Matthew Ian. Elliott et al.Download PDFPatent Trials and Appeals BoardAug 28, 202014118510 - (D) (P.T.A.B. Aug. 28, 2020) Copy Citation 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. 14/118,510 01/16/2014 Matthew Ian Elliott THO0071 PCT US 1011 132446 7590 08/28/2020 Mars, Inc. c/o Mars Petcare Theresa Shearin 2013 Ovation Parkway Franklin, TN 37067 EXAMINER KIM, BRYAN ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 08/28/2020 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 MATTHEW IAN ELLIOTT, ANDREW JAMES NEWTON, PETER SEBASTIAN SLUSARCZYK, JONATHAN CHRISTOPHER, VINOD GUMUDAVELLI, and JUSTIN NGUYEN ____________ Appeal 2018-009212 Application 14/118,510 Technology Center 1700 ____________ Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, 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, 5, 8–11, 14–19, and 21–27. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Mars, Incorporated as the real party in interest. Appeal Br. 2. Appeal 2018-009212 Application 14/118,510 2 BACKGROUND The invention relates to edible animal chews. Claim 1 reads: 1. An edible animal chew having a longitudinal axis, wherein the edible animal chew comprises: (i) an outer wall extending in the direction of said longitudinal axis, wherein the animal chew is elongate in shape; (ii) an internal support structure comprising inner walls and at least three struts, wherein each of the at least three struts contacts an inner surface of said outer wall wherein the inner walls and struts extend in the direction of said longitudinal axis and define a plurality of channels that extend in the direction of said longitudinal axis; and (iii) wherein said edible animal chew comprises a degree of starch gelatinization greater than 30% on a total starch basis. Appeal Br. 15 (Claims Appendix). Independent claims 21 and 25 similarly recite an edible animal chew having an internal support structure comprising inner walls and struts. Each remaining claim on appeal depends from claim 1 or 21. Appeal 2018-009212 Application 14/118,510 3 REJECTIONS I. Claims 1, 4, 5, 8, 14–19, 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nie (US 2004/0086616 A1; pat. pub. May 6, 2004), Koo (2011/0290197 A1; pat. pub. Dec. 1, 2011), Heyman (US 2,784,097; iss. March 5, 1957), and Tintle (Des. 374,753; iss. Oct. 22, 1996). II. Claims 9–11 and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nie, Koo, Heyman, Tintle, and Gokturk (D448,138 S; iss. Sept. 25, 2001). III. Claims 21–23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bunke (US 2009/0202700 A1; pat. pub. Aug. 13, 2009), Koo, Heyman, Tintle, Garcia Martinez (US 2008/0003270 A1; pat. pub. Jan. 3, 2008), and Cupp (US 2003/0021872 A1; pat. pub. Jan. 30, 2003). OPINION Each independent claim on appeal recites, inter alia, an edible animal chew having “an internal support structure comprising inner walls and at least three struts.” With regard to independent claims 1 and 25, the Examiner finds Nie discloses an extruded animal chew and Koo provides a reason to include internal air holes. Non-Final Act. 3. The Examiner finds Heyman, Tintle, and Gokturk teach edible food products, such as ice cream cones and pasta, that include internal walls and struts. Id. at 3–4. In light of the foregoing disclosures, the Examiner determines it would have been obvious to provide Nie’s extruded animal chew with internal walls and struts “as a manufacturing choice for the design of the pet chew.” Id. at 4. With Appeal 2018-009212 Application 14/118,510 4 regard to independent claim 21, the Examiner substitutes Bunke for Nie as teaching an edible chew, and again relies on Heyman and Tintle to support a determination that the claimed internal support structure would have resulted from an obvious choice of manufacturing design. Id. at 7–8.2 Generally, the Examiner states “the Office’s position is that the structure of appellant’s claimed invention is a matter [of] shape/design choice.” Ans. 10. Appellant argues “there is no teaching or suggestion in any of Heyman, Tintle or Gokturk that it would be desirable to provide the support structures disclosed therein in a dog chew.” Appeal Br. 12. We agree. Design choice may serve as a basis for obviousness where alternative elements or configurations in the prior art perform the same function as the claimed aspects with no unexpected results. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that the use of the claimed feature “would be an obvious matter of design choice” when it “solves no stated problem” and “presents no novel or unexpected result” over the disclosed alternatives). In the context of a rejection based on design choice, the relevant issue is whether the alleged differences between the claimed invention and the prior art “result in a difference in function or give unexpected results.” See In re Rice, 341 F.2d 309, 314 (CCPA 1965); see also Gardner, 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding that, where the only difference between the prior art and claims was recitation of relative dimensions of the claimed device and a device having the claimed dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from prior art device). 2 The Examiner does not rely on Garcia Martinez or Cupp for evidence concerning an internal support structure. See Non-Final Act. 7, 9. Appeal 2018-009212 Application 14/118,510 5 Here, the recited internal support structure is said to provide certain functions, including increased chewing time and reduced calorie content. Spec. 5. Thus, the Specification presents at least some evidence that the recited structure solves a stated problem. See id. at 2 (“It has been found that an internal support structure within the edible chew provides longer lasting time per gram of product.”). Conversely, the Examiner does not identify evidence or reasoning adequate to support a determination that the difference between a chew having no internal structure (Nie, Bunke) and the claimed chew having specified internal walls and struts would have been an obvious design choice. Appellant has identified reversible error in the Examiner’s conclusory finding that differences between the internal structure of the claimed invention and that of the prior art would have been an obvious design choice. Accordingly, the rejections are not sustained. CONCLUSION The Examiner’s decision rejecting claims 1, 4, 5, 8–11, 14–19, and 21–27 is reversed. Appeal 2018-009212 Application 14/118,510 6 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 8, 14–19, 24, 26, 27 103(a) Nie, Koo, Heyman, Tintle 1, 4, 5, 8, 14–19, 24, 26, 27 9–11, 25 103(a) Nie, Koo, Heyman, Tintle, Gokturk 9–11, 25 21–23 103(a) Bunke, Koo, Heyman, Tintle, Garcia Martinez, Cupp 21–23 Overall outcome 1, 4, 5, 8– 11, 14–19, 21–27 REVERSED Copy with citationCopy as parenthetical citation