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 .
Response to Amendment
Applicant’s amendment and remarks filed 10/16/2025 in reply to the non-final Office action mailed 07/17/2025 are noted with appreciation.
Claims 1 and 3 remain pending.
Support for the amendments can be found, inter alia, in original claim 2 and [0020] – [0021] of the specification.
Response to Arguments
Applicant’s arguments in the remarks have been fully considered.
Specification
The objection to the specification at ¶ 5 of the non-final Office action is withdrawn in view of the amendment.
Claim Objections
The objection to claim 2 at ¶ 10 of the non-final Office action is moot in view of the cancelation of this claim in the amendment
Claim Rejections – 35 USC § 112
The rejection of claim 1 at ¶¶ 13 – 16 of the non-final Office action is withdrawn in view of the amendment.
The rejection of claim 2 at ¶ 17 of the non-final Office action is moot in view of the cancelation of this claim in the amendment.
The rejection of claim 3 at ¶ 18 of the non-final Office action is withdrawn in view of the amendment.
Claim Rejections – 35 USC § 102
The rejection of claims 1 and 3 at ¶¶ 20 – 21 of the non-final Office action is withdrawn in view of the amendment. Claim 1 has been amended to recite the limitations of original claim 2, which were not anticipated by JP 223.
Claim Rejections – 35 U.S.C. § 103
Claims 1 and 3, as amended, remain rejected under 35 U.S.C. § 103 as unpatentable in view of the references cited in the non-final Office action.
I. Claims 1 and 3 are obvious because the prior art does not need to teach each and every conceivable form of the claimed invention to render the claimed invention obvious.
Applicant argues that the limitation “determining the form of the memorial object through discussion with the pet owner . . . allows for the memorial object to take any form without limitation.” Remarks at 6. The point of this argument appears to be that, because JP 223 and VIDEO teach specific forms of memorial objects (in JP 223, a memorial tablet; in VIDEO, a painting), the limitation “determining a form of the memorial through discussion with an owner of the pet and providing a substrate according to the determined form” is not properly met by the prior art.
As discussed at ¶¶ 21 – 22 and 30 of the non-final Office action, the Primary Examiner explains why this limitation is inherent and/or obvious in view of each of JP 223 and VIDEO. Applicant has provided no specific arguments in traverse of the detailed reasoning presented by the Primary Examiner in these paragraphs of the non-final Office action. Instead, Applicant appears to insist that, because the memorials of JP 223 and VIDEO take a specific form (species) it fails to teach a memorial object that takes any form without limitation (genus). This is not persuasive because prior art that teaches a memorial of one, specific form is sufficient to render a claim to a memorial of no specific form unpatentable. “A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.” MPEP § 2131.02.
Moreover, both JP 223 and VIDEO meet the newly-added limitation requiring “the coating material is selected according to the nature of the substrate so that it is a material suitable to be applied to the substrate.” JP 223 provides “a paint that adhered to a[] [memorial] object for a long period of time and is resistant to discoloration . . . . Furthermore, by using this paint, the posthumous name on the memorial tablet can be painted stably for a long period of time” [0023]. VIDEO applied paint to a canvas, which is the common and conventional substrate-coating material combination. Again, applying specific coating materials to specific memorial objects is sufficient to render a claim to a coating material and substrate of no specific form unpatentable.
II. The combination of JP 223 and VIDEO, respectively, with CN 289 renders claims 1 and 3, as amended, obvious.
Applicant amended claim 1 to incorporate the limitations of prior claim 2. Since claim 2 depended from original claim 1, claim 1, as amended, is obvious in view of the cited prior art for the same reasons as original claim 2.
A. The properties imparted by chemical treatment of the bone fragments do not weight against the prima facie case of obviousness because they are not claimed.
Applicant argues that chemical treatment of the bone fragments “not only effectively reduces the material’s weight, facilitating further grinding and refinement, but also removes alkaline substances and impurities that could chemically react adversely with the coating material. Additionally, the chemical extraction process modifies the porosity of the particles, enhancing their bonding affinity with the coating material. The ensures stable adhesion between the coating and bone powder, resulting in clearly superior and unexpected effects that are not suggested by either JP 223 or VIDEO.” Remarks at 6. This argument is noted, but none of these features is recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
B. JP 223 and CN 289 are analogous art.
Applicant argues that “[t]he focus of [JP 223’s] technical disclosure lies in the ratio and physical stability between the bone powder and the coating material. CN 289, on the other hand, discloses a method for extracting pure carbon from cremated ashes, with the extracted carbon being further processed to produce synthetic diamonds. From this it is clear that JP 223 and CN 289 aim to solve different technical problems and achieve different objectives. Thus a person skilled in the art would have no motivation to combine these references.”
“In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.” MPEP § 2141.01(a)(I) (citations omitted).
Here, JP 223 is directed to incorporating cremated remains into paint and applying the paint to a memorial whereas CN 289 is directed to extracting carbon from cremated remains to produce synthetic diamond. Hence, they are not from the same field of endeavor.
“In order for a reference to be ‘reasonably pertinent’ to the problem, it must logically [] have commended itself to an inventor's attention in considering his problem . . . . A reference outside of the field of endeavor is reasonably pertinent if a person of ordinary skill would have consulted it and applied its teachings when faced with the problem that the inventor was trying to solve . . . . The question of whether a reference is reasonably pertinent often turns on how the problem to be solved is perceived . . . . It may be necessary for the examiner to explain why an inventor seeking to solve the identified problem would have looked to the reference in an attempt to find a solution to the problem, i.e., factual reasons why the prior art is pertinent to the identified problem.” Id. (citations omitted).
Here, Applicant’s specification discloses: “The primary objective of the present invention is to provide a memorial produced from remains of a pet and method for producing the same as described in the claims. To produce the memorial, small particles derived from a part of remains of a pet are mixed into a coating material and then applied to an object. This means that the form of the memorial is determined by the object, which can be almost anything according to a pet owner's preferences. Thereby, the memorial of the present invention is customizable and easy to make.” Spec. at [0005]. As noted in the non-final Office action, treating the cremains of both JP 223 and VIDEO according to the process of CN 289 renders the particles black, which results in their imparting a different color to the painted memorial. This is particularly apt in the case of VIDEO’s memorial of a black Labrador retriever dog. Black particulates lend themselves more readily to painting a black dog than do grey, ash-colored cremains. Insofar as the Primary Examiner understands the problem Applicant’s inventions seeks to solve as being a memorial of customizable appearance, the ability to generate black particulates is reasonably pertinent to the problem.
C. Courts have held use of the conjunction “or” does not strictly require a binary choice of elements.
Applicant argues that the limitation “diluted hydrochloric acid or nitric acid” requires that the prior art use either hydrochloric acid or nitric acid and that CN 289 which teaches a combination of the two (aqua regia) does not read on this limitation. The Federal Circuit has interpreted “or” as limited to one or the other, not both, if the specification uses the term according to its ordinary meaning. Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1330-31 (Fed. Cir. 2021). Here, the two instances referring to the acids in the instant specification are ambiguous. The first says “using diluted hydrochloric acid or nitric acid,” as in the claim. Spec. at [0011]. But the second says “using diluted hydrochloric acid / nitric acid.” Spec. at [0021]. The meaning of the latter is not clearly and unambiguously one or the other.
During patent examination, the pending claims are given their broadest reasonable interpretation consistent with the specification. MPEP § 2111. This standard is broader than claim interpretation by courts. Id. “[A]n examiner must construe the claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim.” Id. Consequently, the Primary Examiner continues to interpret “or” as being satisfied by CN 289’s aqua regia because it would be premature to narrow the limitation in this way, given the ambiguity of the specification. Moreover, the Primary Examiner notes that the Applicant in Kustom Signals amended a limitation requiring “X and Y” to “X or Y” to overcome an obviousness rejection, which is not the case here. 264 F.3d at 1331.
Additionally, as noted above, the specific physical effects of treatment on the particles of a process using only one acid are not claimed, see In re Van Geuns, and as noted above, treating the cremains of both JP 223 and VIDEO according to the process of CN 289 renders the particles black, which results in their imparting a different color to the painted memorial. This is particularly apt in the case of VIDEO’s memorial of a black Labrador retriever dog. Black particulates lend themselves more readily to painting a black dog than do grey, ash-colored cremains.
III. Claims 1 and 3 are obvious over VIDEO in view of CN 289 because the claims do not require all of the particles applied to be of micro- or nanometer scale.
Applicant argues that VIDEO shows the artist applying particles that are visible to the naked eye (larger than micro- or nanometer scale) and, consequently, one of ordinary skill in the art would not use the process of CN 289 to prepare particles for the process of VIDEO. This is not persuasive. The pet memorials in question, both in this application and in the cited prior art, are custom works of art. There may be instances in which an artist would want to incorporate larger particles into a painting, but that would not teach away from using smaller, black particles produced by the process of CN 289 to achieve effects other than texture such as color.
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as obvious over JP 2011-153223 A in view of CN 102060289 A.
Claim 1
JP 223 teaches a method for producing a memorial from the remains of a pet ([0001] “a paint containing . . . bones, and to a ritual object for commemorating or holding a memorial service for the dead (humans, pets, etc.) that uses the paint”; [0013] “[t]he paint of this embodiment is a mixture of original paint and bone powder”; [0019] “[b]one powder is produced, for example, by using a bone crushing device . . . capable of crushing . . . animal bones that have been incinerated by cremation and crushed into powder”; [0024] “the paint of this embodiment contains animal bone powder”; [0025] “[i]n the . . . first embodiment, the paint containing bone powder was used for the posthumous name on the memorial tablet, but in this embodiment, paint containing bone powder is used to paint the front, back, and side areas of the memorial tablet”; [0026] “the animal bones may be those of pets in addition to humans”). The method comprises:
selecting a part of the remains of the pet, and processing the part into a plurality of small particles ([0019] “Bone powder is produced, for example, by using a bone crushing device (e.g., a mill mixer) capable of crushing human or animal bones that have been incinerated by cremation into powder. The bones are crushed by colliding with a rotating rigid body rotating at high speed within a bone crushing space formed inside the device . . . . [t]he average particle size of the crushed bone powder is, for example, 10 to 100 microns.”);
selecting a coating material that can be applied and affixed to the substrate, and (well) mixing the particles with the coating material ([0013] “[t]he paint . . . is a mixture of original paint and bone powder”; “the crushed bone powder is mixed into the original paint”);
applying the coating material (containing the particles) to a surface of the substrate ([0021] “[u]sing the . . . paint, a posthumous . . . name is formed on the original tablet”; [0025] “[i]n the . . . first embodiment, the paint containing bone powder was used for the posthumous name on the memorial tablet, but in this embodiment, paint containing bone powder is used to paint the front, back, and side areas of the memorial tablet”).
JP 223 does not explicitly teach a step of determining a form of the memorial through discussion with an owner of the pet in order to provide the substrate form. It is the Primary Examiner’s position that the selection of the substrate is a necessary step in the process of JP 223. If selection includes the pet owner’s asking an artisan to produce the memorial substrate, then this limitation is satisfied. If selection includes the pet owner’s choosing the memorial substrate (i.e., the pet owner has the discussion with themselves), this limitation is also satisfied.
In the alternative, since the name of the pet or other indicia to which the paint will be applied must be communicated to the artisan, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to do so. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of, e.g., having the pet’s name spelled correctly or their image/likeness accurately represented.
Moreover, this reference neither teaches nor suggests the particle preparation method recited.
CN 289 teaches a process for the extraction of carbon from animal ashes [0002]. The process is designed to remove the inorganic salts that remain in the ashes, leaving behind carbon that can be further processed [0014]. The process comprises:
(a) immersing the bone ashes in a mixed acid;
(b) stirring and soaking the mixture;
(c) filtering particulate carbon from the mixture with filter paper;
(d) washing the carbon particles on the filter paper with water; and
(e) drying the carbon particles [0009].
The mixed acid contains dilute nitric acid with a mass % concentration of 20% ± 5% and dilute hydrochloric acid what a mass % concentration of 15% ± 5% in a volume ratio of approximately 1:2 to approximately 1:3 (i.e., aqua regia) [0011]. The ratio of bone ash to mixed acid is approximately 1 g:20 mL to approximately 1 g:30 mL [0010]. The ashes are soaked in the acid for 3-5 hours (180-300 mins.) [0012]. The filtered carbon is dried in a drying oven at 100°C-110°C for 2-4 hrs. [0013].
CN 289’s individual acid concentrations ([H2NO3] = 20% ± 5% and [HCl] = 15% ± 5%) read on the claimed “diluted hydrochloric acid or nitric acid that has a concentration of 3%~20%. CN 289’s solute to solvent ratio of 1:20 also reads on the claimed 1:10~1:300. Finally, CN ‘289’s time of 180-300 mins. reads on the claimed 10-500 mins. Overlapping ranges are prima facie obvious. MPEP § 2144.05.
Consequently, 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 process of JP 223 so as to clean or purify the pet ashes, before crushing them to a particle size of 10-100 microns [JP 223 at 0019]. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of incorporating a purer product into the paint. Moreover, one of ordinary skill in the art would have been motivated by the desire and expectation of providing black-colored particulates instead of ash gray colored particulates.
Finally, insofar as JP 223 teaches “a paint that adhered to a[] [memorial] object for a long period of time and is resistant to discoloration . . . . Furthermore, by using this paint, the posthumous name on the memorial tablet can be painted stably for a long period of time” [0023], “the coating material is selected according to the nature of the substrate so that it is a material suitable to be applied to the substrate.”
Claim 3
The process of JP 223 is detailed above. The resultant pet memorial comprises at layer of paint, containing bone particles of the cremated pet mixed therein, applied to the memorial tablet substrate. See, e.g., [0019-0021; 0023-0025].
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as obvious over “Painting with Zann: Adding Ash to a Pet Memorial Painting,” 29 September 2022, retrieved from the Internet, https://www.youtube.com/watch?v=N18BHBVOOFY (last accessed 14 July 2025) in view of CN 102060289 A.
Claim 1
This video discloses a method for producing a memorial (painting) from the remains (cremains) of a pet [0:00-0:02 and 8:52], comprising the steps of:
determining a form [0:22-0:27] of the memorial through discussion with an owner of the pet (here, the pet owner commissioned a portrait of the pet and sent a photograph and some remains of the pet to the artist, Zann);
providing a substrate [0:37-0:39] according to the determined form (here, a canvas for the painting);
selecting a part of the remains of the pet [1:12] and processing the part into a plurality of small particles (the article sifts the cremains by size) [1:14-1:22];
selecting a coating material [1:25-1:28] that can be applied and affixed to the substrate; and
(well) mixing the particles with the coating material [1:29-2:07] and applying the coating material to a surface of the substrate [2:16-2:51].
This video does not explicitly state that the particle size is micron- or nanometer-sized. Nevertheless, the video is clear that different particle sizes produce different aesthetic results. Consequently, it would have been obvious to one of ordinary skill in the art to select any desired particle size, including micron- and/or nanometer-sized particles as a matter of aesthetic design choice.
This reference neither teaches nor suggests the particle preparation method recited.
CN 289 teaches a process for the extraction of carbon from animal ashes [0002]. The process is designed to remove the inorganic salts that remain in the ashes, leaving behind carbon that can be further processed [0014]. The process comprises:
(a) immersing the bone ashes in a mixed acid;
(b) stirring and soaking the mixture;
(c) filtering particulate carbon from the mixture with filter paper;
(d) washing the carbon particles on the filter paper with water; and
(e) drying the carbon particles [0009].
The mixed acid contains dilute nitric acid with a mass % concentration of 20% ± 5% and dilute hydrochloric acid what a mass % concentration of 15% ± 5% in a volume ratio of approximately 1:2 to approximately 1:3 (i.e., aqua regia) [0011]. The ratio of bone ash to mixed acid is approximately 1 g:20 mL to approximately 1 g:30 mL [0010]. The ashes are soaked in the acid for 3-5 hours (180-300 mins.) [0012]. The filtered carbon is dried in a drying oven at 100°C-110°C for 2-4 hrs. [0013].
CN 289’s individual acid concentrations ([H2NO3] = 20% ± 5% and [HCl] = 15% ± 5%) read on the claimed “diluted hydrochloric acid or nitric acid that has a concentration of 3%~20%. CN 289’s solute to solvent ratio of 1:20 also reads on the claimed 1:10~1:300. Finally, CN ‘289’s time of 180-300 mins. reads on the claimed 10-500 mins. Overlapping ranges are prima facie obvious. MPEP § 2144.05.
Consequently, 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 process of JP 223 so as to clean or purify the pet ashes, before selecting the micrometer- or nanometer-scale particles. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of incorporating a purer product into the paint. Moreover, one of ordinary skill in the art would have been motivated by the desire and expectation of providing black-colored particulates instead of ash gray colored particulates. This is particularly advantageous as, in the case of Zann video, the memorial is a painting of a black dog.
Finally, insofar as VIDEO applies paint to a canvas, which is the common and conventional substrate-coating material combination, “the coating material is selected according to the nature of the substrate so that it is a material suitable to be applied onto the substrate.”
Claim 3
The completed portrait of the deceased pet in the video includes the canvas substrate with a painting thereon (i.e., a coating material applied and affixed to the surface of the substrate), the paint containing particulate cremains of the pet. As noted above in connection with claim 1, the size of the particles would have been an obvious matter of aesthetic design choice on the part of the artist making the painting.
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 WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
20 October 2025