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 .
Claim Objections
Claims 1, 21 are objected to because of the following informalities: list of material lists neoprene twice. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9, 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites “wherein the mask is formed from several sections sewn together to form one piece” however the original specification does not go into detail about stitching being used to form one piece, and instead discusses it either being used to attached hook/loop material or for the purpose of increasing durability.
Claim 12 recites “a see through material sewn into the mask and covering the openings” however this is not detailed in the specification, and the only discussion of “see through” within the specification is to detail that there are openings in which the Equidae can see out of.
Claim Rejections - 35 USC § 102
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 1-2, 4-9, 11, 13-14, 17, 19-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pinhero (US 20230116616 A1).
Regarding claim 1: Pinhero discloses a multi layered Equidae mask (100) comprising a weather resistant outer layer (556, by nature any layer would be weather resistant to some degree) placed around a face and head of an equine, a first insulated inner layer (557) that is selected from the group consisting of wool, fleece, neoprene, cotton, synthetic fibers, polar fleece, faux fur, neoprene, ultraviolet shielding, waterproof nylon, leather, rubber, mesh fabrics, bamboo fibers, polytetrafluoroethylene, down feather fill, polyether-polyurea copolymer, and thermal latex (para 57) mounted inside of the outer layer for providing insulation, warmth and comfort to the Equidae’s face and head (paras 56-57), and ear coverings (550A,550B) on the mask comprised of a second weather resistant outer layer (para 56) in alignment with the Equidae’s ears.
Regarding claim 2: Pinhero discloses the limitations of claim 1 as shown above, and further discloses a second insulated layer mounted inside of the ear coverings made of the same material as the first insulated layer (para 56 discusses ear covers 550A,550B containing an inner surface 557 containing a lining material, examples are discussed in para 57, para 49 discusses that the material of the different sections can either be the same or different from each other).
Regarding claim 4: Pinhero discloses the limitations of claim 1 as shown above, and further discloses wherein the ear coverings (550A,550B) are removably attached to the mask (para 58).
Regarding claim 5: Pinhero discloses the limitations of claim 1 as shown above, and further discloses wherein the mask has a proximal end (300C) placed over the Equidae’s nose and a distal end (300AA, 300BB) placed over the Equidae’s head and behind the ears (Fig. 4).
Regarding claim 7: Pinhero discloses the limitations of claim 1 as shown above, and further discloses a reflective material on the outer layer (para 55).
Regarding claim 8: Pinhero discloses the limitations of claim 5 as shown above, and further discloses wherein the mask (100) is divided in half from the proximal end to the distal end to permit placing the mask over the Equidae’s face and head (Fig. 4) and further comprising fasteners (470) to secure the mask around the Equidae’s face and head once it is placed over the Equidae’s face and head (Fig. 4).
Regarding claim 9: Pinhero discloses the limitations of claim 1 as shown above, and further discloses wherein the mask (100) is formed from several sections sewn together (para 35 discusses different sections sewn together permanently) to form one piece so that it is slid over the Equidae’s face and head from the Equidae’s nose to the neck (Fig. 1 shows that different sections are joined together to from a single fly mask (100) that is positioned over the Equidae’s face).
Regarding claim 11: Pinhero discloses the limitations of claim 1 as shown above, and further discloses wherein the outer layer is an ultraviolet protective layer (para 53 discusses UV protection material).
Regarding claim 13: Pinhero discloses the limitations of claim 1 as shown above, and further discloses an opening (forelock aperture 570) between the ear coverings to accommodate the Equidae’s forelock (Fig. 1).
Regarding claim 14: Pinhero discloses the limitations of claim 1 as shown above, and further discloses a neck cover (450) removably attached to the distal end of the mask (strap 450 partially covers the neck of the Equidae and is removable via fasteners 470).
Regarding claim 17: Pinhero discloses a multi layered Equidae mask (100) comprising a proximal end and a distal end, the proximal end having a nose portion (300C) mounted over the Equidae’s nose and face and a distal end having an ear portion (525A,525B) mounted over the Equidae’s ears; the ear portion having two ear pieces (550A,550B) aligned with the Equidae’s ears and adapted to receive the Equidae’s ears (Fig. 4); the nose portion and the ear portion having a weather resistant protective outer layer (556, all layers are naturally weather resistant); and an insulated layer (557) to provide protection, warmth, and comfort to the Equidae’s nose and face mounted inside the nose portion between the Equidae’s nose and the weather resistant protective outer layer (para 56-57).
Regarding claim 19: Pinhero discloses the limitations of claim 17 as shown above, and further discloses wherein the ear portion (550) is selected of materials from the group consisting of ultraviolet materials, waterproof materials, and water resistant materials (para 53).
Regarding claim 20: Pinhero discloses the limitations of claim 17 as shown above, and further discloses an insulated layer mounted inside of the ear pieces (para 56 discusses ear covers 550A,550B containing an inner surface 557 containing a lining material, examples are discussed in para 57).
Regarding claim 21: Pinhero discloses the limitations of claim 17 as shown above, and further discloses wherein the interchangeable insulated layer is selected from the group consisting of wool, fleece, neoprene, cotton, synthetic fibers, polar fleece, faux fur, neoprene, ceramic Infused materials, ultraviolet shielding, waterproof nylon, leather, rubber, mesh fabrics, bamboo fibers, polytetrafluoroethylene, down feather fill, polyether-polyurea copolymer, and thermal latex (Examples of insulation are described in para 57).
Regarding claim 22: Pinhero discloses the limitations of claim 16 as shown above, and further discloses a reflective material on the mask (para 55).
Regarding claim 23: Pinhero discloses the limitations of claim 17 as shown above, and further discloses wherein the ear coverings (550A,550B) are removably attached to the mask (para 58).
Regarding claim 24: Pinhero discloses the limitations of claim 17 as shown above, and further discloses a removable neck cover (450) removable attached to the distal end of the mask (removably attached via fasteners 470).
Regarding claim 25: Pinhero discloses the limitations of claim 17 as shown above, and further discloses wherein the mask is divided in half from the proximal end to the distal end to permit placing the mask over the Equidae’s head and further comprising fasteners to secure the mask around the Equidae’s head once it is placed over the Equidae’s head (Figs. 1-4).
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 3, 18 are rejected under 35 U.S.C. 103 as being unpatentable over Pinhero as applied to claims 1, 17 above, and further in view of Miller (US 9204621 B1).
Regarding claim 3: Pinhero discloses the limitations of claim 1 as shown above.
Pinhero fails to teach wherein the first insulated inner layer is removable and interchangeable.
However, Miller teaches wherein the first insulated inner layer is removable and interchangeable (Col 4 lines 8-20 discuss an inner lining layer 14 that can be selectively removable).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the insulation as disclosed by Pinhero with the removable insulation as taught by Miller with a reasonable expectation of success because providing removable insulation would allow for a user to remove insulation from the apparel when desired, such as when the environmental conditions do not require there to be insulation or the conditions would deem insulation to be undesirable, achieving the predictable result of allowing the apparel to accommodate for the weather.
Regarding claim 18: Pinhero discloses the limitations of claim 17 as shown above.
Pinhero fails to teach wherein the insulated inner layer is removable and interchangeable.
However, Miller teaches wherein the insulated inner layer is removable and interchangeable (Col 4 lines 8-20 discuss an inner lining layer 14 that can be selectively removable).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the insulation as disclosed by Pinhero with the removable insulation as taught by Miller with a reasonable expectation of success because providing removable insulation would allow for a user to remove insulation from the apparel when desired, such as when the environmental conditions do not require there to be insulation or the conditions would deem insulation to be undesirable, achieving the predictable result of allowing the apparel to accommodate for the weather.
Claims 10, 12 15-16, 26 are rejected under 35 U.S.C. 103 as being unpatentable over Pinhero as applied to claims 1, 17 above, and further in view of Nor (US 20040103622 A1).
Regarding claim 10: Pinhero discloses the limitations of claim 1 as shown above.
Pinhero fails to teach openings in the mask aligned with the Equidae’s eyes.
However, Nor teaches openings (eye-cutouts 116) in the mask aligned with the Equidae’s eyes (Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the mask as disclosed by Pinhero with the eye openings as taught by Nor with a reasonable expectation of success because providing openings for the eyes would provide the Equidae with better vision of the surroundings, further decreasing the likelihood that the Equidae hurts itself or damages nearby structures.
Regarding claim 12: Pinhero as modified discloses the limitations of claim 10 as shown above.
Pinhero as modified teaches a see through material (Pinhero 490A,490B, para 28) fastened into the mask and covering the openings (Nor 116).
It would have been an obvious to one having ordinary skill in the art before the effective filing date as substitution of functional equivalent to substitute the snap fit fastening to stitching since a simple substitution of one known element for another would obtain predictable results. KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739, 1740, 82 USPQ2d 1385, 1395, 1396 (2007). Such a modification would be done in order to decrease the probability that the lens is undesirably removed from the mask.
Regarding claim 15: Pinhero discloses the limitations of claim 1 as shown above.
Pinhero fails to teach wherein the inner layer contains a medical preparation.
However, Nor teaches wherein the inner layer contains a medical preparation (para 36, magnets are used for the purpose of applying therapeutic treatment to the Equidae).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the mask as disclosed by Pinhero with the magnets as taught by Nor with a reasonable expectation of success because providing magnets would achieve the predictable result of improving circulation, keeping the Equidae healthier and decreasing the likelihood that the Equidae falls ill.
Regarding claim 16: Pinhero discloses the limitations of claim 1 as shown above.
Pinhero fails to teach a halter affixed to the mask.
However, Nor teaches a halter (170) affixed to the mask (110,Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the mask as disclosed by Pinhero with the halter as taught by Nor with a reasonable expectation of success because providing a halter would achieve the predictable result of allowing a user to control the Equidae’s movement and position the Equidae in a desired area.
Regarding claim 26: Pinhero discloses the limitations of claim 17 as shown above.
Pinhero fails to teach a halter affixed to the mask.
However, Nor teaches a halter (170) affixed to the mask (110,Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the mask as disclosed by Pinhero with the halter as taught by Nor with a reasonable expectation of success because providing a halter would achieve the predictable result of allowing a user to control the Equidae’s movement and position the Equidae in a desired area.
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art of Pinhero does not discuss insulated inner layer directed for weather insulation but instead for comfort and padding. The Office respectfully disagrees, as padding would naturally provide warmth, so that even if the primary reasoning for having the padding was for the comfort of the animal, the padding would still achieve the secondary effect of providing some weather resistance and therefore arrive at the limitations.
Applicant argues that the prior art is directed to a fly mask and not weather protection. This argument is not commensurate with the scope of the claims as the claimed invention is directed to an Equidae mask, which Pinhero is.
Applicant argues that the prior art of Pinhero does not teach insulated ear coverings. The Office respectfully disagrees as Pinhero discusses padding in paras [0056-0057] which would teach insulated layers within the ear, therefore teaching this limitation.
Applicant argues that the modular fly mask of Pinhero differs from the multi-layer thermal construction of Applicant’s claimed invention. This argument is not persuasive as Pinhero teaches the structural elements of applicant’s claimed invention, the differences between the two have not been distinguished enough within the scope of the claims in order to arrive at patentability.
In response to applicant's argument that Miller is nonanalogous art, 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, the art of Miller and Pinhero are directed to the similar art of animal apparel, and even though they are directed to different body parts they would still serve the same purpose of protecting the animal from external factors such as weather, pests, etc.
In response to applicant's argument that Nor is nonanalogous art, 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, the art of Nor and Pinhero are directed to Equidae apparel, and even though they have different intended uses, one of ordinary skill in the art would be able to easily take teachings from one art in order to apply it in the second art.
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).
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.
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/E.R./Examiner, Art Unit 3642
/ASSRES H WOLDEMARYAM/Primary Examiner, Art Unit 3642