordinary skill in the art would have known these
ways of determining or calculating the MER of an animal, and since the
Specification explicitly states feeding a dog or cat 70 to 80% of their
respective MER, this adequately shows that Appellant had possession of a
the claimed subject matter (Appeal Br. 6, 7; Reply Br. 2, 3).
While we appreciate the Examiner’s concern with the examples given
for a dog and a cat in paragraph 38 of the Specification, there is adequate
evidence that one of ordinary skill in the art would have known how to
determine the MER of a dog or a cat (e.g., see Appeal Br. 7). Indeed,
Appellant’s Specification describes that baseline MER may be “determined
over a period of [time] using [a] feeding trial; or indirect or direct
calorimetry” (Spec. ¶15). We agree with the Examiner that determining
such a MER is at best an estimate, dependent on various factors (e.g., Ans.
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17). However, in our view, this situation pertains to the breadth of the
claimed subject matter, rather than the question of written description. The
broadest reasonable interpretation of the claim language in light of the
Specification permits one of ordinary skill in the art to determine the MER
in any known manner. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (the scope of the claims in patent applications is
determined by giving claims their broadest reasonable construction in light
of the specification as it would be interpreted by one of ordinary skill in the
art); see also Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
(the specification is always highly relevant to the claim construction
analysis, and is usually dispositive as it is the single best guide to the
meaning of any disputed terms).
Thus, the description of determining baseline MER in Appellant’s
Specification appears to be as precise as the subject matter permits (e.g.,
Spec. ¶¶ 15, 38). Accordingly, we agree with Appellant that a
preponderance of the evidence supports Appellant’s position that one of
ordinary skill in the art would have understood that Appellant was in
possession of the claimed subject matter. Cf. Union Oil Co. of Cal. v. Atl.
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (The claim need not use
the same words as the specification; it is enough that one of ordinary skill in
the art would recognize that the inventor invented what is claimed).
Accordingly, we reverse the Examiner’s § 112 rejection for lack of
written description.
The § 112 rejection for indefiniteness
During prosecution, claims are interpreted using “the broadest
reasonable meaning of the words in their ordinary usage as they would be
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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). Claims are definite if
they “set out and circumscribe a particular area with a reasonable degree of
precision and particularity. It is here where the definiteness of the language
employed must be analyzed—not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). However,
“breadth [of a claim] is not to be equated with indefiniteness.” In re Miller,
441 F.2d 689, 693 (CCPA 1971).
The Examiner found the language of claim 1 indefinite, essentially for
the same reasons the Examiner found the Specification lacked written
description support; that is, since determining the baseline MER is at best an
estimate and the claim requires feeding an amount of food from 70% to
about 80% of the baseline MER, one would not know the metes and bounds
of the claim.
Claim 1 is broad in the sense that it reads on a method of feeding 70–
80 % of the baseline MER which may be determined by any known method
of determining baseline MER for a dog or cat. However, claim 1 is not
indefinite on the basis of its breadth alone. In re Miller, 441 F.2d at 693; see
also In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“[B]readth is not
indefiniteness.”). The Examiner has not explained sufficiently why one of
ordinary skill in the art would not have understood how to use any one of the
known method(s) of determining a baseline MER in the manner described in
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the Specification and in Appellant’s response (Spec. ¶¶ 15, 38; Appeal Br. 8;
Reply Br. 4). As discussed previously, while we appreciate the Examiner’s
concern with the examples given for a dog and a cat in paragraph 38 of the
Specification,5 Appellant’s Specification describes that baseline MER may
be “determined over a period of [time] using [a] feeding trial; or indirect or
direct calorimetry” (Spec. ¶ 15).
Appellant has also persuasively reasoned that the “baseline MER”
language used in claim 1 “is as precise as the subject matter permits”,
similar to the situation in Orthokinetics Inc. v. Safety Travel Chairs Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986) (The court found the claim phrase “so
dimensioned as to be insertable through the space between the doorframe of
an automobile and one of the seats thereof” to be as accurate as the subject
matter permitted, since automobiles are of various sizes) (see, e.g., Appeal
Br. 8, 9; Reply Br. 3, 4).
In light of these circumstances, we agree with Appellant that one of
ordinary skill in the art would have understood the broad scope of the claim
in light of the Specification. Accordingly, we cannot sustain the Examiner’s
rejection of the claims as being indefinite.

5 These examples include an example formula for a dog and a cat,
respectively, which each use a single number to multiply with a dog’s or
cat’s weight. The Examiner questions how Appellant derived these numbers
(139 for dogs and 60 for cats (e.g., Ans. 17)). However, even given that any
specific MER will be an estimate that may be determined by different
methods, a preponderance of the evidence establishes that one of ordinary
skill in the art would have known how to determine such a baseline MER
(estimate) for any specific dog or cat. Indeed, no rejection is before us based
on lack of enablement.
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The § 103 Rejections
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellant’s
claims is unpatentable over the applied prior art. We sustain all of the
Examiner’s § 103(a) rejections essentially for the reasons set out by the
Examiner in the Non-Final Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed.
Cir. 1992).
Appellant contends that each § 103 rejection, whether based on
Schoenherr or Bui, is deficient for the same reasons, which reasons focus on
the teachings of Jewell and/or Pan. Specifically, Appellant argues that
Jewell is directed to a diet that is high in fats in a range outside the claimed
range of “about 10% to about 15% fat” (Appeal Br. 10, 11). Similarly,
Appellant argues that Pan teaches an example of a low caloric diet with 6%
fat (Appeal Br. 11), such that it is only with the use of impermissible
hindsight that the teachings of Schoenherr or Bui is combined with Jewell
and/or Pan.
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These arguments are not persuasive of reversible error in the
Examiner’s obviousness rejections, because they fail to fully address the
applied prior art and the inferences that one of ordinary skill in the art would
have made therefrom. Each of Schoenherr and Bui describes a pet food
composition useful for weight management with the claimed components in
amounts that overlap each of the claimed ranges. Appellant does not dispute
the Examiner’s obviousness determination that through the use of no more
than ordinary creativity, one would have used amounts of protein and
carbohydrate such that the claimed range of ratios would have been
achieved/selected based on either one of Schoenherr or Bui (e.g., Ans. 10,
14). Thus, it is not even necessary to rely upon the fat content of either of
Pan or Jewell. Jewell and/or Pan were applied by the Examiner to exemplify
that one of ordinary skill in the art would have known to feed an animal 70%
to about 80% less of their baseline MER in order to lose weight (e.g., Ans.
21, 22).
As also pointed out by the Examiner, it is well known that
calorie/energy restriction produces weight loss (e.g., Ans. 14) such that
feeding an overweight or obese dog or cat less than their MER is within the
ordinary skill and common knowledge of an artisan. Furthermore, the
Examiner discusses that Pan describes a useful fat content range of about 4–
30 wt % fat that overlaps the claimed range (Pan, col. 11, ll. 54–58; Ans.
21). The Examiner states that Jewell’s lower end of the range at 20% is
close enough to the claimed about 15% for its teachings to be applicable
(Ans. 21).6

6 Appellant’s Specification states that “about” encompasses plus or minus
20% (Spec. ¶ 26). Thus, “about 15%” as recited reasonably may encompass
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In any event, even if the fat content of Pan and Jewell did not overlap
the claimed ranges, the use of less food than required (by a pet’s baseline
MER) to lose weight using the food compositions encompassed by either of
Schoenherr or Bui (which each exemplify food compositions with a fat
content within the claimed ranges) is well within the level of ordinary skill
in the art, whether it be 70 to about 80% less or some other amount less,
using ordinary creativity and inferences based on the applied prior art in
each rejection. KSR Int’l, 550 U.S. at 418; see also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”);
Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (Under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of “the inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ.); see
also KSR Int’l, 550 U.S. at 417 (It is a well-established principle that, for an
improvement to be patentable, it must be more than the predictable use of
prior art elements, or steps, according to their established functions).
Appellant does not separately argue any other claim than claim 1,
including separately rejected claims.
Accordingly, we affirm all of the Examiner’s § 103 rejections (that is,
rejections listed as 3–6 above).

or be very close to the about 20% fat content of Jewell, noting, however that
the obviousness determination is not rendered deficient even if the
Specification did not contain such a disclosure.
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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–8,
10–12 112 Written Description
1–3, 5–8,
10–12
1–3, 5–8,
10–12 112 Indefiniteness
1–3, 5–8,
10–12
1–3, 5–8,
11, 12 103
Schoenherr, Jewell, Pan,
Blanchard, Bierer
1–3, 5–8,
11, 12

10 103 Schoenherr, Jewell, Pan, Jones, Changing Times 10

1–3, 5, 6,
8, 11, 12 103 Bui, Jewell, Pan
1–3, 5, 6,
8, 11, 12

7, 10 103
Bui, Jewell, Pan,
Krammer, Changing
Times
7, 10

Overall
Outcome
1–3, 5–8,
10–12

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)(iv).

AFFIRMED