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 .
This is the first Office Action on the merits. Claims 1-20 are currently pending, with claims 12-20 withdrawn from consideration and claims 1-11 considered.
Election/Restrictions
Applicant's election with traverse of Species A in the reply filed on 05/07/2026 is acknowledged. The traversal is on the grounds that the Restriction is improper because:
the Examiner has “failed to identify which claims are readable on each species, as expressly required” (Election Response, page 2),
“A restriction requirement must be based on claimed inventions, not merely disclosed by unclaimed subject matter. The inclusion of an unclaimed species as basis for restriction renders the requirement procedurally improper” (Election Response, pages 2-3), and
“Species A and Species C are not patentably distinct” (Election Response, pages 4-5).
Regarding Applicant’s assertion that the Examiner has failed to identify the claims readable on each species, MPEP § 809.02(a) states that a complete response to the Restriction Requirement by Applicant must include “identification of the claims encompassing the elected species or grouping of patentably indistinct species” (see also MPEP § 806.04). Thus, Applicant bears the burden of identifying the claims readable on each species, not the Examiner. The Examiner, in the Requirement for Restriction dated 02/09/2026, had indicated that independent claim 1 is generic, as it is readable on Species A, B, and C. It is further noted that Applicant states that “no claims are directed to Species B” as claims 1-11 “are directed to a two-piece nut and screw module constriction” (Election Response, pages 2-3). The Examiner respectfully disagrees. While Species B is directed to a three-piece cat toy, claim 1 still reads on Species B because Species B includes a nut module and a screw module that are removably joined by threaded engagement to form a clamping mechanism configured to frictionally secure one or more materials. Claim 1 has an open claim construction and does not limit the cat toy to “two-pieces”.
In response to Applicant’s assertion that a restriction requirement must be based on claimed inventions, not merely disclosed by unclaimed subject matter, this is incorrect. MPEP § 809.02(a) states that when an Election of Species is required, the requirement asks Applicant to elect “a single disclosed species”, not a “claimed” species. In this case, Species B is both disclosed and is readable by independent claim 1, as addressed above.
In response to Applicant’s assertion that Species A and Species C are not patently distinct, the Examiner respectfully disagrees. As detailed in the Requirement for Restriction dated 02/09/2026, Species C is shaped like a mouse with a sloped shaped head portion attached by a connector to a solid, flat bottom plate with an opening for a screw module. The body and plate are folded about the connector to alight and couple to the body of the plate. Further, this embodiment only allows for a single feather-retaining element. Species C is not an obvious variant of Species A.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/07/2026.
Claim Rejections - 35 USC § 112(b)
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.
Claim 10 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 10 is indefinite because it is not clear if the inserted materials are being positively recited as a part of the system in view of independent claim 1. Independent claim 1 only states that the nut and screw modules are “configured to frictionally secure one or more feathers or other materials inserted through the feather-retaining holes”.
In view of the rejections above under 35 USC § 112, the claims referred to in any and all rejections below are rejected as best understood.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, 8, and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peter et al. (US 20090217885 A1), hereafter referred to as “Peter”.
Regarding claim 1, Peter discloses a refillable cat toy (10; figs. 1-6) comprising:
a nut module (20) comprising one or more feather-retaining holes (openings formed at 45, between elements 15 and 20 when assembled; figs. 1, 3-4);
a screw module (15; fig. 2) comprising external threads (25; fig. 2); and
wherein the nut module and the screw module are removably joined by threaded engagement (figs. 1 and 4) to form a clamping mechanism (paragraph [0007]) configured to frictionally secure one or more feathers or other materials inserted through the feather-retaining holes (fig. 4 and paragraph [0007] teaching that 10 is configured to hold feathers and other materials inserted through the opening formed at 45, between elements 15 and 20 when assembled).
Regarding claim 5, Peter discloses the refillable cat toy of claim 1, and further discloses that the external threads (25) of the screw module (15) and the recess (30) of the nut (20) combine to secure inserted materials during assembly (paragraphs [0007] and [0015] and figs. 1-4).
Regarding claim 8, Peter discloses the refillable cat toy of claim 1, and further discloses thatc the toy is configured to accommodate catnip within an interior cavity of the nut module (cavities formed within elements 45 and 50 would be able to hold solid forms of catnip figs. 2-3).
Regarding claim 10, Peter discloses the refillable cat toy of claim 1, and further discloses that the inserted material includes one or more of the following: string, plastic strands, textile, crinkle paper, leather, faux fur, or paper (10 is configured to be able to hold the listed materials above; figs. 1-4).
Regarding claim 11, Peter discloses the refillable cat toy of claim 1, and further discloses that the assembled toy is further configured for standalone fetch play independent of a string or pole (figs. 1 and 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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Peter as applied to claim 1 above, and further in view of Fortino (US 20220142123 A1), hereafter referred to as “Fortino”.
Regarding claim 2, Peter teaches the refillable cat toy of claim 1, but does not explicitly teach that the screw module comprises a top loop or cut-out portion configured for direct attachment to a cat wand or pole.
Fortino teaches a toy (figs. 1-8) including a top loop (30) configured for direct attachment to a cat wand or pole (fig. 2 and paragraph [0058]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the toy of Peter, such that the screw module comprises a top loop configured for direct attachment to a cat wand or pole, as taught by Fortino, in order to allow the toy to be easily clipped to or carried by a user or animal (paragraph [0009] of Fortino).
Regarding claim 3, Peter teaches the refillable cat toy of claim 1, but does not explicitly teach that the screw module comprises a top loop or cut-out portion configured for indirect attachment to a cat wand or pole via a string.
Fortino teaches a toy (figs. 1-8) including a top loop (30) configured for indirect attachment to a cat wand or pole (fig. 2 and paragraph [0058]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the toy of Peter, such that the screw module comprises a top loop configured for indirect attachment to a cat wand or pole, as taught by Fortino, in order to allow the toy to be easily clipped to or carried by a user or animal (paragraph [0009] of Fortino).
Claim 4 are rejected under 35 U.S.C. 103 as being unpatentable over Peter as applied to claim 1 above.
Regarding claim 4, Peter teaches the refillable cat toy of claim 1, and further teaches two feather-retaining holes (45; figs. 2-3), but does not explicitly teach that the nut module comprises three feather-retaining holes positioned to mimic helicopter and tail-feather toy designs.
It is well settled, however, that that a mere duplication of the essential working parts of a
device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. It
would have been obvious to one having ordinary skill in the art before the effective filing date of
the claimed invention to modify the toy of Peter to include a third feather-retaining hole such that the nut module comprises three feather-retaining holes positioned to mimic helicopter and tail-feather toy designs, in order to accommodate chews of different sizes and shapes (paragraph [0015] of Peter).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Peter as applied to claim 1 above, and further in view of Aboujaoude (US 20130061816 A1), hereafter referred to as “Aboujaoude”.
Regarding claim 6, Peter teaches the refillable cat toy of claim 1, but does not explicitly teach that the nut module includes open and close rotational indicators marked on its outer surface.
Aboujaoude teaches a pet toy (figs. 1-10) including a rotatable module (10) including open and close rotational indicators (55; paragraph [0030]) marked on its outer surface (fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the toy of Peter, such that the nut module includes open and close rotational indicators marked on its outer surface, as taught by Aboujaoude, in order to indicate to the user which direction the pieces need to be rotated to open (paragraph [0030] of Aboujaoude).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Peter as applied to claim 1 above, and further in view of Markham (US 20230337632 A1), hereafter referred to as “Markham”.
Regarding claim 7, Peter teaches the refillable cat toy of claim 1, but does not explicitly teach that the toy has an assembled size of approximately 2 cm by 2 cm and a weight between 3 and 6 grams.
Markham teaches a pet toy (figs. 1-6) with an assembled size of 2.5 inches and 8 ounces (claim 9, paragraph [0052]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the toy of Peter, such that the toy has an assembled size of 2.5 inches and 8 ounces, as taught by Markham, in order to accommodate the size and breed of the pet (paragraph [0008]-[0009] of Markham).
Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the toy of Peter, such that the toy has an assembled size of approximately 2 cm by 2 cm and a weight between 3 and 6 grams, in order to accommodate the size and breed of a smaller pet (paragraph [0008]-[0009] of Markham).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Peter as applied to claim 1 above, and further in view of Mullin et al. (US 12342793 B1), hereafter referred to as “Mullin”.
Regarding claim 9, Peter teaches the refillable cat toy of claim 1, but does not explicitly teach that the nut module and screw module are manufactured by plastic injection molding.
Mullin teaches a pet toy (figs. 1-43) including a nut module (104; fig. 3) and screw module (112; fig. 3) are manufactured by plastic injection molding (col. 13, lines 22-27 and 35-42).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the toy of Peter, such that the nut module and screw modules are manufactured by plastic injection molding, as taught by Mullin, in order to provide a semi-rigid and flexible material suitable for pets for mass production (col. 13, lines 22-27 and 35-42 of Mullin).
Conclusion
The cited prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure. The references have many of the elements in the applicant’s disclosure and claims. US 9861077 B2, US 5343828 A, and US 20170303508 A1 teach similar pet toys with a screw module and nut module with a clamping force and openings capable of holding feathers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jessica Byun whose telephone number is (571) 272-3212. The examiner can normally be reached Monday - Friday, 9:00 AM - 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached on (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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/H.J.B./Examiner, Art Unit 3643
/MARISA V CONLON/Examiner, Art Unit 3643
