DETAILED ACTION
Notice of Pre-AIA or AIA Status
This action is in response to the application 18/682,981 filed 2/12/2024 which is a 371 of PCT/RP2022/072498 8/11/2022 and claims priority to 2111562.1 8/11/2021.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Species I (approximated by Figs 1-20 and 27-32) in the reply filed on 9/5/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The abstract of the disclosure is objected to because a “Fig. 29” label appears erroneously on the page. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 28 and 47 objected to because of the following informalities:
Claims 28 and 47 drafted without a clear transition from preamble to claim body. For purposes of compact prosecution, the Examiner is interpreting this claim as though “comprising” (line 1) is ending the preamble and the limitation following “ a support for…” (line 1) is beginning the claim body. It should further be noted that in Acceleration Bay, LLC v. Activision Blizzard Inc., the Federal Circuit Court determined that: (a) in claims that do not have a transition phrase formally denoting a preamble, terms interpreted by the Examiner as being part of the preamble are not substantive limitations of the claims and should not be afforded patentable weight despite the lack of any transition phrases, and (b) Applicants should avoid such “poor claim drafting” by including a transition word to clearly delineate between the preamble and the body. Recommend amending to add a colon after “comprising” in line 1.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In the present case: “lighting control means” in claim 47.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function.
Such claim limitation(s) is/are:
“means of an app on a mobile computing device” in claim 45
“support means” in claim 47
“cover means” in claim 47
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
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 28-47 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.
For purposes of examination on the merits, the claims, as best understood, are examined in the Action below.
RE Claim 28: As currently drafted, it is unclear how the controller is operable to illuminate one or more of the lights without any connection to a device for receiving/transmitting information to the lights. Claim 47 is rejected for similar reasons.
RE Claim 39: The phrase "may be" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Also, claim 39 appears to recite method steps in an apparatus claim.
The term “loosely” in claim 46 is a relative term which renders the claim indefinite. The term “loosely” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 46 the limitation "the arrangement" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim.
Also, claim 46 appears to recite method steps in an apparatus claim.
Claims 29-46 rejected under 35 U.S.C. 112(b) for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 28, 30-31, 34, and 40-45, as best understood, rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mills (US 9,491,928 B1)(hereinafter Mills).
RE Claim 28: Mills discloses a scratching apparatus (illuminates scratch post 100) comprising
a support (central lighting support 111) for a scratchable cover (120),
the support defining an internal cavity (interior of 111 per col 2, line 45-50) and having an outer face (exterior of 111) against which said cover (120) lies when the cover is mounted on the support (111)(Fig 1),
said outer face having a recess (grooves for 131 per col 2, ln 55-65) formed therein in which a plurality of lights (one or more lighting elements 131) is provided,
the lights (131) being coupled to a lighting controller (control component 133) provided in said internal cavity (Fig 3), said controller being operable to illuminate one or more of said lights (col 6, ln 15-33).
RE Claim 30: Mills discloses the scratching apparatus according to Claim 29,
wherein said plurality of lights are arranged in strips (col 2, ln 59-63),
said strips being affixed to the outer face of said support so that light from the strips can shine through the cover when the cover is received on the support (col 2, ln 55-65 and col 3, ln 45 – col 4, ln 10).
RE Claim 31: Mills discloses the scratching apparatus according to Claim 29,
wherein the lighting strips comprise a plurality of modules joined end-to-end (col 2, ln 55-65; col 3, ln 25-35),
each module including one or more lights (col 2, ln 55-65; col 3, ln 25-35).
RE Claim 34: Mills discloses the scratching apparatus according to Claim 29,
wherein each recess includes an access aperture opening to the interior of the support (col 2, ln 55-end).
RE Claim 40: Mills discloses a scratching apparatus according to Claim 38,
wherein said lighting strips and connecting wires form a serpentine structure (Figs 2A-B).
RE Claim 41: Mills discloses a scratching apparatus according to Claim 28,
wherein said lights are configured so each light can be separately illuminated, and/or so that groups of lights can be separately illuminated (col 6, ln 15-33).
RE Claim 42: Mills discloses a scratching apparatus according to Claim 28,
comprising a user interface that allows a user to instruct the controller to control the lights (col 7, ln 40-55).
RE Claim 43: Mills discloses a scratching apparatus according to Claim 42,
wherein the user interface comprises a button that a user can press to control the controller (col 7, ln 5-10).
RE Claim 44: Mills discloses a scratching apparatus according to Claim 42,
the controller is controllable with a remote commander that can wirelessly communicate with a transceiver in the controller (col 7, ln 45-55).
RE Claim 45: Mills discloses a scratching apparatus according to Claim 42,
wherein the controller comprises a wireless transceiver and is controlled by means of an app on a mobile computing device (col 7, ln 45-55).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 29 and 47, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Mills.
RE Claim 29: Mills discloses the scratching apparatus according to Claim 29 as previously discussed and further discloses
wherein the outer face includes a plurality of spaced recesses (grooves for 131 per col 2, ln 55-65), and each recess having a plurality of lights provided therein (col 2, ln 55-65).
Where it is contemplated Mills does not explicitly teach the spaced recesses extending generally in parallel with a longitudinal axis of said support.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Mills such that the spaced recesses extend generally in parallel with a longitudinal axis of said support, since it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04 (VI) (C) citing In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). This would be done for advantages of ease of manufacture and for desired aesthetic of the device.
RE Claim 47: Mills discloses a scratching apparatus comprising:
support means (central lighting support 111) for a scratchable cover means (120),
said support means defining an internal cavity (interior of 111 per col 2, line 45-50) and having an outer face (exterior of 111) against which said cover means (120) lies when the cover is mounted on said support means (Figs 1-2B),
said outer face including a plurality of spaced recesses (grooves for 131 per col 2, ln 55-65) each said recess having a plurality of lights provided therein (grooves for 131 per col 2, ln 55-65),
wherein said plurality of lights are arranged in strips (col 2, ln 59-63),
said strips being provided in the recesses in the outer face of said support so that light from the strips can shine through the cover when the cover is received on the support (col 2, ln 55-65 and col 3, ln 45 – col 4, ln 10),
said lights (131) being coupled to a lighting control means (133) provided in said internal cavity (Fig 3), said lighting control means being operable to illuminate one or more of said lights (col 6, ln 15-33).
Where it is contemplated Mills does not explicitly teach extending generally in parallel with a longitudinal axis of said support means.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Mills such that extending generally in parallel with a longitudinal axis of said support means, since it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04 (VI) (C) citing In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). This would be done for advantages of ease of manufacture and for desired aesthetic of the device.
Claim 32, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Mills as applied to claim 29, and further in view of Cook et al. (US 9,491,930 B2)(hereinafter Cook).
RE Claim 32: Mills discloses the scratching apparatus according to Claim 29.
Mills further discloses with a finish to increase the amount of light directed towards the cover (col 4, ln 1-10).
Mills does not explicitly teach wherein the finish is a mirrored finish.
However, Cook teaches a pet toy 10 comprising a light source 16a (analogous art). Cook further teaches a mirror finish (12) for reflecting light from the toy (col 7, ln 59 – col 8, ln 10).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Mills in view of Cook such that the finish is a mirrored finish as taught by Cook for the advantages of enhancing the lighting effect.
Regarding the placement of the finish in the recesses: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mills (as modified) such that the finish is in the recesses, since it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04 (VI) (C) citing In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). This would be done for the for the advantages of enhancing the lighting effect.
Claim 33, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Mills as applied to claim 29, and further in view of Harrington (US 11,613,925 B2)(hereinafter Harrington).
RE Claim 33: Mills discloses the scratching apparatus according to Claim 29.
Mills teaches retention of the strips in the recesses via fasteners per col 2, ln 55- end and col 3, ln 1-10.
Mills does not explicitly teach wherein the support comprises a plurality of tabs in the vicinity of each recess that function to retain the strips in the recesses.
However, Harrington teaches an apparatus for a pet (analogous art) and also teaches fastening via grooves and tabs for secure retention (Fig 9)(analogous art).
Harrington further teaches a plurality of tabs (506, 508 as seen in Fig 9) in the vicinity of each recess (groove formed by 502 and 504) that function to retain an accessory in the recesses (col 3, ln 40-50).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Mills in view of Harrington such that the support comprises a plurality of tabs in the vicinity of each recess that function to retain the strips in the recesses as taught by Harrington for the advantages of secure retention.
Claims 35-38, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Mills as applied to claim 29 above, and further in view of Streitz (US 2007/0262933 A1)(hereinafter Streitz).
RE Claim 35: Mills discloses the scratching apparatus according to Claim 29.
It is believed there is likely a distribution node coupled to the controller in Mills, however, it is not explicitly stated.
However, Streitz teaches sting lighting mounted on a display surface (analogous art).
Streitz further teaches further comprising a distribution node that is coupled to said controller (abstract, para 0006, 0025, 0026).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Mills in view of Streitz by incorporating a distribution node that is coupled to said controller as taught by Streitz for the advantages of enhanced control of the lighting display.
RE Claim 36: Mills as modified discloses the scratching apparatus according to Claim 35.
Mills further discloses wherein the controller and distribution node are hidden within the interior of the support (Fig 3)(also col 2, ln 40-55).
RE Claim 37: Mills as modified discloses the scratching apparatus according to Claim 35.
Mills further discloses wherein said lighting strips are electrically connectable in parallel or in series to said distribution node (may be connected in series per col 3, ln 25-35).
RE Claim 38: Mills as modified discloses the scratching apparatus according to Claim 36.
Mills wherein the lighting strips are electrically connectable in series to the distribution node (col 3, ln 25-35) and coupled to adjacent strips by wires (plurality of strips per col 3, ln 25-35)(electrically connected, wire implicit).
Claim 39, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Mills in view of Streitz as applied to claim 38 above, and further in view of Wedertz (US 2012/0312239 A1)(hereinafter Wedertz).
RE Claim 39: Mills as modified discloses the scratching apparatus according to Claim 38.
Mills teaches secure attachment of the components of the scratching apparatus (col 3, ln 1-10). Mills teaches a cover (120) put onto and taken off the support (111).
Mills does not explicitly teach further comprising a retaining clip that is generally C-shaped in lateral cross-section and may be frictionally retained in a said recess, the clip including a tab that lies over the wires to protect the wires.
However, Wedertz teaches a cat scratching post (analogous art) and further teaches a retaining clip that is generally C-shaped in lateral cross-section (not numbered, see uppermost piece in Fig 7) and may be frictionally retained in a said recess (not required by the claim as currently drafted), the clip including a tab (extensions on right and left sides) that lies over the wires (wires housed within post as previously discussed with respect to Mills Fig 3) to protect the wires.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Mills as modified in view of Wedertz by incorporating a retaining clip that is generally C-shaped in lateral cross-section and may be frictionally retained in a said recess, the clip including a tab that lies over the wires to protect the wires.by … as taught by Wedertz for the advantages of secure attachment.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
These documents present alternative designs similar in scope which illustrate relevant features in comparison to the Applicant’s submission. The cited prior art include various cat scratching devices and lighting devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA E GRABER whose telephone number is (571)272-4640. The examiner can normally be reached M-F 7:30-5.
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, Timothy D Collins can be reached on 571-272-6886. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA E GRABER/Examiner, Art Unit 3644