DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-7, 9 and 17-19 are pending and under examination. Claims 8 and 10-16 are cancelled. Any objections or rejections not repeated below have been withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites, “corn cub” three times, once in line 12, line 13 and line 14. The word “cub” is a misspelling of “cob.” The limitation should read as follows, “corn cob.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7, 9 and 17-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the following, “wherein said plurality of pre-weakening features provide for the formation of smaller sections of said cylindrical corn cub of uniform size.” However, upon further review of the specification it is found that the limitation, specifically regarding “uniform size,” is never disclosed in the specification. The specification does not discuss that when the corn cob is broken into smaller sections that these sections are of a “uniform size.” The specification on pg. 5, lines 1-3, does state that the “corn cobs herein are preferably provided so that they include one or more pre-weakening features such that upon chewing by the animal, the corn cob will itself break apart into one or a plurality of relatively smaller pieces” but there is no mention of a “uniform size” of these pieces. Thus, the limitation of claim 21, specifically the recitation of “uniform size,” is considered new matter since the limitation is not present in the disclosure.
Claims 2-7, 9 and 17-19 are included in the rejection because they depend from a rejected base claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7, 9 and 17-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “uniform size” in claim 1 is a relative term which renders the claim indefinite. The term “uniform size” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The size of the smaller sections of corn cob that are formed from the cylindrical corn cob has been rendered indefinite by the use of the term, “uniform size.”
Claims 2-7, 9 and 17-19 are included in the rejection because they depend from a rejected base claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over McMorris US 6889628, in view of Doerr US 20140363537, Townsend US 20120160180 and Koo et al. US 20110290197.
Regarding claim 1, McMorris teaches a pet chew (animal chew toy, C1 line 31) comprising: a corn cob composed of lignocellulosic material with additives infused and impregnated in said lignocellulosic material of said corn cob (a corn cob soaked in a liquid medium containing additives including flavoring agent, salt and/or vitamins, and other nutrients; C1 line 39-43). Regarding the recitation of “lignocellulosic material” in lines 1-2, and again in lines 2-3, as noted in the specification, pg. 2 Line:11, corn cobs are a lignocellulosic material. The pet chew of McMorris is a corn cob and corn cobs are made of lignocellulosic material, so it is considered to meet the claimed limitation of “lignocellulosic material” absent evidence to the contrary. Additionally, the soaked corn cob, which is composed of lignocellulosic material, is infused and impregnated with the additives as the corn cob is soaked in the liquid medium. Therefore, the additives are infused and impregnated in said lignocellulosic material of said corn cob.
However, McMorris does not teach the corn cob containing one or more digestive enzymes within said lignocellulosic material of said corn cob, such as adding one or more digestive enzymes as an additive.
Doerr teaches a pet chew ([0005]) containing one or more digestive enzymes (amylase in the filling material of the pet chew; [0007], [0013]), where the amylase is added to provide a softer pet chew product, to maintain chewiness, and not compromise durability ([0007], [0013]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McMorris by Doerr by adding at least one digestive enzyme as an additive to be infused and impregnated in the lignocellulosic material of the corn cob. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to do so because Doerr recognizes adding an enzyme to soften a pet chew product.
McMorris does not teach the corn cob includes a plurality of pre-weakening features which upon chewing by an animal, the corn cob breaks apart into one or a plurality of relative smaller pieces.
Townsend teaches an edible pet chew ([0004]) that includes a plurality of pre-weakening features which upon chewing by an animal, the pet chew breaks apart into one or a plurality of relative smaller pieces (with one or more lines of weakness formed along the body of the pet chew to serve as pre-determined fracture lines along which the pet chew will break into smaller pieces; [0010]), to provide a size of breakaway pieces of the pet chew that can be more easily controlled and present less risk of choking or intestinal blockage to the pet [0011].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McMorris in view of Doerr to incorporate the teachings of Townsend by adding pre-weakening features/pre-determined fracture lines to the corn cob of modified McMorris because this provides a size of breakaway pieces of the pet chew that can be more easily controlled and present less risk of choking or intestinal blockage to the pet, as recognized by Townsend [0011].
McMorris speaks to the corn cob (a shelled corn cob, C2 lines 5-10). The corn cob composition of McMorris does not state that it is cylindrical, but does state it has a diameter and can be left entirely in its original size (C1 lines 34-40). Thus, the reference would have necessarily taught a cylindrical corn cob, which would have the shape of a corn cob and a diameter. See MPEP 2112. "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
McMorris teaches the corn cob has a length, a cross-section perpendicular to said length, and a corn cob center running along said length through a center of the cross-section (the cob retains its full cross section and can be left entirely in its original size or cut to predetermined lengths, C1 lines 34-40).
McMorris in view of Doerr and Townsend teach that the corn cob has a plurality of pre-weakening features, as shown in the rejection above. However, modified McMorris does not teach the plurality of pre-weakening features run along said length of the corn cob and extend radially inward towards the corn cob center but not completely through said corn cob center wherein said plurality of pre-weakening features located on one side of said cylindrical corn cob are aligned with a plurality of pre-weakening features located on an opposite side of said cylindrical corn cob.
Koo teaches a pet chew product (Abstract) that has a plurality of pre-weakening features (core units, Fig. 1 Character 21). Koo discloses the plurality of pre-weakening features run along the length of the chew (core units 21, run along the upper body and lower body 10, Fig. 1 Characters 10 and 21) and said plurality of pre-weakening features extend radially inward towards the center but not completely through the center wherein said plurality of pre-weakening features located on one side of said chew are aligned with a plurality of pre-weakening features located on the opposite side of said chew (each core unit 21, includes a groove 22 and a protrusion hill 23, where these core units 21 that include grooves 22 are aligned in a consistent arrangement with core units 21 on the opposite side of said chew; Fig. 1 Characters 21, 22 and 23). As shown in Annotated Figure 1 of Koo below, the grooves 22 and protrusion hills 23 of the core units run along the length and extend radially inward towards the center of the chew “C” (the center is also noted by a dashed line running through the center of the chew), but not completely through the center. Koo teaches the structure of the pet chew, with the pre-weakening features running along the length of the chew (core units 21), allows the pet to destroy the chew and ingested the chew little by little without leaving debris [0046].
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Annotated Figure 1
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McMorris in view of Doerr and Townsend to incorporate the teachings of Koo to have added one or more pre-weakening features along the length of the cylindrical corn cob and extend radially inwardly towards the center but not through the center of the cob where the pre-weakening features located on one side of the cob are aligned with the pre-weakening features on the opposite side of the cylindrical corn cob, because the structure of the pet chew would be destroyed or broken apart and ingested little by little without leaving debris, as recognized by Koo [0046].
Regarding the recitation “wherein said plurality of pre-weakening features provide for the formation of smaller sections of said cylindrical corn cob of uniform size,” as long as the structure can be or is capable of forming smaller sections of uniform size it is considered to meet the claim. As discussed above, Townsend teaches an edible pet chew ([0004]) that includes one or more lines of weakness formed along the body of the pet chew to serve as pre-determined fracture lines along which the pet chew will break into smaller pieces [0010]. Thus, modified McMorris is considered to meet the claim limitation of “wherein said plurality of pre-weakening features provide for the formation of smaller sections of said cylindrical corn cob of uniform size.”
Regarding claim 2, Doerr speaks to one or more digestive enzymes being present in the filling material, as discussed above in claim 1, with amylase being between 0.10% and 0.45% ([0015]), which falls completely within the claimed range of 0.1-50.0% by weight of said corn cob.
Regarding claim 3, Doerr speaks to the pet chew ([0005]) wherein one or more digestive enzymes are present, as discussed above in claim 1, where the enzymes are selected from the group consisting of cellulase, amylase, lipase or protease (amylase being present in the filling material; [0007] [0013]).
Regarding claim 4, McMorris as modified by Doerr, Townsend and Koo, teaches the invention as discussed above in claim 1. Further, Doerr speaks to the pet chew ([0005]) wherein said one or more digestive enzymes comprises a mixture of at least two different digestive enzymes selected from one of a cellulase, one of an amylase, one of a lipase or one of a protease (one or more digestive enzymes, amylase and protease, being present in the filling material [0012], [0019]). Doerr recognizes adding enzymes to soften the pet chew product [0013], [0019].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified McMorris to incorporate the teachings of Doerr by adding at least two digestive enzymes as an additive resulting in the corn cob pet chew of McMorris containing two or more digestive enzymes infused in the lignocellulosic material, specifically with amylase and protease, as taught by Doerr, because Doerr recognizes adding an enzyme to soften a pet chew product [0013], [0019].
Regarding claim 7, modified McMorris teaches the pet chew of claim 1, as discussed above. McMorris teaches the pet chew further includes one or more flavorants, oils, attractants, minerals or vitamins (flavoring agent, salt, vitamins, and other nutrients are added to the corn cob; C1 line 31-43).
Regarding claim 17, McMorris as modified by Doerr, Townsend and Koo, teaches the invention as discussed above in claim 1, where Townsend speaks to pre-weakening features (lines of weakness) on the pet chew. Townsend specifically teaches six pre-weakening features (lines of weakness) on the pet chew (Figs. 4-6, Characters: 124a, 124b, 124c, 124d, 124e, 124f; [0027]), which falls within the claimed range of 2-25 pre-weakening features.
Claims 5, 6, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over McMorris US 6889628, in view of Doerr US 20140363537, Townsend US 20120160180 and Koo et al. US 20110290197, as applied to claim 1 above, and further in view of Bowser US 20110142993.
Regarding claim 5, modified McMorris teaches the pet chew of claim 1, as discussed above. McMorris does not teach one or more digestive enzymes comprises a mixture of at least three different digestive enzymes selected from one of a cellulase, one of an amylase, and one of a lipase or one of a protease.
Bowser teaches an edible pet chew (Claim 1; [0023]), where digestive enzymes have been infused into the pet chew (Claims 1 and 5-7; [0024]). Bowser states the pet chew comprises digestive enzymes and the “arbitrary enzymes” include one of a cellulase, one of an amylase, and one of a lipase or one of a protease which can be a combination ([0024], [0025]). Bowser recognizes that a mixture of enzymes helps aid in the digestibility of the pet chew chunks or pieces that have been swallowed un-chewed, broken off or under-chewed [0023].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified McMorris in view of Doerr, Townsend and Koo to incorporate the teachings of Bowser by adding at least three of the four following digestive enzymes: cellulase, amylase, lipase and protease as an additive for infusion in the corn cob pet chew because this helps aid in the digestibility of the pet chew chunks or pieces that have been swallowed un-chewed, broken off or under-chewed, as disclosed by Bowser [0023].
Regarding claim 6, modified McMorris teaches the pet chew of claim 1, as discussed above. McMorris does not teach one or more digestive enzymes comprises the following four different enzymes: a cellulase enzyme, an amylase enzyme, a lipase enzyme and a protease enzyme.
Bowser teaches an edible pet chew (Claim 1; [0023]), where digestive enzymes have been infused into the pet chew (Claims 1 and 5-7; [0024]). Bowser states the pet chew comprises digestive enzymes and the “arbitrary enzymes” include cellulase, amylase, lipase and protease, which can be a combination [0025]. Bowser recognizes that a mixture of enzymes helps aid in the digestibility of the pet chew chunks or pieces that have been swallowed un-chewed, broken off or under-chewed [0023].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified McMorris in view of Doerr, Townsend and Koo, to incorporate the teachings of Bowser by adding the following digestive enzymes: cellulase, amylase, lipase and protease as an additive for infusion in the corn cob pet chew because this helps aid in the digestibility of the pet chew chunks or pieces that have been swallowed un-chewed, broken off or under-chewed, as disclosed by Bowser [0023].
Regarding claim 18, modified McMorris teaches the pet chew of claim 1, as discussed above. McMorris does not teach one or more digestive enzymes comprises cellulase.
Bowser teaches an edible pet chew (Claim 1; [0023]), where digestive enzymes have been infused into the pet chew (Claims 1 and 5-7; [0024]). Bowser states the pet chew comprises digestive enzymes and the “arbitrary enzymes” which include cellulase [0025]. Bowser recognizes that a mixture of enzymes helps aid in the digestibility of the pet chew chunks or pieces that have been swallowed un-chewed, broken off or under-chewed [0023].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified McMorris in view of Doerr, Townsend and Koo, to incorporate the teachings of Bowser by adding the digestive enzyme cellulase as an additive for infusion in the corn cob pet chew because this helps aid in the digestibility of the pet chew chunks or pieces that have been swallowed un-chewed, broken off or under-chewed, as disclosed by Bowser [0023].
Regarding claim 19, modified McMorris teaches the pet chew of claim 18, as discussed above. McMorris does not teach cellulase accounts for at least 50% or more of the enzymes present in the pet chew.
Bowser teaches an edible pet chew (Claim 1; [0023]), where digestive enzymes have been infused into the pet chew (Claims 1 and 5-7; [0024]). Bowser does not expressly state the pet chew comprises cellulase wherein the cellulase accounts for at least 50% or more of the enzymes present in the pet chew.
However, Bowser does disclose the pet chew can contain a single digestive enzyme and the enzyme can be cellulase [0025]. Therefore, the pet chew with one enzyme, cellulase, would contain 100% cellulase of the enzymes present in the pet chew. This is within the claimed range of at least 50% or more of the enzymes present in said pet chew.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified McMorris in view of Doerr, Townsend and Koo, to incorporate the teachings of Bowser by adding the digestive enzyme cellulase as 100% of the enzyme present, which would be an additive for infusion in the corn cob pet because the digestive enzyme cellulase would aid in the digestibility of the pet chew chunks or pieces that have been swallowed un-chewed, broken off or under-chewed, as disclosed by Bowser [0023].
Also, the amount of digestive enzymes can be adjusted to meet the needs at hand. Noting, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over McMorris US 6889628, in view of Doerr US 20140363537, Townsend US 20120160180 and Koo et al. US 20110290197, as applied to claim 1 above, and further in view of Chen US 20180279652.
Regarding claim 9, modified McMorris teaches the pet chew of claim 1, as discussed above. McMorris does not teach the corn cob having a surface that includes dried meat.
Chen teaches an edible pet chew ([0005]) wherein the surface includes dried meat (with a meat pulp material stuck to an outside surface of the base part of the pet chew; [0006-0008]), where adding meat makes the pet chew desirable to dogs [0005].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McMorris in view of Doerr, Townsend and Koo to incorporate the teachings of Chen by adding meat pulp material stuck to the outside surface of the pet chew base because it would make the pet chew desirable to dogs, as recognized by Chen [0005].
Response to Arguments
Applicant’s arguments filed July 22, 2026 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 6-7 of their remarks, that the core units of Koo do not extend radially inward toward the axis. Applicant contends that one of ordinary skill in the art would understand that the phrase “extend radially inward” refers to extending towards a central axis in a “spoke-like manner,” and that this requires that an extended trajectory of the pre-weakening features intersects the central axis at some point. Applicant continues, stating that the core units of Koo extend perpendicularly towards a central plane of the pet chew and would never intersect the central axis. However, the Office disagrees for the following reasons.
The limitation of claim 1 reads as follows, “said plurality of pre-weakening features extend radially inward towards said corn cob center.” The pre-weakening features of Koo do extend radially inward. As shown by annotated Fig. 1 above, the core units 20, 21, extend radially inward (i.e. toward the annotated longitudinal axis “C”) along the length of the chew. The pre-weakening features can extend radially inward towards a central axis point without ever intersecting the axis point, in other words the pre-weakening features can move towards a point without ever reaching that point.
Additionally, regarding the argument that one of ordinary skill in the art would understand that the phrase “extend radially inward” refers to extending towards a “central axis in a spoke-like manner,” the wording “central axis in a spoke-like manner” is not a limitation in the claims or in the specification. The limitation “extend radially inward” does not require “that an extended trajectory of the pre-weakening features intersect the central axis at some point,” as stated on pg. 6 of applicant’s remarks, but is considered broader than this narrowed view of the limitation.
Applicant argues, on pg. 7, that Koo does not teach or suggest the newly added limitation that the pre-weakening features are aligned on opposite sides of the chew. Applicant points to Fig. 2 of Koo, stating that the grooves 22 of Koo are not aligned on the opposite sides of the chew. However, the Office disagrees for the following reasons.
The pre-weakening features of Koo located on one side of the pet chew are viewed as being aligned with the pre-weakening features located on an opposite side of the pet chew. It is noted that the term “align” is not defined in the specification and the broadest reasonable interpretation of the term is being applied. Therefore, the term “align,” when defined it terms of a structure, is to arrange, adjust or position parts in a correct position relative to other parts, so the orientation of parts relate properly to one another. As shown in Fig. 2 of Koo, the core units 21, which include the grooves 22, align with each other on opposite sides of the pet chew, or in other words are properly arranged or orientated in relation to one another. Thus, modified McMorris in view of Koo would make obvious the claimed limitation.
Applicant argues, on pg. 8, that Koo discloses the pet chew breaks apart along the central air holes such that said air holes provide a vital role in the breaking apart of the pet chew. Applicant explains that if one of ordinary skill in the art were to combine Koo and McMorris with “pre-weakening features” of Koo into the cylindrical chew of McMorris, they would also include a central air hole thereby leaving the central portion of the pet chew hollow. Applicant states that claim 1 discloses the corn cob having a “corn cob center,” requiring that the center comprise corn cob and not a hollow center air hole. Applicant contends that a person of ordinary skill in the art would not arrive at the claimed pet chew having a corn cob center by combining the teachings of Koo’s “pre-weakening features” with the cylindrical chew of McMorris. However, the Office disagrees for the following reasons.
Koo does not state that the “air holes” disclosed in their application are a “vital role” in the breaking apart of the pet chew. However, Koo does disclose that the upper and lower core units can be viewed as pre-weakening features of the pet chew. The Office asserts that the core units (20, 21) of Koo create a space from the outer surface of the pet chew and moves inward towards the center of the pet chew, causing a pre-weakening of the pet chew. The breaking apart of the pet chew is envisioned by Koo as being along the upper and lower core units (20, 21) and also being along the air holes. While Koo does specifically point out the breakage as being along the air holes in paragraph [0046] of Koo, Fig. 4 of Koo also shows that the breakage is occurring along the upper and lower core units (20, 21). See circled portions of Annotated Fig. 4 below. In [0050] of Koo, it states “Fig. 4. Is a perspective view that depicts a part separated from a pet dental chew after a pet performs masticatory exercise with the pet dental chew for awhile.” Therefore, Koo does show that the upper and lower core units, which the teeth of the pet are entering and exiting multiple times [0059], is where the breakage of the pet chew is occurring, having a pre-weakening effect on the pet chew. The core units of Koo can be viewed as pre-weakening features of the pet chew without the addition of the air holes, that allow the pet to break apart the chew when they are inserting their teeth for cleaning into the chew. Thus, a person of ordinary skill in the art would arrive at the claimed pet chew having a corn cob center by combining the teachings of Koo’s “pre-weakening features,” which are viewed as the upper and lower core units and not the air holes, with the cylindrical chew of McMorris
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Additionally, applicant’s argument that Koo would teach a hollow center having no corn cob, while the claims teach a corn cob center; although Koo does not disclose all the features of the present claimed invention, Koo is used as teaching reference to show how pre-weakening features can be added to a pet chew. Therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely, a plurality of pre-weakening features running along the length of the pet chew as claimed. Thus, Koo in combination with the primary reference and other secondary references discloses the presently claimed invention.
Moreover, in response to applicant's argument that the air holes of Koo are a part of the “pre-weakening features” of Koo and must be incorporated into the corn cob of McMorris, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
Prosecution Insights