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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/05/2025 is being considered in part by the examiner. The foreign references that are struck through on the considered IDS are not being considered, as no copies of the foreign patents with translations have been included alongside the IDS (37 CFR 1.98(2)/(3)).
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 1-18 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.
Claims 1 and 9 recite “wherein the lateral ridge projects in a direction…generally perpendicular relative to a vertical plane defined by each of the plurality of fenestrations.” This limitation is not discussed in the specification, and the applicant does not appear to have support in the drawings for this limitation given the fenestrations of the applicant’s invention are along a curved arc of the horseshoe and therefore not all vertically coplanar, it is unclear how a ‘vertical plane’, may be defined by each of the plurality of fenestrations. The issue of new matter is based on the applicant defining a vertical plane (singular) by each of the plurality of fenestrations, when the fenestrations define different vertical planes in the drawings.
Support for the amended limitation is not apparent, and applicant has not pointed out where the limitation is supported (MPEP 714.02; MPEP 2163.04).
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 1-18 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.
Claim 1 recites “the segmented arc” in the second to last line. The antecedent basis of this limitation is unclear, as the claim previously recites two different segmented arcs, one that the polymer upper forms, and one that the metal lower forms. Similarly with claim 9.
Claims 1 and 9 recite “wherein the lateral ridge projects in a direction…generally perpendicular relative to a vertical plane defined by each of the plurality of fenestrations.” Given the issues discussed in the 112(a) rejection above, it is unclear what the applicant considers to be the recited ‘vertical plane’, and therefore the scope of the claim is unclear in regard to how the lateral ridge may project.
Claims 1 and 9 claims that the lateral ridge extends continuously outwards about an entire periphery…..” It is unclear what ‘outward’ refers to, or rather, whether the claim requires the ridge, at all spots along the periphery to extend in a single direction, that defined as ‘outward’, whether the claim requires that the ridge extend continuously outward/away from the metal lower, or extend continuously outward/away from the entire periphery of the metal lower/segmented arc (depending on the claim).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mustad (DE 3731905 A1), hereinafter referred to as Mustad.
Regarding claim 19:
Mustad discloses an equine shoe (claim 1) comprising:
a metal horse shoe (claim 1; metal part 45, Fig 11) having a top, a bottom, and an intermediate portion therebetween (see annotated Fig 10 below);
a plurality of cavities extending through the top (see annotated Fig 10 below, and Fig 11 for plurality);
and a plurality of fenestrations extending through the intermediate portion (see annotated Fig 10 below, and Fig 11 for plurality);
wherein at least one passageway connects a cavity to a fenestration (see annotated Fig 10 below).
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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 are rejected under 35 U.S.C. 103 as being unpatentable over Mustad, in view of McDonnell (US 3603402), hereinafter referred to as McDonnell, as best understood in light of the 112(b) issues addressed above.
Regarding claim 1:
Mustad discloses an equine shoe (claim 1) comprising:
a polymer upper forming a segmented arc (see annotated Fig 10 below; Pg 5; ¶2; forms an arc as it encapsulates a horseshoe shaped metal part, claim 1, see also Fig 1a, segmented in that it is broken up by exposed metal portions, Pg 5, last ¶); the upper having a top, a bottom, a proximal end, a distal end, and an outer periphery (see annotated Fig 10 below, proximal end is that near toe of horse, distal end is that near heel of horse); a cuff extending from the outer periphery (see annotated Fig 1 below).
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a metal lower (metal part, Fig 11) forming a segmented arc (claim 1; Fig 11), the metal lower having a plurality of fenestrations and cavities (openings 46, Fig 11), wherein the polymer upper is over molded to the metal lower (Pg 5, ¶2; see Fig 10; Product-by-Process limitation: see MPEP 2113, no non-obvious structural differences),
Mustad fails to specifically disclose a lateral ridge integrally formed with the metal lower, the lateral ridge extending continuously outward about an entire periphery of the segmented arc of the metal lower; and wherein the lateral ridge projects in a direction generally parallel relative to a horizontal plane of the segmented arc and/or generally perpendicular relative to a vertical plane defined by each of the plurality of fenestrations.
McDonnell discloses a horseshoe with a lateral ridge (see annotated Fig 5 below), the lateral ridge extending about an entire periphery of an arc formed by the horseshoe (see Fig 1), and wherein the lateral ridge projects in a direction parallel relative to a horizontal plane of the arc/horseshoe (see Fig 1).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have changed the shape of the polymer portion of the shoe of Mustad, by adding a lateral ridge about the periphery of the shoe, as in McDonnell, the result having a reasonable expectation of success. One would have been motivated to make this modification because, as in Mustad, this extending ridge portion may help guide tools or allow for better gripping of the shoe which can be helpful in removing a horseshoe (abstract; Col 2, lines 35-47). Further, providing a ridge extension of the shoe, extending from the point of removal to the ground, would create a larger horseshoe surface area touching the ground, and may allow for better traction. Moreover, it has been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent, (Eskimo Pie Corp. v. Levous et al., 3 USPQ 23), and the applicant’s specification prescribes no criticality/benefits to the presence of a ridge.
The examiner notes that, given that the polymer upper and metal lower are integrally formed in Mustad (cast/molded together per Pg 5, ¶2), the addition of a lateral ridge to the polymer upper, as suggested by McDonnell, would result in the metal lower of Mustad being integrally formed with the ridge. Further, adding a ridge to the polymer upper structure of Mustad, around the periphery of the horseshoe, as in McDonnell, would result in the ridge extending continuously outward about an entire periphery of the segmented arc of the metal lower, and the ridge projecting in a direction relative to the segmented arc/fenestrations, as claimed, given the positioning of the metal lower in the polymer upper shown in Fig 10 of Mustad.
Regarding claim 2:
Mustad as modified discloses the limitations of claim 1 above and further discloses wherein the cuff includes a distal cutout (see annotated Fig 1 below).
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Regarding claim 3:
Mustad as modified discloses the limitations of claim 1 above and further discloses wherein the cuff includes a proximal cutout (see annotated Fig 1 below).
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Regarding claim 4:
Mustad as modified discloses the limitations of claim 1 above and further discloses wherein the cuff includes a distal cutout and a proximal cutout (see annotated Fig 1 below).
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Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mustad and McDonnell, as applied to claim 4 above, in view of Burns (US 2012/0193107), hereinafter referred to as Burns, as best understood in light of the 112(b) issues addressed above.
Regarding claim 5:
Mustad as modified discloses the limitations of claim 4 above and further discloses wherein the polymer upper is formed of plastic (claim 1).
Mustad fails to specifically disclose wherein the polymer upper is formed of urethane.
Burns discloses a molded horseshoe formed of urethane (¶0046)
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have chosen urethane, as in Burns, as the plastic of the polymer upper of Mustad, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Burns, Urethane is a resilient, flexible, and moldable material with sufficient density to prevent damage from over-flexing (¶0045-0046). Further, 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 design choice. In re Leshin, 125 USPQ 416.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mustad, McDonnell, and Burns, as applied to claim 5 above, in view of Robertson (US 1441602), hereinafter referred to as Robertson, as best understood in light of the 112(b) issues addressed above.
Regarding claim 6:
Mustad as modified discloses the limitations of claim 5 above and further discloses wherein the metal lower includes a top surface (see annotated Fig 10 below) in communication with the polymer upper (see Fig 10), and discloses that a portion of the metal lower is exposed in the tread (Pg 5, last ¶).
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Mustad as modified fails to disclose wherein the metal lower includes a treaded surface wherein the treaded surface is configured to provide traction.
Robertson discloses a similar polymer/metal composite horseshoe, with a metal portion (metallic element 24, Fig 8) including a treaded surface (see annotated Fig 7 below, and Fig 9).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the exposed surface of the metal portion in Mustad to be treaded, having grooves/protrusions, as in Robertson, the result having a reasonable expectation of success. One would have been motivated to make such a modification in order to improve traction, and ensure that a horse does not slip and hurt themselves on slippery ground.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mustad, McDonnell, Burns, and Robertson, as applied to claim 6 above, in view of Chamberlain (US 0510402), hereinafter referred to as Chamberlain, as best understood in light of the 112(b) issues addressed above.
Regarding claim 7:
Mustad as modified discloses the limitations of claim 6 above.
Mustad as modified fails to specifically disclose wherein the top surface is textured.
Chamberlain discloses a composite horseshoe formed of rubber and metal portions (A and B), wherein, the surface of the metal, on which the rubber is adhered, is textured (lines 50-65).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the top surface of Mustad (that being bonded with the plastic portion) to be textured, as in Chamberlain, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Chamberlain, providing the metal with texture helps promote the adhesion between the polymer and the metal.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mustad, McDonnell, Burns, and Robertson, as applied to claim 6 above, in view of Ford (US 20140231100, as cited on IDS), hereinafter referred to as Ford, as best understood in light of the 112(b) issues addressed above.
Regarding claim 8:
Mustad as modified discloses the limitations of claim 6 above.
Mustad as modified fails to specifically disclose wherein the cuff includes a plurality of openings.
Ford discloses a horseshoe with a cuff (sidewalls 14, Fig 1), including a plurality of openings (perforations 44, Fig 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the cuffs of Mustad to include a plurality of openings, as in Ford, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Ford, the perforations allow adhesive to spread through when the shoe is glued on, and the cured adhesive forms a rivet-type anchor to help further retain the shoe on the horse (¶0054).
Claims 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Mustad in view of McDonnell and Robertson, as best understood in light of the 112(b) issues addressed above.
Regarding claim 9:
Mustad discloses an equine shoe (claim 1) comprising:
a polymer upper portion (see annotated Fig 10 below; Pg 5; ¶2); forming a segmented arc (forms an arc as it encapsulates a horseshoe shaped metal part, claim 1, see also Fig 1a, segmented in that it is broken up by exposed metal portions, Pg 5, last ¶), defining an inner periphery and an outer periphery (see annotated Fig 1a below);
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a first cuff (see annotated Fig 1 below, including the two leftmost tabs on the left side of the shoe) extending from the outer periphery see Fig 1), the first cuff defining a distal cutout and a proximal cutout (see annotated Fig 1 below);
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a metal lower portion (metal part 45, formed by 46, 42, and 43, Fig 10), the lower portion comprising a fenestration, a cavity and a passageway between the fenestration and the cavity (see annotated Fig 10 below),
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a portion of the polymer upper being disposed through each of the cavity and fenestration, wherein the upper is permanently secured to the lower portion (see Fig 10; Pg 5, ¶2).
Mustad fails to specifically disclose:
a lateral ridge integrally formed with the metal lower, the lateral ridge extending continuously outward about an entire periphery of the metal lower portion; and wherein the lateral ridge projects in a direction generally parallel relative to a horizontal plane of the segmented arc and/or generally perpendicular relative to a vertical plane defined by each of the fenestration.
wherein the metal lower portion comprises a treaded surface, but comments that a part of the metal portion is exposed in the tread (Pg 5, last ¶).
McDonnell discloses a horseshoe with a lateral ridge (see annotated Fig 5 below), the lateral ridge extending about an entire periphery of the horseshoe arc (see Fig 1), and wherein the lateral ridge projects in a direction parallel relative to a horizontal plane of the arc/horseshoe (see Fig 1).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have changed the shape of the polymer portion of the shoe of Mustad, by adding a lateral ridge about the periphery of the shoe, as in McDonnell, the result having a reasonable expectation of success. One would have been motivated to make this modification because, as in Mustad, this extending ridge portion may help guide tools or allow for better gripping of the shoe which can be helpful in removing a horseshoe (abstract; Col 2, lines 35-47). Further, providing a ridge extension of the shoe, extending from the point of removal to the ground, would create a larger horseshoe surface area touching the ground, and may allow for better traction. Moreover, it has been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent, (Eskimo Pie Corp. v. Levous et al., 3 USPQ 23), and the applicant’s specification prescribes no criticality/benefits to the presence of a ridge.
The examiner notes that, given that the polymer upper and metal lower are integrally formed in Mustad (cast/molded together per Pg 5, ¶2), the addition of a lateral ridge to the polymer upper, as suggested by McDonnell, would result in the metal lower of Mustad being integrally formed with the ridge. Further, adding a ridge to the polymer upper structure of Mustad, around the periphery of the horseshoe, as in McDonnell, would result in the ridge extending continuously outward about an entire periphery of the segmented arc of the metal lower, and the ridge projecting in a direction relative to the segmented arc/fenestrations, as claimed, given the positioning of the metal lower in the polymer upper shown in Fig 10 of Mustad.
Robertson discloses a similar polymer/metal composite horseshoe, with a metal portion (metallic element 24, Fig 8) including a treaded surface (see annotated Fig 7 below, and Fig 9).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the exposed surface of the metal portion in Mustad to be treaded, having grooves/protrusions, as in Robertson, the result having a reasonable expectation of success. One would have been motivated to make such a modification in order to improve traction, and ensure that a horse does not slip and hurt themselves on slippery ground.
Regarding claim 10:
Mustad as modified discloses the limitations of claim 9 above and further discloses wherein the metal lower portion is formed of aluminum (Pg 4, last ¶)
Regarding claim 11:
Mustad as modified discloses the limitations of claim 9 above and further discloses wherein the metal lower portion is formed of steel (Pg 4, last ¶).
Regarding claim 12:
Mustad as modified discloses the limitations of claim 9 above and further discloses wherein the metal part can be made of steel, aluminum, or suitable metal alloys.
Mustad as modified fails to specifically disclose wherein the metal lower is formed of titanium.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have formed the metal part of titanium, the result having a reasonable expectation of success in order to provide the desired strength, rigidity, and resilience for the horse the shoe is applied to/the landscape in which the shoe will be used, or in order to optimize material costs, 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 design choice. In re Leshin, 125 USPQ 416.
Regarding claim 13:
Mustad as modified discloses the limitations of claim 9 above and further discloses wherein the metal part can be made of steel, aluminum, or suitable metal alloys.
Mustad as modified fails to specifically disclose wherein the metal lower is formed of magnesium.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have formed the metal part of magnesium, the result having a reasonable expectation of success in order to provide the desired strength, rigidity, and resilience for the horse the shoe is applied to/the landscape in which the shoe will be used, or in order to optimize material costs, 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 design choice. In re Leshin, 125 USPQ 416.
Regarding claim 14:
Mustad as modified discloses the limitations of claim 9 above and further discloses wherein the metal part can be made of steel, aluminum, or suitable metal alloys.
Mustad as modified fails to specifically disclose wherein the metal lower is formed of copper.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have formed the metal part of copper, the result having a reasonable expectation of success in order to provide the desired strength, rigidity, and resilience for the horse the shoe is applied to/the landscape in which the shoe will be used, or in order to optimize material costs, 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 design choice. In re Leshin, 125 USPQ 416.
Regarding claim 15:
Mustad as modified discloses the limitations of claim 9 above and further discloses wherein the shoe further comprises a second cuff (annotated on Fig 1 below, however, the second cuff with cutouts would be on the opposite side, the second cuff including the two rightmost tabs on the right side of the shoe, being mirrored to the side shown in Fig 1), the second cuff extending from the outer periphery (see Fig 1) and defining a second distal cutout and a second proximal cutout (annotated on Fig 1 for visualization, but truly the empty spaces on sides of tabs 2 included in second cuff, found on right side of horseshoe).
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Claims 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Mustad, in view of Robertson.
Regarding claim 20:
Mustad discloses the limitations of claim 19 above, and further comments that a part of the metal portion is exposed in the tread (Pg 5, last ¶).
Mustad fails to disclose wherein shoe further comprises a treaded surface on the bottom.
Robertson discloses a similar polymer/metal composite horseshoe, with a metal portion (metallic element 24, Fig 8) including a treaded surface (see annotated Fig 7 below, and Fig 9).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the exposed surface of the metal portion in Mustad to be treaded, having grooves/protrusions, as in Robertson, the result having a reasonable expectation of success. One would have been motivated to make such a modification in order to improve traction, and ensure that a horse does not slip and hurt themselves on slippery ground.
Regarding claim 21:
Mustad as modified discloses the limitations of claim 20 above and further discloses a polymer upper over molded to the top (Pg 5, ¶2; see Fig 10; Product-by-Process limitation: see MPEP 2113, no non-obvious structural differences).
Regarding claim 22:
Mustad as modified discloses the limitations of claim 21 above and further discloses a first cuff attached to the polymer upper (see annotated Fig 1 below; first cuff includes two leftmost tabs 2 on left side)
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Regarding claim 23:
Mustad as modified discloses the limitations of claim 22 above and further discloses a second cuff attached to the polymer upper (as the annotation of First cuff for claim 22 above, but on the opposite side, the second cuff including the two rightmost tabs on the right side of the shoe).
Regarding claim 24:
Mustad as modified discloses the limitations of claim 23 above and further discloses wherein the first and second cuffs include a cutout (cutouts are spaces formed to sides of tabs 2, which are part of cuffs).
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Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Mustad and McDonnell, as applied to claim 1 above, in view of Tovim (US 4265314), hereinafter referred to as Tovim.
Regarding claim 16
Mustad as modified discloses the equine shoe of claim 1 above and further contemplates using adhesive for attachment of the shoe to the horse’s hoof.
Mustad fails to specifically disclose an equine shoe attachment kit having component parts capable of being assembled in the field, the kit comprising a combination of the equine shoe of claim 1; and a tube of cyanoacrylate adhesive.
Tovim discloses the use of a cyanoacrylate adhesive for attachment of an equine shoe (Col 2, lines 5-20).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have specifically provided a cyanoacrylate adhesive for adhesion of the shoe of Mustad, as in Tovim, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Tovim, cyanoacrylate adhesives are proven to be useful with good flexural, impact, and gap filling properties, suitable for the large stresses imparted to a horse shoe when in use (Col 2, lines 5-20).
Regarding kit claim 16, in view of the structure disclosed by Mustad and Tovim, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have provided the equine shoe of claim 1 and the cyanoacrylate adhesive in a kit form for convenient access and purchase reasons, the result having a reasonable expectation of success.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Mustad, McDonnell, and Tovim, as applied to claim 16 above, further in view of EasyCareVideos (NPL: YouTube) hereinafter referred to as EasyCareVideos.
Regarding claim 17
Mustad as modified discloses the equine shoe attachment kit of claim 16 above.
Mustad as modified fails to specifically disclose wherein the kit further comprises a plastic wrap for temporarily securing the equine shoe to an equine shoe.
However, EasyCareVideos contemplates the use of plastic wrap in temporarily securing an equine shoe to a horse’s hoof, while waiting for adhesive to cure (3:00 – 3:40).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided plastic wrap in the kit of Mustad, as suggested by EasyCareVideos, the result having a reasonable expectation of success. One would have been motivated to make such a modification because plastic wrap is useful in the attachment of a shoe to a horse’s hoof with adhesive, preventing unwanted adhesive transfer, and providing stability until the adhesive cures.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Mustad, McDonnell, Tovim, and EasyCareVideos, as applied to claim 17 above, further in view of Ford.
Regarding claim 18
Mustad as modified discloses the equine shoe attachment kit of claim 17 above.
Mustad as modified fails to specifically disclose wherein the kit further comprises a plurality of nails for nailing the metal lower to a horse hoof.
Ford contemplates alternatively gluing or nailing a horse shoe to a horse’s hoof, both attachment mechanisms providing essentially the same performance (¶0050).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the shoe of Mustad to include holes in the shoe for specific nailing attachment, and to have provided nails in the kit of Mustad, as suggested by Ford, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Ford, both nailing and gluing are known equivalents of shoe attachment with similar performance, and having both options allows the user freedom to follow his/her preferred method of installation of the shoe (¶0050).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Mustad and Robertson, as applied to claim 23 above, further in view of Burns
Regarding claim 25:
Mustad as modified discloses the limitations of claim 23 above.
Mustad as modified fails to specifically disclose wherein the polymer upper is formed of a urethane having a durometer value between 80A and 90A.
Burns discloses a polymer shoe made of a urethane having a durometer value between 80A and 90A (¶0046).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have chosen urethane, as in Burns, as the plastic of the polymer upper of Mustad, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Burns, Urethane is a resilient, flexible, and moldable material with sufficient density to prevent damage from over-flexing (¶0045-0046). Further, 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 design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed 12/05/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim(s) 1-25 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOK V SCHMID whose telephone number is (571)270-0141. The examiner can normally be reached M-F 8:30-5:30ish.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Huson, can be reached on 571-270-5301. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.V.S./Examiner, Art Unit 3642
/JOSHUA D HUSON/ Supervisory Patent Examiner, Art Unit 3642