NESTEC S.A.

Patent Trials and Appeals Board

Oct 29, 2021

2021001438 (P.T.A.B. Oct. 29, 2021)

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.
15/158,024 05/18/2016 Stephanie Daru 3714652-00749 8165
29157 7590 10/29/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
10/29/2021 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHANIE DARU
Appeal 2021-001438
Application 15/158,024
Technology Center 3600
Before JILL D. HILL, JEREMY M. PLENZLER, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7, 9, and 21–34. We have jurisdiction
under 35 U.S.C. § 6(b).
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 SOCIETE
DES PRODUITS NESTLE S.A. Appeal Br. 2.
Appeal 2021-001438
Application 15/158,024

2
CLAIMED SUBJECT MATTER
The claims relate to a pet feeding method. Claim 7, reproduced
below, is illustrative of the claimed subject matter:
Claim 7: A method of providing nutrition to a pet, the method
comprising:
a pet owner obtaining a wet pet food, the wet pet food
sealed in a container, the wet pet food comprising a thermo-
reversible hydrocolloid composition in which gelatin is 7 wt.%
to 13 wt.% of the thermo-reversible hydrocolloid composition;
the pet owner selecting a form of the wet pet food sealed in
the container, after the obtaining of the wet pet food, wherein the
selecting of the form of the wet pet food comprises the pet owner
selecting between (i) chunks in jelly and (ii) chunks in gravy; and
the pet owner administering the selected form of the wet
pet food to a pet, wherein, for the selected form of chunks in jelly,
the administering comprises administering the wet pet food at a
first temperature not greater than ambient temperature to the pet
without heating the wet pet food;
wherein, for the selected form of chunks in gravy, the
administering comprises heating the wet pet food and
administering the heated wet pet food at a second temperature of
30°C to 40°C to the pet.
Appeal 2021-001438
Application 15/158,024

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hanna US 3,946,123 Mar. 23, 1976
Burrows US 4,276,311 Jun. 30, 1981
Sworn US 6,602,996 B1 Aug. 5, 2003
Haug US 2009/0238866 A1 Sep. 24, 2009
Saxe US 2011/0052752 A1 Mar. 3, 2011
Sarig US 2011/0206811 A1 Aug. 25, 2011
Pibarot US 2012/0177785 A1 Jul. 12, 2012
Ramsey US 2015/0053138 A1 Feb. 26, 2015
Jones US 2015/0118381 A1 Apr. 30, 2015
Lagache US 2015/0282499 A1 Oct. 8, 2015
Mao US 2018/0110240 A1 Apr. 26, 2018
Hankins WO 2013/015944 A2 Jan. 31, 2013
Heating Up Can Food, thecatsite.com; available at:
https://thecatsite.com/threads/heating-upcan-food.72175/ (2009).
Aspen Grove Veterinary Care, NUTRITION RECOMMENDATIONS
FOR CATS, available at:
https://web.archive.org/web/20130301000000*/https://aspengrovevet.com/
nutrition-recommendations-cats/ (October 26, 2013).
Crane et al., Chapter 8, Commercial Pet Foods, Small Animal Clinical
Nutrition, 5th Edition, Published by Mark Morris Associates (2010).
REJECTIONS
Claims 7, 9, 21, 26–28, and 34 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Burrows, Heating Up Can Food, Aspen Grove
Veterinary Care, Crane, Lagache, Jones, and Sworn.
Claim 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, and Hankins.
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Application 15/158,024

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Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, Hankins, and Hanna.
Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, Sarig, and Mao.
Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, and Waldron.
Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, OFFICIAL NOTICE, and Saxe.
Claims 7, 9, 21, 22, and 26–28 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Burrows, Ramsey, Crane, Lagache, Jones, and
Sworn.
Claims 21 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burrows, Ramsey, Crane, Lagache, Jones, Sworn, and
Pibarot.
Claim 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Ramsey, Hankins2, Crane, Lagache, Jones, Sworn, and
Pibarot.
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Ramsey, Hankins, Crane, Lagache, Jones, Sworn, and Hanna.

2 Hankins is referenced in the body of the rejection. Final Act. 35–36.
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Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Ramsey, Crane, Lagache, Jones, Sworn, Sarig, and Mao.
Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Ramsey, Crane, Lagache, Jones, Sworn, Sarig, and Mao.
Claims 7, 9, 21, and 26–28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Burrows, Heating Up Can Food, Aspen Grove
Veterinary Care, Crane, Lagache, Jones, and Sworn.
Claims 21 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burrows, Heating Up Can Food, Aspen Grove Veterinary
Care, Crane, Lagache, Jones, Sworn and Pibarot.
Claim 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, and Hankins.
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, Hankins, and Hanna.
Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sarig, and Mao.
Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, and Waldron.
Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burrows, Heating Up Can Food, Aspen Grove Veterinary Care, Crane,
Lagache, Jones, Sworn, Official Notice, and Saxe.
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Claims 7, 9, 22, 24–29, and 31–33 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mao, Haug, Heating Up Can Food,
Lagache, Jones, and Sworn.
OPINION
Background
The Examiner explains that “Appellant alleges patentability flowing
from a pet owner deciding to heat up or not heat up . . . a wet pet food
formulation . . . prior to the administration of the food to the pet.” Ans. 82.
The Examiner further explains that “[t]he prior art suggests the conventional
nature of a wet pet food formulation comprising chunks in a
thermoreversible composition that comprises gelatin,” as well as “the
conventional nature of a pet owner administering food at both heated and
non-heated temperatures.” Id. The Examiner finds that “the property of
thermoreversibility of gelatin is known in the art.” Id.
Based on record before us, Appellant does not appear to dispute this
characterization of the purported invention or what is well-known in the art.
Indeed, Appellant’s Specification makes clear that the purported novelty
resides in the act of heating (or not heating) pet food. See Spec. ¶ 45
(“heating the wet pet food changes the food from the [ready-to-eat chunks in
jelly] form into the [chunks in gravy] form”), ¶ 47 (“the present inventors
believe that a heated temperature of the wet pet food increases palatability of
the food for the pet”). According to the Specification, the composition of
the particular food is not inventive. See Spec. ¶ 59 (“Selection of the
ingredients and their amounts is known to skilled artisans.”), ¶ 61 (“The wet
pet food can be prepared by any method known to the skilled artisan for
preparing chunks in jelly pet food and/or chunks in gravy pet food.”).
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The majority of the Examiner’s rejections rely primarily on Burrows,
while a separate rejection is provided based primarily on Mao. We separate
our discussion below based on those two categories of rejection.
Burrows Grounds
Claim 7 is the sole independent claim on appeal. The Examiner
provides three bases for rejecting claim 7 based primarily on Burrows. See
Final Act. 5–13 (“Burrows I Rejection”), 24–33 (“Burrows II Rejection”),
40–50 (“Burrows III Rejection”). In the Burrows I Rejection, the Examiner
determines that selecting and administering both the “chunks in jelly” and
the “chunks in gravy” would have been obvious. In Burrows II, however,
the Examiner explains that “[t]he ‘chunks in gravy’ represent an alternative
that is required to be selected or administered” and “[t]he ‘chunks in jelly’
represent a non-selected alternative limitation.” Final Act. 24. In
Burrows III, the Examiner explains that “[t]he ‘chunks-in-jelly’ represent an
alternative that is required to be selected or administered” and “[t]he ‘chunks
in gravy’ represent a non-selected alternative limitation.” Final Act. 40.
We agree with the Examiner, and Appellant does not dispute, that the
selection and administration of “chunks in jelly” or “chunks in gravy”
represent alternative limitations, where the unselected option is not required
to meet the claim. Accordingly, the Examiner’s Burrows II and III apply a
broader scope to claim 7 than the Burrows I Rejection, which includes both
selection and administration of “chunks in gravy” as in the Burrows II
Rejection and selection and administration of “chunks in jelly” as in the
Burrows III Rejection.
Appellant presents arguments for claim 7 relative to the Burrows I
Rejection. Appeal Br. 7–10. Appellant relies on those arguments to rebut
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8
the Burrows II and III Rejections, as well as for the patentability of the
dependent claims under the various rejections that primarily rely on
Burrows. Id. at 10–23.
With respect to the Burrows I Rejection, the Examiner finds that
Burrows teaches the majority of the limitations recited in claim 7 (Final Act.
5–8), but “does not disclose administering the composition [at] different
temperatures” (id. at 8).
Appellant does not dispute, in any meaningful way, that the
composition used in the claim is taught by Burrows. Rather, Appellant
simply alleges that “Burrows is entirely directed to solid protein pieces in an
aqueous gel and does not even suggest that this food product can have two
forms selected by the user, let alone chunks in gravy and chunks in jelly
selected by the user” and “the form of the product is controlled by the
absence or presence of a gelling agent in the formulation and also the
procedure used at the manufacturing plant before packaging.” Appeal Br. 8.
Appellant’s response is not persuasive of Examiner error because it
does not address the specific findings made by the Examiner. The Examiner
finds, for example, that
Burrows discloses a wet pet food (moisture content of 65-95%,
col. 2, ln. 37) comprising chunks (pieces of proteinaceous
tissue, col. 2, ln. 36; meat chunks, col. 4, ln. 30) in a thermo-
reversible hydrocolloid composition (col. 3, ln. 24-26) that
forms an aqueous gel (col. 2, ln. 36). Burrows discloses the
thermoreversible hydrocolloid composition comprises gelatin
(col. 3, ln. 25).
Final Act. 5. The Examiner explains that “[t]he form of the
thermoreversible composition (i.e., jelly or gravy) is determined by the
temperature of the food,” with “[a]n ambient temperature gelatin
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composition [being] jelly” and “[a] heated temperature gelatin composition
[being] gravy.” Ans. 83. Appellant does not address any of these findings.
Moreover, as noted above, Appellant’s Specification acknowledges
the conventional nature of such a pet food. Without meaningful response
from Appellant, we fail to see why the Examiner’s findings with respect to
Burrows are in error, as there is no dispute regarding those findings.
Appellant additionally alleges that “even if the food product of
Burrows is inherently capable of achieving two different forms . . . , the
absence of such a teaching in Burrows would have prevented the skilled
artisan from providing a method in which a pet owner selects . . . between (i)
chunks in jelly and (ii) chunks in gravy.” Appeal Br. 8. As best we can
discern, Appellant appears to assert that Burrows does not expressly describe
a pet owner deciding whether or not to heat the pet food. This, however, is
not persuasive of Examiner error.
In the Burrows I Rejection, the Examiner finds that “Burrows does not
disclose administering the composition [at] different temperatures.” Final
Act. 8. The Examiner finds this is taught by each of Heating Up Can Food,
Aspen Grove Veterinary Care, and Crane and proposes combining those
teachings with the teachings of Burrows. Id. at 8–11.
Appellant responds only that each of Heating Up Can Food, Aspen
Grove Veterinary Care, and Crane fails to teach “the consumer to select a
different form of the food” based on temperature. Appeal Br. 8. This is not
persuasive because the heating (or failure to heat) is what results in the
different form of the food. That is, teaching that the food should be heated,
for example, teaches administering the food in the “chunks in gravy” form.
Conversely, failure to heat the food (i.e., simply supplying the food of
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Burrow[s] at or below ambient room temperature) results in the food being
in the “chunks in jelly” form.
Appellant additionally addresses the Examiner’s reliance on Lagache,
Jones, and Sworn in the Burrows I Rejection. Appeal Br. 9. Appellant
acknowledges that “Lagache, Jones and Sworn . . . [are] evidentiary
references [that] teach the reversible melting of gelatin,” but contends that
they “do not suggest its use in food products, let alone pet food products.”
Id. Appellant’s contentions are not persuasive of error because there is no
dispute that gelatin has the properties asserted by the Examiner. Indeed, as
noted above, Appellant acknowledges that each of Lagache, Jones and
Sworn is evidence of such properties.
Although Appellant contends that “Lagache teaches that gelatin
should not be used in food products,” “Jones . . . does not suggest any use in
food products, let alone a capability of gelatin to allow a pet owner to select
between two different pet food forms for a single product,” and “Sworn is
entirely directed to replacement of gelatin with a modified gellan gum,” this
does not address the rejection. Appeal Br. 9; see also Reply Br. 2–4
(addressing Lagache). The rejection does not modify the teachings of
Burrows concerning the presence of gelatin based on the teachings of
Lagache, Jones, or Sworn. Rather, the Examiner cites Burrows as teaching
gelatin, and simply cites Lagache, Jones, and Sworn as evidence of the
properties of gelatin.
For at least the reasons discussed above, we are not apprised of error
in the Examiner’s decision to reject claims 7, 9, 21–23, 26–30, and 32–34
based on the Burrows Rejections.
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Mao Ground
With respect to the rejection based on Mao, Appellant, again, focuses
solely on claim 7. Appeal Br. 23–25. Appellant contends that “Mao is
entirely directed to meat analogue and a sauce in water, starch and fat, and
this reference does not even suggest that this food product can have two
forms selected by the user, let alone chunks in gravy and chunks in jelly by
the user.” Appeal Br. 23.
The Examiner finds that “Mao discloses the wet pet food comprises a
thermo-reversible composition (sauce, para 0043) comprising gelatin
(gelatine, para 0091)” and that “the wet pet food may be in the form of a
chunks-and-gravy or a chunks-and-jelly product (para 0141).” Final Act. 56.
Appellant’s general allegation regarding a lack of teaching of two forms of
the food that may be selected by the user does not address the specific
findings made by the Examiner concerning the type of food taught and,
therefore, does not apprise us of error.
Appellant further contends that “even if the food product of Mao is
inherently capable of achieving two different forms . . . , the absence of such
a teaching in Mao would have prevented the skilled artisan from providing a
method in which a pet owner selects . . . (i) chunks in jelly and (ii) chunks in
gravy.” Appeal Br. 24.
This, too, is unpersuasive of error. The Examiner finds that “Mao
discloses administering the food to pets in feeding trials (para 0158), which
administered chunk in jelly food (para 0160).” Final Act. 58. Appellant
does not dispute this finding.
The Examiner explains that “[t]he ‘chunks-in-jelly’ represent an
alternative that is required to be selected or administered” and “[t]he ‘chunks
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12
in gravy’ represent a non-selected alternative limitation.” Id. at 55. That is,
as explained above, the claim requires only one selection and administering
that selection. In this case, the Examiner finds that Mao teaches selecting
and administering the “chunks in jelly” form of food. Again, there is no
dispute from Appellant regarding this interpretation of the claim or the
corresponding finding by the Examiner.
Nevertheless, the Examiner additionally finds that “Mao does not
disclose the food is heated.” Final Act. 58. The Examiner cites Heating Up
Can Food for such a teaching and proposes modifying Mao’s teachings to
include heating based on the disclosure of Heating Up Can Food. Id.
Appellant does not dispute this finding or the rationale of the substitution of
one known element for another yielding predictable results. See id.
Appellant additionally states that “Haug is merely directed to oral
chewable capsule enclosing an oil-in-water emulsion, and does not suggest
that the wet food can be prepared by mixing the chunks with the thermo-
reversible hydrocolloid composition.” Appeal Br. 23. It is unclear what, if
any error, Appellant attempts to identify with this allegation. The remaining
contentions regarding Lagache, Jones, and Sworn are similar to those
discussed above relative to those discussed above relative to Burrows
Rejection I and are unpersuasive for the reasons stated above.
For at least the reasons discussed above, we are not apprised of error
in the Examiner’s decision to reject claims 7, 9, 22, 24–29, and 31–33 based
on the Mao Rejection.
CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 9, 21, 26–
28, 34
103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, and Sworn
7, 9, 21, 26–
28, 34

29 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sworn, and
Hankins
29
30 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sworn,
Hankins, and
Hanna
30
32 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sarig, and
Mao
32
33 103 Burrows, Heating
Up Can Food,
Aspen Grove
33
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14
Veterinary Care,
Crane, Lagache,
Jones, Sworn, and
Waldron
34 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sworn,
OFFICIAL
NOTICE, and Saxe
34
7, 9, 21, 22,
26–28
103 Burrows, Ramsey,
Crane, Lagache,
Jones, and Sworn
7, 9, 21, 22,
26–28

21, 23 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sworn and
Pibarot
21, 23
29 103 Burrows, Ramsey,
Crane, Lagache,
Jones, Sworn, and
Pibarot
29
30 103 Burrows, Ramsey,
Crane, Lagache,
Jones, Sworn, and
Hanna
30
32 103 Burrows, Ramsey,
Crane, Lagache,
Jones, Sworn,
Sarig, and Mao
32
33 103 Burrows, Ramsey,
Crane, Lagache,
Jones, Sworn,
Sarig, and Mao
33
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15
7, 9, 21,
26–28
103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, and Sworn
7, 9, 21,
26–28

21, 23 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sworn and
Pibarot
21, 23
29 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sworn, and
Hankins
29
30 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sworn,
Hankins, and
Hanna
30
32 103 Burrows, Heating
Up Can Food,
Aspen Grove
Veterinary Care,
Crane, Lagache,
Jones, Sworn, and
Waldron
32
7, 9, 22, 24–
29, 31–33
103 Mao, Haug,
Heating Up Can
Food, Lagache,
Jones, and Sworn
7, 9, 22, 24–
29, 31–33

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16
Overall
Outcome
7, 9, 21–34

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED