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 § 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:
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 1-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Quest et al. (US 2016/0198740 A1; July 14, 2016).
Regarding claim 1, Quest discloses a completely edible pet treat that could be releasably attached to another object as it has grooves/ridges/fingers that would make it capable of hooking onto an object (See Figures).
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Quest teaches that the pet treat comprises a 100% edible fastening member shaped and sized to be releasably attached to an object (as shown in the circled portion above), and a 100% edible remaining member integral with the fastening member, sized to be visible to a pet (e.g. the remaining portion not circled).
While Quest fails to specifically teach a fastening member that can be releasably attached to an object, the pet treat of Quest comprises grooves or ridges or fingers that would make the treat capable of being attached to an object. Therefore, it would have been obvious to one of ordinary skill in the art to have the pet treat of Quest be releasably attached to an object if desired.
Regarding claim 2, Quest teaches the fastening member comprising the grooves/ridges as described above, but fails to specifically teach a hook-shaped.
However, as stated in MPEP 2144.04 IV B, a change in shape is merely an obvious design choice absent persuasive evidence that the shape is significant. In the instant case, it would have been obvious to change to shape of the fastening member in Quest to a different configuration if desired as it would not change the capability of the pet treat being releasably attached to an object.
Regarding claims 3-4, as shown in the Figures, the remaining member is shaped to simulate the appearance of food, specifically a bone.
Regarding claim 5, the fastening member of Quest is considered to comprise a bridge section and a holder section as claimed as the bridge section is considered to be a section between the remaining member and the holder section and the holder section is in opposition to the remaining member to define an object-receiving space as shown above in the Figure.
Regarding claim 6, Quest fails to specifically teach that the holder section is spaced between 1-2 cm from the remaining member, however, it would have been obvious to have the holder section at a desired space from the remaining member, or bone portion of Quest, depending on desired overall size of the edible pet treat. It is well within the ordinary skill in the art to vary the size of the pet treat, including the space between the two sections, depending on the desired use, the object the treat is being attached to and the size of the pet intended to consume the pet treat. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 7, with respect to the pet treat of Quest comprising a gusset section extending between the bridge section and the remaining member, it would have been obvious to have the pet treat of Quest comprise a gusset section as claimed depending on the size and shape of the pet treat and the object the pet treat is being attached to.
Regarding claim 12, as shown from the figure in Quest, the remaining portion is shaped to simulate a bone. Quest, however, fails to teach the length and height of the remaining portion, or bone portion.
It would have been obvious to one of ordinary skill in the art to how the bone portion at a length and height suitable for the pet intended to consumer the pet treat, wherein a larger pet would require a larger remaining portion than a smaller pet. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 13, as stated above with respect to claim 1, Quest renders obvious a method of using an edible pet treat comprising releasably attaching the pet treat to an object using the “fastening member” that is integral with the “remaining member”.
Regarding claims 16-17, as shown in the Figures, the remaining member is shaped to simulate the appearance of food, specifically a bone.
Regarding claim 19, as the pet treat of Quest is intended to be consumed by a pet animal, it would have been obvious to further remove the fastening member and integral remaining member from the object and give the pet treat to the animal for consumption.
Claims 8-11 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Quest et al. (US 2016/0198740 A1; July 14, 2016) as applied to claim 1 above, and further in view of Campbell (US 2006/0233923 A1; Oct. 19, 2006).
Regarding claims 8-10 and 18, Quest teaches that the pet treat comprises 15-90% protein ([0011]), thus overlapping the claimed range of at least 10-20%. Quest also teaches that the pet treat can comprise a humectant in an amount of 5-40% ([0009], [0040]), thus overlapping the claimed range of at least 5-15%.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Quest further teaches that the pet treat can comprise rice flour, calcium carbonate, and dried sweet potato ([0046], [0047]).
While Quest teaches that the pet treat comprising the ingredients as described above, Quest is silent with respect to the pet treat further comprising peanut butter and honey, bacon or cheese.
Campbell discloses a pet treat comprising rice flour, peanut butter, sweet potato flour, honey, and cheese (See Examples, [0029], [0033], [0034]).
As Campbell teaches that such ingredients are known to be useful in a pet treat, it would have been obvious to further include peanut butter, honey, and cheese in the pet treat of Quest in order to further appeal to the pet by creating a pet treat that has desirable flavors.
From In re Levin, 84 USPQ 232 p. 234
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them
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ways which differ from the former practice, do not amount to invention merely because it is not disclosed that,
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the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent.
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all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
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Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267 ;
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Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the instant case, there is no new or unexpected function arising from the combination of the claimed ingredients in the pet treat of Quest as all ingredients continue to function predictably, as expected.
With respect to the exact amounts of each ingredient, it would have been obvious to one of ordinary skill in the art to vary the amount of each ingredients depending on the desired flavor and nutritional profile of the pet treat. This is merely routine experimentation that is well within the ordinary skill in the art.
Further as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Therefore, absent a showing that the concentrations are critical, the claimed amount are merely obvious variants over the prior art.
Regarding claim 11, Quest teaches that the pet treat comprises protein as described above with respect to claim 8, but fails to teach that the protein consists essentially of chicken as claimed.
Campbell also teaches that the pet treat comprises protein, wherein the protein can be chicken ([0030]). Both Campbell and Quest teach other proteins, however, the other proteins are not considered to materially affect the basic and novel characteristics of the pet treat and therefore fall within the scope of “consisting essentially of”. Further, as Campbell teaches that chicken protein can be used as the protein component, it would have been obvious to one of ordinary skill in the art to use only chicken protein depending on the desired nutrition, quality and cost, especially as Campbell teaches that it is a superior protein ([0030]).
Claims 14-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Quest et al. (US 2016/0198740 A1; July 14, 2016) as applied to claim 13 above, and further in view of McGuyer et al. (US 2019/0301671 A1; Oct. 3, 2019).
Regarding claims 14 and 20, as stated above with respect to claim 13, Quest renders obvious attaching the pet treat to an object, but fails to teach releasably attaching the pet treat to a mobile device having a camera.
McGuyer discloses a mobile phone clip and pet treat holder, wherein the clip, or fastening member, releasably attaches to a mobile device having a camera and the pet treat holder comprises a pet treat so that the owner can take a picture while the pet looks at the treat.
It would have been obvious to one of ordinary skill in the art to releasably attach the pet treat of Quest to a mobile device having a camera as taught by McGuyer as McGuyer teaches such attachment display the treat to the pet so that the pet looks at the camera on the mobile device so allow the owner to take a picture of the pet.
Therefore, releasably attaching the pet treat of Quest to a mobile device having a camera would provide the same benefits as taught by McGuyer to the method of Quest.
Regarding claim 15, as stated above with respect to claim 2, Quest teaches the fastening member comprising the grooves/ridges as described above, but fails to specifically teach a hook-shaped.
However, as stated in MPEP 2144.04 IV B, a change in shape is merely an obvious design choice absent persuasive evidence that the shape is significant. In the instant case, it would have been obvious to change to shape of the fastening member in Quest to a different configuration if desired as it would not change the capability of the pet treat being releasably attached to an object.
The pet treat of Quest is capable of releasably attaching to an object and therefore the exact shape is merely an obvious matter of choice.
Claims 1-7, 12-17 and 19-20 rejected under 35 U.S.C. 103 as being unpatentable over McGuyer et al. (US 2019/0301671 A1; Oct. 3, 2019).
Regarding claim 1, McGuyer discloses a mobile phone clip and pet treat holder that is releasably attached to another object (See Figures).
McGuyer teaches that the device comprises a fastening member, the mobile phone clip part, and a remaining member, the pet treat that is inserted into the pet treat holder (See Figures).
While McGuyer teaches the device as described above, the only edible portion is the pet treat itself, which is the remaining member. McGuyer fails to specifically teach that the mobile phone clip and pet treat holder is edible and integral with the remaining member, or pet treat itself.
It would have been obvious to one of ordinary skill in the art to have the mobile phone clip and pet treat holder integral with the pet treat, or remaining member, in order to use a one-piece unit.
As stated in MPEP 2144.04: In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice."); but see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form "a single integral and gaplessly continuous piece." Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.).
Therefore, it would have been obvious to engineer the mobile phone clip and pet treat holder comprising the pet treat as an integral single unit in order to use a single piece of construction and not two. Further, it would have been obvious to one of ordinary skill in the art to make the device of McGuyer edible and integral with the pet treat. Again, this allows for a single unit to be used and thus allows for the pet to consume the entire unti.
Regarding claim 2, McGuyer teaches a fastening member as described above, but fails to specifically teach a hook-shaped.
However, as stated in MPEP 2144.04 IV B, a change in shape is merely an obvious design choice absent persuasive evidence that the shape is significant. In the instant case, it would have been obvious to change to shape of the fastening member in McGuyer to a different configuration if desired as it would not change the capability of the pet treat being releasably attached to an object.
Regarding claims 3-4, as shown in the Figures, the remaining member is shaped to simulate the appearance of food, specifically a bone.
Regarding claim 5, the fastening member of McGuyer is considered to comprise a bridge section and a holder section as claimed as the bridge section is considered to be a section between the integral remaining member and the holder section and the holder section is in opposition to the remaining member to define an object-receiving space as shown in the Figures.
Regarding claim 6, McGuyew fails to specifically teach that the holder section is spaced between 1-2 cm from the remaining member, however, it would have been obvious to have the holder section at a desired space from the remaining member, or bone portion of McGuyer, depending on desired overall size of the edible pet treat. It is well within the ordinary skill in the art to vary the size of the pet treat, including the space between the two sections, depending on the desired use, the object the treat is being attached to and the size of the pet intended to consume the pet treat. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 7, with respect to the member of McGuyer comprising a gusset section extending between the bridge section and the remaining member, it would have been obvious to have the pet treat of McGuyer comprise a gusset section as claimed depending on the size and shape of the pet treat and the object the pet treat is being attached to.
Regarding claim 12, as shown from the figures in McGuyer, the remaining portion is shaped to simulate a bone. McGuyer, however, fails to teach the length and height of the remaining portion, or bone portion.
It would have been obvious to one of ordinary skill in the art to how the bone portion at a length and height suitable for the pet intended to consumer the pet treat, wherein a larger pet would require a larger remaining portion than a smaller pet. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 13, as stated above with respect to claim 1, McGuyer renders obvious a 100% edible pet treat comprising a 100% edible fastening member and a 100% edible remaining member. McGuyer further teaches a method of using an edible pet treat comprising releasably attaching the pet treat to an object using the fastening member that is integral with the treat, or “remaining member” that is visible to a pet animal.
Regarding claims 14 and 20, McGuyer discloses a mobile phone clip and pet treat holder, wherein the clip, or fastening member, releasably attaches to a mobile device having a camera and the pet treat holder comprises a pet treat so that the owner can take a picture while the pet looks at the treat.
Regarding claim 15, as stated above with respect to claim 2, McGuyer teaches a fastening member as described above, but fails to specifically teach a hook-shaped.
However, as stated in MPEP 2144.04 IV B, a change in shape is merely an obvious design choice absent persuasive evidence that the shape is significant. In the instant case, it would have been obvious to change to shape of the fastening member in McGuyer to a different configuration if desired as it would not change the capability of the pet treat being releasably attached to an object.
The pet treat of McGuyer is capable of releasably attaching to an object and therefore the exact shape is merely an obvious matter of choice.
Regarding claims 16-17, as shown in the Figures, the remaining member is shaped to simulate the appearance of food, specifically a bone.
Regarding claim 19, McGuyer teaches removing the pet treat and giving the treat to the pet for consumption. As stated above, McGuyer renders obvious an integral fastening member and remaining member, and therefore it would have been obvious to further remove the fastening member and integral remaining member from the object and give the pet treat to the animal for consumption.
Claims 8-11 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over McGuyer et al. (US 2019/0301671 A1; Oct. 3, 2019) as applied to claim 1 above, and further in view of Quest et al. (US 2016/0198740 A1; July 14, 2016) and Campbell (US 2006/0233923 A1; Oct. 19, 2006).
Regarding claims 8-10 and 18, McGuyer teaches a pet treat as described above, but fails to specifically teach the claimed ingredients in the claimed amounts.
Quest discloses a edible pet treat in the shape of a bone that could be releasably attached to an object, and further teaches that the pet treat comprises 15-90% protein ([0011]), thus overlapping the claimed range of at least 10-20%. Quest also teaches that the pet treat can comprise a humectant in an amount of 5-40% ([0009], [0040]), thus overlapping the claimed range of at least 5-15%.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Quest further teaches that the pet treat can comprise rice flour, calcium carbonate, and dried sweet potato ([0046], [0047]).
While Quest teaches that the pet treat comprising the ingredients as described above, Quest is silent with respect to the pet treat further comprising peanut butter and honey, bacon or cheese.
Campbell discloses a pet treat comprising rice flour, peanut butter, sweet potato flour, honey, and cheese (See Examples, [0029], [0033], [0034]).
As Quest and Campbell teaches that such ingredients are known to be useful in a pet treat, it would have been obvious of McGuyer to include similar ingredients in similar amounts as what is taught by Quest and Campbell in order to provide a pet treat that further appeal to the pet by creating a pet treat that has desirable flavors.
From In re Levin, 84 USPQ 232 p. 234
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them
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ways which differ from the former practice, do not amount to invention merely because it is not disclosed that,
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the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent.
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all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
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Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267 ;
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Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the instant case, there is no new or unexpected function arising from the combination of the claimed ingredients in the pet treat of McGuyer as all ingredients continue to function predictably, as expected.
With respect to the exact amounts of each ingredient, it would have been obvious to one of ordinary skill in the art to vary the amount of each ingredients depending on the desired flavor and nutritional profile of the pet treat. This is merely routine experimentation that is well within the ordinary skill in the art.
Further as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Therefore, absent a showing that the concentrations are critical, the claimed amount are merely obvious variants over the prior art.
Regarding claim 11, the prior art teaches that the pet treat comprises protein as described above with respect to claim 8, but fails to teach that the protein consists essentially of chicken as claimed.
Campbell also teaches that the pet treat comprises protein, wherein the protein can be chicken ([0030]). Both Campbell and Quest teach other proteins, however, the other proteins are not considered to materially affect the basic and novel characteristics of the pet treat and therefore fall within the scope of “consisting essentially of”. Further, as Campbell teaches that chicken protein can be used as the protein component, it would have been obvious to one of ordinary skill in the art to use only chicken protein depending on the desired nutrition, quality and cost, especially as Campbell teaches that it is a superior protein ([0030]).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791