Ex Parte Stern et al

Patent Trials and Appeals BoardMay 17, 2019

13749892 - (D) (P.T.A.B. May. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/749,892 01/25/2013 127749 7590 05/21/2019 M&G Spectrum P.O. Box 2903 Minneapolis, MN 55402 FIRST NAMED INVENTOR Mark Stern 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. 04709.0507USI1 7255 EXAMINER HUSON, JOSHUA DANIEL ART UNIT PAPER NUMBER 3642 NOTIFICATION DATE DELIVERY MODE 05/21/2019 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): US PTO 1277 49@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK STERN and PETER B. WHEELER Appeal 2018-002757 Application 13/749,892 Technology Center 3600 Before JOHN C. KERINS, KEN B. BARRETT, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mark Stem and Peter B. Wheeler ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 5, 6, 12-14, and 17. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Spectrum Brands, Inc. is identified as the real party in interest. Appeal Br. 1. 2 Claims 1--4, 7-10, 15, 16, 18, and 19 are withdrawn. Final Act. 1. Appeal2018-002757 Application 13/749,892 THE CLAIMED SUBJECT MATTER Appellants' invention relates to an edible pet chew. Spec. ,r 2. Independent claim 5 and 13, reproduced below, are illustrative of the claimed subject matter. 5. An edible pet chew consisting of: a single sheet of a hardened edible chewable rawhide free and animal hide free material dimensioned large enough and thin enough to be initially malleable for flexing, folding or rolling into a final shape; said single sheet shaped by flexing, folding or rolling before hardening into said final shape; and said single sheet having co-extruded first and second areas with a different appearance or flavor from each other. 13. An edible pet chew comprising: a co-extruded sheet of hardened edible chewable material dimensioned large enough and thin enough to be initially malleable for flexing, folding or rolling into a final shape; a first section of said co-extruded sheet having a first appearance or first flavor; a second section of said co-extruded sheet having a second appearance or second flavor; and said co-extruded sheet being shaped by flexing, folding or rolling before hardening into said final shape. REJECTIONS 3 1) The Examiner rejected claims 5, 6, 12-14, and 17 under 35 U.S.C. Â§ 102(b) as anticipated by Greene (US 4,419,372, issued Dec. 6, 1983). 2) The Examiner rejected claims 5, 13, 14, and 17 under 35 U.S.C. 3 Appellants contest the Examiner's objection to claims 6 and 12. Appeal Br. 7; Final Act. 3. This is a petitionable matter not properly before us for review. 2 Appeal2018-002757 Application 13/749,892 Â§ I02(b) as anticipated by Axelrod (US 2005/0153040 Al, published July 14, 2005). 3) Claims 13, 14, and 17 are rejected under 35 U.S.C. Â§ I02(b) as unpatentable over Greene and Sherrill (US 5,673,653, issued Oct. 7, 1997). DISCUSSION Rejection 1 The Examiner found that Greene teaches all of the limitations of independent claims 5 and 13 including a "single sheet having co-extruded first and second areas with a different appearance or flavor from each other (See Example 1 Line 40-55 'the bone was blasted [with walnut shells] on one side only.')" Final Act. 4. Appellants contend that Greene does not anticipate because Greene's "product is not produced by a co-extrusion process." Appeal Br. 8 (citing Greene 2:55---63). Appellants argue that "[a] person of ordinary skill in the art reading pending claims 5 and 13 would understand that a recited feature of the claimed pet chews is that they possess two separate co-extruded areas of distinct appearance or flavor" and that "Greene teaches extrusion of a single material: 'this mix [ a single composition] was extruded as a light tan, pliable product."' Id. at 8-9 ( citing Greene, 6:42). The Examiner responds that the references to "co-extruded" in claim 5 and claim 13 are product by process limitations. Ans. 4--5. According to the Examiner, "the product as taught by Greene is substantially identical to Appellants claimed edible pet chew" and asserts that "the burden shifts to the Appellants to show an unobvious difference." Id. at 5 ( citing MPEP Â§ 3 Appeal2018-002757 Application 13/749,892 2113 II). The Examiner also asserts that Appellants have not produced "evidence establishing an unobvious different[ sic] between the claimed product and the prior art." Id. In the Reply Brief, Appellants argue that neither claim 5 nor claim 13 contain product by process limitations but rather describe "distinct structural characteristics of the product" due to the use of the past tense "co-extruded." Reply Br. 4 (citing Hazani v. US. Int'! Trade Comm 'n, 126 F. 3d 1473, 1479 (Fed. Cir. 1997); In re Garnero, 412 F.2d 276, 279 (CCPA 1969)). For the following reasons, we do not sustain this rejection. Appellants' Specification describes a "co-extruded sheet" as having "two layers" or "multiple sheets." Spec. ,r,r 9, 54. Appellants' Figure 11 illustrates a co-extruded sheet with two layers 612 and 614. Id. Fig. 11, ,r 54. Appellants' Specification also describes "a single extruded sheet 810" having one layer. Id. ,r 54, Fig. 14. Greene discloses an extruded layer that is "treated by impacting the surface thereof with particles until a leather-like appearance is achieved" after "it exits the extruder." Greene, 2:55-62. Greene further discloses a "mix ... extruded as a light tan pliable product. This product was then immediately fed into a blasting apparatus, where it was blasted with walnut shells." Id. 6:41--43. Because Greene's surface treatment occurs after extrusion, the Examiner's findings that Greene discloses "co-extruded first and second areas" as recited in claim 5 and "a coextruded sheet" as recited in claim 13 are not supported by a preponderance of the evidence, nor has the Examiner explained adequately why "the product as taught by Greene is substantially identical to Appellants claimed edible pet chew." See Ans. 5. In particular, the Examiner has not explained adequately how walnut blasting yields a product having different 4 Appeal2018-002757 Application 13/749,892 areas of appearance in a manner like that of two areas of a single sheet formed by co-extrusion. Therefore, we do not sustain the rejection of claims 5 and 13 as anticipated by Greene. We also do not sustain the rejection of claims 6 and 12 which depend from claim 5 and claims 14 and 17 which depend from claim 13 for the same reasons. Rejection 2 The Examiner found that Axelrod discloses a "single sheet having co- extruded first and second areas" as recited in claim 5 and "a co-extruded sheet" as recited in claim 13. Final Act. 5 (citing Axelrod, ,r,r 37-38). Appellants contend that there is no disclosure in Axelrod of "a co-extruded pet chew." Appeal Br. 14. The Examiner responds that the "co-extruded limitations" are not given patentable weight and, further, according to the Examiner, Appellants ignore paragraph 3 8 of Axelrod. Ans. 9-10. The Examiner asserts that paragraph 3 8 of Axelrod discloses "the exact claimed product and the exact same method of manufacture of such a product according to claims 5, 13-14 and 17." Id. at 9-10. In the Reply Brief, Appellants argue that Axelrod "does not discuss extrusion." Reply Br. 8. For the following reasons, we do not sustain this rejection. Axelrod discloses an animal chew "formed by rolling a mixture of binder and base material into a sheet." Axelrod, Abstract. We appreciate the Examiner's reference to paragraph 38 of Axelrod that discloses "a layer of a second material may be laminated on or consolidated with the produced sheetstock. Such second layer may include a composition with different components than a first sheet layer." Id. ,r 38. We note, however, that Axelrod also discloses that "the preferred screw/auger type conveyor does not contain a die nor does it develop pressure within a barrel as in 5 Appeal2018-002757 Application 13/749,892 conventional extrusion." Id. ,r 21. Consequently, we determine that the Examiner's finding that Axelrod discloses "the exact claimed product" recited in claims 5 and 13 is not supported by a preponderance of the evidence because it is not clear that the product resulting from the process described in paragraph 3 8 of Axelrod is a "single sheet having co-extruded first and second areas" required by claim 5 or is, or has the properties of, "a co-extruded sheet" required by claim 13, or whether the product is even extruded. Therefore, we do not sustain the rejection of claims 5, 13, 14, and 1 7 as anticipated by Axelrod. Rejection 3 The Examiner found that Greene discloses "a coextruded sheet" as required by claim 13. Final Act. 7. The Examiner relied on Sherrill for disclosing a co-extruded sheet having a first section with a first appearance or first flavor and a second section having a second appearance or second flavor. Id. The Examiner concluded that it would have been obvious to one of ordinary skill in the art "to have provided the sheet as taught by Greene ... with the first and second section having different appearance or flavor as taught by Sherrill to provide the treat with specific locations, sections and layers of flavor to entice the animal." Id. As discussed above in connection with Rejection 1, we determine that the Examiner's finding that Greene discloses a co-extruded sheet as required by claim 13 is not supported by the requisite preponderance of the evidence. The Examiner does not rely on Sherrill to cure this deficiency in Greene. Consequently, this rejection is based on an erroneous factual finding and the conclusion of obviousness cannot stand. See In re Warner, 379 F .2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal conclusion of obviousness 6 Appeal2018-002757 Application 13/749,892 must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand."). Therefore, we do not sustain the rejection of claims 13, 14, and 17 as unpatentable over Greene and Sherrill. DECISION The Examiner's decision rejecting claims 5, 6, 12-14, and 17 is reversed. REVERSED 7