Societe des Produits Nestle SA

Patent Trials and Appeals Board

May 4, 2021

2020003418 (P.T.A.B. May. 4, 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.
15/372,561 12/08/2016 Brian M. Zanghi 14173-US-NP 5227
69099 7590 05/04/2021
Nestle Purina Petcare Global Resources, Inc
Checkerboard Square
Intellectual Property Patents
ST. LOUIS, MO 63164
EXAMINER
SAYALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
purinapatentmail@purina.nestle.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte BRIAN M. ZANGHI
____________
Appeal 2020-003418
Application 15/372,561
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–15 and 17–20 of Application

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/372,561 filed Dec. 8, 2016 (“the ’561 Application”); the Final Office
Action dated July 25, 2019 (“Final Act.”); the Appeal Brief filed Dec. 20,
2019 (“Appeal Br.”); the Examiner’s Answer dated Feb. 5, 2020 (“Ans.”);
and the Reply Brief filed Apr. 3, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Société Des Produits Nestlé S.A.
Appeal Br. 3.
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Application 15/372,561
2
15/372,561, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM IN PART.
The ’561 Application describes that hydration can be challenging for
companion animals. Spec. ¶ 3. Promoting water intake and maintaining
optimal hydration in senior cats and cats with urolithiasis is important for
improving health. Id. Stress related to travel, boarding, or illness also
compromises hydration status in both cats and dogs, and consequently can
diminish overall health. Id. According to the ’561 Application, the
described compositions and methods improve hydration and water intake in
animals. Id. ¶ 2.
REFERENCES
The Examiner relies on the following references:
Name Reference Date
Montner et al.
(“Montner”)
US 5,811,600 Sept. 22, 1998
Kloti US 2002/0054947 A1 May 9, 2002
Robergs et al.
(“Robergs”)
US 6,485,764 B2 Nov. 26, 2002
Albert US 8,221,727 B2 July 17, 2012
She et al.
(“She”)
US 2014/0141119 A1 May 22, 2014
O’Donovan et al.
(“O’Donovan”)
WO 2008/135960 A2 Nov. 13, 2008
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REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 1033 as obvious: (1) claims 1–5, 7–15, and 17–20 over Kloti, in view of
Montner, Robergs, Albert, and further in view of O’Donovan and (2) claims
6 and 17 over Kloti, in view of Montner, Robergs, Albert, and further in
view of She. Final Act. 3–8.
DISCUSSION
Interpretation of claims 1 and 11
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id.
Appellant asserts that the Examiner unduly broadens the scope of the
invention in giving the transitional phrase “consist[s] of” in claims 1 and 11
little or no weight. Appeal Br. 14; Reply Br. 4.
Claims 1 and 11 are reproduced below from the Claims Appendix of
the Appeal Brief:
1. A method for improving water intake and hydration in an
animal, comprising administering a hydration composition to
the animal, wherein the hydration composition comprises water
and a hydration additive, wherein the hydration additive
consists of glycerol and whey.

3 Because this application claims priority to an application that was filed
after the March 16, 2013, effective date of the America Invents Act, we refer
to the AIA version of the statute.
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11. A hydration composition comprising water and a
hydration additive, wherein the hydration additive consists of
glycerol and whey.
Appeal Br. 20, 21 (emphasis added).
The Examiner notes the inclusion of the transitional phrase “consists
of” and that it excludes any element, step, or ingredient not specified in the
claims. Final Act. 8–9. The Examiner determines that the transitional
phrase does not exclude any element not specified in the claims if the
function attributed to the unspecified element is not desired or required. Id.
at 4. The Examiner notes that dependent claims 6 and 7 recite numerous
additional ingredients. Ans. 11 (noting that these dependent claims recite
“and mixtures of” the additional ingredients).
Our review of the claim language indicates that “consists of” applies
to the hydration additive ingredients: “glycerol and whey.” See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d at 1364. The hydration composition
comprises water and a hydration additive. Appeal Br. 20, 21.
The Examiner finds that claiming a hydration composition comprising
water and a hydration additive means that the scope of the claim includes
any other ingredients, including those which provide hydration. Ans. 10. In
contrast, Appellant argues that use of “consist[s] of” interpreted in light of
the Specification limits the hydration additives to at least sugar alcohols,
protein, and amino acids. Appeal Br. 14. Appellant contends that the
references cited by the Examiner do not disclose use of whey and glycerol.
Id. at 16.
The open transitional term “comprising” permits elements in addition
to those specified to be included in the composition of the claim. In re
Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004) (“[I]t is well-established that
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‘[c]omprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” (quoting Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997)). Thus, the hydration
composition in the claim must include at least water and a hydration
additive. See Appeal Br. 20, 21. However, due to the use of “comprising,”
the hydration composition is not limited to water and a hydration additive,
and may include other ingredients.
The Specification does not require otherwise. The Specification
states, “[s]uch hydration compositions and hydration additives can further
comprise other ingredients that can serve to promote the health of the
animal.” Spec. ¶ 33 (emphasis added). The Specification also states, “the
water additives can consist of a sugar alcohol and a protein.” Spec. ¶ 27.
The Specification does not limit the hydration additive to only glycerol and
whey. See id. ¶¶ 27, 33. Appellant’s arguments are not persuasive of
reversible error.
Rejection of claims 1 and 11 as obvious
The Examiner finds claims 1–5, 7–15, and 17–19 would have been
obvious over the combination of Kloti, Montner, Robergs, Albert, and
O’Donovan. Final Act. 3–7. The Examiner finds claims 6 and 17 would
have been obvious over Kloti, Montner, Robergs, Albert, and She. Id. at 7–
8.
Appellant addresses only independent claims 1 and 11. Appeal Br. 9–
16; 18–19. Appellant argues claims 1–15 and 17–19 as a group. See id.
Appellant does not argue any dependent claims separately. See id. We
select claims 1 and 11 as representative of the group. 37 C.F.R.
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§ 41.37(c)(1)(iv). Claims 2–10, 12–15, and 17–19 stand or fall with each of
their respective independent claims.
Regarding claims 1 and 11, the Examiner finds that Kloti discloses a
dog beverage made from dissolving, in water, a solid composition
comprising minerals, protein, and whey flavoring. Final Act. 3. The
Examiner finds that Montner discloses a rehydration formulation, which
includes glycerol combined with carbohydrate or sodium. Id. The Examiner
determines that it would have been obvious to omit the minerals and protein
of Kloti and the carbohydrate and sodium of Montner from a hydration
composition because each reference teaches that these ingredients are not
required for hydration. Id. at 3–4.
The Examiner finds that Robergs discloses beverages for animals
comprising glycerol, which is used for enhancing hydration. Id. at 4.
According to the Examiner, Robergs “establishes that the inclusion of
glycerol in hydrating liquids for animals was old and known.” Id. With
respect to claim 11, the Examiner finds that Albert discloses that a daily
dosage of a hydration additive can be poured into filtered water. Id. at 7.
Based on the combination of references, the Examiner determines that
it would have been obvious to add whey flavoring to glycerol in a hydration
additive because one of ordinary skill in the art would have known that the
addition of flavor attracts a pet to water. Ans. 13.
Appellant argues that the transitional term “consist[s] of” excludes the
prior art’s use of glycerol and whey in combination with other ingredients.
Appeal Br. 14. We explained above why this argument is not persuasive.
Consistent with our claim interpretation above, the prior art’s use of other
ingredients along with those specified in the claims is not excluded by the
limitations of claims 1 and 11. See Appeal Br. 20, 21 (Claims App.).
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Appellant argues that the claimed combination of ingredients provided
an unexpected hydration benefit, relying on Examples 1 and 2 of the ’561
Application. Appeal Br. 13–16; Reply Br. 4–5. Such results are not
commensurate in scope with claims 1 and 11.
“Commensurate in scope” means that the evidence provides a
reasonable basis for concluding that the untested embodiments encompassed
by the claims would behave in the same manner as the tested
embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“Here,
only one mixture of ingredients was tested. . . . The claims, however, are
much broader in scope, . . . and we have to agree with the Patent Office that
there is no ‘adequate basis for reasonably concluding that the great number
and variety of compositions included by the claims would behave in the
same manner as the [single] tested composition.’”) (bracketed material in
original). The Specification’s Examples 1 and 2 describe hydration studies
in cats, but the claimed subject matter is for “water intake and hydration in
an animal.” Appeal Br. 20 (Claims App.) (emphasis added). We agree with
the Examiner that the comparisons in Example 1, which include increased
xanthan gum levels in Test liquid 1 compared to Test liquid 4, are not
commensurate in scope with claims 1 and 11. Ans. 11; see also Spec. Table
1. Such data does not provide unexpected results “commensurate in scope
with the degree of protection sought by the claim[s]” on appeal. See In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Unexpected results must also
be “commensurate in scope with the degree of protection sought by the
claim[s]” on appeal.); In re Graselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (It
is well settled “that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”).
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We further agree with the Examiner that because glycerol is known to
enhance hydration and whey is known to enhance flavoring, “any reasonable
person would have expected [the combination to] produce an increased
liquid intake by the pet drinking the beverage.” Ans. 12; see also Final Act.
10.
The Examiner’s findings are supported adequately by the evidence of
record. “When the PTO shows prima facie obviousness, the burden then
shifts to the applicant to rebut.” In re Harris, 409 F.3d 1339, 1342 (Fed.
Cir. 2005) (citing In re Dillion, 919 F.2d 688, 692 (Fed. Cir. 1990) (en
banc)). Appellant’s arguments and evidence fail to rebut the Examiner’s
case. We sustain the rejection of claims 1 and 11 as obvious over the
combination of Kloti, Montner, Robergs, Albert, and O’Donovan. Because
Appellant fails to argue patentability of the dependent claims separately, we
likewise sustain the rejections of claims: (i) 2–5, 7–10, 12–15, and 17–19
over the same references and (ii) 6 and 17 over the same references with
She, but without O’Donovan. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection of claim 20 as obvious
Claim 20 is reproduced below from the Claims Appendix of the
Appeal Brief:
20. A hydration additive consisting of glycerol and whey,
wherein the glycerol is present in the hydration additive in an
amount of about 25% to about 50% by weight, and the whey is
present in the hydration additive in an amount of about 50% to
about 75% by weight.
Appeal Br. 23 (emphasis added).
The Examiner finds claim 20 would have been obvious over the
combination of Kloti, Montner, Robergs, Albert, and O’Donovan. Final
Act. 7; see also Ans. 14–16.
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In the Answer, the Examiner finds, inter alia, that O’Donovan
discloses a solid or a liquid whey composition that can be mixed into water.
Ans. 14. The Examiner finds O’Donovan teaches that the whey protein
isolate is present in an amount of 0.01–90% wt. Id. The Examiner reasons
that because whey is known to enhance flavor, one of ordinary skill in the art
would have known that adding more whey would have increased
palatability. Id. at 15.
With respect to the claimed glycerol amount, the Examiner finds,
“Montner discloses 2 to 8% v/w glycerol in the formulation,” and
Robergs discloses that . . . “[t]he glycerol is also that
conventionally used and the amounts thereof can vary widely.
While amounts up to 6% by weight or higher can be used, . . .
in order to avoid certain undesired symptoms for some and an
unpleasant taste, it is preferred to maintain the glycerol
concentration below 5.5%/by weight, most preferably at
5.1%/by weight.
Ans. 14–15 (citing Robergs 2:52–62). According to the Examiner, the
determination of the claimed “amounts to obtain a balanced formulation
would be within the ambit of ordinary skill.” Id. at 15–16.
Appellant argues that the Examiner’s relied-upon references fail to
disclose the requisite amounts of whey and glycerol. Appeal Br. 16.
Although O’Donovan discloses whey content in a range that overlaps
the range claimed in claim 20, the Examiner has not established that the
prior art reasonably teaches or suggests the claimed glycerol content.
Montmer teaches 2% to 8% v/w glycerol, and Robergs teaches 6% or less
glycerol to avoid undesired symptoms and unpleasant taste. The Examiner’s
statement that “the [prior art] references disclose that an amount 0.01% to
90% [glycerol] is permissible” is inaccurate and unsupported. See Ans. 15.
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We find nothing in the prior art that discloses a glycerol content in amount
of about 25% to about 50% by weight, as required by claim 20.
We do not sustain the rejection of claim 20 as obvious over Robergs.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–5, 7–15,
17–20 103
Kloti, Montner,
Robergs, Albert,
O’Donovan
1–5, 7–15,
17–19 20
6, 17 103 Kloti, Montner, Robergs, Albert, She 6, 17
Overall
Outcome
1–15, 17–19 20
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). See 37 C.F.R.
§ 1.136(a)(1)(iv)(2019).
AFFIRMED IN PART