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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/09/2026 has been entered.
Specification
The amended specification was received 04/09/2026. The specification is now acceptable.
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 21 and 26-28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 21 recites the limitation “the collar” in line 15. There is a lack of antecedent basis for this limitation. Examiner recommends revision to “the base collar.”
Dependent claims 26-28 fail to remedy the deficiency.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 21, 27, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Holt (US 20210307292 A1) in view of Benjamin (US 20190045748 A1) and Davison, III et al. (US 20140261230 A1), hereinafter Davison.
Regarding claim 21, Holt discloses an anti-pulling animal collar, comprising:
a base collar including a flexible strap (first strap 12; Fig. 1; ¶ 0029, lines 2-4, “Collar 10 includes a first strap 12 which is preferably formed of one continuous piece of material, such as nylon, leather, or the like”), the base collar being configurable in a closed loop configuration, wherein the base collar forms a continuous loop (first strap 12; Fig. 1 shows the first strap 12 in a continuous loop and with collar in a closed configuration; ¶ 0029, lines 2-4); and
a plurality of resilient prongs coupled to the base collar (Fig. 1 shows a plurality of prong elements 60 are attached to a base collar and facing inwards; ¶ 0001, lines 2-4, “more particularly the present invention relates to a prong animal training collar wherein the prongs are made from plastic”), at least one prong of the plurality of prongs extending in a prong direction from a base of the prong to a pointed top surface and including: a strap channel defined through the base, the strap channel configured to receive the base collar therethrough and extending perpendicular to the prong direction (¶ 0032, lines 6-8, “prong element 60 also includes a strap channel 68 located along a bottom portion 70 of prong element 60;” Fig. 3A shows strap channel 68 of prong element 60 extends perpendicular to the direction of the prong to a point); each prong of the plurality of prongs being repositionable along the base collar, and independently repositionable between an inward-facing direction and an outward-facing direction while the collar is in the closed loop configuration, wherein: when in the inward-facing direction, the pointed top surface is oriented toward a center of the closed loop configuration; and when in the outward-facing direction, the pointed top surface is oriented away from the center of the closed loop configuration (Fig. 1 shows a plurality of prong elements 60 are attached to a base collar and facing inwards; Fig. 3A shows strap channel 68 of prong element 60 allows for prongs to be repositionable between an inward-facing direction and an outward-facing direction; ¶ 0035, lines 13-16); and each prong being disconnected from all remaining prongs within the plurality of prongs such that each prong is movable relative to the base collar and the remaining prongs (¶ 0035, lines 13-16, furthermore, due to the ability for the prong elements 60 to be easily placed and removed onto first strap 12, the number of prong element 60 carried on first strap 12 can be varied);
Although Holt discloses removable prongs, Holt fails to specifically disclose rectangular, pyramid-shaped prongs, and a slit extending from a bottom surface of the at least one prong to the strap channel such that the at least one prong is removable from the base collar when the base collar is in the closed loop configuration by forcing the base collar through the slit of the at least one prong.
Benjamin is in the field of animal collars and teaches rectangular pyramid shaped prongs (¶ 0056, lines 1-6, describes a pyramid with a square base, which constitutes a rectangular pyramid since all squares are rectangles that have equal sides).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have provided the prongs of Holt with the pyramidal prong shape of Benjamin. This would improve the effectiveness of the device, as a pyramid shape would further concentrate pulling force to a single point on the prong, which would improve the overall performance of the device. The modification would have a reasonable expectation of success.
Additionally, it has been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Davison is in the field of animal collars and teaches a slit extending from a bottom surface of the at least one prong to the strap channel such that the at least one prong is removable from the base collar when the base collar is in the closed loop configuration by forcing the base collar through the slit of the at least one prong (¶ 0008, lines 3-8, “An attachment can be provided on or near the rear surface of the housing to allow the housing to attach to an existing animal collar of the type worn around the animal's neck. The attachment may, for example, be a narrow slit, clip, or any other type of attachment that allows the housing to be attached to the collar”).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have modified the removable prongs of Holt in view of Benjamin to incorporate a slit extending from a bottom surface of the at least one prong to the strap channel such that the at least one prong is removable from the base collar when the base collar is in the closed loop configuration by forcing the base collar through the slit of the at least one prong, as taught by the attachment slit of Davison. This would allow for attachment to a collar while in a closed loop configuration, improving the ease of attachment to the animal collar as well as the overall function of the device. The modification would have a reasonable expectation of success.
Regarding claim 27, Holt in view of Benjamin and Davison discloses the device of claim 21, and furthermore, the modified reference teaches the at least one prong (Holt; Fig. 1 shows a plurality of prong elements 60 are attached to a base collar and facing inwards; ¶ 0001, lines 2-4) is configured to be coupled to and decoupled from the base collar while the base collar is configured in the closed loop configuration (Davison; ¶ 0008, lines 3-8).
Regarding claim 28, Holt in view of Benjamin and Davison discloses the device of claim 21.
Holt discloses wherein each prong of the plurality of prongs includes a top surface forming a rounded point (Fig. 3A shows top surface of prong element 60 forms rounded points).
Claims 29, 32, 33, 35-37 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Holt (US 20210307292 A1) in view of Benjamin (US 20190045748 A1), Davison, III et al. (US 20140261230 A1), hereinafter Davison, and Muller (US 20030150402 A1, previously disclosed by Applicant 12/16/2024).
Regarding claim 29, Holt discloses an anti-pulling animal collar, comprising:
a flexible strap (first strap 12; Fig. 1; ¶ 0029, lines 2-4), the flexible strap being configurable in a closed loop configuration, wherein the flexible strap forms a continuous loop (first strap 12; Fig. 1 shows the first strap 12 in a continuous loop and with collar in a closed configuration; ¶ 0029, lines 2-4); and
a plurality of resilient prongs couplable to the flexible strap (Fig. 1 shows a plurality of prong elements 60 are attached to a base collar and facing inwards; ¶ 0001, lines 2-4), each prong of the plurality of prongs configured to be coupled to the flexible strap independent of all other prongs within the plurality of prongs such that each prong is translatable along the flexible strap independent of the other prongs (¶ 0035, lines 13-16);
wherein at least one prong of the plurality of prongs includes a base with a strap channel therethrough configured to receive the flexible strap (¶ 0032, lines 6-8, “prong element 60 also includes a strap channel 68 located along a bottom portion 70 of prong element 60”).
Although Holt discloses removable prongs, Holt fails to specifically disclose rectangular, pyramid-shaped prongs, and a slit extending from a bottom surface to the strap channel, the at least one prong configured to deform under pressure such that the at least one prong is removable from the flexible strap when the flexible strap is in the closed loop configuration by forcing the flexible strap through the slit of the at least one prong.
Benjamin teaches rectangular pyramid shaped prongs (¶ 0056, lines 1-6, describes a pyramid with a square base, which constitutes a rectangular pyramid since all squares are rectangles that have equal sides).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have provided the prongs of Holt with the pyramidal prong shape of Benjamin. This would improve the effectiveness of the device, as a pyramid shape would further concentrate pulling force to a single point on the prong, which would improve the overall performance of the device. The modification would have a reasonable expectation of success.
Additionally, it has been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Davison teaches a slit extending from a bottom surface to the strap channel such that the at least one prong is removable from the flexible strap when the flexible strap is in the closed loop configuration by forcing the flexible strap through the slit of the at least one prong (¶ 0008, lines 3-8).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have modified the removable prongs of Holt in view of Benjamin to incorporate a slit extending from a bottom surface to the strap channel such that the at least one prong is removable from the flexible strap when the flexible strap is in the closed loop configuration by forcing the flexible strap through the slit of the at least one prong, as taught by the attachment slit of Davison. This would allow for attachment to a collar while in a closed loop configuration, improving the ease of attachment to the animal collar as well as the overall function of the device. The modification would have a reasonable expectation of success.
Muller teaches the at least one prong configured to deform under pressure (¶ 0062, lines 7-12, “Alternately, the body may be formed from a semi-compliant material for curving around the dog's neck when in use. However, in this instance, the posts preferably project from a center portion that is at least somewhat rigid to prevent the posts from substantially giving-way during behavior correction”).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have modified the removable prongs of Holt in view of Benjamin and Davison such that the at least one prong is configured to deform under pressure, as taught by the semi-compliant and somewhat rigid material of Muller. This would allow for the prongs to deform to follow the dog’s neck during use while prevent the posts from substantially giving-way during behavior correction, improving the overall function of the device. The modification would have a reasonable expectation of success.
Regarding claim 32, Holt in view of Benjamin, Davison, and Muller discloses the device of claim 29.
Holt discloses wherein: each prong of the plurality of prongs extends in a prong direction from the base to a pointed top surface; and the strap channel of each prong extends perpendicular to the prong direction (Fig. 3A shows strap channel 68 of prong element 60 extends perpendicular to the direction of the prong to a point).
Regarding claim 33, Holt in view of Benjamin, Davison, and Muller discloses the device of claim 32.
Holt discloses wherein: each prong being independently repositionable between an inward-facing direction and an outward-facing direction while the flexible strap is in the closed loop configuration, wherein: when in the inward-facing direction, the pointed top surface is oriented toward a center of the closed loop configuration, and when in the outward-facing direction, the pointed top surface is oriented away from the center of the closed loop configuration (Fig. 1 shows a plurality of prong elements 60 are attached to a base collar and facing inwards; Fig. 3A shows strap channel 68 of prong element 60 allows for prongs to be repositionable between an inward-facing direction and an outward-facing direction; ¶ 0035, lines 13-16).
Regarding claim 35, Holt in view of Benjamin, Davison, and Muller discloses the device of claim 29, and furthermore, the modified reference teaches each prong (Holt; Fig. 1 shows a plurality of prong elements 60 are attached to a base collar and facing inwards; ¶ 0001, lines 2-4) is configured to be coupled to and decoupled from the base collar while the base collar is configured in the closed loop configuration (Davison; ¶ 0008, lines 3-8).
Regarding claim 36, Holt in view of Benjamin, Davison, and Muller discloses the device of claim 29.
Holt discloses wherein each prong of the plurality of prongs includes a top surface forming a rounded point (Fig. 3A shows top surface of prong element 60 forms rounded points).
Regarding claim 37, Holt discloses a prong for an anti-pulling animal collar (prong elements 60; Fig. 1), the prong comprising: a resilient rectangular base (Fig. 3A shows prong element 60 with rectangular base; ¶ 0001, lines 2-4); a resilient portion extending away from the base in a prong direction (Fig. 1; ¶ 0001, lines 2-4); a strap channel defined through the base and extending perpendicular to the prong direction, the strap channel configured to receive an animal collar therethrough (Fig. 3A shows strap channel 68 of prong element 60 extends perpendicular to the direction of the prong to a point and configured to receive an animal collar).
Although Holt discloses removable prongs and a rectangular base, Holt fails to specifically disclose rectangular, pyramid-shaped prongs, a slit extending from a bottom surface of the base to the strap channel wherein the rectangular base and pyramid-shaped portion are configured to deform under pressure such that the animal collar may be forced through the slit.
Benjamin teaches rectangular pyramid shaped prongs (¶ 0056, lines 1-6, describes a pyramid with a square base, which constitutes a rectangular pyramid since all squares are rectangles that have equal sides).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have provided the prongs of Holt with the pyramidal prong shape of Benjamin. This would improve the effectiveness of the device, as a pyramid shape would further concentrate pulling force to a single point on the prong, which would improve the overall performance of the device. The modification would have a reasonable expectation of success.
Additionally, it has been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Davison teaches a slit extending from a bottom surface of the base to the strap channel wherein the animal collar may be forced through the slit (¶ 0008, lines 3-8).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have modified the removable prongs of Holt in view of Benjamin to incorporate a slit extending from a bottom surface of the base to the strap channel wherein the animal collar may be forced through the slit, as taught by the attachment slit of Davison. This would allow for attachment to a collar while in a closed loop configuration, improving the ease of attachment to the animal collar as well as the overall function of the device. The modification would have a reasonable expectation of success.
Muller teaches the at least one prong configured to deform under pressure (¶ 0062).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have modified the removable prongs of Holt in view of Benjamin and Davison such that the at least one prong is configured to deform under pressure, as taught by the semi-compliant and somewhat rigid material of Muller. This would allow for the prongs to deform to follow the dog’s neck during use while prevent the posts from substantially giving-way during behavior correction, improving the overall function of the device. The modification would have a reasonable expectation of success.
Regarding claim 40, Holt in view of Benjamin, Davison, and Muller discloses the device of claim 37.
Holt discloses wherein each prong of the plurality of prongs includes a top surface forming a rounded point (Fig. 3A shows top surface of prong element 60 forms rounded points).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Holt (US 20210307292 A1), Benjamin (US 20190045748 A1), and Davison (US 20140261230 A1), as applied to claims 21, and further in view of Sullivan (US 8356579 B2).
Regarding claim 26, Holt in view of Benjamin and Davison discloses the device of claim 21, however, the modified reference fails to specifically disclose wherein a bottom surface of at least one prong includes a textured surface.
Sullivan is in the field of animal collars and teaches wherein a bottom surface of at least one prong includes a textured surface (Col 5, lines 24-27, “with reference to FIG. 3, a single link 22 from a top view includes a concave dimple 92, which provides a finger grip in the top of the link and by orientation and duplicity a decorative enhancement to the collar”).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have modified the device of Holt in view of Benjamin and Davison such that a bottom surface of at least one prong includes a textured surface, as taught by the textured surface of Sullivan, in order to allow for the trachea portion to be easily gripped and adjusted by the user. The modification would have a reasonable expectation of success.
Claims 34 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Holt (US 20210307292 A1), Benjamin (US 20190045748 A1), Davison (US 20140261230 A1), and Muller (US 20030150402 A1), as applied to claims 29, and 37, and further in view of Sullivan (US 8356579 B2).
Regarding claim 34, Holt in view of Benjamin, Davison, and Muller discloses the device of claim 29, however, the modified reference fails to specifically disclose wherein a bottom surface of at least one prong includes a textured surface.
Sullivan teaches wherein a bottom surface of at least one prong includes a textured surface (Col 5, lines 24-27).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have modified the device of Holt in view of Benjamin, Davison, and Muller such that a bottom surface of at least one prong includes a textured surface, as taught by the textured surface of Sullivan, in order to allow for the trachea portion to be easily gripped and adjusted by the user. The modification would have a reasonable expectation of success.
Regarding claim 39, Holt in view of Benjamin, Davison, and Muller discloses the device of claim 37, however, the modified reference fails to specifically disclose wherein a bottom surface of at least one prong includes a textured surface.
Sullivan teaches wherein a bottom surface of at least one prong includes a textured surface (Col 5, lines 24-27).
Therefore, it would have been obvious to one of ordinary skill in the art of animal collars before the effective filing date of the claimed invention to have modified the device of Holt in view of Benjamin, Davison, and Muller such that a bottom surface of at least one prong includes a textured surface, as taught by the textured surface of Sullivan, in order to allow for the trachea portion to be easily gripped and adjusted by the user. The modification would have a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 04/09/2026 have been fully considered but they are not persuasive.
Regarding the argument on page 14 that “Davison is not directed to prong training collars or any type of training collar at all. Instead, Davison discloses a pet toy that emits a point of light, such as a laser or LED, for the purpose of entertaining an animal. The ‘attachment’ referenced in Davison-described as ‘a narrow slit, clip, or any other type of attachment’-is merely a mechanism for securing a rigid electronic housing containing a light source, power supply, and control circuitry to an existing collar. This attachment mechanism serves the fundamentally different purpose of fixing a stationary electronics housing onto a collar, not enabling the addition, removal, or repositioning of individual prongs along a collar strap. A person of ordinary skill in the art of animal training collars, seeking to improve the removability of prongs from a prong collar such as Holt's, would have no reason to look to a pet entertainment toy for guidance on prong attachment structures. The problems addressed by Davison-providing light-based amusement to a pet-bear no relationship to the problem of allowing prong elements to be coupled to and decoupled from a collar strap while the strap remains in a closed loop configuration. Where, as here, the secondary reference addresses an entirely different technical problem, the mere fact that both references relate broadly to items attached to a pet's collar does not supply the necessary rational underpinning for the proposed combination,” the Examiner recognizes that it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Davison is in the field of the inventor’s endeavor, as Davison is in the field of animal collars, specifically animal collar attachments. Therefore, a person of ordinary skill in the art of animal collars would have had reason to look to the device of Davison.
Regarding the argument on page 15 that “Davison's attachment mechanism is designed to hold a housing in a fixed, stationary position on a collar so that the light source can properly project outwardly from the front of the housing onto a distal surface. In contrast, Holt's prong elements are specifically designed to be repositionable along the first strap and to be translatable independent of one another. Incorporating Davison's fixed-position attachment structure into Holt's prong elements would be contrary to the very repositionability that is central to Holt's design and would undermine, rather than improve, the overall function of the device. The Examiner's conclusory statement that the combination would ‘allow for attachment to a collar while in a closed loop configuration, improving the overall function of the device’ does not account for this fundamental incompatibility between the references. Further, the Office fails to specify how the Holt device would be modified to include the slit of Davison. The Office's general assertion that the Holt device be modified to include the slit of Davison, in a hand-waive fashion without detail, is telling as it reveals the Office itself is not sure as to the functionality of the modification and thus is impermissibly vague,” and on page 16 that “There is no obvious, or even plausible, way to modify the prong of Holt to incorporate the slit of Davison without rendering the prong of Holt inoperable for its intended purpose, as discussed above. Further, because the slit of Davison constitutes both a slit and strap channel, there would be no reason or motivation to combine the slit of Davison with the strap channel of Holt,” the Examiner notes that the removable prongs of Holt are not provided with the entire fixed-position attachment structure of Davison as asserted by the Applicant, but instead, the removable prongs of Holt are provided with only the attachment slit of Davison as demonstrated in the previous Office Action. The Applicant further mischaracterizes the application of Davison by arguing that “the Office fails to specify how the Holt device would be modified to include the slit of Davison. The Office's general assertion that the Holt device be modified to include the slit of Davison, in a hand-waive fashion without detail, is telling as it reveals the Office itself is not sure as to the functionality of the modification and thus is impermissibly vague.” This statement ignores the explanation given in the previous Office Action that the specific structure of the removable prongs of Holt in view of Benjamin is modified with the attachment slit of Davison. This previous description provides the exact structure of Davison being incorporated, as well as the exact structure in Holt where the incorporation occurs. As such, the Office makes no “general assertion that the Holt device be modified to include the slit of Davison,” and provides a clear description of what specific structures in each reference are included in the modification. The Examiner further recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to modify the removable prongs of Holt in view of Benjamin with the attachment slit of Davison exists in Davison, as Davison demonstrates in ¶ 0008 that the attachment slit allows for attachment to an existing animal collar worn around the neck of an animal. This would allow for attachment to a collar while in a closed loop configuration, improving the ease of attachment to the animal collar as well as the overall function of the device.
Regarding the argument on page 17 that “The Office's reliance on Benjamin is similarly misplaced. The Office relies on Benjamin for its purported teaching of ‘rectangular pyramid shaped prongs,’ citing paragraph [0056] of Benjamin, which describes protrusion shapes including ‘substantially pyramidal (e.g. square- based pyramid, triangle-based pyramid, etc.)’ protrusions. However, the protrusions in Benjamin are not standalone prongs carried on a strap, as in the claimed invention and in Holt. Rather, Benjamin's protrusions are interior features located on the inner surface of hollow interlinking collar components-rigid segments that snap together to form a collar. As discussed in previous responses ad nauseam, Benjamin's entire collar architecture is structurally distinct from Holt's strap-based system: Benjamin employs a plurality of rigid interlinking segments connected through securing portions and hollow portions with locking elements, whereas Holt employs a flexible strap threaded through strap channels of individual prong elements,” The Examiner notes that the device of Holt is not provided with the “entire collar architecture” of Benjamin, but instead, the prongs of Holt are provided with the pyramidal prong shape of Benjamin.
Regarding the argument on page 18 that “Furthermore, the Office's reliance on Eskimo Pie Corp. v. Levous et al., 3 USPQ 23, for the proposition that ‘there is no invention in merely changing the shape or form of an article without changing its function’ is misplaced. This holding presumes that the shape change is a simple substitution that does not affect function. As to the instant application, the pyramid shaped top portion of each prong is specifically configured such that, because the prong is comprised of a resilient and deformable material, the rounded point of the pyramid shaped top portion may give way or deform toward the base of the prong so as to apply pressure to the animal without injuring the animal. Thus, the pyramid shape allows for rounded point to give way, but not collapse, when pressure is applied to the animal and then rebound back to its original shape after pressure is relieved. The shape of the prong, particularly in view of the prong's resilient and deformable configuration, is not a mere aesthetic variation-it directly affects how the prong applies pressure to the animal's neck, the surface area of contact, the degree of correction provided, and the overall training function of the collar. A change from Holt's disclosed protrusion geometry to a rectangular pyramidal shape is not a trivial change of form; it is a change that implicates the functional interaction between the prong and the animal,” the Examiner maintains that It would have been obvious to one having ordinary skill in the art at the earliest effective filing date of the invention to provide the prongs of Holt with a pyramidal shape since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Holt already discloses prongs with a shape that converges to a point to concentrate pressure to an animal’s neck; modifying the Holt’s prong shape with another shape, such as a pyramid, that converges to a point to concentrate pressure to an animal’s neck does not demonstrate a substantial change in function.
Regarding the argument on pages 18 and 19 that “Taken together, the proposed combination of Holt, Benjamin, and Davison requires extracting discrete, isolated features from two structurally dissimilar secondary references-an interior protrusion shape from a rigid interlinking collar system (Benjamin) and an attachment slit from a light-emitting pet toy (Davison)and grafting them onto the prong elements of a strap- based training collar (Holt). This piecemeal assembly of disparate components from unrelated structures, directed at solving unrelated problems, is precisely the type of hindsight reconstruction that the law forbids. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (‘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 applicant's disclosure, such a reconstruction is proper.’). Here, without the benefit of Applicant's own disclosure, there is no reason why a person of ordinary skill would have looked to a pet entertainment toy and a rigid interlinking collar system to modify a strap-based prong training collar in the precise manner claimed,” in response to Applicant's arguments against the references individually, the Examiner recognizes 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). Furthermore, 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). The conclusory statement “Here, without the benefit of Applicant's own disclosure, there is no reason why a person of ordinary skill would have looked to a pet entertainment toy and a rigid interlinking collar system to modify a strap-based prong training collar in the precise manner claimed,” does not provide any argument for why hindsight reasoning was used, or why a modification was improper beyond which has already been addressed above and in previous Office Actions, as it has been demonstrated that all applied references are in the field of the inventor’s endeavor.
Regarding the argument on pages 19 and 20 that “In the FOA, the Office relies on Holt to teach this feature, stating that ‘Fig. 1 shows a plurality of prong elements 60 are attached to a base collar and facing inwards; Fig. 3A shows a strap channel 68 of prong element 60 allows for prongs to be repositionable between an inward- facing direction and an outward-facing direction.’ Yet, nowhere in Holt does it discuss or contemplate orienting the prongs in an outward-facing direction. Further, the prongs of Holt are specifically designed such that they are positioned in an inward-facing orientation. As shown in Fig. 1 (provided above), the curvature of the prongs provides that the plurality of prongs, when coupled to the base collar, form a circular shape. Further, this orientation is needed to create the ‘pinching action’ discussed in paragraph [0035] of Holt. If one was to flip the prongs such that they were outward-facing, the plurality of prongs would no longer form a circular shape and would not provide the ‘pinching action’ for which they were configured, thus rendering the prongs unfit for their intended purpose,” the Examiner submits that the above argument is incommensurate with the scope of the claims, as claim 21 requires “each prong of the plurality of prongs being repositionable along the base collar.” Fig. 3A of Holt shows strap channel 68 of prong element 60 allows for prongs to be “repositionable” between an inward-facing direction and an outward-facing direction, as the prongs do not show any component or structure that would prevent the orientation of the prong from being repositioned between an inward-facing direction and an outward-facing direction.
The remainder of Applicant’s arguments have been considered but are moot because the rejection does not rely on any specific application of any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the remaining arguments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Zeman, US 3013530 A, discusses an animal restraining device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SPENCER THOMAS CALLAWAY whose telephone number is (571)272-3512. The examiner can normally be reached 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Huson can be reached on 571-270-5301. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.T.C./Examiner, Art Unit 3642
/JOSHUA D HUSON/Supervisory Patent Examiner, Art Unit 3642
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