Mars, Incorporated

Patent Trials and Appeals Board

May 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.
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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
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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.
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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
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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
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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
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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
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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.

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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).
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AFFIRMED