Torney, Allan A. et al.

Patent Trials and Appeals Board

Aug 4, 2020

2018009098 (P.T.A.B. Aug. 4, 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.
11/817,384 09/23/2009 Allan A. Torney KKV0344 PCT US 1523
132446 7590 08/04/2020
Mars, Inc. c/o Mars Petcare
Theresa Shearin
2013 Ovation Parkway
Franklin, TN 37067
EXAMINER
SAYALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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 ALLAN A. TORNEY,
EMINE UNLU, NEIL WILLCOCKS,
KASIM ZUBAIR, and TIFFANY BIERER
__________

Appeal 2018-009098
Application 11/817,384
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision rejecting claims 1, 4, 5, 9, 26, and 34–43.2 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 Brief dated June 1, 2018 (“Br.”), at 2.
2 Claims 14–17 and 28 are also pending but have been withdrawn from
consideration.
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We AFFIRM.
The claims on appeal are directed to an edible pet chew. Independent claim
1 is reproduced below from the Claims Appendix to the Appeal Brief.
1. An edible pet chew comprising:
a) fibrous protein in an amount of about 30 to about 50% by
weight of the chew, wherein said fibrous protein consists of wheat
protein isolate, soy protein isolate, and sodium caseinate;
b) gelatin in an amount of about 15 to about 35% by weight
of the chew;
c) plasticizer in an amount of about 5 to about 40% by
weight of the chew; and
d) water
e) less than 5 % starch by weight of the chew.
Br. 17.
The Examiner maintains the following rejections on appeal:
(1) claims 1, 4, 5, 9, and 34–41 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wang 725,3 Wang 083,4 Burkwall, Jr.,5 Decker,6

3 US 6,379,725 B1 to Wang et al., issued April 30, 2002 (“Wang 725”).
4 US 6,455,083 B1 to Wang, issued September 24, 2002 (“Wang 083”).
5 US 4,044,158 to Burkwall, Jr., issued August 23, 1977 (“Burkwall, Jr.”).
6 Kimberly J. Decker, “Making a Better Coffee Creamer,” Food Product Design
(1999) (“Decker”).
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Weinberg,7 Ganjyal,8 Sigma-Aldrich,9 Axelrod 212,10 Axelrod 991,11 Cupp,12 and
Zubair;13
(2) claim 26 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Wang 725, Wang 083, Burkwall, Jr., Decker, Weinberg, Ganjyal,
Sigma-Aldrich, Axelrod 212, Axelrod 991, Cupp, Zubair, “Gelatin,”14 and Lee;15
(3) claim 42 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Wang 083, Ohyabu,16 and Marx;17 and
(4) claim 43 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Wang 083, Ohyabu, and “Lecithin for Food.”18
B. DISCUSSION
1. Rejections (1) and (2)
The Examiner finds Wang 725 discloses an edible pet chew made from a
protein-based thermoplastic composition containing plant and animal derived

7 US 7,579,038 B1 to Weinberg, issued August 25, 2009 (“Weinberg”).
8 US 2006/0210695 A1 to Ganjyal et al., published September 21, 2006
(“Ganjyal”).
9 Sigma-Aldrich Product Information Sheet, “Gelatin” (2006) (“Sigma-Aldrich”).
10 US 5,200,212 to Axelrod, issued April 6, 1993 (“Axelrod 212”).
11 US 6,056,991 to Axelrod, issued May 2, 2000 (“Axelrod 991”).
12 US 2004/0037944 A1 to Cupp et al., published February 26, 2004 (“Cupp”).
13 US 2007/0148282 A1 to Zubair et al., published June 28, 2007 (“Zubair”).
14 “Gelling Protein,” http://web.archive.org/web/20030203184241/
http://www.nutrition.co.th/feed_detail.htm> (2003) (“Gelatin”).
15 US 5,348,756 to Lee et al., issued September 20, 1994 (“Lee”).
16 US 4,430,356 to Ohyabu et al., issued February 7, 1984 (“Ohyabu”).
17 US 4,615,923 to Marx, issued October 7, 1986 (“Marx”).
18 “Lechithin for Food,” http://giiava.com/lechithin-for-food (last visited June 25,
2017) (“Lechithin for Food”).
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proteinic material.19 Non-Final Act. 4;20 Wang 725, at col. 1, l. 65–2, l. 2. Wang
725 discloses that examples of plant protein include soy protein isolate and wheat
gluten and examples of animal protein include casein and gelatin. Non-Final Act.
4; Wang 725, col. 2, ll. 10–16.
Wang 725 discloses that the pet chew comprises about 70–80 wt. %
protein21 which, the Examiner finds, includes “a combination of soybean protein
and gelatin with gelatin comprising 0–75 wt% of the total protein.” Non-Final Act.
7 (citing Wang 725, Table 2). The Examiner finds that the mechanical properties
of the pet chew are enhanced with increased gelatin content. Non-Final Act. 7.
The Examiner also finds Axelrod discloses an edible dog chew that includes
gelatin wherein “‘the gelatin content effects the hardness of the product, [i.e.,] the
higher the content, the softer the product.’” Non-Final Act. 7. Based on those
findings, the Examiner finds that one of ordinary skill in the art would have
understood that the amount of gelatin in the dog chew of Wang 725 is a result-
effective variable. Non-Final Act. 7.

19 The Examiner also finds Wang 083 discloses an edible pet chew comprising a
combination of plant and animal protein. Non-Final Act. 4. According to the
Appellant, Wang 083 is a continuation-in-part of Wang 725. Br. 8. The Appellant
argues that Wang 083 and Wang 725 are not properly combined in the rejection on
appeal because the mutual inventor of both Wang references, presumably being of
ordinary skill in the art of pet chews, did not combine the Wang references. Br. 8.
Suffice it to say that obviousness, under 35 U.S.C. § 103, is evaluated at the time
of an Applicant’s invention, not at the time of a prior art invention. In re Prater,
415 F.2d 1393, 1405 (CCPA 1969). For that reason, the motivation of Wang at the
time Wang’s pet chews were invented is of no moment in the obviousness rejection
of claim 1. Moreover, we find that the teachings of Wang 083 are cumulative of
the teachings of Wang 725. Therefore, we focus our attention on Wang 725 in this
Decision on Appeal.
20 Non-Final Office Action dated December 5, 2017.
21 Wang 725, at col. 3, ll. 14–17.
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The Examiner also finds that the pet chew disclosed in Wang 725 comprises
about 5 to 30 wt. % plasticizer. Non-Final Act. 4 (citing Wang 725, at col. 5, ll. 3–
4). We find that the amount of plasticizer disclosed in Wang 725 is encompassed
by the claimed range (i.e., “about 5 to about 40% by weight of the chew”22).
The Examiner does not find that the pet chew disclosed in Wang 725
comprises starch. The claimed amount of starch (i.e., “less than 5 % starch by
weight of the chew”23), however, encompasses 0 % starch. Moreover, the
Examiner relies on Axelrod and Cupp to show that, at the time of the Appellant’s
invention, it was known in the art to include about 5 % starch in a protein-based
pet chew of the type disclosed in Wang 725. Non-Final Act. 7–8.
The Appellant does not direct us to any error in the Examiner’s combination
of Wang 725, Axelrod, and Cupp. Rather, the Appellant argues that one of
ordinary skill in the art would not have been motivated to increase the amount of
starch taught in Wang 725, without also increasing the amount of plasticizer. Br.
9. For support, the Appellant relies on the following disclosure in Balaz:24
The quantitative range of plasticizing agent utilized in the present
invention ranges from about 5 to about 25 percent of the product.
When the level of amylaceous [i.e., having the characteristics of
starch] ingredients is low, say at about 26-27 percent of the product
weight, a suitable texture and shelf-life may be obtained by using low
to intermediate levels of plasticizing agent, i.e., 5 to 15 percent,
whereas when the level of amylaceous ingredients is high, then it may
be necessary to use higher levels of plasticizing agents.
Br. 9 (citing Balaz, col. 3, ll. 55–63) (emphasis omitted).

22 Br. 17.
23 Br. 17.
24 US 3,959,511, issued May 25, 1976.
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As discussed above, the pet chew disclosed in Wang 725 comprises an
amount of starch (i.e., 0 %) and an amount of plasticizer (i.e., about 5 to 30 wt. %)
within the claimed ranges. Therefore, it is not necessary to increase the amount of
starch in Wang 725 to satisfy the limitations recited in claim 1. Alternatively, in
the rejection on appeal, the Examiner modifies the pet chew of Wang 725 to
include about 5 % starch based on the teachings of Axelrod and Cupp. Non-Final
Act. 4, 7–8. To the extent that the Appellant is arguing that the teachings of Balaz
would have led one of ordinary skill in the art to increase the amount of plasticizer
in the modified pet chew of Wang 725, the Examiner finds that Balaz, in contrast
to the pet chew of Wang 725, does not contain gelatin. Ans. 17.25 The Examiner
finds that both gelatin and plasticizer “provide texture, and the amount needed
would have to take into consideration both gelatin and plasticizer.” Ans. 17. For
that reason, the Examiner finds that the teachings of Balaz provide no guidance in
the rejection on appeal. Ans. 17. The Appellant does not direct us to any evidence
to the contrary.
Finally, the Appellant criticizes the Examiner’s application of a dozen
references to support the rejection of claim 1 and argues that the Examiner has
failed to articulate reasons for combining the references. Br. 13, 15.
Significantly, the Appellant does not identify, with any specificity, which
references were combined without sufficient reasoning. In that regard, we find that
the Examiner does provide reasons for combining the references. See, e.g., Non-
Final Act. 5 (relying on Burkwall, Jr. and Decker to show the advantages of
replacing the casein in Wang 725 with sodium caseinate). The Appellant does not
argue that those reasons are erroneous. Therefore, the mere fact that the Examiner

25 Examiner’s Answer dated July 27, 2018.
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applied a dozen references in the rejection of claim 1 is not persuasive of reversible
error. See In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) (the large number of
cited references alone does not negate the obviousness of the combination).
For the reasons set forth above, the obviousness rejection of claim 1 is
sustained. The Appellant does not present arguments in support of the separate
patentability of any of claims 4, 5, 9, 26, and 34–41. Therefore, the obviousness
rejections of claims 4, 5, 9, 26, and 34–41 are also sustained.
2. Rejections (3) and (4)
The Appellant argues that claims 42 and 43 recite only vegetable and animal
protein, respectively, whereas Wang 083 requires a combination of vegetable and
animal protein. Br. 11. The Appellant argues that the Examiner has not explained
why one of ordinary skill in the art would have been motivated to remove either
the animal protein or the vegetable protein from the pet chew of Wang 083. Br.
11.
The Appellant’s argument is not persuasive of reversible error. Claim 42
recites a composition comprising, inter alia, “from about 30 to about 50% of a
fibrous protein selected from wheat protein, wheat gluten, corn zein, corn gluten,
soy protein, peanut protein, and mixtures of these.” Br. 18. Claim 43 recites a
composition comprising, inter alia, “from about 30 to about 50% of a fibrous
protein selected from casein, keratin, sodium caseinate and mixtures of these.” Br.
18. Neither claim expressly excludes the addition of animal protein (claim 42) or
plant protein (claim 43). Indeed, each claim uses the transitional term
“comprising,” which signals that the recited ingredients are essential, but that other
ingredients may be added and still remain within the scope of the claim.
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
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Wang 083 discloses that the pet chew, in one embodiment, contains about 30
to 50 wt. % of a combination of plant and animal protein. Wang 083, at col. 5, ll.
30–33. However, the Examiner correctly finds that Wang 083 also discloses that
soy protein may be used alone in one embodiment of the invention. Ans. 19; see
also Wang 083, at col. 5, ll. 55–57 (disclosing that “[s]oybean protein may be used
alone . . . or in combination with other plant or animal proteins” (emphasis
added)). Likewise, Wang 083 discloses that “[a]nimal proteins may be used alone
or in combination with the plant proteins.” Wang 083, col. 5, ll. 66–67 (emphasis
added); see also Wang 083, at col. 5, l. 67–col. 6, l. 1 (examples of animal protein
include casein and keratin).
The obviousness rejections of claims 42 and 43 are sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 9, 34–
41
103(a) Wang 725, Wang
083, Burkwall, Jr.,
Decker, Weinberg,
Ganjyal, Sigma-
Aldrich, Axelrod
212, Axelrod 991,
Cupp, Zubair
1, 4, 5, 9, 34–
41

26 103(a) Wang 725, Wang
083, Burkwall, Jr.,
Decker, Weinberg,
Ganjyal, Sigma-
Aldrich, Axelrod
212, Axelrod 991,
26
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Cupp, Zubair,
“Gelatin,” Lee
42 103(a) Wang 083,
Ohyabu, Marx
42
43 103(a) Wang 083,
Ohyabu,
“Lechithin for
Food”
43
Overall
Outcome
1, 4, 5, 9, 26,
34–43

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).
AFFIRMED