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.
Claims 1,3,4,7,9,12,13,17,18,20,22,23 are rejected under 35 U.S.C. 103 as being unpatentable over Schaffer (US 5213163 A) in view of Justis (US 20060207772 A1) and Stephens (US 0592261 A).
For claim 1, (Currently Amended) A hoof boot shell part (10) comprising
a base part (11), having a base part front part (14), a base part lower surface (figs. 2-5, lower surface of ref. 11) which is arranged to rest against a surface selected from a group consisting of a ground or a stable floor and a base part upper surface (figs. 2-5, upper surface of the shell part that receives the hoof) opposite the base part lower surface,
a rim (12), which extends from the base part upper surface at an edge (fig. 3, where ref. 13 is pointing at) of the base part, and
a bottom piece (16), having a bottom piece area (any area on the piece 16) which is attached to the base part lower surface (se figs. 2,4,5) and which is located at the base part front part forming a tip piece (fig. 1, ref. 16 at the tip or toe area);
wherein the bottom piece is fixed (by using the screws 18) to the base part by screws (18); and
wherein the base part upper surface is configured to receive a bottom of a perissodactyl hoof and the rim is configured to surround the perissodactyl hoof and the bottom piece is harder than the base part (col. 4, lines 27-38, col. 5, lines 53-68, col. 6, lines 1-7; Schaffer stated that the base part is semihard polyurethane and the bottom piece is steel, which is harder than semihard polyurethane).
However, Schaffer is silent about the base part made of thermoplastic polyurethane (TPU); the base art lower surface provided with grooves; the rim made of thermoplastic polyurethane (TPU); the bottom piece made of a plastic or a mixture of plastics; and wherein the rim has a plurality of fastening members.
Justis teaches in the same field of endeavor of hoof boot shell part comprising a base part (outer shoe portion per para. 0131) made of thermoplastic polyurethane (per para. 0131); a rim (any outer rim or edge part of the outer shoe portion) made of thermoplastic polyurethane (per para. 0131); a bottom piece (structural stabilizer portion per para. 0131) made of a plastic or a mixture of plastics (para. 0131 stated that the stabilizer portion is made out of a harder thermoplastic such as polycarbonate); and the base art lower surface provided with grooves (190,200). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the base part of Schaffer be made of thermoplastic polyurethane as taught by Justis, the rim of Schaffer be made of thermoplastic polyurethane as taught by Justis, and the bottom piece of Schaffer be made of a plastic or a mixture of plastics as taught by Justis, depending on the user’s preference to select well-known material for his/her intended use, especially when Schaffer stated in col. 4, lines 27-38, col. 5, lines53-68, col. 6, lines 1-7, that the material can be varied for wear and tear, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious choice. In re Leshin, 125 USPQ 416. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the base art lower surface of Schaffer be provided with grooves as taught by Justis in order to provide traction for the animal (para. 0078 of Justis).
Stephens teaches a hoof boot shell part comprising a rim (B) having a plurality of fastening members (b3), configured for an attachment of a strap-like and/or sock-like fastening means (functional recitation to which the fastening members of Stephens can perform the intended function because applicant stated in his specification that the fastening members 3a are slot-like to which straps can be attached, for example, with rivets, which the fastening members b3 of Stephens are slot-like or opening that accommodate rivets as shown in fig. 1 of Stephens and straps can be attached). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a plurality of fastening members as taught by Stephens on the rim of Schaffer as modified by Justis in order to provide further securement of the upper onto the hoof in addition to the adhesive.
The combination of Schaffer as modified by Justis and Stephens would functionally configure for an attachment of a strap-like and/or sock-like fastening device as stated in the above explanation.
For claim 3, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 1, wherein the base part and the rim each have a Shore hardness value in a range of 40-69 Shore (col. 4, lines 27-37 of Schaffer).
For claim 4, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 1, but is silent about wherein the bottom piece has a Shore hardness value of at least 70 Shore. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the bottom piece of Schaffer as modified by Justis and Stephens with a Shore hardness value of at least 70 Shore, depending on the user’s preference base on how hard the ground or floor that the horse will be trotting on and wear and tear factor, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233. NOTE that col. 5, lines 53-68 of Schaffer state that bottom piece 16 can be polyurethane or plastic based on the surface being used.
For claim 7, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 1, wherein the plurality of fastening members (as relied on Stephens) are configured for an attachment of a strap-like and/or sock-like fastening device (functional recitation to which the fastening members as taught by Stephens can perform the intended function if the user wishes to attach a strap-like and/or sock-like fastening device).
For claim 9, the limitation has been explained in the above in claims 1 & 3, thus, please see above.
For claim 12, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 4, wherein the bottom piece is permanently fixed to the base part (permanently is a condition that depends on the user in that if the user leaves the bottom piece on the base part and not detached the screws 18 in Schaffer, then the bottom piece is permanently attached to the base part).
For claim 13, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 4, wherein the bottom piece is detachably fixed to the base part with a form-locking joint or a mechanical joint (18 of Schaffer).
For claim 17, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 3, wherein the bottom piece is permanently fixed to the base part (permanently is a condition that depends on the user in that if the user leaves the bottom piece on the base part and not detached the screws 18 in Schaffer, then the bottom piece is permanently attached to the base part).
For claim 18, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 3, wherein the bottom piece is detachably fixed to the base part either with a form- locking joint or with a mechanical joint (18 of Schaffer).
For claim 20, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 3, wherein the lower surface of the base part further comprises a shaping (the recess that receives bottom piece 16 per figs. 2,4,5 of Schaffer), to which the bottom piece can be fitted to form a unified surface from the lower surface of the base part and the lower surface of the bottom piece (figs. 2,4,5 of Schaffer show the bottom piece unified with the base part lower surface to form a flush surface at the same level).
For claim 22, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 1, wherein the bottom piece is integral with the base part (integrally fixed as in together as a whole unit per the definition of integral, and fixed by using the screws 18 of Schaffer).
For claim 23, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 22, wherein the bottom piece is integral with the base part as part of a casting (integrally fixed as in together as a whole unit per the definition of integral, and fixed by using the screws 18 of Schaffer to create the horseshoe in a cast; noting that applicant’s only explanation what a casting is “In this case, bottom piece 10 will be cast in connection with the manufacture of shell part 1 into shaping 2d on
lower surface 2a of base part 2, as shown in Figure 2.”, which is what Schaffer does with the bottom piece and the base part).
Claims 8 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over Schaffer as modified by Justis and Stephens as applied to claims 1,4 above, and further in view of Callenbach et al. (AT 407106 B).
For claim 8, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 1, wherein the base part lower surface further comprises a shaping (the recess that receives bottom piece 16 per figs. 2,4,5 of Schaffer) at the base part front part between two grooves (piece 26 is also at the toe area as shown in Schaffer and as combined with Justis’s teaching of the grooves along the bottom surface, the shaping will be between the two grooves), configured to receive the bottom piece in such a manner that a unified surface is formed from the base part lower surface and a lower surface of the bottom piece (figs. 2,4,5 of Schaffer show the bottom piece unified with the base part lower surface to form a flush surface at the same level).
However, Schaffer as modified by Justis and Stephens is silent about the unified surface having grooves.
Callenbach et al. teach in the same field of endeavor of hoof boot shell part comprising a unified surface having grooves (85) formed for a base part lower surface (fig. 15 shows the bottom surface of the base part) and a bottom piece (90-93).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include grooves as taught by Callenbach et al. on the unified surface between the base part lower surface and the bottom piece of Schaffer as modified by Justis and Stephens in order to provide a more secure attachment of the parts.
For claim 15, the limitation has been explained in the above, thus, please see above.
Claim 21 is are rejected under 35 U.S.C. 103 as being unpatentable over Schaffer as modified by Justis and Stephens as applied to claims 1,3,17 above, and further in view of Rafeld (US 6401828 B1).
For claim 21, Schaffer as modified by Justis and Stephens teaches the hoof boot shell part according to claim 17, wherein the bottom piece permanently fixed to the base part but is silent by a weld.
Rafeld teaches in the same field of endeavor of hoof boot shell part comprising a bottom piece (6) permanently fixed to the base part (11) by a weld (col. 5, lines 55-60). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the bottom piece of Schaffer as modified by Justis and Stephens permanently fixed to the base part but by a weld as taught by Rafeld in order to further affixed the parts together in a more secure attachment.
Response to Arguments
Applicant's arguments filed 9/8/2025 have been fully considered but they are not persuasive. Applicant argued the following:
In response, claim 1 has been amended to include "provided with grooves" following the term "base part lower surface (2a)." Neither Schaffer nor Justis disclose grooves. In the case of Schaffer, Schaffer's base part lower surface is not provided with grooves as can be seen in Schaffer's Figures. Specifically, Schaffer's FIG. 1 shows the base part lower surface as being a flat surface with the absence of any grooves. In the case of Justis, Justis does not correct this deficiency since Justis also does not teach a base part lower surface provided with grooves as required by amended claim 1.
The rejection in the above relies on Justis for the grooves as amended. It is clear that Justis teaches grooves 190,200 on the lower surface of the base part, and these grooves are for traction, which is notoriously well known in the art. One ordinary skill in the art would add grooves as taught by Justis to the base part lower surface in Schaffer for traction.
Amended claim 1 requires a base part lower surface (2a) provided with grooves (2e). Said grooves on a base part lower surface are not found in Schaffer in view of Justis. Stephens does not correct this defect. Accordingly, the combination does not render claims 7, 14, and 19 obvious to one of ordinary skill because the combination of Schaffer in view of Justis and in further view of Stephens lacks grooves on the base part lower surface now required by amended claim 1. Further, there is no motivation for one of ordinary skill to combine the fastening means of Stephens with Schaffer.
Stephens was not relied on for grooves, thus, applicant’s argument is mooted. In addition, there is motivation to combine Stephens with Schaffer for the added fastening means as taught by Stephens because it is notoriously well known in the art that one can use adhesive, screws, nails, rivet, or a combination of these to attach a horseshoe to a hoof. While Schaffer discusses that he preferred using adhesive and that nails might hinder hoof development and such (as stated by applicant), Schaffer never stated that one cannot use nails at all in his invention because the section that Schaffer talks about nails is about prior arts not wishing to use nails. The exact wording of Schaffer, “A glue-on horseshoe is one that is attached to the hoof by means of an adhesive only; that is without the use of nails or screws. As discussed in many of the references, the elimination of nails is a very healthful development for hoofs. The art related to glue-on horseshoes involves adhesives, materials of construction, contours, strengthening means, fitting, resistance to lateral loads, and wear.” Thus, it appears that applicant is merely assuming that Schaffer bans a user from using nails or screws or the like.
Furthermore, even if assuming that Schaffer states no nails, one can still use nails or screws or the like for added securement and it would not hinder Schaffer’s invention in any way because the invention is about the horseshoe and its features staying on the horse and not whether to use adhesive or nails/screws for hoof development, especially when Schaffer only discusses the nails/screws for the prior art teaching without any indication that Schaffer is banning nails/screws from his invention.
Lastly, while nails/screws may or may not hindered hoof development, what if the user does not want hoof development on the horse because the horse might already have enough hoof development, and if too much development, the farrier would have to trim the hoof. Similar to nails in humans. Thus, while it is an important factor, it is more a choice of the user to nail/screw the horseshoe for extra security or not.
Schaffer, however, teaches using one, and only one, fastening means which is an adhesive. Schaffer additionally precludes the proposed additional attachment of Schaffer in view of Justis and in further view of Stephens. As explained in Schaffer, "[a] glue-on horseshoe is one that is attached to the hoof by means of an adhesive only; that is without the use of nails or screws" which Schaffer further mentions that many of the prior art references agree that the elimination of nails is a healthful development for hoofs (emphasis added .2 This statement in Schaffer expressly states that there can be no additional attachment means, especially that of nails or screws. Thus, there is no motivation for one of ordinary skill to modify Schaffer in view of Justis with Stephens with an additional attachment device.
As stated in the above comments, it appears that it is applicant’s mere assumption that Schaffer only allows adhesive only, and nothing more. As we all know, the adhesive is sometime not strong, especially when the horse puts so much force thereon; thus, adding extra fastening means such as nails/screws to the adhesive for extra security would be a proper motivation. Adding nail/screw to the upper of the shoe in Schaffer does not destroy the operability of the horseshoe because it would only add extra securement of the shoe onto the hoof, just in case the adhesive bond detaches from the hoof wall due to the force of the horse thereon.
In addition, the claimed limitation states “a plurality of fastening members”, which the adhesive used in Schaffer could technically be considered a plurality of fastening members because there are multiple places on the shoe that have the adhesive.
Additionally, one of ordinary skill would understand that Schaffer's use of an adhesive is meant to be a more permanent means of fastening than the claimed invention. This is very different from the strap-like or strap-like fastening of the present claims which allows for an easily removable hoof boot. Thus, there is no motivation for one of ordinary skill to modify Schaffer in view of Justis with Stephens with an alternative means of attachment.
Again, applicant is merely assuming that Schaffer uses adhesive for a permanent means of fastening because nowhere in Schaffer does he state such statement. As a matter of fact, that statement alone does not hold up because if the adhesive is permanent, then applicant is saying that the shoe of Schaffer is permanently on the horse forever and the farrier would never be able to remove the shoe? It is notoriously well known that adhesive used on a horseshoe is never a “permanent” fastening means, especially when the horse puts so much force on the shoe that may detach the shoe off.
In addition, the strap-like or strap-like fastening as stated by applicant is merely a hole as stated in applicant’s specification: “Members 3a are the slot-like area on the surface of the rim and the holes, to which the straps or the like can be attached, for example with rivets.”, which Stephens teaches a hole where a rivet fits therein. As for the strap-like and/ or sock-like fastening device, the limitation is not positively claimed because it is part of the functional recitation of configured for the fastening members, “the plurality of fastening members (3a) are configured for an attachment of a strap-like and/ or sock-like fastening device.”. As stated, the holes as taught by Stephens can be configured for attachment of a strap or sock device because of the holes.
Further, the combination of Schaffer in view of Justis in combination with
Stephens would change the principle of operation of Schaffer. Schaffer column 1, lines 37 - 38 states, "...the elimination of nails is a very healthful development for hoofs." In other words, the use of nails to attach horseshoes is considered to create an undesirable affect as compared to using adhesive to secure a horseshoe to a hoof.
As stated in the above, while Schaffer discusses elimination of nails is a very healthful development for hoofs, he never stated that his invention is banned from using nails. That section that applicant is referring to in Schaffer is merely a discussion of other prior art teaching that they do not prefer nails. Even if so stated in Schaffer, the operability of the shoe itself in Schaffer does not change in principle of operation as stated by applicant because how would adding two nails on each side of the upper change the operability of the shoe? If anything, the nails would improve the shoe because it would provide extra securement so as to assure that the shoe is better attached to the horse when trotting or the like.
Stephens is silent regarding the teachings of using a strap-like and/or sock-like fastening means. Further, the fastening members (3a) of the present claims are separate elements from the rim (3) as shown in the present annotated FIG. 1.
The claimed limitation merely claimed a functional recitation of the fastening members, and not the strap or sock device attached to the fastening members. The fastening members in applicant’s invention is merely holes as stated in the above comments with excerpt from applicant’s specification. Thus, applicant is arguing more than what is being claimed. Stephens teaches a hole where a rivet or the like can be attached, which is the same as applicant’s invention. Thus, that same hole of Stephens can function to be configure to attach a strap or sock like fastening device because structure of the hole would allow a user to perform such function.
In addition, according to applicant’s specification and claim 1, it does not appear that the fastening members 3a are separate from the rim 3 because fastening members 3a are holes that are cut into the rim. As stated in applicant’s specification, “Members 3a are the slot-like area on the surface of the rim and the holes, to which the straps or the like can be attached, for example with rivets.”, thus, fastening members 3a are clearly not “separate elements” from the rim because the fastening members are cuts or holes drilled out of the material of the rim. The only separate elements would be the rivets, which are not shown, but it appears that applicant is not arguing about the rivets. Regardless, Stephens teaches the same holes with rivets as applicant’s invention, thus, the holes and rivets of Stephen can perform the intended function of being configured for an attachment of a strap-like and/ or sock-like fastening device.
Schaffer in view of Justis and in further view of Callenbach cannot render amended claim 8 unpatentable because the combination does not teach that the shaping of the base part at the base part front part between two grooves. Callenbach teaches that Callenbach's groove (85) are located near the rear of the hoof protector next to the horse's frog and can be impressed with various profiles as seen in embodiments 90, 91, 92, and 93 shown in Callenbach's FIGS. 16 - 19. None of the profiles taught by Callenbach read on amended claim 8 requiring the base part shaping be: 1.) located at the base part front part; and 2.) between two grooves.
As stated in the above rejection, Schaffer teaches the shaping, which is the recess that receives bottom piece 16 per figs. 2,4,5 of Schaffer. Justis teaches the grooves along the bottom surface, thus, as combined in Schaffer, the shaping will be between the grooves, which constitute two grooves. The location of the shaping in Schaffer is in the front area and in the back area of the shoe. Thus, Callenbach was not relied on for the location of the shaping as argued by applicant. What Callenbach was relied on for is a unified surface having grooves (85) formed for a base part lower surface (fig. 15 shows the bottom surface of the base part) and a bottom piece (90-93). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include grooves as taught by Callenbach et al. on the unified surface between the base part lower surface and the bottom piece of Schaffer as modified by Justis and Stephens in order to provide a more secure attachment of the parts.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SON T NGUYEN whose telephone number is (571)272-6889. The examiner can normally be reached 9:00 to 4:00.
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/Son T Nguyen/Primary Examiner, Art Unit 3643