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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,842,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are coextensive in scope to the claims of the patented application. Both sets address an animal containment enrichment composition of one or more sheets comprising an array of scores in a flat array of sections.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,239,096. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are coextensive in scope to the claims of the patented application. Both sets address an animal containment enrichment composition of one or more sheets comprising an array of scores in a flat array of sections.
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.
Claim 20 is 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. The figures show an obtuse angle, but the specification does not support the upper and lower limits of the claimed range of 100 to 170 degrees. This range constitutes new matter.
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.
Claim(s) 1-3 and 9-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 3,978,818 to Heldenbrand in view of U.S. Patent Pub. No. 2007/0169714 to Conger et al.
Regarding Claim 1, Heldenbrand teaches an animal containment enrichment composition, comprising: one or more sheets (Heldenbrand Fig. 1 #10), wherein at least one sheet of the one or more sheets comprises: a first edge having a first contour formed, at least in part, by a first plurality of perimeter portions comprising: a first perimeter portion (Heldenbrand Fig. 1 left side edge of #10), a second edge opposite the first edge, the second edge having a second contour formed, at least in part, by a second plurality of perimeter portions mirroring the first plurality of perimeter portions (Heldenbrand Fig. 1 right side of #10 mirrors left side of #10); a third edge (Heldenbrand Fig. 1 top edge of #10) connecting the first edge to the second edge; a fourth edge (Heldenbrand Fig. 1 bottom edge of #10) opposite the third edge and connecting the first edge to the second edge; and at least one sheet section having at least one sub-array of scores (Heldenbrand Fig. 1 #14A, #14B, #14) an array of scores defining a flat array of sections of the sheet.
Heldenbrand is silent on a second perimeter portion parallel to the first perimeter portion, and a third perimeter portion connecting the first and second perimeter portions, the third perimeter portion being disposed at an obtuse angle relative to the first perimeter portion. However, Conger teaches an animal containment perimeter that the bottom floor has a perimeter edge of a first perimeter portion, a second perimeter portion parallel to the first perimeter portion and a third perimeter portion connecting the first and second perimeter portions, the third perimeter portion being disposed at an obtuse angle relative to the first perimeter portion (Conger Fig. 9A and 9B #101). It would have been obvious to one of ordinary skill in the art to modify the teachings of the Heldenbrand sheet with the perimeter shape of Conger before the effective filing date of the claimed invention with a reasonable expectation of success to fit and utilize a disposable container as taught by Conger (Conger paragraph [0005]). The modification is merely the application of a known technique to a known device ready for improvement to yield predictable results. Heldenbrand teaches the sheet mimics the shape of the container (Heldebrand Fig. # #12 and #10) and the modification by Conger merely changes the container shape to an hour glass configuration. Merely changing the perimeter shape of Heldenbrand to the shape of Conger is merely an obvious engineering design choice and does not present a patentable distinction over the prior art of record. The modification is merely “obvious to try” choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
Regarding Claim 2, Heldebrand as modified teaches wherein the at least one sheet section having at least one sub-array of scores comprises: a first sheet section having a first sub-array of scores (Heldenbrand Fig. 1 top, left #14A), the first sheet section being defined, at least in part, by the first and third perimeter portions; a second sheet section having a second sub-array of scores (Heldenbrand Fig. 1 #14), the second sheet section being defined, at least in part, by the second perimeter portion; and a third sheet section having a third sub-array of scores (Heldenbrand Fig. 1 lower left #14A), wherein the second sheet section is disposed between the first sheet section and the third sheet section.
Regarding Claim 3, Heldenbrand as modified teaches wherein the first sub-array of scores comprises a first score pattern (Heldenbrand Fig. 1 #14A diagonal pattern), and wherein the second sub-array of scores (Heldenbrand Fig. 1 #14 vertical, straight line pattern) comprises a second score pattern different from the first score pattern.
Regarding Claim 9, Heldenbrand as modified teaches wherein the third sub-array of scores (Heldenbrand Fig. 1 bottom left #14A is a diagonal pattern different then the straight line pattern of Fig. 1 #14) comprises a third score pattern different from the second score pattern.
Regarding Claim 10, Heldenbrand as modified teaches wherein the first sub-array of scores and the third sub-array of scores comprise a same score pattern (Heldenbrand Fig. 1 top and bottom #14A are both diagonal patterns).
Regarding Claim 11, Heldenbrand as modified teaches the third edge, but is silent on wherein the third edge has a third plurality of perimeter portions comprising: a fourth perimeter portion, and a fifth perimeter portion connecting the first and fourth perimeter portions, the fifth perimeter portion being disposed at an angle relative to the first perimeter portion. However, Conger teaches the general knowledge of one of ordinary skill in the art that it is known to provide diagonal portions at all four corners of the bottom floor of the animal container (Conger Fig. 9B, that correspond to the fifth perimeter portion). It would have been obvious to one of ordinary skill in the art to further modify the teachings of Heldenbrand with the shape of Conger before the effective filing date of the claimed invention with a reasonable expectation of success to fit the dimensions of the container. The modification is merely “obvious to try” choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
Regarding Claim 12, Heldenbrand as modified teaches wherein the one or more sheets are positionable in a cage base bottom, and wherein the first and second contours are configured to follow a shape of the cage base bottom (Conger Fig. 9B #101 and Heldenbrand Fig. 3 #13).
Regarding Claim 13, Heldenbrand as modified teaches wherein the one or more sheets comprises a first sheet and a second sheet, and wherein the first sheet is connected to the second sheet (Heldenbrand Fig. 1 1 and 4 top sheet of #10 and bottom sheet of #10).
Regarding Claim 14, Heldenbrand as modified teaches wherein a junction between the first and third perimeter portions of the first sheet is connected to the second sheet (Heldenbrand Fig.1 top sheet and bottom sheet are connected along the sides).
Regarding Claims 15 and 16, Heldenbrand as modified is silent on further comprising a fiber roll; wherein the one or more sheets are configured to be arranged underneath the fiber roll. However, the examiner takes official notice that it is old and notoriously well-known to place a toilet paper tube or a toilet paper tube filled with hay in a rodent container on top of the bedding. It would have been obvious to one of ordinary skill in the art to further modify the teachings of Heldenbrand before the effective filing date of the claimed invention with a reasonable expectation of success to enhance play and stimulation for the rodent. The modification is merely the application of a known technique to a known device ready for improvement to yield predictable results.
Regarding Claims 17, 18 and 19, Heldenbrand as modified in claim 1 above teaches a sheet, comprising: a plurality of perimeter portions comprising: a first perimeter portion, a second perimeter portion parallel to the first perimeter portion, and a third perimeter portion connecting the first and second perimeter portions, the third perimeter portion being disposed at a first obtuse angle relative to the first perimeter portion, a fourth perimeter portion, and a fifth perimeter portion connecting the first and fourth perimeter portions, the fifth perimeter portion being disposed at a second obtuse angle relative to the first perimeter portion; wherein the first obtuse angle is equal to the second obtuse angle; and first and second sheet sections defined, at least in part, by the plurality of perimeter portions, wherein the first sheet section comprises a first score pattern (Heldenbrand Fig. 1 #14A, diagonal), and wherein the second sheet section comprises a second score pattern (Heldenbrand Fig. 1 #14 straight) different from the first score pattern. Heldenbrand sheet Fig. 1 #10 was modified by the bottom floor shape of Conger Fig. 9B #101 in claim 1 above.
Regarding Claim 20, Heldenbrand as modified by Conger appears to teach an obtuse angle within the claimed range (Conger bottom floor perimeter Fig. 9B), but is silent on explicitly claiming the first obtuse angle is about 100 degrees to about 170 degrees. However, it would have been obvious to one of ordinary skill in the art to further modify the teachings of Heldenbrand before the effective filing date of the claimed invention with a reasonable expectation of success to provide a position point for a food tray as taught by Conger (Conger paragraph [0072]). The modification is merely an engineering design choice derived through routine tests and experimentation to optimize performance and merely to adjust to different size/shape animal containment structures. The modification is merely “obvious to try” choosing from a finite number of identified, predictable solution with a reasonable expectation of success. Applicant does not provide criticality in the specification for the claimed range.
Claim(s) 4, 5, 6, 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 3,978,818 to Heldenbrand in view of U.S. Patent Pub. No. 2007/0169714 to Conger et al as applied to claims 1, 2, 3 above, and further in view of U.S. Patent No. 5,041,317 to Greyvenstein.
Regarding Claim 4, Heldenbrand as modified is silent on wherein the first score pattern comprises a plurality of zig-zag scores. However, Greyvenstein teaches the general knowledge of one of ordinary skill in the art that it is known to provide a score in a zig-zag pattern (Greyvenstein Fig. 9). It would have been obvious to one of ordinary skill in the art to further modify the teachings of Heldenbrand with the teachings of Greyvenstein before the effective filing date of the claimed invention with a reasonable expectation of success to tear evenly as taught by Greyvenstein. The modification is merely the simple substitution of one known score for another to obtain predictable results.
Regarding Claim 5, Heldenbrand as modified teaches wherein at least one score of the plurality of zig-zag scores comprises multiple apexes (Greyvenstein Fig. 9 #88).
Regarding Claim 6, Heldenbrand as modified teches wherein the first sub-array of scores further comprises a plurality of counter-scores that are angled relative to the plurality of zig-zag scores (Heldenbrand #14A, #14B, #14 are angled relative to eachother).
Regarding Claim 7, Heldenbrand as modified teaches wherein at least one counter-score of the plurality of counter-scores is continuous with an associated zig-zag score of the plurality of zig-zag scores (Heldenbrand #14 is continuous as modified by Greyvenstein Fig. 9).
Regarding Claim 8, Heldenbrand as modified teaches wherein at least one score of the plurality of zig-zag scores penetrates an entire thickness of the at least one sheet (Heldenbrand Fig. 1 #14A, #14B, #14; Greyvenstein Fig. 9 #86 and #82).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner maintains the double patenting rejection since 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 would have been obvious over, the reference claim(s).
The examiner maintains that applicant hasn’t patentably distinguished over the prior art of record.
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 ANDREA M VALENTI whose telephone number is (571)272-6895. The examiner can normally be reached Available Monday and Tuesday only, eastern time.
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, Peter Poon can be reached at 571-272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA M VALENTI/Primary Examiner, Art Unit 3643
26 May 2026
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