Mars, Incorporated

Patent Trials and Appeals BoardMay 24, 2021

2020005584 (P.T.A.B. May. 24, 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. 15/047,451 02/18/2016 Peter Slusarczyk BRN0218 US 6434 132446 7590 05/24/2021 Mars, Inc. c/o Mars Petcare Theresa Shearin 2013 Ovation Parkway Franklin, TN 37067 EXAMINER MOORE, WALTER A ART UNIT PAPER NUMBER 3619 NOTIFICATION DATE DELIVERY MODE 05/24/2021 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): becca.barnett@effem.com mars.patents@effem.com theresa.shearin@effem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER SLUSARCZYK, SIJON-PAUL CONYER, DAVID PORTER, NIGEL HARPER, PRESTON BUFF, VINOD GUMUDAVELLI, WALTER TURNER, and LAURIE CHAPPELET Appeal 2020-005584 Application 15/047,451 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, LISA M. GUIJT, and LEE L. STEPINA, Administrative Patent Judges. HOELTER, 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 1, 4, 6, 7, 16, 17, and 19–21, which constitute all the claims pending in this application. See Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “MARS, Incorporated.” Appeal Br. 2. Appeal 2020-005584 Application 15/047,451 2 We AFFIRM the Examiner’s rejections of these claims. CLAIMED SUBJECT MATTER The disclosed subject matter pertains to a food product comprising “an encapsulate material surrounding a liquid-based substance, and a coating comprising a solid food material surrounding at least a portion of the encapsulate material.” Spec. ¶ 5. Product claims 1 and 16 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A food product comprising: a. a single liquid core comprising a liquid-based substance, wherein the liquid-based substance comprises a component selected from the group consisting of oil, water, or a combination thereof; b. a layer of an encapsulate material surrounding and containing the liquid core; and c. a coating comprising a solid food-material surrounding at least a portion of the layer of encapsulate material, wherein the solid food material is a dry kibble comprising fiber, moisture, fat and protein and having a moisture content of less than about 10%. EVIDENCE Name Reference Date Gumkowski et al. (“Gumkowski”) US 2003/0022944 A1 Jan. 30, 2003 Leech et al. (“Leech”) US 2005/0079264 A1 Apr. 14, 2005 Kalidindi US 2009/0149362 A1 June 11, 2009 Lee US 2010/0087481 A1 Apr. 8, 2010 Gaserod et al. (“Gaserod”) US 2011/0059166 A1 Mar. 10, 2011 Knueven US 2012/0301580 A1 Nov. 29, 2012 Nadeau et al. (“Nadeau”) US 2014/0242228 A1 Aug. 28, 2014 Appeal 2020-005584 Application 15/047,451 3 Leeker et al. (“Leeker”) US 2016/0023809 A1 Jan. 28, 2016 Cole Ewart T. Cole, Liquid filled and sealed hard gelatin capsules, 2000, Capsugel Product Sheet, Capsugel Library, pp. 1–12 2000 REJECTIONS2 Claims 1, 4, 7, 16, and 19–21 are rejected under 35 U.S.C. § 103 as unpatentable over Leech, Lee and/or Gumkowski, and optionally in view of Knueven, Nadeau, Kalidindi, and Leeker. Claims 1, 4, 7, 16, and 19–21 are rejected under 35 U.S.C. § 103 as unpatentable over Lee and/or Gumkowski, Leech, and optionally in view of Knueven, Nadeau, Kalidindi, and Leeker. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over either one of Leech, Lee and/or Gumkowski, and optionally in view of Knueven, Nadeau, Kalidindi, and Leeker OR Lee and/or Gumkowski, Leech, and optionally in view of Knueven, Nadeau, Kalidindi, and Leeker, and further in view of Cole. Claim 173 is rejected under 35 U.S.C. § 103 as unpatentable over either one of Leech, Lee and/or Gumkowski, and optionally in view of 2 The Examiner has withdrawn the double-patenting rejecting of all the claims as well as the rejection of claims 1, 4, 6, 7, and 20 as being indefinite. See Ans. 24. 3 The Examiner also lists claim 7 under this rejection but the Examiner identifies a reliance on the previous rejection of “claims 1, 4, 7, 16, and 19- 21” as support. Final Act. 18. We thus consider the listing of claim 7 in this rejection to be an oversight. Appeal 2020-005584 Application 15/047,451 4 Knueven, Nadeau, and Kalidindi OR Lee and/or Gumkowski, Leech, and optionally in view of Knueven, Nadeau, Kalidindi, and Leeker, and further in view of Gaserod. ANALYSIS The rejection of claims 1, 4, 7, 16, and 19–21 where (a) Leech is the primary reference with Lee and/or Gumkowski as secondary references, or (b) Lee and/or Gumkowski as the primary references with Leech as a secondary reference (both being further optionally rejected in view of Knueven, Nadeau, Kalidindi, and Leeker) Appellant argues independent claims 1 and 16 together. See Appeal Br. 8–16. Appellant does not present arguments regarding dependent claims 4, 7, and 19–21, but contends they are allowable “for at least the same reasons as independent claim[] 1.” Appeal Br. 17. In view of 37 C.F.R. § 41.37(c)(1)(iv) (2019), we select claim 1 for review, with the remaining claims (i.e., claims 4, 7, 16, and 19–21) standing or falling therewith. Appellant initially acknowledges the Examiner’s understanding “that neither Lee nor Gumkowski teaches a liquid core encapsulated within a solid food material.” Appeal Br. 8. The Examiner concurs to the extent that Lee and Gumkowski were relied upon for teaching a liquid capsule which could be substituted for the capsule of Leech. See Final Act. 5–6, 12, 14. Leech was relied on for teaching encapsulation by a solid food material. See Final Act. 5, 12; see also Leech ¶¶ 1, 52, 58; Ans. 26. Concerning the Examiner’s finding regarding the recited “solid food material is a dry kibble,” Appellant contends, “Leech cannot be said to read on a solid food material that is a dry kibble when both are properly construed.” Appeal Br. 9. To better understand the distinction between the claim terms “solid food material” and “dry kibble,” Appellant’s Appeal 2020-005584 Application 15/047,451 5 Specification states, “[p]et food kibbles of the present disclosure can comprise, for example, a solid food coating material (‘shell’) formulated as a dry kibble.” Spec. ¶ 11. Claim 1 provides further guidance, stating, the “dry kibble . . . having a moisture content of less than about 10%.” The Examiner provides reasons why Leach alone teaches both these limitations (i.e., “solid food material” and “dry kibble”), and also provides an alternate reason why the combination of Leach and Knueven likewise teaches both these limitations. See Final Act. 7–10, 12–16. Appellant does not dispute that Leech’s dough or Knueven’s pet food disclose the recited “solid food material.” Instead, Appellant challenges the Examiner’s reliance thereon for teaching “dry kibble,” as well as the stated motivation to combine Leech and Knueven. See Appeal Br. 9–11, 14–16. Leach “relates to a dough wrap for a pill, tablet or capsule,” and, more specifically, dough that “is moulded around a pill before administration to an animal.” Leech ¶ 1. Leech teaches employing dough having various percentages of water by weight (varying from “0.1 to 0.2 wt % of water” to “9 to 13 wt % water”). Leech ¶¶ 44–46. Leech also teaches dough that “is stable . . . at room temperature and does not need refrigeration.” Leech ¶ 50. Knueven pertains to a “dry pet food” whose “moisture content is low enough to make it shelf stable like a cookie or cracker.” Knueven ¶ 19. Knueven teaches that “the dry food has a moisture content of not greater than about 15% . . . not greater than about 13% or not greater than about 11%.” Knueven ¶ 25. Understanding that “dry kibble” is a food coating or shell having a moisture content of less than about 10% (as recited), we focus initially upon the Examiner’s rejection of claim 1 in view of Leech alone. The Examiner Appeal 2020-005584 Application 15/047,451 6 identifies the various amounts of water taught by Leech noting that “[o]verlapping ranges establish prima facie obviousness.” Final Act. 7, 13. The Examiner also states, “[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.” Final Act. 7, 13–14. Appellant does not challenge these rationales by the Examiner, but instead contends that Leech’s dough can be distinguished because it “is moldable around the medicament to be administered.” Appeal Br. 9; see also id. at 14. “Thus it can be seen that the dough of Leech must be malleable, and cannot be construed to have a hard texture.” Appeal Br. 11; see also id. at 14 (“Leech contains no disclosure of an alternative format in which the dough can be cooked, broken into pieces and applied to the outside of the desired dosage form.”). However, as the Examiner points out, “[t]he specification discloses the claimed solid food product encompasses soft food products.” Ans. 26; see also Spec. ¶ 41 (“For purposes of the present disclosure, ‘solid food’ material or product refers to completely solid, granular, semi-solid, hard, and soft food products.”). Even should claim 1 be construed to involve some degree of hardness (which is silent on the matter (see Ans. 29)), paragraph 75 of Leech teaches that in one example, the dough can be sold as “a block from which the customer breaks off a portion of dough.” This teaching of breaking off a portion of dough for subsequent use would at least suggest to the reader that Leech’s dough has some degree of hardness, even if it is also malleable. Furthermore, the description of the material in Appellant’s Specification as being “semi-solid” or “soft” (see Spec. ¶ 41) undercuts Appeal 2020-005584 Application 15/047,451 7 Appellant’s contention that the Specification does not provide any teaching that the encapsulating material “is desirably, or even possibly, malleable.” Appeal Br. 15. In other words, Appellant does not explain how Appellant’s semi-solid or soft material is incapable of being malleable, or that Leech’s material, which is malleable, is not, likewise, a semi-solid or soft encapsulating material. Hence, Appellant’s contention that the Specification is silent in the matter of malleability (see Appeal Br. 15) is not dispositive and does not distinguish Appellant’s product from that of Leech. Addressing now the Examiner’s rejection of claim 1 based upon the combination of Leech and Knueven, Appellant contends, “motivation cannot be said to exist to modify the dough of Leech to have the texture of a dry kibble.” Appeal Br. 11; see also id. at 14–16. Appellant notes that the Examiner’s reason for the combination is “because it renders the product shelf stable.” Appeal Br. 15; Final Act. 9, 15. However, Appellant contends that “the dough of Leech is already shelf stable” and thus there would be no motivation to combine “since the dough of Leech is already taught to be microbiologically stable.” Appeal Br. 15, 16 (referencing Leech ¶¶ 10, 31, 57); see also Leech ¶ 50. It is agreed that Leech already discloses a product that is shelf stable, but Appellant misunderstands the Examiner’s rationale for combining Leech and Knueven. The Examiner provided an alternative rationale in the event “Leech is not sufficient to render the claimed moisture content obvious.” Final Act. 8, 15. In accordance with this alternative rationale, the Examiner states, “Leech does not expressly state the moisture content of the dry food material (dough) that surrounds the core” and relies on Knueven for disclosing the requisite moisture content because Knueven’s product is Appeal 2020-005584 Application 15/047,451 8 likewise shelf stable yet also expressly discloses its moisture content. Final Act. 8–9, 15; see also Ans. 28, 31. To be clear, and as noted above, Knueven teaches that “the dry food has a moisture content of not greater than about 15% . . . not greater than about 13% or not greater than about 11%.” Knueven ¶ 25; see also Ans. 28. Hence, we do not fault the Examiner for (alternatively) combining Leech and Knueven so as to expressly identify a moisture content of a shelf stable food. Further, Appellant does not explain how the moisture content ranges expressed in Knueven fail to overlap with those recited in claim 1, i.e., “a moisture content of less than about 10%.” The Examiner notes, “[o]verlapping ranges establish prima facie obviousness” and Appellant does not convince us otherwise. Final Act. 9, 15. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in finding claim 1 obvious in view of the cited art. We sustain the Examiner’s rejection of claims 1, 4, 7, 16, and 19–21 under 35 U.S.C. § 103 in view of the recited combinations of Leech, Lee, Gumkowski, Knueven, Nadeau, Kalidindi, and Leeker. The rejections of claims 6 and 17 under various combinations of cited art. Appellant does not address either of these rejections but, as noted above, contends that they are allowable “for at least the same reasons as independent claim[] 1.” Appeal Br. 17. Accordingly, we likewise sustain the Examiner’s rejections of claims 6 and 17 in view of the art relied upon. Appeal 2020-005584 Application 15/047,451 9 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 7, 16, 19–21 103 Leech, Lee, Gumkowski, Knueven, Nadeau, Kalidindi, Leeker 1, 4, 7, 16, 19–21 1, 4, 7, 16, 19–21 103 Lee, Gumkowski, Leech, Knueven, Nadeau, Kalidindi, Leeker 1, 4, 7, 16, 19–21 6 103 Leech, Lee, Gumkowski, Knueven, Nadeau, Kalidindi, Leeker, Cole 6 6 103 Lee, Gumkowski, Leech, Knueven, Nadeau, Kalidindi, Leeker, Cole 6 17 103 Leech, Lee Gumkowski, Knueven, Nadeau, Kalidindi, Gaserod 17 17 103 Lee, Gumkowski, Leech, Knueven, Nadeau, Kalidindi, Leeker, Gaserod 17 Overall Outcome 1, 4, 6, 7, 16, 17, 19– 21 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). Appeal 2020-005584 Application 15/047,451 10 AFFIRMED