Essler, Alicia

Patent Trials and Appeals Board

Jun 1, 2020

2019004530 (P.T.A.B. Jun. 1, 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.
14/232,707 04/07/2014 Alicia Essler 069269.0300 1035
157352 7590 06/01/2020
Baker Botts L.L.P.
30 Rockefeller Plaza
New York, NY 10112
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
mars.patents@effem.com
nycdocket@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALICIA ESSLER
____________

Appeal 2019-004530
Application 14/232,707
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
DEBRA L. DENNETT, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 16, 17, and 29–32 under 35 U.S.C.
§ 103(a) as unpatentable over Townsend (US 2009/0120372 A1, published
May 14, 2009) in combination with Koo (US 2011/0290197 A1, published
Dec. 1, 2011) and Taylor (US 2012/0240866 A1, published Sept. 27, 2012).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Mars Inc. as the real party in interest
(Appeal Br. 4).
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CLAIMED SUBJECT MATTER
Claim 16 is illustrative of the subject matter on appeal (emphasis
added to highlight key disputed limitations):
16. An edible animal chew comprising a longitudinal axis and
outer surface extending in the longitudinal direction, the outer
surface comprising a plurality of indentations extending the
length of the edible animal chew, each indentation having a
bottom, wherein at least some of the indentations have an
elongate shape having a longitudinal axis, the longitudinal axis
of at least two of the indentations being oriented to be offset at
different angles relative to the longitudinal axis of the edible
animal chew, wherein the outer surface has no more than two
indentations per 15 mm of length measured along the
longitudinal direction of the edible animal chew and wherein the
edible animal chew comprises at least 70% digestible
ingredients.

Appellant makes separate substantive arguments in support of
patentability of claims 17 and 29–32 (see generally Appeal Br. 19–23; Reply
Br. 10). Accordingly, our discussion will focus on the obviousness rejection
of independent claim 16. Claims 17 and 29–32 will be addressed separately.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejection (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
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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); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (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).
Appellant’s main contentions are that (1) Townsend’s ring shape is
not provided as a single individual elongated segment, thus teaching away
from the claimed invention (Appeal Br. 10–12), (2) Townsend’s adjustment
of pet chew size does not disclose or suggest the required number of
indentations per unit of length (Appeal Br. 12–14), (3) modifying
Townsend’s pet chew with Koo’s indentation length would have made
Townsend’s bristle spacing inoperable for its intended use (Appeal Br. 14–
17), and (4) one of ordinary skill in the art would not have combined
Taylor’s reusable chew toy with Townsend’s and Koo’s edible pet chews
(Appeal Br. 17–19). These arguments are reiterated in the Reply Brief.
Appellant also argues that the Examiner has mischaracterized these
arguments as separate attacks against the references individually (Reply Br.
9).
Appellant’s arguments are not persuasive of reversible error for
reasons detailed by the Examiner (Ans. 3–5).
Appellant’s arguments fail to consider the applied prior art as a whole
and the inferences that one of ordinary skill in the art would have made
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therefrom. In particular, one of ordinary skill in the art would have readily
appreciated that Townsend’s ring comprises six single elongated segments
designed to break off individually when one segment is gnawed (see
Townsend ¶ 25).2
Appellant, furthermore, has not shown reversible error in the
Examiner’s position that it would have been obvious for one of ordinary
skill, in view of Townsend’s and Koo’s teachings, to configure the elongated
pet chew with no more than two indentations per 15 mm of length (e.g., Ans.
4). See KSR, 550 U.S. at 417 (the predictable use of known prior art
elements or steps performing the same functions they have been known to
perform is normally obvious; the combination of familiar elements/steps is
likely to be obvious when it does no more than yield predictable results);
Ball Aerosol & Specialty Container, Inc. v. Ltd. 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) (emphasis
omitted).
Appellant’s contention that modifying Townsend’s pet chew with
Koo’s indentation length would have made Townsend’s fracturing

2 Appellant’s argument that Townsend’s ring shape teaches away from
elongated pet chews (e.g., Appeal Br. 10) is thus not persuasive. Whether
the prior art teaches away from the claimed invention is a question of fact.
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well established
that a prior art reference must be considered in its entirety, i.e., as a whole,
when determining if it would lead one of ordinary skill in the art away from
the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983).
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inoperable for its intended use (e.g., Appeal Br. 16) is not persuasive of
reversible error. Appellant has not sufficiently explained how modifying the
space between Townsend’s bristle sections 140 prevents fracturing the chew.
In other words, the Examiner does not propose removing all of Townsend’s
indentations (see Townsend ¶ 30).
Likewise, Appellant’s argument that Koo’s insertable pet chews and
Taylor’s pet chew reusability (e.g., Appeal Br. 14, 18–19) provides a lack of
motivation to combine the cited art is also unpersuasive for the reasons
given above. That is, the arguments fail to account for “the inferences and
creative steps that a person of ordinary skill in the art would employ.” See
KSR, 550 U.S. at 418. Furthermore, the Supreme Court has stated that it is
error to “look only to the problem the patentee [or applicant] was trying to
solve.” KSR, 550 U.S. at 420; see also In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law
does not require that the references be combined for the reasons
contemplated by the inventors.”).
We are likewise unpersuaded by Appellant that the Examiner has
mischaracterized In re Keller, 642 F.2d 413, 425 (CCPA 1981) (e.g., Reply
Br. 8–9). Appellant’s focus on Koo’s dental chew size and Taylor’s chew
toy reuse (e.g., Appeal Br. 14, 18–19) are arguments against these secondary
references individually. See Keller, 642 F.2d at 425 (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art”).
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Appellant, furthermore, has not sufficiently explained why the result
of natural appearance would have been unexpected by one of ordinary skill
in the art (e.g., Appeal Br. 18). It has long been established that differences
in ornamentation are entitled to little weight in determining the obviousness
of a claim to a structure. See In re Seid, 161 F.2d 229, 231 (CCPA 1947).
Any differences in structural significance argued by Appellant (e.g., Appeal
Br. 18) are de minimis over the applied prior art, especially as Appellant’s
Specification stresses that the elongate indentations are meant to be aesthetic
to provide “a product with a particularly natural appearance” (e.g., Spec.
8:30–31).
Accordingly, we sustain the Examiner’s rejection of independent
claim 16.
With respect to separately argued claim 17, Appellant argues that the
Examiner’s proposed edible animal chew would not have resulted in
indentations having an irregular and undulated surface (e.g., Appeal Br. 19–
20). Appellant particularly argues that Townsend’s modified indentations
would not have possessed uneven or imbalanced indentation shapes or
arrangements (Appeal Br. 20).
Appellant’s argument fails to identify reversible error in the
Examiner’s findings that Townsend’s plurality of modified indentations
would have been considered as irregular (Final Act. 3 (citing Townsend’s
Figures 4–6)). Townsend’s Figure 5 shows that the surface of bristle section
140 undulates from surface 116. Townsend’s Figure 6 shows that the
indentations within bristle section 140 do not have an even shape or
arrangement.
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With regard to separately argued claim 29, Appellant argues that the
Examiner’s proposed animal chew would not have consisted of digestible
ingredients (e.g., Appeal Br. 20–21).
The Examiner, however, has made reasoned findings that Townsend’s
pet chew is edible (Final Act. 3). We note that Townsend’s indentations
“increase[] the solubility of the pieces in the dog’s digestive tract”
(Townsend ¶ 30).
Regarding separately argued claim 30, Appellant argues that the
Examiner’s proposed edible animal chew would not have been solid (e.g.,
Appeal Br. 21).
We note, however, that Townsend explicitly discloses that “[p]et
chew 10, 110 may be formed of any solid, edible material suitable for pet
consumption” (Townsend ¶ 37) (emphasis added).
With respect to separately argued claim 31, Appellant argues that the
Examiner’s proposed edible animal chew’s indentations would not have a
depth of from 0.5 cm to 1.5 cm (e.g., Appeal Br. 21–22).
The Examiner, however, has explained that one of ordinary skill in the
art would have looked to Koo’s indentations having a depth of 0.77 cm
because Townsend does not disclose indentation depth (Final Act. 5). Our
reviewing court has “consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.” See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003).
With regard to separately argued claim 32, Appellant argues that the
Examiner’s proposed edible animal chew’s indentations would not have a
plurality of shapes and sizes (e.g., Appeal Br. 22–24).
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For the reasons expressed by the Examiner in the Final Office Action
(e.g., Final Act. 6) and set forth above, adding ornamental indentations
having a plurality of shapes and sizes is entitled to little patentable weight.
See Seid, 161 F.2d at 231.
Accordingly, we sustain the Examiner’s rejection of dependent claims
17 and 29–32.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
16, 17, 29–32 103(a) Townsend, Koo,
Taylor
16, 17, 29–32

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)(1)(iv).

AFFIRMED