Nestec SA

Patent Trials and Appeals Board

Sep 17, 2020

2019006721 (P.T.A.B. Sep. 17, 2020)

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.
14/946,205 11/19/2015 Yuanlong Pan 13730-US-NP 2704
69099 7590 09/17/2020
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
09/17/2020 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):
purinapatentmail@purina.nestle.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YUANLONG PAN, HUI XU, and
SANDEEP BHATNAGAR
____________________

Appeal 2019–006721
Application 14/946,205
Technology Center 1700
____________________

Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–12. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).2
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nestec
S.A. (Appeal Br. 2).
2 A Decision affirming the Examiner’s § 103 rejections of related subject
matter in a co-pending application was mailed concurrently with this one
(Appeal 2019–006710).
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Independent claim 1 below is illustrative of the subject matter on
appeal:
1. A method for promoting lean body mass, minimizing
body fat gain, and maintaining weight without limiting
caloric intake in an obese or overweight cat or dog, the
method comprising:
administering to the obese or overweight cat or dog a pet
food composition in an amount from 105% to 200% of the
baseline maintenance energy requirement (MER) of the
obese or overweight cat or dog, the pet food composition
comprising:
from about 30% to about 65% protein,
from about 10% to about 20% carbohydrate, and
from about 10% to about 25% fat,
wherein the protein and the carbohydrate are in a weight
ratio from about 4:1 to about 10:1. 3

The following rejections under 35 U.S.C. § 112 are on appeal:

1) claims 1–12, first paragraph, as failing to comply with the written
description requirement; and
2) claims 1–12, second paragraph, as indefinite.

The following rejections under 35 U.S.C. § 103 are on appeal:

3) claims 1–12 as unpatentable over the combined prior art of
Schoenherr (US 2005/0025857 A1, published Feb. 3, 2005), Hill
(Richard C. Hill, Challenges in Measuring Energy Expenditure in
Companion Animals: A Clinician's Perspective, J. NUTR. 136 (2006)),
Blanchard (Geraldine Blanchard et al., Rapid Weight Loss with a

3 Appellant’s Specification states that “about” encompasses plus or minus
20% (Spec. ¶ 27).
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High-Protein Low-Energy Diet Allows the Recovery of Ideal Body
Composition and Insulin Sensitivity in Obese Dogs, J. NUTR. 134
(2004)), Serisier (S. Serisier et al., Maintenance energy requirements
in miniature colony dogs, J. ANIM. PHY AND ANIM. NUTR., VOL. 97
(2013)), and Vasconcellos (Ricardo S. Vasconcellos et al., Protein
Intake During Weight Loss Influences the Energy Required for Weight
Loss and Maintenance in Cats, J NUTR. 139 (2009));
4) claim 1–12 as unpatentable over the combined prior art of Bui (US
2007/0286889 A1, published Dec. 13, 2007), Hill, Serisier, and
Vasconcellos; with claims 7 and 10 rejected again adding Tissot-
Favre (US 2014/0134135 A1, published May 15, 2014);
5) claims 1–6, 8, 11, and 12 as unpatentable over the combined prior
art of Diez (Marianne Diez, Weight Loss in Obese Dogs: Evaluation
of a High-Protein, Low-Carbohydrate Diet, J. NUTR. 132 (2002)),
German (Alexander J. German et al., Dietary Energy Restriction and
Successful Weight Loss in Obese Client-0,vned Dogs, J. VET. INTERN
MED. (2007)), Hill, Serisier, and Vasconcellos;
6) claims 7, 9, and 10 as unpatentable over the combined prior art of
Diez, German, Hill, Serisier, Vasconcellos, and Tissot-Favre.
The Examiner also rejected claims 1–12 on the basis of nonstatutory
double patenting (Final Act. 24). As pointed out by the Examiner, Appellant
did not address the rejection and thus failed to show any error therein (Ans.
374). Thus, this rejection is summarily affirmed.

4 All references to the Answer herein are to the Answer mailed July 19,
2019.
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ANALYSIS
The § 112 rejection for failing to comply with the written description
requirement
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991)).
Claim 1 recites that the pet food composition of claim 1 is fed in an
amount “from 105% to 200% of the baseline energy requirement (MER) of
the obese or overweight cat or dog” (Appeal Br. 29, Claims App.). There is
no dispute that the Specification explicitly describes this limitation (e.g.,
Spec. ¶ 41). The Examiner’s rejection is based on the circumstances that
MER is at best an estimate that may be difficult to establish or calculate with
precision (Ans. 4, 5). The Examiner relies on paragraph 39 of the
Specification which gives various non-limiting examples of how to calculate
the MER of humans and animals (Ans. 4). The Examiner also questions the
examples for a dog and a cat set out in that paragraph (id.).
Appellant contends that even though there are various ways to
determine the MER, one of ordinary skill in the art would have known these
ways of determining or calculating the MER of an animal, and since the
Specification explicitly states feeding a dog or cat 105 to 200% of their
respective MER, this adequately shows that Appellant had possession of a
the claimed subject matter (Appeal Br. 6, 7; Reply Br. 2, 3).
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While we appreciate the Examiner’s concern with the examples given
for a dog and a cat in paragraph 39 of the Specification, there is adequate
evidence that one of ordinary skill in the art would have known how to
determine the MER of a dog or a cat (e.g., see Appeal Br. 7). Indeed,
Appellant’s Specification describes that baseline MER may be “determined
over a period of [time] using [a] feeding trial; or indirect or direct
calorimetry” (Spec. ¶ 16; see also claim 2). We agree with the Examiner
that determining such a MER is at best an estimate, dependent on various
factors (e.g., Ans. 26). However, in our view, this situation pertains to the
breadth of the claimed subject matter, rather than to a question of written
description. The broadest reasonable interpretation of the claim language in
light of the Specification permits one of ordinary skill in the art to determine
the MER in any known manner. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (the scope of the claims in patent applications is
determined by giving claims their broadest reasonable construction in light
of the specification as it would be interpreted by one of ordinary skill in the
art); see also Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
(the specification is always highly relevant to the claim construction
analysis, and is usually dispositive as it is the single best guide to the
meaning of any disputed terms).
Thus, the description of determining baseline MER in Appellant’s
Specification appears to be as precise as the subject matter permits (e.g.,
Spec. ¶¶ 16, 39). Accordingly, we agree with Appellant that a
preponderance of the evidence supports Appellant’s position that one of
ordinary skill in the art would have understood that Appellant was in
possession of the claimed subject matter. Cf. Union Oil Co. of Cal. v. Atl.
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Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (The claim need not use
the same words as the specification; it is enough that one of ordinary skill in
the art would recognize that the inventor invented what is claimed).
Accordingly, we reverse the Examiner’s § 112 rejection for lack of
written description.

The § 112 rejection for indefiniteness
During prosecution, claims are interpreted using “the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claims are definite if they
“set out and circumscribe a particular area with a reasonable degree of
precision and particularity. It is here where the definiteness of the language
employed must be analyzed—not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). However,
“breadth [of a claim] is not to be equated with indefiniteness.” In re Miller,
441 F.2d 689, 693 (CCPA 1971).
The Examiner found the language of claim 1 indefinite, essentially for
the same reasons the Examiner found the Specification lacked written
description support; that is, since determining the baseline MER is at best an
estimate and the claim requires feeding an amount of food from 105% to
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200% of the baseline MER, one would not know the metes and bounds of
the claim.
Claim 1 is broad in the sense that it reads on a method of feeding
105% to 200 % of the baseline MER which may be determined by any
known method of determining baseline MER for a dog or cat. However,
claim 1 is not indefinite on the basis of its breadth alone. In re Miller, 441
F.2d at 693; see also In re Gardner, 427 F.2d 786, 788 (CCPA 1970)
(“[B]readth is not indefiniteness.”). The Examiner has not explained
sufficiently why one of ordinary skill in the art would not have understood
how to use any one of the known method(s) of determining a baseline MER
in the manner described in the Specification and in Appellant’s response
(Spec. ¶¶ 16, 39; Appeal Br. 9, 10; Reply Br. 5, 6). As discussed previously,
while we appreciate the Examiner’s concern with the examples given for a
dog and a cat in paragraph 39 of the Specification,5 Appellant’s
Specification describes that baseline MER may be “determined over a period
of [time] using [a] feeding trial; or indirect or direct calorimetry” (Spec.
¶ 16).
Appellant has also persuasively reasoned that the “baseline MER”
language used in claim 1 “is as precise as the subject matter permits”,

5 These examples include an example formula for a dog and a cat,
respectively, which each use a single number to multiply with a dog or cat’s
weight. The Examiner cites to an article that says it is impossible to exactly
determine how much calories a pet needs (e.g., Ans. 5)). However, even
given that any specific MER will be an estimate that may be determined by
different methods, a preponderance of the evidence establishes that one of
ordinary skill in the art would have known how to determine such a baseline
MER (estimate) for any specific dog or cat. Indeed, no rejection is before us
based on lack of enablement.
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similar to the situation in Orthokinetics Inc. v. Safety Travel Chairs Inc., 806
F. 2d 1565, 1576 (Fed. Circ. 1986) (The court found the claim phrase “so
dimensioned as to be insertable through the space between the doorframe of
an automobile and one of the seats thereof” to be as accurate as the subject
matter permitted, since automobiles are of various sizes) (see, e.g., Appeal
Br. 9; Reply Br. 5, 6).
In light of these circumstances, we agree with Appellant that one of
ordinary skill in the art would have understood the broad scope of the claim
in light of the Specification. Accordingly, we cannot sustain the Examiner’s
rejection of the claims as being indefinite.

The § 103 Rejections
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellant’s
claims is unpatentable over the applied prior art. We sustain all of the
Examiner’s § 103(a) rejections essentially for the reasons set out by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
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expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed.
Cir. 1992).
Appellant contends that each § 103 rejection, whether based on
Schoenherr or Bui or Diez/German, is deficient for the same reasons, which
reasons focus on the teachings of Serisier and/or Vasconcellos. Specifically,
Appellant argues that “At most, Serisier teaches a diet that is higher than a
preceding energy intake restriction in dogs that are no longer obese or
overweight” (Appeal Br. 12). Similarly, Appellant argues that Vasconcellos
suggests feeding cats an MER recommended for obese cats after obese adult
cats lost weight (id.), such that there is no teaching or suggestion of feeding
an obese or overweight cat or dog 105% to 200% of their MER as recited in
claim 1.
These arguments are not persuasive of reversible error in the
Examiner’s obviousness rejections because they fail to fully address the
applied prior art, and the inferences that one of ordinary skill in the art
would have made therefrom. Each of Schoenherr and Bui and Diez/German
describes a pet food composition useful for weight management with the
claimed components in amounts that overlap each of the claimed ranges. As
pointed out by the Examiner, Serisier describes that MER increased by about
15% to 30% during a weight loss program, “likely related to increased
metabolic efficiencies” (Serisier 65 (2nd column, last paragraph); e.g., Ans.
9). Thus, for example only, one of ordinary skill would readily infer that an
obese animal may still be overweight after weight loss, yet its MER
increased such that one is now feeding above its baseline MER.
Vasconcellos also exemplifies that high protein diets allow a higher energy
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intake and that more energy may be required after weight loss to maintain
weight (that is, an increase in MER) (Ans. 9, 10; Vasconcellos, Abstr.)
Appellant does not dispute the Examiner’s obviousness determination
that through the use of no more than ordinary creativity, one would have
used amounts of protein and carbohydrate such that the claimed range of
ratios would have been achieved/selected based on either one of Schoenherr
or Bui or Diez/German (e.g., Ans. 8, 14). Serisier and Vasconcellos were
applied by the Examiner to exemplify that one of ordinary skill in the art
would have known that as an animal loses weight, its MER increases such
that it would have been within the level of ordinary skill to feed an animal at
least its MER, and 105% is so close to 100% especially given the breadth of
the MER estimate (e.g., Ans. 9, 14, 19, 28).
It is also within the ordinary creativity of an artisan to feed an animal
more of its baseline MER, especially in light of the fact that its MER may
increase during weight loss. Winner Int'l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”). While a pet may not lose as much weight if one
feeds it more than its baseline MER, it is common knowledge that a high
protein diet may be beneficial for increased muscle mass. See also In re
Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966) (court affirmed
rejections based on art which rendered the claimed invention obvious to
those of ordinary skill in the art despite the fact that the art teachings relied
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upon were phrased in terms of a non-preferred embodiment or as being
unsatisfactory for the intended purpose).
One would have readily appreciated that there are only three options;
feed an overweight animal its MER, or more or less than its MER. Given
the circumstances established in the prior art, e.g., that any specific pet’s
MER is an estimate (e.g., Ans. 14), as well as the fact that it is well known
that increased protein/energy is desirable/necessary to increase muscle mass,
feeding an overweight or obese dog or cat 105% more than their baseline
MER is within the ordinary skill and common knowledge of an artisan. That
is to say, with no more than the use of ordinary creativity and inferences
based on the applied prior art in each rejection, one would have known that
feeding a cat or dog more than its baseline MER is an option. KSR Int’l, 550
U.S. at 418; see also id. at 421 (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”); Ball Aerosol & Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(Under the flexible inquiry set forth by the Supreme Court, the PTO must
take account of “the inferences and creative steps,” as well as routine steps,
that an ordinary artisan would employ.); see also KSR Int’l, 550 U.S. at 417
(It is a well-established principle that, for an improvement to be patentable,
it must be more than the predictable use of prior art elements, or steps,
according to their established functions).
While Appellant does present separate sections for various claims
dependent from claim 1 (e.g., Appeal Br. 14–16), the remarks therein
amount to no more than a recounting of the claim limitations. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
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claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
Accordingly, we affirm all of the Examiner’s § 103 rejections.
CONCLUSION
In summary:
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Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–12
Nonstatutory double
patenting; Ser. No.
14/946,185,
Blanchard,
Vasconcellos
1–12

1–12 112 Written Description 1–12
1–12 112 Indefiniteness 1–12
1–12 103
Schoenherr, Hill,
Blanchard, Serisier,
Vasconcellos
1–12

1–12 103 Bui, Hill, Serisier, Vasconcellos 1–12

7, 10 103
Bui, Hill, Serisier,
Vasconcellos,
Tissot-Favre
7, 10

1–6, 8, 11, 12 103
Diez, German, Hill,
Serisier,
Vasconcellos
1–6, 8, 11,
12

7, 9, 10 103
Diez, German, Hill,
Serisier,
Vasconcellos,
Tissot-Favre
7, 9, 10

Overall
Outcome
1–12

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED