Ex Parte CHEN et al

Patent Trial and Appeal BoardApr 15, 2016

13306009 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/306,009 11129/2011 23280 7590 04/19/2016 Davidson, Davidson & Kappel, LLC 589 8th A venue 16th Floor New York, NY 10018 FIRST NAMED INVENTOR ZuxiCHEN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 675.1003 1059 EXAMINER SAY ALA, CHHAYA D ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 04/19/2016 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): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZUXI CHEN and ZUHUA CHEN1 Appeal2014-007009 Application 13/306,009 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's maintained final rejection of claims 1-16. We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. 1According to Appellants, the Real Party in Interest is Wenzhou Yuxiang Pet Product Co. App. Br. 2. Appeal2014-007009 Application 13/306,009 CLAIMED SUBJECT MATTER Appellants' claimed invention is directed to a pet chew in which an outer layer-that includes bone powder-and an inner layer are laminated, rolled into a cylindrical shape, and knotted at both ends. Spec. Abstract. Claim 1 is illustrative: 1. A pet chew comprising: an outer layer; and an inner layer, the outer and inner layers being laminated and rolled into a cylindrical shape having knots at both ends, the outer layer including bone powder. REJECTION The Examiner maintains the final rejection of claims 1-16 under 3 5 U.S.C. Â§103(a) as obvious over Sherrill (US 5,673,653, issued October 7, 1997) in view of Shu (US 2005/0266146 Al, published December 1, 2005), Tepper et al. (US 2008/0145485 Al, published June 19, 2008) ("Tepper"), Filipi et al. (US 2009/0235872 Al, published September 24, 2009) ("Filipi"), Derrieu et al. (US 2006/0141105 Al, published June 29, 2006) ("Derrieu"), Barbieux (EP 0796565 Al, published September 24, 1997),2 Wang (US 6,455,083 Bl, issued September 24, 2002), and Stem (US 2008/0118606 Al, published May 22, 2008). DISCUSSION Having reviewed the Examiner's obviousness rejection in light of arguments advanced by Appellants in the Reply and Appeal Briefs, we are 2 Although Barbieux was not published in English, and an English translation of only the abstract is of record, Appellants do not contest the Examiner's reliance on this reference. App. Br. 3-8. 2 Appeal2014-007009 Application 13/306,009 not persuaded that the Examiner erred reversibly in concluding that claims 1-16 are unpatentable for obviousness. We add the following for emphasis. 3 Claims 1-5 and 13 Appellants argue claims 1-5 and 13 as a group on the basis of claim 1, to which we limit our discussion. App. Br. 3-5. To prevail in an appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner's rejection. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365- 66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to make a prima facie case, it has long been the Board's practice to require an appellant to identify the alleged error in the examiner's rejection); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009) ("the burden of showing that the error is harmful normally falls upon the party attacking the agency's determination.'} The Examiner finds that Sherrill discloses chew toys for dogs that are prepared by rolling superimposed rawhide and jerky sheets, and knotting the rolled sheets at both ends, resulting in a chew toy having an outer rawhide layer and an inner jerky layer. Ans. 2. The Examiner acknowledges that Sherrill does not disclose that the outer rawhide layer of the chew toy includes bone powder, and to remedy this deficiency in Sherrill, relies on Filipi' s disclosure of a pet chew having an outer layer comprising grains and powdered, ground rawhide, Derrieu's disclosure of an edible, chewable 3 We refer to the Final Office Action (mailed September 10, 2013), the Appeal Brief (filed January 21, 2014 ), the Examiner's Answer (mailed April 9, 2014), and the Reply Brief (filed June 4, 2014). 3 Appeal2014-007009 Application 13/306,009 object for pets comprising an abrasive agent such as bone powder, and Barbieux's disclosure of a pet chew comprising a chewable base material that includes at least 4% bone meal. Ans. 2-3. The Examiner determines that it would have been obvious to replace the outer rawhide layer of Sherrill' s chew toy with the outer rawhide containing layer of Filipi' s pet chew that is modified to include bone powder, as suggested by Derrieu and Barbieux. Ans. 3, 9-11. The Examiner reasons that one of ordinary skill in the art would have known that bone powder would provide pets with incentive to chew the toy for a longer time, would impart abrasive properties to the chew toy, and would provide a nutritional source for calcium. Ans. 3, 10. Appellants argue that the Examiner does not provide clear reasoning as to why it would have been obvious to modify the outer layer of Sherrill' s chew toy to include bone powder in view of the disclosures of Filipi, Derrieu, and Barbieux. App. Br. 4. However, contrary to Appellants; arguments, the Examiner does articulate a clear rationale for modifying Filipi's outer rawhide containing layer of pet chew, as suggested by Derrieu and Barbieux, to include bone powder and for using such modified outer rawhide containing layer of Filipi' s pet chew as the outer layer of Sherrill' s chew toy, as recited in claim 1, namely, to provide, inter alia, a nutritional source of calcium. Ans. 3. Appellants do not dispute the Examiner's finding that the proposed modification of the applied prior art would provide a nutritional benefit. App. Br. 3-8. It follows that Appellants do not identify or explain any error in at least this basis for the Examiner's proposed modification of the applied prior art. We accordingly find Appellants' argument to be without persuasive merit. 4 Appeal2014-007009 Application 13/306,009 Appellants further argue that there is no factual basis for the Examiner's assertion that bone meal would provide incentive for pets to chew the toy for a longer time because bone meal is "much less durable than the rawhide of Sherrill." App. Br. 4-5. However, Appellants' assertion that bone meal is much less durable than rawhide is not supported by the applied prior art or any other evidence of record, and Appellants' mere arguments to that effect cannot take the place of evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, Appellants do not direct us to any evidence to show that one of ordinary skill in the art would not have been led, in view of the combined disclosures of the applied prior art, to include bone powder in the rawhide containing outer layer of a pet chew as proposed by the Examiner. App. Br. 3-8. We accordingly find Appellants' arguments to be unpersuasive of reversible error, and therefore sustain the Examiner;s rejection of claims 1-5 and 13. Claims 6, 15, 16 Claim 6, which depends from claim 1; claim 15, which depends from independent claim 14; and independent claim 16 each require, inter alia, a pet chew to comprise an outer layer that is free of rawhide. The Examiner finds that Shu discloses a chew toy for dogs that comprises an outer meat layer, such as chicken breast meat. Ans. 4. The Examiner finds that Tepper similarly discloses a pet treat having an outer layer made of meat, such as chicken or beef. Ans. 4; Tepper i-f 13. The Examiner further finds that Stem discloses an edible pet chew having an outer layer of substantially over 50 % plant material, and an inner layer made of meat jerky. Ans. 4; Stem Fig. 2, i-fi-127-30. Based on these disclosures, as well as the disclosures of Sherrill, 5 Appeal2014-007009 Application 13/306,009 Filipi, Derrieu and Barbieux discussed above, the Examiner finds that it was known in the art at the time of the invention to use rawhide, meat, or vegetable material as the outer layer of a pet chew, and determines that to select one material over the other to produce a pet chew having an outer meat layer and an inner jerky layer "is not seen as being inventive but as being obvious to one of ordinary skill in the art and within the realm of the routine worker." Ans. 6-8. Appellants argue that the Examiner does not provide a reason to modify Sherrill and/or Filipi to have an outer layer that is free of rawhide. App. Br. 5. However, we find this argument unpersuasive in light of the Examiner's uncontroverted findings that Shu and Tepper both disclose pet chews having outer meat layers, which are thus free of rawhide, and the Examiner's undisputed finding that Stem discloses an outer layer having greater than 50 % plant material. Ans. 6-7. We agree with the Examiner that the disclosures of these references, in combination with the other prior art references relied on by the Examiner, reasonably would have led one of ordinary skill in the art, through no more than ordinary skill and creativity, to a pet chew having an outer layer having rawhide as well as an outer layer free of rawhide, as recited in claims 6, 15, and 16. See, e.g., Dystar Textilfarben GmbH & Co. Deutschland KG v. CH Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (The "suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense."); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ"). Appellants argument does not identify or explain 6 Appeal2014-007009 Application 13/306,009 any error in the Examiner's reasoning, and the Examiner's basis for the proposed modification of the applied prior art, and we accordingly find Appellants' argument to be without persuasive merit. Appellants also argue that "it is not even clear what references are being used in the rejection to these claims." App. Br. 5. However, the Final Rejection and the Answer both clearly state that claims 1-16 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sherrill, Shu, Tepper, Filipi, Derrieu, Barbieux, Wang, and Stem (Final Act. 2; Ans. 2), and the Examiner accordingly rejects claims 6, 15, and 16 over a combination of these references. We therefore sustain the Examiner's rejection of claims 6, 15, and 16. Claim 7 Claim 7 depends from claim 1 and requires bone powder to constitute 5 to 15 % by weight of the outer layer of the pet chew. The Examiner finds that Barbieux discloses a pet chew comprising meat, starch, and at least 4 % bone meal. Ans. 5. The Examiner determines that the amount of bone meal in a pet chew affects level of nutritional calcium present, and affects how abrasive the pet chew is, and concludes that the level bone meal in a pet chew is therefore a result-effective variable, which one of ordinary skill in the art would have found obvious to optimize. Id. Appellants argue that there is no disclosure in the applied prior art of bone powder constituting 5 to 15 % of the outer layer of a pet chew. App. Br. 5. However, we find that the combined disclosures of the applied prior art, including Barbieux' s disclosure of a pet chew comprising at least 4 % bone meal, would have suggested a pet chew comprising the recited range of bone powder, within the meaning of 35 U.S.C. Â§ 103(a). In re Peterson, 315 7 Appeal2014-007009 Application 13/306,009 F.3d 1325, 1329-330 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness .... "). Because Appellants do not provide persuasive evidence demonstrating the criticality of the recited range of bone powder content (App. Br. 3-8), we are unpersuaded of reversible error in the Examiner's rejection of claim 7 under 35 U.S.C. Â§ 103(a). In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.). Moreover, Appellants do not dispute the Examiner's finding that the level of bone meal in a pet chew is a result-effective variable (App. Br. 3-8), and we therefore agree with the Examiner that one of ordinary skill in the art reasonably would have been led by the combined disclosures of the applied prior art to optimize the level of bone powder in the outer layer of a pet chew, and would have arrived at the optimal volume, such as that claimed, through nothing more than routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). 8 Appeal2014-007009 Application 13/306,009 Claims 8-10 and 12 Claims 8-10 and 12 all depend directly or indirectly from claim 1. Claim 8 requires 50% or more of the total weight of the outer layer of the pet chew to be from animal sources, and claims 9 and 10 require the animal sources to include fresh meet constituting 20 to 30 % by weight of the outer layer of the pet chew. Claim 12 requires 25 to 50 % of the outer layer of the pet chew to be vegetable material. With respect to claim 8, the Examiner finds that the combined disclosures of the applied prior art, including Shu and Tepper's disclosures of chew toys and pet treats, respectively, having outer meat layers, would have suggested using an outer meat layer as the outer layer of a pet chew. Ans. 4. With respect to claims 9, 10, and 12, the Examiner's findings include that it would have been within the ambit of one of ordinary skill in the art to determine appropriate levels of meat and vegetable material in layers of a pet chew, including the outer layer, in view of the combined disclosures of the applied prior art, including Shu and Tepper's disclosures of outer meat layers, Filipi' s disclosure of an outer layer comprising a combination of animal and vegetable materials, and Stem's disclosure of an outer layer of substantially over 50 % plant material. Ans. 4--8. With respect to claims 8-10, Appellants argue that Sherrill teaches away from replacing the outer rawhide layer with a meat layer because Sherrill discloses that rawhide chew toys that have been basted in a hickory- flavored marinade, or coated in a cheese-flavored substance, stain carpets and have odors that are undesirable to humans. App. Br. 5-7. However, although Sherrill does disclose disadvantages associated with basting rawhide chew toys in a flavored marinade, and coating rawhide chew toys in 9 Appeal2014-007009 Application 13/306,009 a cheese-flavored substance (col. 1, ll 55-65), Sherrill does not criticize or disparage coating a pet chew with an outer meat layer. We thus find that Sherrill's disclosure of the disadvantages of basting a rawhide chew in a hickory-flavored marinade, or coating the chew with a cheese-flavored substance, would not have discouraged one of ordinary skill in the art from coating a pet chew with a meat layer as suggested by Shu and Tepper to provide a meat flavor. Accordingly, Sherrill does not teach away from a pet chew in which the total weight of the outer layer from animal sources is 50% or more, as recited in claim 8, and does not teach away from a pet chew in which the outer layer includes fresh meet constituting 20 to 30 % by weight of the outer layer, as recited in claims 8-10. In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004) ("[t]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed''); In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994). Appellants do not provide any evidence or explanation demonstrating that one of ordinary skill in the art could not have successfully replaced Sherill's outer rawhide layer with a meat layer as suggested by Shu and Tepper, nor do Appellants identify any persuasive evidence establishing that one of ordinary skill in the art would have been discouraged from making such a substitution. App. Br. 3-8. We accordingly find Appellants' arguments to be unpersuasive of reversible error. With respect to claim 12, Appellants argue that Stem teaches away from a pet chew having an outer layer that includes 25 to 50 % vegetable material because Stem discloses an outer layer that is over 50 % plant material, rather than 25 to 50 % plant material as recited in claim 12. App. 10 Appeal2014-007009 Application 13/306,009 Br. 7. However, Stem's disclosure of an outer layer having substantially over 50 % plant material does not criticize or disparage an outer layer having 25 to 50 % vegetable material. In addition, Stem's disclosure of an outer layer having substantially over 50 % plant material would have discouraged one of ordinary skill in the art from producing a pet chew having an outer layer constituting 25 to 50 % vegetable material, as suggested by Filipi (Filipi Â§ 20). App. Br. 3-8. Accordingly, Stem does not teach away from a pet chew having an outer layer constituting 25 to 50 % vegetable material, as recited in claim 12. In re Fulton, 391 F.3d at 1201; In re Gurley, 27 F.3d at 552-53. Moreover, Stem recognizes that the level of vegetable material in the outer layer of a pet chew affects the nutritional value of the layer (Stem i-f 38), and the level of vegetable material in this layer is therefore a result- effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property [or a result] is affected by the variable is sufficient to find the variable result-effective."); In re Urbanski, 809 F.3d 1237, 1242 (Fed. Cir. 2016). Thus, the Examiner does not err in finding that optimizing the amount of vegetable material in the outer layer of a pet chew would have been within the level of ordinary skill in the art. Ans. 5---6. In re Boesch, 617 F.2d at 276 ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d at 456 ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). Moreover, Appellants do not provide any evidence or explanation establishing the criticality of 25 to 50 % vegetable material in the outer layer 11 Appeal2014-007009 Application 13/306,009 of a pet chew, as recited in claim 12. App. Br. 3-8. In re Woodruff, 919 F.2d at 1578. Accordingly, Appellants' arguments are unpersuasive of reversible error. Claim 11 Claim 11 depends from claim 1 and requires the outer layer of the pet chew to include edible glycerin constituting 10 to 20 % by weight of the outer layer. The Examiner finds that Wang discloses including up to 20 % by weight of glycerol in an edible pet chew. Ans. 5. The Examiner further finds that glycerol is commonly used in the pet chew art as a humectant, and determines that it would have been obvious to the skilled artisan to include glycerol in pet chews in result-effective amounts. Ans. 5. Appellants argue that the Examiner does not provide a reason to modify Sherrill or Filipi in view of Wang's disclosures, and further argue that the range of glycerin recited in claim 11 would not have been "obvious in the Sherrill 100% rawhide outer layer." App. Br. 7. However, Appellants do not challenge the Examiner's official notice that glycerol is commonly used in the pet chew art as a humectant, and since this finding is reasonable, we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). We accordingly agree with the Examiner that glycerol's known, common use in pet chews as a humectant, and Wang's disclosure of including up to 20 % glycerol in an edible pet chew, reasonably would have led one of ordinary skill in the art, through no more than ordinary skill and creativity, to include an appropriate amount of glycerol in the pet chew of Shiller as modified by the secondary references, such as the amount of glycerin recited in claim 11, to help the pet chew 12 Appeal2014-007009 Application 13/306,009 retain moisture. In re Peterson, 315 F.3d at 1329-330 ("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness . . . . "). We are therefore not persuaded of reversible error in the Examiner's rejection of claim 11, and sustain the Examiner's rejection of this claim. Claim 14 Appellants argue that the "actual claim language and limitations of claim 14, an independent claim, are simply not addressed by the Office Action. Applicant cannot determine what references are being used against claim 14, or what the factual basis for the rejection is." App. Br. 7-8. However, as discussed above, the Final Rejection and the Answer both clearly state that claims 1-16 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sherrill, Shu, Tepper, Filipi, Derrieu, Barbieux, Wang, and Stem (Final Act. 2; Ans. 2), and the Examiner accordingly makes clear that claim 14 is rejected over a combination of these references. In addition, the Examiner indicates in the Answer that the grounds of rejection set forth for claim 16 apply to claim 14 (Ans. 6), and also specifically addresses the limitations of claim 14, and sets forth the factual basis for the rejection of this claim. Ans. 13, 16. Appellants' argument is therefore without persuasive merit. DECISION The Examiner's rejection of claims 1-16 under 35 U.S.C. Â§ 103(a) is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). 13 Appeal2014-007009 Application 13/306,009 AFFIRMED 14