Ex Parte Sakoda et al

Patent Trial and Appeal Board

Jul 19, 2018

14036213 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/036,213 09/25/2013
80711 7590
BGL/ Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
07/19/2018
FIRST NAMED INVENTOR
Junya Sakoda
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.
15033-3 1005
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
07/19/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNY A SAKODA and TAKAHIRO USUI
Appeal2017-010003
Application 14/036,213
Technology Center 1700
Before TERRY J. OWENS, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 5. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 We cite the Specification ("Spec.") filed September 25, 2013; Final Office
Action ("Final Act.") dated August 24, 2016; Appellant's Appeal Brief
("App. Br.") dated January 25, 2017; Examiner's Answer ("Ans.") dated
May 18, 2017, and Appellant's Reply Brief ("Reply Br.") dated July 18,
2017.
2 Appellant is Applicant, Unicharm Corporation, which also is identified as
the real party in interest. App. Br. 1.
Appeal2017-010003
Application 14/03 6,213
BACKGROUND
The invention relates to pet food. Spec. ,r 1. Claim I-the sole
independent claim on appeal-is illustrative:
Claim 1: A cat food that reduces incidences of
vomiting of food in cats within 1 hour after eating the cat food,
which cat food comprises:
granules having a hardness of 5.0 to 9.0 kgw and a water
content of 7 .0 to 11.0% by weight,
100 parts by weight main ingredients and 0.5 to 15 parts
by weight of lignocellulose, with each granule containing 6 to
8% by weight of lignocellulose and having spaces formed by
heat processing of the main ingredients,
the main ingredients comprising 5 5 to 7 5 wt.% grain, 10
to 25 wt.% meat; 5 to 15 wt.% seafood and 2 to 5 wt.%
vitamins and minerals,
the granules comprising:
60% or more of granules (a) having a hardness of 2.5
kgw or lower as measured immediately after being soaked in
diluted hydrochloric acid for 10 minutes the diluted
hydrochloric acid being prepared by dropwise addition of 1
normal (N) hydrochloric acid to distilled water to adjust the pH
to 2.5 at 20 to 25°C, and
40% or more of granules ( a') having a hardness of 1.3
kgw or lower as measured immediately after being soaked in
diluted hydrochloric acid for 10 minutes the diluted
hydrochloric acid being prepared by dropwise addition of 1
normal (N) hydrochloric acid to distilled water to adjust the pH
to 2.5 at 20 to 25°C,
wherein the granules are in the form of pellets which
have a minor axis of 5 to 9 mm, a major axis of 5 to 9 mm, and
a thickness of 5 to 8mm.
App. Br. 21 (Claims Appendix).
2
Appeal2017-010003
Application 14/03 6,213
REJECTION3
Claims 1 and 5 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Sunvold, 4 Villagran, 5 Neufeld, 6 Brunner,7 Max's House, 8
Paluch,9 and Uchii. 10
OPINION
Appellant presents arguments directed to recitations in claim 1, and
does not separately argue the dependent claim. Claim 5 stands or falls with
claim 1.
With regard to claim 1, the Examiner determines that a cat food
having all of the claimed ingredients and within the scope of claim 1 would
have would have been obvious in light of the collective teachings in the
relied-upon prior art references. The Examiner's findings and reasoning in
support of the obviousness determination are set forth in detail in the Final
Office Action. Final Act. 4--11.
With regard to lignocellulose, the Examiner finds that Neufeld teaches
providing that material at a concentration within the range of 0.01-50%
3 The Examiner's rejection of claims 1 and 5 under 35 U.S.C. § 112 is
withdrawn. Ans. 12.
4 US 2010/0303951 Al, published December 2, 2010 ("Sunvold").
5 US 2013/0122154 Al, published May 16, 2013 ("Villagran").
6 US 2011/0311681 Al, published December 22, 2011 ("Neufeld").
7 US 2001/0002272 Al, published May 31, 2001 ("Brunner").
8 Max's House, AAFCO CAT FOOD NUTRIENT PROFILES, available at
https://web.archive.Org/web/20030423083218/http://maxshouse.com/nutriti
on/aafco_cat_food_nutrient_profiles.htm, accessed by the Examiner on
October 14~ 2015 (see Notice of References Cited, dated October 28, 2015).
9 US 6,312,746 B2, issued November 6, 2001 ("Paluch").
10 WO 2012/029285 Al, published March 8, 2012 ("Uchii").
3
Appeal2017-010003
Application 14/03 6,213
based on the weight of the food, which encompasses the 6-8% range recited
in claim 1. A prima facie case of obviousness exists in situations where, as
in this instance, the claimed range is encompassed by ranges disclosed by
the prior art. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) ("The law is replete with
cases in which the difference between the claimed invention and the prior art
is some range or other variable within the claims. These cases have
consistently held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.") ( citations
omitted).
Appellant argues that the claimed range for lignocellulose
concentration is critical. App. Br. 16; Reply Br. 8-10. Particularly,
Appellant contends that "the content of lignocellulose has to be 2.0% by
weight or more in order that vomiting in pets after meals can be suppressed."
App. Br. 16. Thus, according to Appellant, the portion ofNeufeld's range
that is less than 2.0% "would not prevent vomiting." Id. As support for the
purported 2.0% critical threshold, Appellant reproduces and relies on a
passage from the Specification that reads:
When the content of lignocellulose is 2.0% by weight or more,
the eaten pet food is facilitated to absorb digestive juice or water
at gastrointestinal tracts, and the pet food becomes soft which
reduces physical stimulation to the gastric wall or intestinal
walls, and thereby vomiting in pets after meals can be
suppressed.
4
Appeal2017-010003
Application 14/03 6,213
Id. ( citing Spec. ,r 25). 11
The Examiner responds that the relied-upon passage is insufficient to
demonstrate criticality. Ans. 25. We agree. The fact that the Specification
provides that suppression occurs when lignocellulose exceeds 2.0% by
weight does not require that suppression does not occur at lignocellulose
concentrations below 2.0%. Moreover, Appellant's contention of criticality
is contrary to the data presented in Table 2 in paragraph 4 7 of the
Specification. There, both Example 1 ( containing 7 .5% lignocellulose) and
Example 2 ( containing no lignocellulose) reportedly achieved suppression of
vomiting. See Spec. ,r 4 7.
Appellant also argues that none of the relied-upon prior art teaches
formulating food to prevent vomiting induced by eating. App. Br. 14--19;
Reply Br. 2-10. However, the Examiner finds that the effect of suppression
of vomiting would have been a property attributable to the formulation.
Final Act. 10. Appellant reaches the same conclusion. Reply Br. 3
("Appellant['s] claimed invention even absent the preamble defines a cat
food that reduces incidences of vomiting of food in cats within 1 hour after
eating the cat food. The preamble merely reflects this feature/property of
appellant[' s] invention which is manifest in the limitations in the body of
claim 1. "). Appellant does not point to persuasive evidence of a material
difference between the formulation of claim 1 and that which would have
been suggested by the prior art. Accordingly, Appellant does not persuade
us of error in the Examiner's finding that the cat food taught by the prior art
11 The language quoted by Appellant appears at paragraph 24 of the
Specification.
5
Appeal2017-010003
Application 14/03 6,213
would have presented the same suppression of vomiting as is recited in the
preamble to Appellant's claim 1.
For the foregoing reasons, we are not persuaded of reversible error in
the Examiner's rejection of either claim 1 or 5. The rejection is sustained.
DECISION
The Examiner's decision rejecting claims 1 and 5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
6