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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/13/2026 has been entered.
Status of the Claim
Claims 1, 4-5, 8-9, 11-12, 21-23, 27 and 29 are pending and are under examination. Any objections or rejections not repeated below have been withdrawn.
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, 27 and 29 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, 27 and 29, Axelrod teaches a method of forming a pet chew where an ingredient (natural animal fibers) is supplied and dispersed in at least one polymer, as required by claims 1 and 29 (an edible resin; [0005-0006], Claim 9). Axelrod teaches the ingredient (natural fibers) is combined with the at least one polymer (the edible resin), to form a polymeric composition containing the ingredient (natural fibers), as required by claims 1 and 29 [0005-0006], (Claim 9).
Axelrod does not disclose the use of Miscanthus grass, as required by claims 1 and 29. 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 claim 1 range of 0.1-10% by weight and the claim 29 range of 0.1-5% 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 ranges because Miscanthus grass has a high indigestible fiber content, which eases defecation, and Miscanthus grass is an inexpensive fiber source, as recognized by Boender [0003-0005].
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), as required by claims 1 and 29 (Claims 9 and 17), [0007], [0048].
Axelrod teaches wherein forming comprises injection molding [0007]. Modified 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), as required by claims 1 and 29.
With respect to claims 1 and 29, 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 claims 27 and 29.
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), as required by claims 1 and 29 [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 for claims 1 and 29.
Regarding claims 4 and 5, modified Axelrod discloses the method of claim 1, as discussed above. 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, modified Axelrod discloses the method of claim 1, as discussed above. 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, modified Axelrod teaches the method of claim 8, as discussed above. 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 modified Axelrod teaches the method of claim 1, as discussed above. 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, and where the natural polymer is starch, as required by claim 21; or where the thermoplastic polymer comprises a synthetic polymer (synthetic resin), as required by claim 22, and where the synthetic polymer is polyamide (nylon), as required by claim 23 [0020].
Response to Arguments
Applicant's arguments filed 07/13/2026 have been fully considered but they are not persuasive.
Point 1: Applicant argues, on pg. 7 of their remarks, that the assertion that claim 1 merely substitutes one known natural biopolymer fiber for another constitutes an unreasonable overgeneralization of the actual language of the claim. Claim 1 specifically recites supplying Miscanthus grass and combining the Miscanthus grass in a polymer at a specific concentration. Applicant contends it is improper and erroneous to characterize claim 1 as broadly reciting or merely substituting a generic natural biopolymer fiber, when this characterization ignores the specific claimed material and concentration range. However, the Office disagrees for the following reasons.
The rejection above relies on Axelrod in view of Boender. The rejection does not substitute a generic natural biopolymer fiber and ignore the specific claimed material and concentration range. The rejection gives motivation for using the specific claimed range and specific claimed material.
As discussed above, 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]. Thus, 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 ranges because Miscanthus grass has a high indigestible fiber content, which eases defecation, and Miscanthus grass is an inexpensive fiber source, as recognized by Boender [0003-0005].
Point 2: Applicant argues, on pg. 7, that it is not reasonable to suggest that claim 1 recites supplying any natural biopolymer fiber and simply substituting that with another known natural biopolymer fiber reported in the art. Applicant states that claim 1 is not that broad and they should not have to defend against an obviousness rejection and simple substitution analysis on a broad reading of claim 1. However, the Office disagrees for the following reasons.
As stated in the argument for Point 1, the rejection above relies on Axelrod in view of Boender. The rejection does not substitute a generic natural biopolymer fiber and ignore the specific claimed material and concentration range. The rejection gives motivation for using Miscanthus grass as claimed. The rejection does not overly simplify the claim language, misconstruing the limitation of Miscanthus grass to mean any natural biopolymer fiber, but gives clear motivation to use Miscanthus grass in the method of forming the pet chew.
Point 3: Applicant argues, on pgs. 7-9, that a simple substitution rationale to reject claim 1 does not apply. Applicant explains that claim 1 does not recite any natural fiber particle and then discusses the specific composition characteristics of Miscanthus grass comparing them to the animal fibers used in the method of Axelrod. Applicant contends that generalizing animal fibers and Miscanthus grass fibers as “natural biopolymers” is a broad generalization since their compositions are distinctly different. Applicant cites MPEP 212.01, noting that Axelrod pet chew contains animal fibers and not Miscanthus grass, so it is not identical or substantially identical to the claimed composition or structure. Applicant concludes by arguing again about simple substitution, stating substituting two materials, specifically animal fibers and Miscanthus grass that have such differences in the structure, is not obvious. However, the Office disagrees for the following reasons.
In response to applicant's arguments against Axelrod individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The above rejection is based on Axelrod in view of Boender. This rejection gives specific motivation to use Miscanthus grass and not animal fibers, making it obvious for a person of ordinary skill in the art to modify Axelrod in view of Boender. Thus, Axelrod modified by Boender is considered substantially identical to the claimed invention.
Point 4: Applicant argues, on pg. 9, that claim 1 was characterized incorrectly as broadly reciting any natural biopolymer fiber, and that the 103 analysis rests on an erroneous characterization of the claimed subject matter. Applicant contends that when Axelrod is properly understood as being limited to animal fibers, the rationale for combining Axelrod with Boender to substitute Miscanthus grass is no longer supported and a person of ordinary skill would not have been motivated to depart from those teachings by turning to Boender and selecting Miscanthus grass. Applicant states that the rejection has been based on hindsight reconstruction rather than a teaching, suggestion, or motivation arising from the prior art itself. However, the Office disagrees for the following reasons.
As previously stated, the rejection does not misconstrue the limitation of Miscanthus grass, but gives clear motivation to use Miscanthus grass in the method of forming the pet chew. Axelrod is properly understood and the rational for combining Axelrod in view of Bonder is supported. A person of ordinary skill would have been motivated to have modified Axelrod to incorporate the teachings of Boender by having the pet chew comprise Miscanthus grass within the claimed ranges because Miscanthus grass has a high indigestible fiber content, which eases defecation, and Miscanthus grass is an inexpensive fiber source, as recognized by Boender [0003-0005].
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
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