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 .
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,245,617 in view of Axelrod et al. (US 2010/0224138).
For claims 1-22, U.S. Patent No. 12,245,617 discloses an edible pet chew, comprising: an artificial dried pizzle component for imitating a dried animal pizzle product, wherein said artificial dried pizzle component is in a form imitating a dried animal pizzle product shape, wherein said artificial dried pizzle component comprises a groove longitudinally on its surface, and wherein said artificial dried pizzle component is formed from a composition material. However, U.S. Patent No. 12,245,617 lacks to mention wherein said composition material comprises at least 10% collagen by weight.
Axelrod et al. teach that it is old and well known in the art of manufacturing of pet chew to provide an animal chew having a composition material comprises of collagen (see [0033]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,245,617 so as to include collagen therein, in a similar manner as taught in Axelrod et al., so as to promote joint health, skin and coat condition, and dental hygiene for aging dogs.
Regarding “at least 10% collagen by weight”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,245,617 so as to include “at least 10% collagen by weight”, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Also, since applicant did not provide a reason and/or showing any criticality as to why the weight of collagen has to be in a specific value of at least 10% collagen by weight; therefore, it is believed that through trial and error during the testing procedure that one comes up with a desirable % weight to meet the design criteria for forming a potent animal chew.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,122,820 in view of Axelrod et al. (US 2010/0224138).
For claims 1-22, U.S. Patent No. 11,122,820 discloses an edible pet chew, comprising: an artificial dried pizzle component for imitating a dried animal pizzle product, wherein said artificial dried pizzle component is in a form imitating a dried animal pizzle product shape, wherein said artificial dried pizzle component comprises a groove longitudinally on its surface, and wherein said artificial dried pizzle component is formed from a composition material. However, U.S. Patent No. 11,122,820 lacks to mention wherein said composition material comprises at least 10% collagen by weight.
Axelrod et al. teach that it is old and well known in the art of manufacturing of pet chew to provide an animal chew having a composition material comprises of collagen (see [0033]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 11,122,820 so as to include collagen therein, in a similar manner as taught in Axelrod et al., so as to promote joint health, skin and coat condition, and dental hygiene for aging dogs.
Regarding “at least 10% collagen by weight”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,245,617 so as to include “at least 10% collagen by weight”, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Also, since applicant did not provide a reason and/or showing any criticality as to why the weight of collagen has to be in a specific value of at least 10% collagen by weight; therefore, it is believed that through trial and error during the testing procedure that one comes up with a desirable % weight to meet the design criteria for forming a potent animal chew.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,268,226 in view of Axelrod et al. (US 2010/0224138).
For claims 1-22, U.S. Patent No. 12,268,226 discloses an edible pet chew, comprising: an artificial dried pizzle component for imitating a dried animal pizzle product, wherein said artificial dried pizzle component is in a form imitating a dried animal pizzle product shape, wherein said artificial dried pizzle component comprises a groove longitudinally on its surface, and wherein said artificial dried pizzle component is formed from a composition material. However, U.S. Patent No. 12,268,226 lacks to mention wherein said composition material comprises at least 10% collagen by weight.
Axelrod et al. teach that it is old and well known in the art of manufacturing of pet chew to provide an animal chew having a composition material comprises of collagen (see [0033]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,268,226 so as to include collagen therein, in a similar manner as taught in Axelrod et al., so as to promote joint health, skin and coat condition, and dental hygiene for aging dogs.
Regarding “at least 10% collagen by weight”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,245,617 so as to include “at least 10% collagen by weight”, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Also, since applicant did not provide a reason and/or showing any criticality as to why the weight of collagen has to be in a specific value of at least 10% collagen by weight; therefore, it is believed that through trial and error during the testing procedure that one comes up with a desirable % weight to meet the design criteria for forming a potent animal chew.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,161,088 in view of Axelrod et al. (US 2010/0224138).
For claims 1-22, U.S. Patent No. 12,161,088 discloses an edible pet chew, comprising: an artificial dried pizzle component for imitating a dried animal pizzle product, wherein said artificial dried pizzle component is in a form imitating a dried animal pizzle product shape, wherein said artificial dried pizzle component comprises a groove longitudinally on its surface, and wherein said artificial dried pizzle component is formed from a composition material. However, U.S. Patent No. 12,161,088 lacks to mention wherein said composition material comprises at least 10% collagen by weight.
Axelrod et al. teach that it is old and well known in the art of manufacturing of pet chew to provide an animal chew having a composition material comprises of collagen (see [0033]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,161,088 so as to include collagen therein, in a similar manner as taught in Axelrod et al., so as to promote joint health, skin and coat condition, and dental hygiene for aging dogs.
Regarding “at least 10% collagen by weight”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,245,617 so as to include “at least 10% collagen by weight”, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Also, since applicant did not provide a reason and/or showing any criticality as to why the weight of collagen has to be in a specific value of at least 10% collagen by weight; therefore, it is believed that through trial and error during the testing procedure that one comes up with a desirable % weight to meet the design criteria for forming a potent animal chew.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,122,820 in view of Axelrod et al. (US 2010/0224138).
For claims 1-22, U.S. Patent No. 11,122,820 discloses an edible pet chew, comprising: an artificial dried pizzle component for imitating a dried animal pizzle product, wherein said artificial dried pizzle component is in a form imitating a dried animal pizzle product shape, wherein said artificial dried pizzle component comprises a groove longitudinally on its surface, and wherein said artificial dried pizzle component is formed from a composition material. However, U.S. Patent No. 11,122,820 lacks to mention wherein said composition material comprises at least 10% collagen by weight.
Axelrod et al. teach that it is old and well known in the art of manufacturing of pet chew to provide an animal chew having a composition material comprises of collagen (see [0033]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 11,122,820 so as to include collagen therein, in a similar manner as taught in Axelrod et al., so as to promote joint health, skin and coat condition, and dental hygiene for aging dogs.
Regarding “at least 10% collagen by weight”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,245,617 so as to include “at least 10% collagen by weight”, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Also, since applicant did not provide a reason and/or showing any criticality as to why the weight of collagen has to be in a specific value of at least 10% collagen by weight; therefore, it is believed that through trial and error during the testing procedure that one comes up with a desirable % weight to meet the design criteria for forming a potent animal chew.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,159,266 in view of Axelrod et al. (US 2010/0224138).
For claims 1-22, U.S. Patent No. 10,159,266 discloses an edible pet chew, comprising: an artificial dried pizzle component for imitating a dried animal pizzle product, wherein said artificial dried pizzle component is in a form imitating a dried animal pizzle product shape, wherein said artificial dried pizzle component comprises a groove longitudinally on its surface, and wherein said artificial dried pizzle component is formed from a composition material. However, U.S. Patent No. 10,159,266 lacks to mention wherein said composition material comprises at least 10% collagen by weight.
Axelrod et al. teach that it is old and well known in the art of manufacturing of pet chew to provide an animal chew having a composition material comprises of collagen (see [0033]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 10,159,266 so as to include collagen therein, in a similar manner as taught in Axelrod et al., so as to promote joint health, skin and coat condition, and dental hygiene for aging dogs.
Regarding “at least 10% collagen by weight”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,245,617 so as to include “at least 10% collagen by weight”, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Also, since applicant did not provide a reason and/or showing any criticality as to why the weight of collagen has to be in a specific value of at least 10% collagen by weight; therefore, it is believed that through trial and error during the testing procedure that one comes up with a desirable % weight to meet the design criteria for forming a potent animal chew.
Claims 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 19/031,459 in view of Axelrod et al. (US 2010/0224138).
For claims 1-22, Application No. 19/031,459 discloses an edible pet chew, comprising: an artificial dried pizzle component for imitating a dried animal pizzle product, wherein said artificial dried pizzle component is in a form imitating a dried animal pizzle product shape, wherein said artificial dried pizzle component comprises a groove longitudinally on its surface, and wherein said artificial dried pizzle component is formed from a composition material. However, Application No. 19/031,459 lacks to mention wherein said composition material comprises at least 10% collagen by weight.
Axelrod et al. teach that it is old and well known in the art of manufacturing of pet chew to provide an animal chew having a composition material comprises of collagen (see [0033]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of Application No. 19/031,459 so as to include collagen therein, in a similar manner as taught in Axelrod et al., so as to promote joint health, skin and coat condition, and dental hygiene for aging dogs.
Regarding “at least 10% collagen by weight”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pet edible chew of U.S. Patent No. 12,245,617 so as to include “at least 10% collagen by weight”, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Also, since applicant did not provide a reason and/or showing any criticality as to why the weight of collagen has to be in a specific value of at least 10% collagen by weight; therefore, it is believed that through trial and error during the testing procedure that one comes up with a desirable % weight to meet the design criteria for forming a potent animal chew.
Conclusion
Note, although the examiner recites certain excerpts for the prior art, MPEP 2141.02 VI states “PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRINH T NGUYEN whose telephone number is (571)272-6906. The examiner can normally be reached on Monday-Friday 7:00-3:30.
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 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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TRINH T NGUYEN/Primary Examiner, Art Unit 3644