DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
Claim 8-22,24-33,35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Porter et al. (US 6782846 B1) in view of Mandato (US 2613678 A) and Rauh (US 0926766 A).
For claim 8, Porter et al. teach a pet grooming tool comprising:
(a) a toothed portion (24, fig. 4) comprising a main body, a plurality of teeth (32), and a plurality of edge segments (30); the plurality of teeth and edge segments extending from the main body and arranged in a row, there being a gap between each adjacent pair of the teeth (see fig. 4), the edge segments alternating with the teeth and bridging the gaps between the teeth, the edge segments being configured and adapted to engage loose fur in a pet’s coat as such loose fur extends through the gaps to remove loose fur from the pet’s coat;
(b) a handle portion (22) sized and configured to be held in a human hand; the handle portion being elongate about a longitudinal axis (X); the handle portion being a rigid material; the main body of the toothed portion being contained in a plane angled at a non-zero angle relative to the longitudinal axis (see fig. 5).
However, Porter et al. are silent about (c) a fur ejector portion comprising a solid planar plate having an end edge extending continuously and straight between opposite lateral sides of the toothed portion, the end edge being parallel to the row of teeth and a movable actuation button; the fur ejector portion being configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth; (d) a biasing portion positioned to bias against movement of the actuation button.
Mandato teaches in the same field of endeavor of grooming tool, the tool comprising a hair ejector portion (7,8,9,11,12) comprising a movable actuation button (8,9); the fur ejector portion being configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth (2) by contacting the fur only outside of the gaps between the teeth (see fig. 2 which shows the portion 12 on the outside of the teeth); a biasing portion (10) positioned to bias against movement of the actuation button. It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a fur ejector portion, a movable actuation button, and a biasing portion with the location or placement of the ejector portion on the outside of the gaps between teeth as taught by Mandato in the grooming tool of Porter et al. in order to pull the fur/hair for cutting and/or to clean debris or fur/hair that are left on the grooming tool.
Rauh teaches in the same field of endeavor of grooming tool, the tool comprising a fur ejector portion comprising a solid planar plate (4) having an end edge extending continuously and straight (the end edge is from just below where ref. 4a on the left side is pointing at to just below where ref. 4a on the right side is pointing at as drawn in the examiner’s illustration below; also, noting that “an end edge” can be any edge that is on an end surface and not necessary the whole ref. 4 that includes ref. 8 or ref. 6, etc.) between opposite lateral sides of the toothed portion, the end edge being parallel to the row of teeth. It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a solid planar plate having an end edge extending continuously and straight between opposite lateral sides of the toothed portion, the end edge being parallel to the row of teeth as taught by Rauh for the fur ejector portion of Porter et al. as modified by Mandato in order to provide more surface area on the ejector portion so as to remove more fur/hair from the grooming tool.
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Porter et al. as modified by Mandato and Rauh would result in the fur ejector portion being configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth (Mandato teaches the fur ejector scraping the fur on the outside of the teeth of the grooming tool, thus, combined with Rauh’s teaching of the plate, the plate would perform the same).
For claim 9, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 8, and further teach wherein the row of the teeth is straight and the plurality of edge segments lie within a common plane (as shown in figs. 4-5 of Porter et al.).
For claim 10, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 8, and further teach wherein each of at least a plurality of the edge segments of the toothed portion comprises a leading surface portion (can be either surface where ref. 36 is pointing at or the surface below ref. 38, depending on how one look at the device to considered leading or trailing in Porter et al.) and a trailing surface portion (can be either surface where ref. 36 is pointing at or the surface below ref. 38, depending on how one look at the device to considered leading or trailing in Porter et al.), and the trailing surface portion and the leading surface portion of each of the plurality of the edge segments forms an acute included angle(as shown in fig. 5 of Porter et al.).
For claim 11, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 8, and further teach wherein the leading surface portions of the plurality of the edge segments are generally coplanar (as shown in figs. 4-5 of Porter et al.).
For claim 12, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 8, and further teach wherein the biasing portion comprises no more than a single coil-spring (Mandato shows only one single coil-spring 10).
For claim 13, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 8, and further teach wherein the teeth extend from a front surface to a back surface; the front surface tapering toward the back surface as the front surface and back surface extend toward free tips of the teeth (see fig. 5 of Porter).
For claim 14, Porter et al. teach a pet grooming tool comprising:
a toothed portion (24), the toothed portion comprising a plurality of teeth (32) arranged in a row and a plurality of edge segments (30), there being a gap between each adjacent pair of the teeth (see fig. 4), the edge segments alternating with the teeth and bridging the gaps between the teeth, the edge segments being configured and adapted to engage loose fur in a pet's coat as such loose fur extends through the gaps in a manner removing the loose fur from the pet’s coat; wherein the teeth extend from a front surf ace to a back surface (figs. 4-5).
However, Porter et al. are silent about a fur ejector portion, the fur ejector portion comprising an edge, the edge of the fur ejector portion being movable between a first position and a second position relative to the toothed portion, the edge segments of the toothed portion being between the edge of the fur ejector portion and tips of the teeth when the fur ejector portion is in the first position; at least one biasing portion biasing the edge of the fur ejector portion away from the second position and toward the first position; the fur ejector portion being configured and adapted to permit fur to pass through the gaps of the toothed portion when the edge of the fur ejector portion is in the first position, each of the teeth being fully covered along the back surface by the fur ejector portion, when the fur ejector portion is in the second position, and the edge of the fur ejector portion being adapted to move relative to the toothed portion and to contact fur passing through the gaps of the toothed portion in a manner forcing the fur out from the gaps of the toothed portion as the fur ejector portion moves away from the first position toward the second position.
Mandato teaches in the same field of endeavor of grooming tool, the tool comprising a fur ejector portion (7,8,9,11,12), the fur ejector portion comprising an edge (any edge of ref. 12), the edge of the fur ejector portion being movable between a first position and a second position relative to the toothed portion (as shown in fig. 1); at least one biasing portion (10) biasing the edge of the fur ejector portion away from the second position and toward the first position; the fur ejector portion being configured and adapted to permit fur to pass through the gaps of the toothed portion when the edge of the fur ejector portion is in the first position; and the edge of the fur ejector portion being adapted to move relative to the toothed portion and to contact fur passing through the gaps of the toothed portion in a manner forcing the fur out from the gaps of the toothed portion as the fur ejector portion moves away from the first position toward the second position. It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a fur ejector portion, a movable actuation button, and a biasing portion to move the fur ejector portion between a first position and a second position as taught by Mandato in the grooming tool of Porter et al. in order to clean debris or fur/hair that are left on the grooming tool.
Rauh teaches in the same field of endeavor of grooming tool, the tool comprising a fur ejector portion comprising a solid planar plate (4) having an end edge extending continuously between opposite lateral sides of the toothed portion, the end edge being parallel to the row of teeth, each of the teeth being fully covered along the back surface by the fur ejector portion, when the fur ejector portion is in the second position (depending on the point in time where the ejector portion slides because the ejector portion starts in position of fig. 1, and as the user slides the ejector portion in a point in time of the middle region, the ejector portion will cover all of the teeth, then as it reaches the end as shown in fig. 4, the ejector portion only covers the end area at that point in time; also, fig. 2 shows a point in time of the ejector portion position, while ref. 3 is exposed and not covered, at a previous point in time to this position, the teeth are fully cover because the ejector portion dimension is almost similar to that of the comb itself in fig. 2; in another word, when the ejector portion top edge slides where ref. 2 is pointing at in fig. 2, the teeth would be fully cover). It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a solid planar plate having an end edge extending continuously between opposite lateral sides of the toothed portion, the end edge being parallel to the row of teeth, and each of the teeth being fully covered along the back surface by the fur ejector portion, when the fur ejector portion is in the second position as taught by Rauh for the fur ejector portion of Porter et al. as modified by Mandato in order to provide more surface area on the ejector portion so as to remove more fur/hair from the grooming tool.
The combination of Porter et al. as modified by Mandato and Rauh would result in the edge segments of the toothed portion (as already taught in Porter) being between the edge of the fur ejector portion and tips of the teeth when the fur ejector portion is in the first position (per the location of the fur ejector portion in Mandato).
For claim 15, the limitation has been explained in the above, thus, please see above claim 9.
For claim 16, the limitation has been explained in the above, thus, please see above claim 12.
For claim 17, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 14, and further teach wherein the fur ejector portion directly contacts at least a portion of the toothed portion (as shown in figs. 1,3,4 of Mandato).
For claim 18, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 14, and further teach wherein the edge segments are exposed when the fur ejector is in both the first position and second position (as combined with Mandato’s teaching, the edge segments in Porter will be exposed).
For claim 19, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 14, and further teach wherein the fur ejector portion comprises the movable actuation button (as explained in the above with Mandato).
For claim 20, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 19, and further teach wherein the actuation button is contained in a same plane as the edge of the fur ejector portion (fig. 1 of Mandato shows that the button 8,9 is in the same plane with the portion 12 that goes through orifice 6, thus, would be the same when combined in Porter).
For claim 21, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 20, and further teach wherein the actuation button is contained in a plane parallel to the toothed portion (the thickness of button 8,9 of Mandato is in a plane parallel to the toothed portion).
For claim 22, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 14, and further teach a handle portion (22 of Porter) sized and configured to be held in a human hand; the handle portion being elongate about a longitudinal axis; the toothed portion being contained in a plane angled at a non-zero angle relative to the longitudinal axis (see fig. 5 of Porter).
For claim 24, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claim 14, and further teach wherein; the front surface tapers toward the back surface as the front surface and back surface extend toward the tips of the teeth (see fig. 5 of Porter).
For claim 25, the limitations have been explained in the above, thus, please see above. Not explained is: the edge of the fur ejector portion being adapted to move relative to only one of the first surface and second surface of the toothed portion and to contact fur passing through the gaps of the toothed portion in a manner forcing the fur out from the gaps of the toothed portion as the fur ejector portion moves away from the first position toward the second position. In addition to the above, Mandato teaches the edge of the fur ejector portion being adapted to move relative to only one of the first surface and second surface of the toothed portion and to contact fur passing through the gaps of the toothed portion in a manner forcing the fur out from the gaps of the toothed portion as the fur ejector portion moves away from the first position toward the second position (as shown in fig. 2 and discussed in col. 2, lines 6-14 of Mandato). Thus, the combination of Porter et al. as modified by Mandato and Rauh would result in the same.
For claim 26, the limitation has been explained in the above, thus, please see above claim 15.
For claim 27, the limitation has been explained in the above, thus, please see above claim 12.
For claim 28, the limitation has been explained in the above, thus, please see above claim 17.
For claim 29, the limitation has been explained in the above, thus, please see above claim 18.
For claim 30, the limitation has been explained in the above, thus, please see above claim 19.
For claim 31, the limitation has been explained in the above, thus, please see above claim 20.
For claim 32, the limitation has been explained in the above, thus, please see above claim 21.
For claim 33, the limitation has been explained in the above, thus, please see above claim 22.
For claim 35, the limitation has been explained in the above, thus, please see above claim 24.
Claims 23 & 34 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Porter et al. as modified by Mandato and Rauh as applied to claims 14,25,33 above, and further in view of Willinger et al. (US 6213055 B1). For claims 23 & 34, Porter et al. as modified by Mandato and Rauh teach the pet grooming tool in accordance with claims 22 & 33, but are silent about wherein the handle includes a rubbery grip portion.
Willinger et al. teach in the same field of endeavor of pet grooming tool, the tool comprising a handle (12) includes a rubbery grip portion (40). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the handle of Porter et al. as modified by Mandato and Rauh includes a rubbery grip portion as taught by Willinger et al. in order to provide a better gripping surface for the user.
Response to Arguments
Applicant's arguments filed 1/20/2026 have been fully considered but they are not persuasive. Applicant argued the following:
The Examiner has not explained where in Rauh is the claimed "end edge extending continuously" between opposite lateral sides. Applicant has further clarified claim 8 by claiming that the end edge of the solid planar plate is, in addition to being continuous, also straight. There is no part of the plate 4 that has an end edge that extends "continuously and straight between opposite lateral sides of the tooth portion." Each top edge and bottom edge of the plate 4 in Rauh is undulated. A continuous straight edge lacks any interruptions, gaps, or projections.
The examiner respectfully disagrees because, as stated in the above rejection, the end edge is from just below where ref. 4a on the left side is pointing at to just below where ref. 4a on the right side is pointing at as drawn in the examiner’s illustration above. Thus, it is clear that Rauh’s plate 4 as an end edge (as drawn) extending continuously and straight from the left to the right side. In addition, as stated, an edge does not have to include the whole plate as appears to select by applicant for argument because applicant discusses the interruptions, gaps, or projections. The claimed limitation merely stated “a solid planar plate having an end edge extending continuously and straight between opposite lateral sides of the toothed portion”, which is what Rauh teaches at the section selected by the examiner’s illustration above. In the area selected, the edge is continuous and straight without interruptions.
Further, it is noted that the cleaning action in Rauh is performed not by any edge of plate 4, but rather by "cleaning fingers 5" that project from the plate. These fingers have "extremities which are deflected inwardly at 5a so as to be received between the teeth 1a of the comb." The fingers "travel outwardly between the teeth la so as to remove any accumulations of dirt therefrom." This structure is fundamentally different from the claimed solid planar plate having a continuous straight end edge that contacts fur outside the gaps.
As stated in the rejection, the examiner did not rely on Rauh for cleaning fingers 5. Rauh was relied on for a solid planar plate that is used as part of a cleaning mechanism for a comb. While the fingers 5 of Rauh received the teeth for scraping hair or the like from the inner area of the teeth, the plate 4 also function to push or scrape any hair that are on the surface of the teeth because figs. 3-4 of Rauh show that the plate lies very close to the teeth and runs along the outer surface of the teeth as it slides to the end in fig. 4. It is clear that the plate does function to scrape the hair from the outer surface of the teeth, hence, it can be considered as a fur ejector portion. Thus, the examiner believes that one skill in the art can replace the bar fur ejector portion of Mandato with a solid planar plate as taught by Rauh in order to provide more surface area on the ejector portion so as to remove more fur/hair from the grooming tool. By making the bar fur ejector portion 12 of Mandato with a solid planer plate of Rauh does not modify Mandato in any way because the plate of Rauh will still function to push or scrape the hair from the comb. Thus, the examiner believes the combination is proper.
The Examiner's rationale for combining Porter et al. and Mandato is "to clean debris or fur/hair that are left on the grooming tool." However, this rationale is based on hindsight knowledge of Applicant's claims, rather than any problem identified in Porter et al. or any teaching in the prior art. Porter et al. teaches a pet grooming tool with a fixed blade portion 30 and teeth 32 designed to "engage the loose hair of the pet and pull it from the pet without cutting or pulling the non-loose hair from the pet." (Porter et al., col. 5, 11. 14-18). Porter et al. contains no suggestion that debris or fur accumulates on the tool in a manner requiring a movable ejector mechanism for cleaning. The tool described in Porter et al. functions effectively for its intended purpose without any movable ejector. The mere fact that fur passes through the gaps during use does not suggest the need for, or render obvious, the specific structure claimed.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As stated in the rejection, Porter et al. are silent about the movable ejector mechanism, which the examiner relied on Mandato for. Mandato teaches a movable ejector mechanism that “configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth”, which is what applicant claimed. The ejector portion (7,8,9,11,12) of Mandato clearly does this function because, when pressed, the hair will be forced from the gaps of the teeth only on the outside of the gaps as shown in figs. 1-2 of Mandato. Thus, one skill in the art would include an ejector portion of Mandato on the grooming tool of Porter et al. such that the ejector portion is “configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth” in order to pull the fur/hair for cutting and/or to clean debris or fur/hair that are left on the grooming tool.
Mandato's mechanism is designed to keep hair standing out through the teeth so that it can be cut by scissors or clippers. This is the opposite of the claimed combination, where the fur ejector is specifically designed to force fur out from the gaps and away from the tool.
The examiner respectfully disagrees because the claimed limitation calls for the fur ejector portion “configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth”, which is exactly what the ejector portion of Mandato does. As stated in Mandato, col. 2, lines 20-30, the ejector portion (12) forces the hair out of the teeth so that it can stand out for cutting and the ejector portion contacts the hair on the outside of the gaps of teeth as shown in figs. 1-2. This action of the ejector portion clearly performs the intended function of to force fur out from the gaps and away from the tool as argued by applicant.
A reference teaches away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Mandato's explicit purpose of retaining hair in the teeth for uniform cutting would discourage one of ordinary skill from using Mandato's structure to remove or eject fur from a grooming tool during or after the grooming process. Mandato leads in a direction divergent from Applicant's invention.
The examiner respectfully disagrees because the claimed limitation calls for the fur ejector portion “configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth”, thus, as stated in the above, Mandato’s ejector portion does perform the intended function. While Mandato may have a different intention as to why he uses the ejector portion, regardless, it is clear that the ejector portion in Mandato is configured to cause fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Mandato does not "remove hair from the teeth of the comb" during the grooming or cutting operation. Rather, Mandato's bar 12 forces hair to "stand sharply outward through the comb teeth" and holds it in that position so that it "may be readily and uniformly cut." (Mandato, col. 2, 11. 26-28). The hair remains extending through the teeth during the cutting operation.
The examiner respectfully disagrees because the claimed limitation calls for the fur ejector portion “configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth”, thus, regardless of removing hair from the teeth of the comb or not, no such limitation is being claimed for the ejector portion. All that is being claimed for the ejector portion is the ejector portion is being configured to cause fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth, which is what the ejector portion of Mandato does.
In addition, indirectly, the ejector of Mandato does remove hair from the teeth of the comb because the hair is being pulled out by the ejector portion and then cut, the hair is being removed from the teeth of the comb.
Furthermore, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Clearly, the ejector portion of Mandato is very close to the comb and moves in parallel movement to the comb, thus, the ejector portion can perform the intended function as claimed by applicant because the structural features of Mandato’s ejector portion is similar to applicant’s.
This response fundamentally misapprehends both Mandato's structure and its teaching. The Examiner's reasoning-that Mandato's mechanism can be used "for whatever purpose the user wishes to perform"-improperly strips Mandato of its stated purpose and context. This type of overly broad functional abstraction is precisely what the Federal Circuit has cautioned against in obviousness determinations…The Examiner's theory that one skilled in the art would take Mandato's hair-retaining mechanism and repurpose it "for whatever purpose the user wishes to perform" lacks any support in the prior art and is based entirely on impermissible hindsight.
The examiner respectfully disagrees because a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Mandato’s ejector portion, regardless of his reason for using it, has the structure to remove hair from the comb because it is similar to that of applicant. While applicant argued that applicant’s ejector portion removes fur/hair, that is one intention of the ejector portion as desired by applicant. Technically, applicant’s ejector portion can also do the same as Mandato’s intention by forcing hair to stand out through the comb teeth because both ejector portions of applicant’s and Mandato’s have the same structures that can perform the intended function. This is the reason why the examiner stated that "for whatever purpose the user wishes to perform".
In addition, applicant’s claimed limitation calls for “configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth”, which is what the ejector portion of Mandato does.
Furthermore, modifying Mandato's structure to eject fur (rather than retain it for cutting) would require reversing its entire operational principle and would render it unsuitable for its intended barbering purpose.
The examiner respectfully disagrees because the claimed limitation does not call for “to eject fur”. The claimed limitation calls for “configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth”, which is what the ejector portion of Mandato does. While Mandato has a different intention as to why he wants the hair to be pulled from the comb, it does, nevertheless, perform the intended function as stated in the above. The hair is forced from the gaps of the teeth by contacting on the outside as shown in figs. 1-2.
In addition, as stated in the above, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Mandato’s ejector portion, regardless of his reason for using it, has the structure to remove hair from the comb because it is similar to that of applicant. While applicant argued that applicant’s ejector portion removes fur/hair, that is one intention of the ejector portion as desired by applicant. Technically, applicant’s ejector portion can also do the same as Mandato’s intention by forcing hair to stand out through the comb teeth because both ejector portions of applicant’s and Mandato’s have the same structures that can perform the intended function.
The Examiner then proposes to combine Rauh with the Porter/Mandato combination "to provide more surface area on the ejector portion so as to remove more fur/hair from the grooming tool." (Office Action, p. 4). This rationale is speculative and unsupported. There is no teaching in Rauh, Mandato, or Porter et al. that suggests taking Rauh's side-mounted plate with projecting cleaning fingers and modifying it to create a solid planar plate with a continuous straight end edge for ejecting fur from a pet grooming tool.
The examiner respectfully disagrees because the rationale provided by the examiner is proper and common sense. For example, the bar 12 in Mandato is thin or circular which can remove or pull hair; however, if one employs a rectangular plate as in Rauh in place of the bar in Mandato, the rectangular plate has more surface area to cover the comb so as to assure the hair are being pulled out or removed from the teeth. This is common sense and ordinary ingenuity, and the examiner has provided a clear articulated reasoning as to why one of ordinary skill in the art would use a plate instead of a bar.
Furthermore, the proposed combination would not work as intended and would destroy the operability of Porter et al. Porter et al. teaches edge segments 48 that "alternate with the teeth and bridg[e] the gaps between the teeth" and are "configured and adapted to engage loose fur in a pet's coat as such loose fur extends through the gaps in a manner removing the loose fur from the pet's coat." (Porter et al., col. 6, 11. 3-8; col. 5, 11. 14-18). These edge segments bridge the gaps and are critical to Porter et al.'s functionality-they are the structures that actually grab and pull loose fur from the pet's coat.
The examiner respectfully disagrees because applicant has not provided persuasive reason why by adding the ejector portion of Mandato, with modification of a plate from Rauh, would make the Porter’s device inoperable. The edge segments discussion has nothing to do with a fur ejector portion scraping or moving on one side of the device to remove or pull out the fur/hair. The teeth in Porter will still perform the function as intended regardless of the fur ejector portion because the fur ejector portion merely assist in the removal of fur from the outside surface of the teeth so it does not hinder the edge segments bridging the gaps and such as argued by applicant.
If one were to add Rauh's cleaning fingers to Porter et al.'s toothed portion, Rauh's cleaning fingers 5, which are designed to "travel outwardly between the teeth," would physically collide with and be blocked by Porter et al.'s edge segments 48, which bridge the gaps. The proposed combination would render the device inoperable for its intended purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (holding that a proposed modification that renders the prior art device inoperable for its intended purpose is not obvious).
The examiner respectfully disagrees because the rejection did not add Rauh’s cleaning fingers as argued by applicant. The rejection relied on Rauh merely for the solid plate instead of using a bar as in Mandato. While Rauh’s ejector portion has the cleaning fingers, the solid plate is part of the ejector portion, and it does scrape portion of the teeth on the outside of the teeth as shown in figs. 3-4 because the plate moves close to the end of the tip of the teeth. While the fingers are the feature that forces the hair out of the gaps of the teeth, any hair that were not forced out will be force out by the plate following the teeth all the way down to the tip.
To avoid this collision problem and arrive at the claimed structure, the Examiner would have to extensively modify each of Porter et al., Mandato, and Rauh. These modifications go far beyond what each of the references teach and amount to a redesign based on hindsight knowledge of the claimed invention.
The examiner respectfully disagrees because there is no extensive modification as argued by applicant because there are only three references being used. In addition, what Mandato and Rauh are relied on for is not extensive modification because there are a plethora of hair/fur ejector portion to remove or pull out hair from grooming devices. This is nothing new in the art. As for the hindsight, please see the above comments, which the examiner has addressed the hindsight argument.
Claim 14 requires "each of the teeth being fully covered along the back surface by the fur ejector portion, when the fur ejector portion is in the second position." The Examiner asserts that "fig. 2 shows the plate 4 covering the back surface of the teeth" in Rauh. (Office Action, p. 8). This assertion is factually incorrect and unsupported by Rauh's disclosure.
The examiner respectfully disagrees because, as explained in the above rejection to further clarify, depending on the point in time where the ejector portion slides because the ejector portion starts in position of fig. 1, and as the user slides the ejector portion in a point in time of the middle region, the ejector portion will cover all of the teeth, then as it reaches the end as shown in fig. 4, the ejector portion only covers the end area at that point in time. In addition, fig. 2 shows a point in time of the ejector portion position, while ref. 3 is exposed and not covered, at a previous point in time to this position, the teeth are fully cover because the ejector portion dimension is almost similar to that of the comb itself in fig. 2. In another word, when the ejector portion top edge slides where ref. 2 is pointing at in fig. 2, the teeth would be fully cover.
What applicant demonstrated in the illustration on page 13 of the remarks is one position of the ejector portion as it is being slide down the comb, which, in this position, it is correct that the ejector portion does not fully cover the teeth. However, as stated by the examiner, in the position where the top edge (for example, ref. 8) of the ejector portion is at where ref. 2 is pointing at in fig. 2, the ejector portion would fully cover the teeth. In summary, it would depend on the position or point in time when the ejector portion slides so as to determine if the ejector portion covers the teeth fully or not.
Claims 23 and 34 are rejected over the combination discussed above, with the addition of Willinger et al. (US 6,213,055 B1) for teaching a rubbery grip portion on the handle. Because claims 23 and 34 depend from claims 22 and 33, respectively, which in turn depend from allowable independent claims 8 and 14, claims 23 and 34 are allowable for at least the reasons set forth above. Additionally, the addition of Willinger does not cure the fundamental deficiencies in the base combination of Porter et al., Mandato, and Rauh.
Since applicant did not provide detailed argument against Willinger, the examiner’s response is the same as above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8-11,14-15,22,25,26,33 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3,5,8 of U.S. Patent No. US 11147239 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and U.S. Patent No. US 11147239 B2 claim a pet grooming tool comprising: (a) a toothed portion comprising a main body, a plurality of teeth, and a plurality of edge segments; the plurality of teeth and edge segments extending from the main body and arranged in a row, there being a gap between each adjacent pair of the teeth, the edge segments alternating with the teeth and bridging the gaps between the teeth, the edge segments being configured and adapted to engage loose fur in a pet's coat as such loose fur extends through the gaps in a manner removing the loose fur from the pet's coat; (b) a handle portion sized and configured to be held in a human hand; the handle portion being elongate about a longitudinal axis; the handle portion being a rigid material; the main body of the toothed portion being contained in a plane angled at a non-zero angle relative to the longitudinal axis; (c) a fur ejector portion comprising a solid planar plate having an end edge extending continuously and straight between opposite lateral sides of the toothed portion, the end edge being parallel to the row of teeth and a movable actuation button; the fur ejector portion being configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth;(d) a biasing portion positioned to bias against movement of the actuation button. In addition, the current application and U.S. Patent No. US 11147239 B2 claimed the same subject matter as call for in claims 14 & 25.
Claims 8-11,14-15,22,25,26,33 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,5,6,15,19,20 of U.S. Patent No. US 8960129 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and U.S. Patent No. US 8960129 B2 claim a pet grooming tool comprising: (a) a toothed portion comprising a main body, a plurality of teeth, and a plurality of edge segments; the plurality of teeth and edge segments extending from the main body and arranged in a row, there being a gap between each adjacent pair of the teeth, the edge segments alternating with the teeth and bridging the gaps between the teeth, the edge segments being configured and adapted to engage loose fur in a pet's coat as such loose fur extends through the gaps in a manner removing the loose fur from the pet's coat; (b) a handle portion sized and configured to be held in a human hand; the handle portion being elongate about a longitudinal axis; the handle portion being a rigid material; the main body of the toothed portion being contained in a plane angled at a non-zero angle relative to the longitudinal axis; (c) a fur ejector portion comprising a solid planar plate having an end edge extending continuously and straight between opposite lateral sides of the toothed portion, the end edge being parallel to the row of teeth and a movable actuation button; the fur ejector portion being configured such that movement of the actuation button causes fur to be forced from the gaps between the teeth by contacting the fur only outside of the gaps between the teeth by contacting the fur with the end edge of the plate only outside of the gaps between the teeth;(d) a biasing portion positioned to bias against movement of the actuation button. In addition, the current application and U.S. Patent No. US 8960129 B2 claimed the same subject matter as call for in claims 14 & 25.
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
Prosecution Insights