Ex Parte Dupont et al

Board of Patent Appeals and Interferences

Apr 22, 2010

09833314 (B.P.A.I. Apr. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHRISTOPHE DUPONT,
MARC DAMBRINE, LAURENT SISIAK,
THIERRY BAHAUX, STEPHEN MAY, and
STEVEN E. DINGMAN
________________

Appeal 2009-010871
Application 09/833,314
Technology Center 1700
________________

Heard: 15 April 2010
Decided: 22 April 2010
________________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-010871
Application 09/833,314

A. Introduction1, 2
Christophe Dupont, Marc Dambrine, Laurent Sisiak, Thierry Bahaux,
Stephen May, and Steven E. Dingman (“Nestec”) timely appeal under
35 U.S.C. § 134(a) from the final rejection3 of claims 1-17, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
The subject matter on appeal relates to a canned pet food having the
form of an outer tube packed with an inner core, each including an edible
source of carbohydrate and protein, and each region having an appearance
different from the other. In certain embodiments, the outer phase is said to
be thermally gelled, and in other embodiments, the inner phase is said to
comprise chunks of a formulated emulsion product (e.g., simulated meat
chunks) in a gravy. The appearance of the food is said to “further stimulate
consumer interest.” (Spec. 2.) The identity of the consumer (e.g., the
purchaser or the ingester) is not specified.

1 Application 09/833,314, Canned Filled Pet Food, filed 10 April 2001 as a
continuation of an application filed 23 February 1999, and as a continuation-
in-part of another application claiming the benefit under 35 U.S.C. § 371 of
an application filed 17 July 2007, as well as the benefit under
35 U.S.C. § 119(a) of a European application filed 12 March 1998. The
specification is referred to as the “314 Specification,” and is cited as “Spec.”
The real party in interest is listed as Nestec, S.A. (Appeal Brief, filed 12
June 2007 (“Br.”), 2.)
2 The Official Transcript of the hearing held 15 April 2010, which was not
available when this Opinion was entered, will be made of record.
3 Office action mailed 20 September 2006 (“Final Rejection”; cited as
“FR”).
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Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A canned pet food product having an upper end and a lower
end, the product comprising:
an outer, tubular phase which is
substantially solid and which extends from the
lower end to the upper end and which
includes an edible source of carbohydrate and
proteins; and
a substantially cylindrical inner phase which
extends from the lower end to the upper end of the
outer phase and
including an edible source of carbohydrate and
protein;
the inner phase having an appearance different
from the outer phase and extending within the
outer phase.
(Br., Claims App. i; indentation and paragraphing added.)
The Examiner has maintained the following ground of rejection:4
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Ohba,5 Vickers,6

4 Examiner’s Answer mailed 17 March 2009 (“Ans.”), which is said to
correct informalities in the Answer mailed 23 October 2007. References
relied on by the Examiner for a common or closely related teaching are
grouped in parentheses.
5 Naoki Ohba et al., Pet Food Packed in Container, EP 0769252 A1 (1997).
6 Hedley Vickers, Improvements in the Manufacture of Meat Rolls,
GB 341,760 (1931).
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May,7 (Gutmann,8 Froebel, 9 Zitin,10 Dodge11),
(McMahon,12 Hillebrand,13 Errass,14 QP Corp 677,15
QP Corp 174,16 Quaker Oats,17 Bechtel,18 Routh,19
Diaz,20 Hoashi,21 Honma,22 and Sonoya23).
Nestec argues that the number of references applied, the “or vice-
versa” language used in the Examiner’s statement of rejection, and the
alleged absence of a principal reference make the rejection “difficult to
address.” (Br. 12, 2d full para.) Substantively, Nestec argues that the
Examiner erred by failing to establish a motivation to combine the

7 Stephen May, Steven E. Dingman, and Luz Rayner, Layered Canned Pet
Food, WO 98/05219 (12 February 1998). (May and Dingman are co-
inventors on the present application.)
8 H.A. Gutmann, U.S. Patent 2,421,199 (1947).
9 Roland Arthur Froebel and Krunoslav Saric, GB 2,194,125 A (1988).
10 Arnold Zitin, U.S. Patent 2,937,095 (1960).
11 John W. Dodge et al., U.S. Patent 3,385,712 (1965).
12 Alistair John McMahon, GB 1,583,351 (1981).
13 Brigitte Hillebrand and Hans Uwe Trueck, AU-A-50797/96 (1996).
14 Werner Errass, EP 0,675,046 A1 (1995).
15 Joki Yamada, JP 59-31677 (1984) (hereafter “QP Corp ‘677”).
16 Tsuneki Yamada, JP 61-100174 (1986) (hereafter “QP Corp. ‘174”).
17 Quaker Oats, GB 1,327,351 (1973).
18 Peter J. Bechtel, U.S. Patent 3,738,847 (1973).
19 Almond C. Routh, U.S. Patent 2,344,901 (1944).
20 Jacqueline H. Diaz, U.S. Patent 5,518,746 (1996).
21 Chikako Hoashi, JP 62-104,566 (1987).
22 Kazuo Honma, JP 59-159758 (1984).
23 Setsuko Sonoya, JP 57-012987 (1982).
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references. (Id. at 12-15.) Nestec argues further that the references fail to
disclose of suggest all elements of the claimed invention. (Id. at 15-18.)
Thus, Nestec has raised three critical issues in this appeal:
(1) Is the Examiner’s rejection sufficiently clear to be
reviewable?
(2) Did the Examiner err in failing to prove a proper
motivation to combine the teachings of the references?
(3) Did the Examiner fail to show that the references teach
or suggest all elements of the claimed invention?
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 314 Specification
1. The invention is illustrated in Figure 4, which is reproduced below:

{Figure 4 is said to show a canned pet food}
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2. The pet food product is said to comprise an outer tubular phase 12 that
is substantially solid; a substantially cylindrical inner phase 18 that extends
from the lower end to the upper end of the outer phase 12. (Spec. 2, ll. 9-10,
12-13.)
3. Both phases 12 and 18 are said to comprise an edible source of
carbohydrate and protein. (Spec. 2, ll. 10-11, 13.)
4. Inner phase 18 is said to have a different appearance than outer
phase 20. (Spec. 2, ll. 13-14.)
Vickers
5. Vickers describes a meat roll, illustrated in Figure 1, which is
reproduced below:

{Vickers Figure 1 is said to show a meat roll}
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6. The meat roll 3 comprises a shell of minced meat paste 1 surrounding
a core of coarsely chopped or sliced meat 2. (Vickers 1, ll. 65-70.)
7. According to Vickers, the term “meat” is to be understood to include
“beef or veal, as well as pork, fish,” or the like “with or without added
ingredients of animal or vegetable origin such as egg, tomato or the like.”
(Vickers 1, ll. 11-16.)
8. Vickers also teaches that the meat paste may be provided with
“suitable additions of tomato, bread, spices, flavourings or other
ingredients.” (Vickers 1, ll. 100-104.)
9. Vickers teaches further that the coarsely chopped meat may be
provided with or without added gelatine, egg, spices, flavourings or other
ingredients. (Vickers 1, l. 105-2, l. 3.)
May
10. May describes a layered canned pet food comprising a base layer of
solid food pieces in a gravy and having a substantially conical recess formed
in its upper surface. (May 2, ll. 13-14.)
11. The upper layer is said to comprise a substantially solid foodstuff that
can support the base layer when inverted and that fills the conical recess.
(May 2, ll. 16-18.)
12. In May’s words, “[t]he recess into the base layer may extend either
partially through the base layer to be conical in shape or entirely through the
base layer to be frusto-conical in shape.” (May 2, ll. 26-28.)
13. The solid food pieces comprise protein. (May 2, ll. 30-33.)
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14. The gravy comprises starch. (May 2, ll. 35-36.)
15. According to May, “[t]he substantially solid foodstuff is preferably a
gelled meat loaf, cooked rice, cooked noodles, or aspic, or mixtures thereof.”
(May 3, ll. 10-11.)
Ohba
16. Ohba described canned pet food products comprising two or more
types of food prepared from substantially different materials are sorted in the
same can. (Ohba, abstract.)
17. Ohba teaches that the foods may be arranged on opposite halves of the
can (Ohba, col. 1, ll. 35-40) or in layers (id. at col. 1, l. 54-col. 2, l. 1.)
18. According to Ohba, the “substantially different materials” include
ingredients such as meat, fish, vegetables, meat extract and various
additives. (Ohba, col. 2, ll. 26-31.)
C. Discussion
As the Appellant, Nestec bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make
clear that courts have correlated review of ordinary administrative
proceedings to appellate review of civil cases in this respect. . . . [T]he party
seeking reversal normally must explain why the erroneous ruling caused
harm.”) See also, In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010),
(discussing the role of harmless error in appeals from decisions of the Board
of Patent Appeals and Interferences (“Board”)).
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Because Nestec has not argued the limitations of any particular claim
as a basis for patentability (Br. 12-18), we consider only claim 1, with which
all the remaining claims stand or fall. 37 C.F.R. § 41.37(c)(1)(vii) (setting
out requirements for arguing distinct patentability of individual claims and
stating that arguments not timely made have been waived: see also, e.g., In
re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first raised
in brief to the Board is waived on appeal)).
Is the Examiner’s Rejection Reviewable?
Initially, we note that Nestec appears to argue that the Examiner’s
rejection is too obscure—in particular, that it relies on too many references
and that there is no principal reference—and that as a consequence, Nestec
has been unfairly compromised in its ability to rebut the rejections.
We do not sit to review the propriety of an Examiner’s conduct of the
examination. Such matters are petitionable, at levels ranging from
discussions of varying formality with the Examiner, with the Supervisory
Patent Examiner, or with the Technology Center Director, to a formal
petition to the Director of the USPTO under 37 C.F.R. §§ 181-183. The
scope of our inquiry in that regard is limited to an assessment of whether the
Examiner has set out one or more rejections that are reasonably
understandable and thus are amenable to response by Appellants and review
by the Board. Should we find no reviewable rejection, we may reverse the
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decision of the Examiner or remand the application to the Examiner.
37 C.F.R. § 41.50(a)(1).24
We therefore begin with a review of the Final Rejection, which, since
it refers to the previous Office Actions for the rationale of the rejection
(FR 2), amounts to a review of the Examiner’s rejections in this case. This
review will also set the stage for consideration of the issues of motivation
and substance.
The Final Rejection refers to previous Office Actions mailed “1/4/05,
2/9/04, 6/3/03, 11/14/02, and 3/30/06” (FR 2, first para.) for the rationale
supporting the rejections. We summarize these Office Actions
chronologically.
In the first action on the merits (“OA1”),25 the Examiner found that
the canned pet food product described by May differs from the claimed
canned pet food product in the shape of the outer phase (cylindrical versus
frusto-conical). (OA1 2.) The Examiner argued that, in view of numerous
other references said to provide “examples of varying cross sectional shapes
of phases including tubular outer phases,” that the shape would have been an
“obvious matter of choice.” (Id. at 3, ll. 1-4.) The Examiner argued further
that the shape of the outer phase would have been an “obvious function of
the particular conventional method of forming the two phases” (id.
at ll. 4-5), citing numerous references said to show “example[s] of packaged
multi-phase products wherein the phases assume various patterns” (id. at 3,

24 Remands are subject to additional constraints as of 30 March 2010. See
75 Fed. Reg. 15689 (2010).
25 Office Action mailed 14 November 2002.
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l. 22-4, l. 1). Notably, Ohba is cited and relied on (id. at 3, last line),
although not as a primary reference.
The Examiner maintained the rejection in the next Office Action
(“OA2”),26 adding Gutmann, Froebel, Zitin, Dodge, and notably Vickers—
all said to have been cited previously, but not relied on—as evidence that a
tubular outer phase and inner core composite food product is “notoriously
old.” (OA2 3, ll. 1-3.)
The third office action (“OA3”)27 is notable primarily as having been
made “final.” The Examiner emphasized that May teaches the textured two-
phase canned pet food product, and that “[t]he secondary art is only being
relied on to teach that applicants are employing a notoriously conventional
geometric configuration for composite food materials.” (OA3 at 3, ll. 9-13.)
Following an Appeal Brief,28 the Examiner reconsidered the finality
of OA3 and issued another Office Action (“OA4”)29 in which the rejection
of record was maintained and several obviousness-type double patenting
rejections were entered.
In the next Office Action (“OA5”)30, the Examiner rejected
independent claims 1, 2, 9, and certain dependent claims as anticipated by
May based on an interpretation of the term “tubular” as reading on the

26 Office Action mailed 3 June, 2003.
27 Office Action mailed 9 February 2004.
28 Appeal Brief filed 10 September 2004.
29 Office Action mailed 4 January 2005.
30 Office Action mailed 30 March 2006.
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frustoconical recess that can extend entirely through the “base” layer
described in that reference. (OA5 at 3, ll. 1-13.) The statement of the
obviousness rejection was modified to rely on “Ohba . . . in view of Vickers
. . . and May . . . , or vice versa, i.e., Vickers in view of Ohba . . . and May
. . . both further in view of [numerous references].” (OA5 at 4, 3d para.;
citations abbreviated.)
The Examiner explained first that Ohba describes a canned pet food
having two phases that differ in appearance, each of which includes protein
and carbohydrate. The difference between the claimed subject matter and
Ohba, in the Examiner’s view, is the stuffed tubular arrangement of the
phases recited in the claims. (OA5 at sentence bridging4-5.) The Examiner
relied on Vickers as evidence that such a tubular arrangement was known for
composite foods, and on May for its teachings that canned pet food products
are known “wherein there is an outer phase and an inner phase.” (Id. at 5,
ll. 1-6.) The Examiner concluded that changing the shape of the composite
phases to another conventional composite shape would have been obvious.
(Id. at ll. 11-13.)
The Examiner then considered Vickers as the primary reference. The
Examiner found that Vickers teaches composite foods having different
appearances in a tubular form with an inner phase. The Examiner then
concluded that it would have been obvious to use conventional pet food
phases described by Ohba in a form similar to the one described by Vickers.
(OA5 at 6, ll. 8-13.)
The Final Rejection followed, only the rejection on appeal being
maintained.
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Although at first blush the number of references cited by the
Examiner in the statement of the rejection may appear daunting, review of
the statements of the rejections through prosecution and in the Examiner’s
Answer shows that the situation is only superficially complex. First, we
note that the Examiner set out express findings regarding Ohba (OA5),
Vickers (OA3, OA5), and May (OA1, OA3, OA5). The Examiner also set
out reasons explaining why the claimed subject matter would have been
obvious starting from either Ohba (OA5 at 5) or Vickers (id. at 6). Nestec’s
protest that the primary references are not identified (Br. 12) is baseless.
Moreover, the thrust of the Examiner’s rejections remained clear and
relatively constant throughout prosecution. The Examiner argued that the
prior art (first May (OA1-OA4), subsequently Ohba (OA5)) shows that it
was known to provide canned pet food comprising protein and
carbohydrates, in at least two phases having different appearances in a single
can, in many different arrangements. The Examiner found further that it was
also known (Vickers (OA2-OA5)) to provide meat rolls having the filled
tubular geometry and different appearance of the tube and the filling
required by the claims. Rather than merely concluding that it would have
been an obvious matter of design choice to package, in a can, two differently
textured pet foods in the geometry described by Vickers, the Examiner came
forward with a host of additional references said to show that it was known
to provide different arrangements of different phases of food and other
packaged products, according to the physical properties of the materials and
the desires of those skilled in the various arts.
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Although we caution the Examiner that unreferenced summaries of
references may not be credited (see the substantive discussion, infra), we
cannot say that the Examiner’s handling of the references was so untidy,
obscure, or misleading, that Nestec or the merits panel of the Board have
been prevented from being placed in a position to understand and respond to
the rejections. We therefore proceed to address the merits of the rejection.
Motivation
Nestec argues that the Examiner failed to establish a motivation to
combine the references, and that the references actually teach away from the
proposed combination. (Br. 12, 2d full para.)
Our reviewing court has explained that, to “teach away,” a reference
must state that it “should not” or “cannot” be used in combinations with the
other reference. Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73
F.3d 1085, 1090 (Fed. Cir. 1995). Nestec has not directed our attention to
any disclosure in Ohba, Vickers, or May, that indicates that, for example, a
meat roll cannot, or should not be formed in a mold that is then sealed, i.e.,
“canned.” Canned meats and other food products are, after all, well known.
Nor has Nestec directed our attention to any disclosure in Ohba or May that
indicates that pet foods comprised of protein and carbohydrates cannot, or
should not be formed into tubular structures. Nor has Nestec come forward
with credible evidence or argument explaining why food products intended
for human consumption would not have been considered as models for as
canned food intended for consumption by pets.
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The Examiner, apparently recognizing that an argument that a
modification is “obvious as a matter of choice” requires supporting
evidence, came forward with a large number of citations that are urged to
provide the requisite support. The Examiner may justly be faulted for not
citing specific evidence in these references and explaining why that evidence
supports the conclusion that such modifications would have been simple
matters of design choice.
Our principal role is review of rejections. We are not charged with
scouring the record for evidence that supports the arguments of either the
Examiner or of the Appellants. It is the burden of the proponent of a
position to come forward with evidence supporting that position, and to
explain why the evidence is probative. The Examiner failed to do this for
the majority of the secondary references cited in support of the “obvious
matter of choice” theory of obviousness. Accordingly, we decline to credit
those references and “arguments.”
However, the Examiner did cite Routh as showing that the cross-
sectional patterns of multiphase products in containers can be varied. (OA1
at 3, ll. 16-19.) The Examiner continues to rely on Routh (Ans. 5) (unlike
Henkel (GB 1,486,634) and Mandanas (WO 94/26606), originally discussed
in OA1 at 3, which the Examiner has dropped as “superfluous” (Ans. 4) and
which we therefore decline to consider). Nestec’s sole discussion of Routh,
however, is that it relates to ice cream products. (Br. 18.) Nestec does not
explain why the Examiner’s conclusion that Routh’s description of different
cross sections of different phases of an ice cream food product would not
have suggested that different cross sections could be produced in other food
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products made from other materials, such as the meats, vegetables, and grain
products, i.e., mixtures of proteins and carbohydrates, described by Ohba,
May, and Vickers.
Moreover, as discussed in detail in the next section, Ohba, and
especially May, provide several examples of different arrangements of
differently textured canned pet foods that support the Examiner’s conclusion
that the claimed arrangement of differently textured foods in cans would
have been prima facie obviousness. We are not insensitive to Nestec’s
complaint (Br. 12) that a large number of references can make response
difficult. In this case, however, the large number of references were cited
cumulatively, and only a few were discussed in detail sufficient for
substantive review. Accordingly, we find no merit in Nestec’s argument that
the Examiner failed to establish a motivation to combine the teachings of the
references.
Every Element
Nestec’s objection that the combination of references fails to disclose
or suggest every element of claim 1 (Br. 15-18) is not well taken.
Nestec begins its arguments regarding motivation (Br. 12) and its
arguments regarding the elements of the claims (Br. 15), with a discussion of
May. Thus, Nestec characterizes May as being “entirely directed to a
canned pet food product having two layers (a base and an upper layer).”
(Br. 12, citing May 2, ll. 11-19.) Similarly, according to Nestec, “May, fails
to disclose or suggest the outer, tubular phase features required by the
claimed invention.” (Br. 15, last full para.) “Instead,” Nestec argues, “May
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discloses clearly defined upper and base layers such that, after opening the
can and dispensing the pet food, what was the base layer becomes the upper
layer . . . rather than vertical layering as in the present invention.” (Id. at 16,
ll. 1-4, citing May 2, ll. 20-25.)
These characterizations are at best incomplete. May, as the Examiner
pointed out (OA5 at 3), teaches that the “base” layer contains a “recess.”
(May 2, l. 14.) In May’s words, “[t]he recess into the base layer may extend
either partially through the base layer to be conical in shape or entirely
through the base layer to be frusto-conical in shape. The upper layer may
include an upper portion above and covering the upper surface of the base
layer.” (May 2, ll. 26-29; emphasis added.) As indicated by the italicized
word “may” in the second quoted sentence, May suggests that the upper
layer need not include an upper portion above and covering the base layer.
Thus, although May may prefer embodiments in which the “upper layer”
actually covers the base layer, May does not exclude embodiments in which
it does not cover the base layer. We find no merit in Nestec’s arguments to
the contrary.
Such embodiments differ geometrically from the meat rolls described
by Vickers only in the “frusto-conical” shape of the interior “recess” in
May’s food products. Even assuming, arguendo, that the term “substantially
cylindrical inner phase,” which appears to be undefined in the
314 Specification, excludes a “frusto-conical” inner phase, we are hard-
pressed to see merit in arguments that the modification to the unslanted
vertical described for meat rolls would not have been obvious to persons
having ordinary skill in the art.
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Nestec appears to object further that Vickers relates to meat rolls
“rather than canned pet food.” (Br. 18, 3d full para.) But Nestec has not
directed our attention to any credible disclosure in the record that a person
having ordinary skill in the art would have declined to consider
arrangements of food products such as the meat roll described by Vickers
when considering arrangements for similarly textured canned pet foods.
Vickers, like Ohba and like May, describes two-phase, visually distinct
regions in a food product that contains protein and carbohydrates in both
phases. Nor is Routh inconsistent with the Examiner’s conclusion that the
geometric arrangement of canned foods within the can would have been
obvious as a matter of choice. That is, the suggestion that a particular
arrangement is possible in one food product would have suggested that
arrangement for other food products. Nestec has not come forward with
evidence that such arrangements would have been beyond the abilities of
those of ordinary skill in the art.
In conclusion, we are not persuaded by Nestec’s arguments that
harmful error has been shown in the Examiner’s rejection.
D. Order
We AFFIRM the rejection of claims 1-17 in view of the combined
teachings of Ohba, Vickers, May, and Routh.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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