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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Objections
Claims 6 and 18 are objected to because of the following informalities: claims 6 and 18 recite “to the that capture device.” Appropriate correction is required.
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 1-20 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 1 recites that the bite apparatus “is adapted to encourage that engagement and promote retainment within the animal's mouth.” The scope of this language is not clear. It is not clear what would, and what would not, be considered a bite apparatus that would “encourage engagement and promote retainment within the animal’s mouth.” For example, would any item that an animal is able to bite upon “encourage engagement”, or does this require some additional attractant? It is noted that claim 3 depends from claim 1 and requires such an attractant, and therefore by claim differentiation claim 1 does not. Therefore what claim 1 does in fact require is unclear. It is similarly unclear what is required by “promote retainment within the animal’s mouth.” Does this require a particular bite apparatus shape, or is this similar to the “encourage” limitation in that it describes an attractant? It is also not clear if “encourag[ing] engagement” and “promot[ing] retainment” are different structural requirements, or if they both describe a same attractant feature of the bit apparatus. If they describe the same feature, it would be unclear what additional limitation is provided by the language “promote retainment within the animal’s mouth.”
Because of the above-described issues, “a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.” MPEP 2173.02(II). Claims 2-15 inherit this language and this indefiniteness. Claims 16-20 include similar language and are rejected for reasons given above.
Claim 1 recites “a capture device” twice: once in the “first means” limitation, and again in the “second means” limitation. It is not clear if the second instance of this capture device is meant to refer to the same capture device that was previously introduced in the claim, or a different capture device. If the applicant intends that the apparatus secures two different capture devices, the examiner suggests amending the claim to recite “a first means for securing a first capture device” and “a second means for securing a second capture device.”
Claim 5 recites that the bite apparatus is “constructed to positively stimulate the animal's mouth when the animal engages with the bite apparatus and encourage the animal to continue biting the bite apparatus so that the animal held media capture apparatus may be used to capture media from the animal's point-of-view.” For reasons similar to those given above, this is indefinite. The public would not understand how to avoid infringing this claim because it is not clear what would, and what would not, be a bite apparatus that is constructed to “positively stimulate the animal's mouth when the animal engages with the bite apparatus and encourage the animal to continue biting the bite apparatus.” Stated in another way, skilled artisans are likely to come to different conclusions as to what this language requires, thus scope of this limitation is not clear. In addition, the language “so that the animal held media capture apparatus may be used to capture media from the animal's point-of-view” describes an intended result of a structural limitation, and is indefinite for this additional reason. Please refer to MPEP 2173.05(g).
Claims 6 and 18 recite “a capture device.” It is not clear if this intends to refer to the same “capture device” that was introduced in the claims from which these claims depend (claims 1 and 16, respectively).
Claim 15 recites that “the bite apparatus, the elongated piece, and the first means for securing a capture device are arranged in a straight orientation in relation to the direction that the animal is facing.” This is indefinite for a number of reasons. The claim does not define what direction the animal is facing, or what orientation the apparatus has in relation to the animal. In addition, an animal could carry the apparatus in its mouth in a variety of orientations – for example, with the apparatus projecting directly in front of the animal’s face, or 90 degrees to the side of its face. Therefore this claim appears to attempt to place a requirement on the manner in which the animal holds the device. This is not a structural limitation on the apparatus, but rather appears to describe the intended way in which an animal behaves while using it.
Claim 16 recites that “one distal end is engaged by an animal.” It is not clear what structural requirement this places on the apparatus that claim 16 is drawn to. This may also be interpreted as describing an intended use of the apparatus, in which case it would not limit the claim. See MPEP 2111.
Claim 17 recites “a second means for securing a capture device located on the bite apparatus and not inside the animal's mouth while the animal engages with the bite apparatus.” Similar to claim 1, this recites “a capture device”, and it is not clear if it refers to the same “capture device” that is recited in claim 16. In addition, the language requiring that the second means is “not inside the animal's mouth while the animal engages with the bite apparatus” is unclear. This is not a structural limitation on the claimed apparatus. This appears instead to describe an intended manner in which the animal will use the apparatus. In addition, it is not clear if this is intended to place size requirement on the apparatus or a requirement on the distance from the bite apparatus to the second means. This could also be read as describing the size of the animal that the apparatus is designed for. For example, if a large animal “engages with the bite apparatus” it would appear likely that both the bite apparatus and the second means would be within the animal’s mouth. Neither a limitation on the manner in which the animal uses the apparatus nor a limitation on the size of the intended animal are structural limitations on the apparatus that claim 17 is drawn to.
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.
Claims 1-7, 10-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Insta Go 3 Dog / Fetch camera Stick (the “Fetch Stick Video”, posted on Nov. 22, 2023 to www.youtube.com/watch?v=OBFS5FjqeU4), in view of “GO 3 Pet Chewing Selfie Stick” (https://archisite.co.jp/products/insta360/go3-fetch-stick/, archived on Nov. 29, 2023), and further in view of Universal MT-70 Stand: Perfect for Both Phone and Cameras (“Ulanzi”, posted on Mar. 08 2024 to www.youtube.com/watch?v=e-iYdihfOxE).
Claim 1: the Fetch Stick Video discloses:
an animal held media capture apparatus comprising: an elongated piece having two distal ends
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Above shows a screenshot of the Fetch Stick Video at 0:55, which depicts an elongated piece having two ends. The elongated piece connects a camera holder on one end (at the right side of the above image) to a bite apparatus at the other end.
a bite apparatus on one distal end of the elongated piece and the bite apparatus being designed be engaged by an animal and is adapted to encourage that engagement and promote retainment within the animal's mouth
The Fetch Stick Video at around 1:00-1:10 describes that the Fetch Stick has a squeaker on the end of the device that the animal bites. See the screenshot below. The POSITA would understand that this bite apparatus is designed to encourage the animal to bite and retain the item. See also the § 112(b) rejection above regarding this language.
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a first means for securing a capture device on the other distal end of the elongated piece opposite the bite apparatus
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See around 1:10-1:15, describing that the image capture device is inserted into the depicted end of the apparatus.
This video does not explicitly point out that the “Fetch Stick” is made of animal safe materials. While the POSITA would clearly conclude that such a device would be made of animal safe materials, this is also explicitly described in the GO 3 Pet Chewing Selfie Stick document, which is a product description of the same Fetch Stick item that is depicted in the Fetch Stick video. See pg. 1, which describes that the item is made of “BPA-free, harmless rubber used in pet toys.” It would have been obvious to the POSITA before the effective filing date of the claimed invention to use animal safe materials, the rationale being to ensure that animals are not harmed by the product.
The above Fetch Stick documents fail to disclose a second means for securing a capture device to the elongated piece between the two distal ends.
However, Ulanzi discloses a camera holding apparatus with a first means for holding a first capture device and a second means for securing a [second] capture device to an elongated piece between two distal ends of the apparatus.
See the screenshot below, which depicts a first means for holding a first image capture device, and a second means that secures a second capture device to an elongated piece, the rod of the tripod/selfie stick:
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Ulanzi at 1:35.
It would have been obvious to a skilled artisan to modify the Fetch Stick with the teachings provided in Ulanzi, the rationale being to enable the device to capture multiple angles, at multiple resolutions and orientations, on a single device.
Claim 2: the above combination does not disclose that the elongated piece is flexible and allows a user adjust the elongated piece into a desired orientation. Official notice is taken that this type of structure was well known in the art before the effective filing date of the claimed invention. For example, camera mounts with flexible necks were widely available. Therefore it would have been obvious to the POSITA to modify the Fetch Stick to include a flexible elongated piece, the rationale being to enable users to capture video at various different angles.
Claim 3: Fetch Stick video discloses that the bite apparatus includes at least one attractant (The Fetch Stick Video at around 1:00-1:10 describes that the Fetch Stick has a squeaker on the end of the device that the animal bites).
Claim 4: the above combination does not disclose that the attractant is a flavoring that is incorporated into the material comprising the bite apparatus. Official notice is taken that this was well known in the art before the effective filing date of the claimed invention. For example, dog chew toys with incorporated flavoring were common. Therefore it would have been obvious to the POSITA to modify the Fetch Stick to include flavoring in the end that the animal holds in its mouth, the rationale being to further encourage the animal to engage with the device and to bite on the correct location of the stick.
Claim 5: the Fetch Stick video discloses that the attractant is a structure constructed to positively stimulate the animal's mouth when the animal engages with the bite apparatus and encourage the animal to continue biting the bite apparatus so that the animal held media capture apparatus may be used to capture media from the animal's point-of-view (See Fetch Stick Video at 1:00-1:10. See also the § 112(b) rejection above regarding this claim language).
Claim 6: the Fetch Stick video discloses a capture device support structure having an interior adapted to receive a capture device and an exterior to provide protection to the that capture device capture device and operably couple with the first means for securing a capture device (around 1:15 depicts the camera holder that meets this claim limitation).
Claim 7: the above combination renders obvious that at least two of the elongated piece, the bite apparatus, the first means for securing a capture device, and the second means for securing a capture device are modular and are adapted to include at least one connection mechanism between the pieces that are modular (see Ulanzi at 1:20 and 2:05, which show that the first and second means are modular).
Claim 10: the above combination does not disclose that in the first means for securing a capture device is a flexible piece that is malleable and allows a user adjust the flexible piece into a desired orientation. Official notice is taken that this type of camera mount was well known in the art before the effective filing date of the claimed invention. Therefore it would have been obvious to the POSITA to modify the Fetch Stick to include this in order to enable users to have more flexibility in aiming the camera.
Claim 11: the above combination does not disclose the bite apparatus is a bite plate having soft, rounded-tip silicone spikes with flavoring added within the silicone during manufacture. Official notice is taken that this was well known in the art before the effective filing date of the claimed invention. For example, dog chew toys with soft, rounded tip silicon spikes with incorporated flavoring were common. Therefore it would have been obvious to the POSITA to modify the Fetch Stick to include flavoring in the end that the animal holds in its mouth, the rationale being to further encourage the animal to engage with the device and to bite on the correct location of the stick.
Claim 12: the Fetch Stick video discloses a structure on the elongated piece that is adapted to couple with a consumer product (see 1:15).
Claim 13: the above combination does not disclose that the elongated piece includes a structure for receiving a consumer product featuring a peg-and-hole coupling mechanism including a quick-release button. Official notice is taken that this type of camera mount was well known in the art before the effective filing date of the claimed invention. Therefore it would have been obvious to the POSITA to modify the Fetch Stick to include this, the rationale being to simplify mounting the capture device.
Claim 14: Fetch Stick / Ulanzi, when modified as described in the rejection of claim 13, renders obvious that the structure for receiving a consumer product is the second means for securing a capture device. See rejection of claim 13 above.
Claim 15: the Fetch Stick video discloses that the bite apparatus, the elongated piece, and the first means for securing a capture device are arranged in a straight orientation in relation to the direction that the animal is facing (When the dog holds the stick in its mouth in a particular orientation, it will meet this claim. See the § 112(b) rejection of this claim above.).
Claim 17: the Fetch Stick-Ulanzi combination described above discloses a second means for securing a capture device located on the bite apparatus and not inside the animal's mouth while the animal engages with the bite apparatus. See rejection of claim 1 above.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over the Fetch Stick – Ulanzi combination described above, and further in view of Chen, US 10321756.
Claim 8: the above combination fails to disclose that the elongated piece and the bite apparatus are modular and may be disengaged from one another and individually attached to a flexible piece adapted to couple with a leg connection mechanism and a holder connection mechanism so that the flexible piece is between the legs and the holder, and wherein the flexible piece is malleable and allows a user adjust the flexible piece into a desired orientation.
But this claim is obvious in view of Fetch Stick, Ulanzi, and Chen. Chen describes a modular device holding apparatus, where a bottom end of the device and a device holder may be disengaged from one another and individually attached to a flexible piece adapted to couple with the bite apparatus connection mechanism and the elongated pieces connection mechanism so that the flexible piece is between the bite apparatus and the elongated piece, and wherein the flexible piece is malleable and allows a user adjust the flexible piece into a desired orientation (See Fig. 33 and its description. The gooseneck support is detachably connected to the base, and is malleable and allows the user to adjust the orientation of the device).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify the Fetch Stick with teachings in Chen, the rationale being to further enable greater user convenience in changing orientation of the camera.
Claim 9: Fetch Stick, Ulanzi, and Chen suggest that the elongated piece and the first means for securing a capture device are modular and may be disengaged from one another and individually attached to a flexible piece adapted to couple with the first means for securing a capture device connection mechanism and the elongated pieces connection mechanism so that the flexible piece is between the first means for securing a capture device and the elongated piece, and wherein the flexible piece is malleable and allows a user adjust the flexible piece into a desired orientation (see Chen Fig. 33 and its description and Ulanzi at 1:20 and 2:05. See also the rejection of claim 8 above).
Claim 16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fetch Stick video in view of GO 3 Pet Chewing Selfie Stick.
Claim 16: the above-described combination of Fetch Stick Video and GO 3 Pet Chewing Selfie Stick renders obvious an animal held media capture apparatus comprising: a bite apparatus having two distal ends and wherein one distal end is engaged by an animal and is adapted to encourage that engagement and promote retainment within the animal's mouth (see Fetch Stick Video at 1:00-1:15. See also the rejection of claim 1 above.);
a first means for securing a capture device on the other distal end of the bite apparatus not engaged by the animal and adapted to receive a capture device to provide media from the animal's point-of-view (Fetch Stick Video at 1:15. See rejection of claim 1); and
wherein the animal held media capture apparatus is made of animal safe materials (GO 3 Pet Chewing Selfie Stick pg. 1).
Claim 18: see rejection of claim 6.
Claim 19: see rejection of claim 3.
Claim 20: see rejection of claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/Reexamination Specialist, Art Unit 3992
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