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 .
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, 3-14, 16-20 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.
Regarding claims 1 and 14, the phrase “a substrate formed of a material configured to…provide comfort to an animal resting thereon” 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 at the time the application was filed, had possession of the claimed invention. Specifically, although applicant’s specification page 7, lines 11-16 contains a non-exhaustive listing of all types of materials/structures from fabric to tile or plastic which could be used to manufacture the substrate, there is no mention of a connection between a specific material and its ability to provide comfort to an animal.
Regarding claims 12-13 and 18-19, the phrases “substrate is configured to retain warmth sufficient to encourage said animal to remain positioned thereon” and “substrate is configured to retain softness sufficient to encourage said animal to remain positioned thereon” are considered new matter as the originally filed disclosure does not appear to discuss required warmth and softness amounts or their benefits to encourage animals to remain positioned.
Regarding claim 20, the materials of “cotton, wool, silk, bamboo, hemp, synthetic polymeric textiles and combinations thereof” are considered new matter as they do not appear to be part of the originally filed disclosure and therefore applicant did not have possession of the claimed invention as it pertains to the claimed material type.
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, 3-14, 16-20 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.
Regarding claims 1 and 14, the phrase “…material configured to …provide comfort to an animal resting thereon”. The specific material required to provide comfort to an animal resting on it is not defined by the claim, the specification does not provide a standard for ascertaining the material utilized (see applicant’s specification page 7, lines 11-16 which contains a non-exhaustive listing of all types of materials/structures from fabric to tile or plastic which may be used to manufacture the substrate) , and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention as one would not be able to ascertain which material(s) provides comfort to an animal and which one(s) do not.
Regarding claims 12- 13 and 18-19, the phrases of “substrate is configured to retain warmth sufficient to encourage said animal to remain positioned thereon” and “substrate is configured to retain softness sufficient to encourage said animal to remain positioned thereon” renders the claim indefinite as the metes and bounds of the limitation cannot be established. The specification does not provide a standard sufficient to ascertain what such degree of warmth and softness requirement/amount would be nor the material which has such properties.
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.
Claim(s) 1, 3-14, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Glass et al (US 3472260) in view of Allal (US 5499818). Regarding claims 1 and 14, Glass discloses a message device having a substrate with an outer portion, a middle portion, and a center (fig. 2, surface of board 10); the surface having a plurality of symbols (symbols as shown in figure 2), said symbols arranged in a series of concentric boundaries (boundaries A and B as annotated below) generally radiating from said center (annotated below); the substrate and symbols structured such that a living animal is capable of serving as a planchette where the symbols being selectively indicated by movement of the animal planchette (lacking any clear distinguishing features, the substrate of Glass is considered to be capable of serving such functionality as an animal is capable of walking on it and resting on it at any portion).
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Glass does fails to explicitly describe the material type of his device (formed of a material configured to support and provide comfort to an animal resting thereon). Allal teaches that it is known to manufacture a messaging device (predictive device like that of Glass) from a variety of materials (col. 10, lines 63-64) including those listed in the instant application as presumably capable of providing comfort to an animal (see applicant’s specification page 7, lines 11-16).
Therefore, it would have been obvious to one having ordinary skill in the art, at the time of filing, to have manufactured the substrate of Glass from a variety of materials including cloth, wood, plastic, laminated base board or cardboard for the purpose of cost and/or durability.
Regarding claim 3, see Glass fig. 2.
Regarding claims 4-5, 7-9, 14 Glass does not expressly show the words comprising purr, fang, rest, stalk nor does Glass show that the images comprise a mouse, bird, moth, fish, fishbowl, window, plant, bookcase and yarn. However, these differences are only found in printed matter appearing on the substrate (board surface). The imagery displayed (words and other images) are not functionally related to the substrate of the article of manufacture. Thus, this material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05, See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404). See In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969). A functional relationship can also be found where the product performs some function with respect to the printed matter to which it is associated. For instance, where a hatband places a string of numbers in a certain physical relationship to each other such that a claimed algorithm is satisfied due to the physical structure of the hatband, the hatband performs a function with respect to the string of numbers. See Gulack, 703 F.2d at 1386-87, 217 USPQ at 405. In the instant case, no such functional relationship exists. Therefore, it would have been obvious to have manufactured the message board of Glass with the various words/images as claimed as it does not relate to the substrate and would merely depend on the desired imagery to be displayed/shown.
Regarding claim 6, figure 2 of Glass shows an animal in the center.
Regarding claims 10 and 16, lacking any clear distinguishing features the symbols of Glass comprise a predefined concept different from the other symbols (e.g. words and pictures like yes, no, power, love, health, etc. are drawn to different predefined concepts.)
Regarding claims 11 and 17, see the rejection of claim 1 as it pertains to Allal.
Regarding claims 12-13 and 18-19, lacking any clear distinguishing features, the construction material of Glass, as modified by Allal, is considered to meet the required warmth and softness as such material is listed as a possible choice of construction in applicant’s specification at page 7, lines 11-16.
Regarding claim 20, it would have been obvious to manufacture the substrate of Glass as modified by Allal from any of the listed materials as Official Notice is taken that such materials are know to be used in the manufacture of cloth due to their various benefits such as cost and durability.
Response to Arguments
Applicant's arguments filed 10/20/25 have been fully considered but they are not persuasive.
Regarding the previous rejections under 35 USC 112(b), the rejections have been rendered moot in line with the amended claims, however new rejections have been put forth (see rejections above).
Regarding the rejections under 35 USC 101, the rejection has been rendered moot in line with the amended claims.
Regarding arguments with respect to 35 USC 103, the use of a “soft” material attractive to an animal as now claimed, is address above with the Allal reference (Reese is no longer relied upon due to applicant’s amendments). Regarding the argument with respect to a functional relationship between the substrate and the indicia carried upon, it should be noted that the list of materials considered appropriate for use as a substrate is a non-exhaustive listing of all types of materials/structures from fabric to tile or plastic which may be used to manufacture the substrate (see applicant’s specification page 7, lines 11-16), thus it is clear that the substrate itself and the indicia it carries has NO functional relationship. Stated differently, the indicia would work the same on a tile floor, wood floor, a blanket, a plastic mat, etc and any other material an animal is capable of walking/resting upon. Therefore, there is no functional relationship as required and as stated above (see rejection).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715