2020005846 (P.T.A.B. Oct. 21, 2021)

Xiang Chen

Patent Trials and Appeals BoardOct 21, 2021

2020005846 (P.T.A.B. Oct. 21, 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. 15/474,265 03/30/2017 Xiang Chen 1910-003 3113 97500 7590 10/21/2021 Mestechkin Law Group PC Oleg Mestechkin 1733 Sheepshead Bay Rd Suite 29 Brooklyn, NY 11235 EXAMINER SAYALA, CHHAYA D ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 10/21/2021 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): antonio123987@gmail.com eofficeaction@appcoll.com om@lawmlg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIANG CHEN Appeal 2020-005846 Application 15/474,265 Technology Center 1700 Before MAHSHID D. SAADAT, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1–9.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Xiang Chen as the real party in interest. Appeal Br. 1. Appeal 2020-005846 Application 15/474,265 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to an edible pet chew. Spec. ¶ 1. In particular, the Specification describes a pet chew including primarily a plant material while adding meat in a sufficient amount to make the chew desirable to dogs. Id. ¶ 5. Claim 1 is illustrative, and we reproduce it below while emphasizing key language: 1. A pet chew comprising: an elongated base having a first end, a second end, a top outer surface, and a bottom outer surface; a recessed area positioned essentially in a middle of the top outer surface and having an essentially straight-line shape, wherein the recessed area: originates at the first end, runs along an entire length of the top outer surface, and terminates at the second end; and a meat pulp material located in a cavity of the recessed area. Appeal Br. 9 (Claims App.) (emphasis added). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Reference Date Anderson et al. (“Anderson ’420”) US 6,277,420 B1 Aug. 21, 2001 Anderson et al. (“Anderson ’260”) US 2004/0219260 A1 Nov. 4, 2004 2 In this Decision, we refer to the Final Office Action dated December 30, 2019 (“Final Act.”), the Appeal Brief filed April 24, 2020 (“Appeal Br.”), the Examiner’s Answer dated June 10, 2020 (“Ans.”), and the Reply Brief filed August 10, 2020 (“Reply Br.”). Appeal 2020-005846 Application 15/474,265 3 Townsend et al. (“Townsend”) US 2005/0181097 A1 Aug. 18, 2005 Carrillo et al. (“Carillo”) US 2013/0029011 A1 Jan. 31, 2013 REJECTIONS The Examiner maintains the following rejections on appeal: A. Claims 1–9 under 35 U.S.C. § 112 as indefinite. Ans. 3–5. B. Claims 1–9 under 35 U.S.C. § 103 as obvious over Anderson ’260, Anderson ’420, Townsend, and Carillo. Id. at 5.3 OPINION Rejection A. The Examiner rejects claims 1–9 under 35 U.S.C. § 112 as indefinite. Ans. 3. “[A] claim is indefinite when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The Examiner has two bases for this rejection. First, the Examiner determines that claim 1’s recitation of “meat pulp material” makes the claim unclear as to whether or not the claim is directed to a wet or dry product. Second, the Examiner determines that claim’s recitation that the “recessed 3 In the explanation of the rejection, the Examiner uses only Anderson ’260 to address claims 1–5 and 9. Ans. 5–7, 9. The Examiner additionally refers to Anderson ’420 and Townsend to address claim 6. Id. at 7–8. The Examiner refers to Carillo and Townsend to address claims 7 and 8. Id. at 8– 9. Appeal 2020-005846 Application 15/474,265 4 area” has “an essentially straight-line shape” is unclear. We address each point below. First, with respect to claim 1’s recitation of “pulp,” Appellant emphasizes that the Specification refers to “meat pulp material” at various stages of pet chew drying processes. Appeal Br. 5. Of most importance here, the Specification implies that meat pulp material may be wet or dry by stating the following: [T]he meat pulp material is a pulp comprising, prior to drying and in weight percentages: fresh chicken 80%, wheat flour 9%, glycerin 10.9%, and potassium sorbate 0.1%. Spec. ¶¶ 20, 22 (explaining process including drying step). By referring to the meat pulp material “prior to drying,” the Specification suggests that the meat pulp material may be wet (before drying) or dry (after drying). A person of skill in the art would interpret claim 1 with this context in mind and would understand that claim 1’s recited “meat pulp material” could be wet or could be dry. Although claim 1 is broad in this respect, the “meat pulp material” recitation does not make the claim unclear. See In re Miller, 441 F.2d 689, 693 (CCPA 1971) (“Breadth is not to be equated with indefiniteness.”). We, thus, do not sustain the Examiner’s indefiniteness rejection based on the “meat pulp material” recitation. Second, with regard to claim 1’s recitation of the recessed area “having an essentially straight-line shape,” Appellant argues that Figure 1 illustrates a straight-line shape along the length of base 10 and that a person of skill in the art “would easily comprehend the meaning of the ‘straight- line’ shape of the recess 12.” Appeal Br. 5–6. We reproduce Figure 1 of the Specification below. Appeal 2020-005846 Application 15/474,265 5 Figure 1 above is a schematic view of one embodiment of a pet chew. Spec. ¶ 16. Figure 1 illustrates a bone-shaped pet chew 1 having meat pulp material 20 within indentation or recess 12. Spec. ¶ 18. Base 10 is on both sides of indentation or recess 12. Id. The Examiner responds to Appellant’s reliance on Figure 1 by explaining that a “straight-line has no shape.” Ans. 12. Here, the Examiner has the better position. The plain meaning of a straight-line suggests only two dimensions—i.e., two points in space connected. A rectangle, for example, is a shape. A straight-line is not. A person can draw a straight line through an oval, rectangle, triangle, or bone shape. But which of these are “essentially straight-line shape[s]”? Would perhaps a skinny bone qualify but not a fat bone? The Specification provides no guidance; rather, the term “straight- line” appears only in claim 1. Even if we presume that the shape drawn in Figure 1 is “essentially a straight-line shape” (despite the Specification never stating as much), a person of skill in the art would not know what other shapes could also qualify as an “essentially straight line shape.” Because of this lack of clarity, a person of skill in the art could not reasonably ascertain what pet chews are within the scope of claim 1 and which are not. We, therefore, sustain the Examiner’s indefiniteness rejection based on the “essentially straight-line shape” recitation. Appeal 2020-005846 Application 15/474,265 6 Rejection 2, obviousness. The Examiner rejects claims 1–9 under 35 U.S.C. § 103 as obvious over Anderson ’260 in view of Anderson ’420, Townsend, and Carillo. Ans. 5. The Examiner relies on Anderson ’260 to reject claim 1. Id. at 6. The Examiner finds that Anderson ’260 teaches, among other things, “a recessed area . . . having an essentially straight-line shape” as claim 1 recites. Id. The Examiner refers to Figure 1 of Anderson which we reproduce below. Anderson Figure 1 above is an isometric view of a preferred embodiment of its foodstuff containing a moist meaty filling. Anderson ’260 ¶ 42. Figure 1 shows “a recessed cavity containing a shelf stable moist meaty filling 5. Id. ¶ 51. Appellant argues that Anderson ’260’s recessed area is a dog bone shape rather than an “essentially straight-line shape” as claim 1 requires. Appeal Br. 7–8. The Examiner responds that one may draw a straight line at one end of Anderson’s bone shaped recess to the other end and that the recessed area, thus, has an essentially straight-line shape. Ans. 13–14. Appellant’s and the Examiner’s respective positions further illustrate that claim 1’s recitation of an “essentially straight-line shape” is too unclear. On Appeal 2020-005846 Application 15/474,265 7 the present record, we cannot determine whether or not the recessed elongated bone shape of Anderson ’260 is an essentially straight-line shape or not. Because the ambiguity of Appellant’s claims (claim 1 and claims depending from claim 1) makes it impossible to compare the scope of the claims to the prior art, we procedurally reverse the Examiner’s obviousness rejection without assessing its merits. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions.”).4 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9 112(b) Indefiniteness 1–9 1–9 103 Anderson ’260, Anderson ’420, Townsend, Carillo 1–9 Overall Outcome 1–9 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 4 In the event of further prosecution, the Examiner and Appellant may wish to consider whether difference in shape, in the present context, is mere design choice. See, e.g., In re Dailey, 357 F.2d 669, 672–673 (CCPA 1966) (holding that claimed bottle’s configuration was not “anything more than one of numerous configurations that a person of ordinary skill in the art would find obvious” absent evidence of significance of the configuration).