DETAILED ACTION
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.
Claims 1-4, 14-15, 17-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson, US 2017/0202197 A in view of Raimondo, US 2006/0011681 A1. Wilson discloses an apparatus (20) capable of walking a companion animal. The apparatus comprising a first coupling portion at a distal end (3); and, a second coupling portion (8) at a proximal end. The first coupling portion comprises a first upward-facing well configured to receive a leash and the second coupling portion comprises a second downward-facing well to receive a belt.
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The claim requires that the downward projection comprise an inwardly curved portion at the lower proximal end. Wilson discloses that the lower proximal end of the downward projection is planar. However, Raimondo discloses a clip (1) with a downward projection (2) at a lower proximal end (4) being curved inwardly to approximate a curve of a person’s waist or belt. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to modify Wilson’s planar lower proximal end to have an inwardly curved shape to improve the ergonomics of the clip fitting against the wearer’s waist.
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Regarding claim 2, Wilson’s clip is configured for the person to walk a companion animal without the use of their hands.
Regarding claim 3, Wilson’s clip is configured for quick release of a leash, i.e., the upward facing well opening allows for quick release of a leash.
Regarding claim 4, Wilson’s clip is configured for quick release from a piece of clothing, i.e., the downward facing well opening allows for quick release of the clothing.
Regarding claim 14, Wilson discloses the upward projection (4) being wider from a front view at the distal end than at a first well low point.
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Regarding claim 15, Wilson discloses the upward projection has a greater thickness in a side view than at the first well low point.
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Regarding claim 17, Wilson discloses that the width of the upward projection at the upper distal end is smaller in width than the width of the downward projection at the lower distal end. However, the courts have noted that changes in size/proportion would be obvious to a person having ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Therefore, since the specification fails to disclose any criticality associated with the proportions of the widths of the upward projection relative to the downward projection and Wilson’s device would function equally as well with the downward projection being of a greater width than the width of the upward projection, it would have been obvious, prior to the earliest effective filling date, to a person having ordinary skill in the art to modify Wilson’s downward projection to be of greater width than the width of the upward projection.
Regarding claim 18, Raimondo discloses the downward projection comprises a greater thickness in a side view than at a second well high point (please see the annotated drawing).
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Regarding claim 20, the claim requires that the upper distal end have an outwardly curved portion in an opposite direction to that of the inwardly curved portion. Wilson discloses that the upward projection (4) is straight and smooth, “however, in other embodiments the guide segment 4 may be may be entirely straight, substantially bent or curved, or have a textured surface.” ([0018]) Wilson also discloses that the base segment/downward projection (10) is substantially straight, smooth, “however in other embodiments the base segment 10 may be entirely straight, substantially bent or curved, or have a textured surface.” ([0018])
The applicant’s specification fails to disclose any criticality to the opposition of the curved surfaces of the upward and downward projections. The only recitation found in the specification to this limitations in on page 6, penultimate paragraph, “In a twentieth embodiment, disclosed is an apparatus according to any of the preceding embodiments, wherein the distal end comprises an outwardly curved portion.” Furthermore, the courts have noted that the changes in size, shape or proportion would be obvious to a person having ordinary skill in the art. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to make Wilson’s upper distal end with an outwardly curved portion in an opposite direction to that of the inwardly curved portion of the proximal distal end as a matter of aesthetics or design choice.
Claims 5-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson, US 2017/0202197 A in view of Raimondo, US 2006/0011681 A1 and further in view of Koppe, US 2009/0159471 A1
Regarding claims 5 and 6, Wilson fails to disclose the material to form the clip, i.e., thermoplastic or metal or plastic. However, Koppe discloses the apparatus made from nylon ([0029]) or polyethylene ([0042]), which are thermoplastic materials. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to make Wilson’s clip from a thermoplastic material to provide for a cheaper and more effective method of manufacturing the clip, i.e., injection molding.
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Regarding claims 7-13 and 16, Wilson fails to discloses the claimed dimensions of the clip. However, Koppe discloses the dimensions of a clip ([0038]), which fall within the claimed ranges (70mm=2.6in, 72mm=2.83in, 73mm=2.87in).
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The specification fails to disclose any criticality associated with these dimensions defining the clip. Wilson’s clip would work equally as well in supporting a leash on the clip with the clip attached to the wearer’s clothing with those claimed dimensions. The courts have noted that the changes in size, shape or proportion would be obvious to a person having ordinary skill in the art. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to make Wilson’s clip with the claimed dimensions, as taught by Koppe, to provide the appropriate sized clip for the wearer’s clothing and to accommodate the size of the leash being clipped thereon.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK W LAVINDER whose telephone number is (571)272-7119. The examiner can normally be reached Mon-Friday 9-4pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at 571-272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACK W. LAVINDER
Primary Patent Examiner
Art Unit 3677
/JACK W LAVINDER/Primary Examiner, Art Unit 3677
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