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 the Claim
Claims 1, 4-5, 8-9, 11-12, 21-23 and 27 are pending and are under examination. Any objections or rejections not repeated below have been withdrawn.
Claim Objections
Claim 27 is objected to because of the following informalities:
Claim 27 recites, “the particles of Miscanthus grass appear as spots within the polymeric composition containing the Miscanthus grass.” However, this claim limitation has been added to newly amended claim 1, lines 14-15. The claim limitation should be removed from claim 27 as it does not further limit the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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, 4-5, 8-9, 11-12, 21-23 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Axelrod US 20130305999 and in view of Boender et al. US 20170311641.
Regarding claims 1 and 27, Axelrod teaches a method of forming a pet chew where natural animal fibers are supplied and dispersed in at least one polymer, as required by claim 1 (an edible resin; [0005-0006], Claim 9). Axelrod teaches the natural fibers are combined with the at least one polymer (the edible resin), to form a polymeric composition containing the natural fibers, as required by claim 1 [0005-0006], (Claim 9).
Axelrod does not disclose the use of Miscanthus grass, as required by claim 1. Boender teaches Miscanthus grass used in an animal consumable product [0007], [0016]. Boender discloses that Miscanthus grass is a fiber particle with a high indigestible content, which eases defecation when consumed, and is an inexpensive fiber source [0004-0005]. Boender teaches the Miscanthus grass is at a level of about 0.1% to about 60% by weight [0042]. This encompasses the claimed range of 0.1-10% by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
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 Axelrod to incorporate the teachings of Boender by having the pet chew comprise Miscanthus grass within the claimed range because using a fiber particle with a high indigestible content eases defecation and Miscanthus grass is an inexpensive fiber source, as recognized by Boender [0004-0005].
Modified Axelrod teaches forming the pet chew of the polymeric composition (edible resin) containing the Miscanthus grass (fibers) [0007]. Axelrod teaches adding the at least one polymer (edible resin) and Miscanthus grass (natural fibers), to a barrel where they are mixed; this mixing randomly disperses the Miscanthus grass (natural fibers), in the at least one polymer (edible resin), to form the polymeric composition containing the Miscanthus grass (natural fibers) (Claims 9 and 17), [0007], [0048].
Axelrod teaches wherein forming comprises injection molding [0007]. Axelrod teaches the polymeric composition provides a continuous phase (a chewable body from a composition comprising edible resin, [0006]; the volume of the pet chew product 100, [0031], Fig. 1) while the Miscanthus grass (fibers 110) provides a discontinuous phase dispersed within the polymer resin (dispersed within the chewable body [0006]; fibers 110 provided through the volume of the pet chew product 100 [0031], Fig. 1).
With respect to claims 1 and 27, Axelrod discloses in Figure 1 of the pet chew 100, the particles of natural fibers 110 appear as spots within the polymeric composition (edible resin) of the pet chew [0031]. Axelrod teaches the spots have a size in a range of 0.01 mm to 100 mm [0029]. This encompasses the claimed range of 0.1 mm to 10.0 mm, as required by claim 1, and encompasses the claimed range of 0.1 mm to 5.0 mm, as required by claim 27.
Axelrod discloses in Figure 1 of the pet chew 100, the spots (particles of natural fibers 110) have a darker color than the at least one polymer (edible resin) of the polymeric composition (pet chew) [0031].
Axelrod teaches wherein the formed pet chew has a hardness in the range of Shore 70A to Shore 80D, a tensile modulus in the range of 50 x 103 psi to 500 x 103 psi and a flexural modulus in the range of 50 x 103 psi to 500 x 103 psi [0021]. This is the same as the claimed hardness range, tensile modulus range and flexural modulus range.
Regarding claims 4 and 5, Axelrod teaches the particles before being randomly dispersed in the at least one polymer (the loose fiber can be cut to a particular size; [0029]) have an aspect ratio of length/width greater than 1 [0029], or where the length to width, or diameter, aspect ratio is at least 1.1:1. Axelrod discloses the length can be in a range of 0.01 mm to 100 mm, or 0 inches to 3.98 inches, making the diameter (width) 0.009 mm to 90.91 mm, or 0 inches to 3.58 inches [0029]. This encompasses the claimed range for length of 0.25 to 1.0 inch and diameter of 0.1 inch to 0.33 inch, as required by claim 4, and encompasses the claimed diameter of less than 0.1 inch, as required by claim 5. See MPEP 2144.05(I).
Regarding claim 8, Axelrod teaches that other additives including, attractants, flavoring, vitamins, minerals or antioxidants, can be combined with the polymer (resin) along with the Miscanthus grass (natural fibers), to form the composition [0041], [0043], [0056], [0069-0070].
Regarding claim 9, Axelrod discloses additives may be present individually or cumulatively between about 0.01-25% by weight. This encompasses the claimed range of 0.1-2.5% by weight. See MPEP 2144.05(I).
Regarding claims 11, 12, 21, 22 and 23 Axelrod discloses the at least one polymer (edible resin) comprises at least one thermoplastic polymer, as required by claim 11, where the thermoplastic polymer comprises a natural polymer (naturally derived resin), as required by claim 12, or where the thermoplastic polymer comprises a synthetic polymer (synthetic resin), as required by claim 22, and where the natural polymer is starch, as required by claim 21, and where the synthetic polymer is polyamide (nylon), as required by claim 23 [0020].
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 6-7 of their remarks, that Axelrod discloses natural animal fibers. Applicant submits that it would not have been obvious to one of ordinary skill in the art that Miscanthus grass would necessarily provide similar spots within the composition. Applicant explains that animal fibers and miscanthus grass would not be expected to exhibit the same reaction to being mixed with a polymer to form a polymer composition. Applicant asserts that it would require more than routine experimentation to establish that miscanthus grass could maintain its integrity throughout processing in the same manner as the animal fibers. Applicant also argues that it is not obvious that the pet chew of Axelrod in view of Boender which comprises miscanthus grass would have the same hardness and tensile strength as that recited in Axelrod, which comprises a pet chew with animal fibers. Applicant contends that if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present, but in this case miscanthus grass and animal fibers do not have identical chemical composition. Applicant asserts that it cannot be assumed the properties of animal fibers are necessarily present in Miscanthus grass. Applicant argues that Axelrod in view of Boender do not render claim 1 obvious. However, the Office disagrees for the following reasons.
Both miscanthus grass and animal hair fibers are natural fiber particles, natural biopolymers and have a high indigestible content. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). While Axelrod does disclose natural animal fibers it would have been obvious for a person of ordinary skill in the art to have made the simple substitution of one known natural biopolymer fiber for another, achieving substantially identical results of dark spots from the miscanthus grass and a substantially identical hardness and tensile strength, as recited in Axelrod. It would have been obvious to have modified Axelrod to incorporate the teachings of Boender by having the pet chew comprise Miscanthus grass within the claimed range because using a fiber particle with a high indigestible content eases defecation and Miscanthus grass is an inexpensive fiber source, as recognized by Boender [0004-0005].
Axelrod in view of Boender does render claim 1 obvious. It would not require more than routine experimentation to establish that miscanthus grass could maintain its integrity throughout processing in the same manner as animal hair fibers, providing a pet chew with dark spots and a similar hardness and tensile strength.
Additionally, the claimed Shore hardness range, flexural modulus range, and tensile modulus range are extremely broad. These ranges account for materials that at the high end are ten times stiffer than the material at the low end. These ranges encompass bendable flexible polymers to hard rigid polymers. Using one natural biopolymer fiber in place of another, while it may slightly change hardness and tensile strength of the product, it would still be expected to be within the claimed ranges since the ranges are so broad. Thus, Axelrod in view of Boender does render claim 1 obvious.
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