DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
While there is an attorney listed, there is no power of attorney on file.
Status of Claims
As per the submission to the Office filed on 07/15/2026, the following represents the changes from the previous claims: Claim 1 was amended, Claims 10-17 were canceled. Claims 1-9 are presented for examination.
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 1-9 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.
For claim 1, the original disclosure does not state and/or provide support for: “without structurally contoured elements”.
Claim 2-9 are rejected as being dependent upon a rejected base claim.
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 1-9 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.
For claim 1, the limitation “said body being formed from a sheet of colored single-ply waterproof fabric without structurally contoured elements” in lines 5-6 is unclear as to how the body does not comprise of structurally contoured elements as the figures depict the body to comprise of various structurally contoured elements.
Claim 2-9 are rejected as being dependent upon a rejected base claim.
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.
Claims 1 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kuehr (US 9374983 B1) in view of Caruso (US 10231433 B1), Yates (US 6708650 B1) and Slater (US 9936677 B1).
Regarding claim 1, Kuehr teaches a dog training place holder system comprising: a place-holder unit comprising: a substantially rectangular body (12 and fig. 3 depicts the body to be substantially rectangular) having a planar configuration (fig. 3), a peripheral edge (peripheral edge of 12), a front edge (8), and opposing sides (5 and 6), said body being formed from a sheet of colored single-ply waterproof fabric (Col. 4, lines 4-7 and lines 25-35 as Kuehr states that the poncho is not restricted to a specific type of fabric and the fabric can be made of any type of construction, and so Kuehr teaches the poncho to be a single-ply waterproof fabric, and since the poncho is made of a fabric, it will be colored) without structurally contoured elements (figs. 1-2 and Col. 3, lines 58-60, Col. 4, lines 25-35 as the body is not restricted to a specific construction, and the poncho is a single-ply waterproof fabric, and so is without structurally contoured elements, and see 112b above); a low-profile binding (40) secured about the peripheral edge of the body (fig. 3); at least two fasteners (52 46) formed adjacent opposing corners of the front edge (fig. 3); and said body having a slit-shaped elongated leash opening (30) formed through the body a distance from the front edge of the body (fig. 3) and extending transversely to the front edge of the body (fig. 3), centrally between the two sides (fig. 3); and a hook and loop (Col. 3, lines 6-9) configured to engage the at least two fasteners and secure the opposing corners of the body when the place-holder unit is placed on a dog (figs. 1-2 and Col. 3, lines 6-9).
In the event that applicant disagrees with examiner’s interpretation of Kuehr teaching said body being formed from a sheet of single-ply fabric, Caruso teaches said body (12) being formed from a sheet of single-ply fabric (Col. 5, lines 25-26).
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 body of Kuehr to include wherein said body being formed from a sheet of single-ply fabric as taught by Caruso in order to make the body lightweight, unrestrictive, easier for the animal to use and inexpensive (Col. 3, lines 55-56, Col. 4, lines 39-41 and Col. 5, lines 23-26 of Caruso).
However, Kuehr is silent about grommets and a carabiner.
Yates teaches grommets (30 and 31).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the fasteners of Kuehr to be grommets as taught by Yates in order to enhance the securement of the body onto the animal (Col. 6, lines 18-26 of Yates).
Slater teaches a carabiner (Col. 4 lines 65- Col. 5 lines 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the fasteners of Kuehr as modified by Caruso and Yates with a carabiner as taught by Slater in order to easily facilitate an attachment and detachment of the place-holder unit on the animal by using a single hand.
Regarding claim 8, Kuehr as modified by Caruso, Yates and Slater teaches the dog training place holder system of claim 1, and Kuehr as modified by Caruso, Yates and Slater further teaches where said colored single-ply waterproof fabric (Col. 4, lines 4-7 of Kuehr and Col. 5, lines 25-26 of Caruso) further comprises a non-woven synthetic material (Col. 5, lines 25-26 Caruso states that the single-ply fabric is made of a sheet of a single layer of semi-rigid twenty gauge polycarbonate which is known to be made from non-woven synthetic material).
Regarding claim 9, Kuehr as modified by Caruso, Yates and Slater teaches the dog training place holder system of claim 1, Kuehr further teaches where said low-profile binding and said colored single-ply waterproof fabric are formed from a material that facilitates recognition by a dog (Col. 4, lines 4-7 and 25-35 as the low- profile binding and said colored single-ply waterproof fabric is not limited to a specific material and construction, and so Kuehr teaches a material that facilitates recognition by a dog).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kuehr as modified by Caruso, Yates and Slater as applied to claim 1 above, and further in view of Kath (US 20190373860 A1).
Regarding claim 2, Kuehr as modified by Caruso, Yates and Slater teaches the dog training place holder system of claim 1, and Kuehr as modified by Caruso, Yates and Slater further teaches said colored (Col. 4, lines 4-7 and lines 25-35 of Kuehr as the poncho is made of a fabric, and so is colored) single-ply waterproof fabric (Col. 4, lines 4-7 and lines 25-35 as Kuehr states that the poncho is not restricted to a specific type of fabric and the fabric can be made of any type of construction, and so Kuehr teaches the poncho to be a single-ply waterproof fabric, and Col. 5, lines 25-26 of Caruso).
However, Kuehr as modified by Caruso, Yates and Slater does not explicitly state where said colored waterproof fabric is colored blue.
Kath teaches where said colored waterproof fabric is colored blue ([0012]).
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 colored waterproof fabric of Kuehr as modified by Caruso, Yates and Slater to be blue in order to allow for the dog to easily identify the body as it is known that blue is one of the colors that dogs see the best.
Regarding claim 3, Kuehr as modified by Caruso, Yates and Slater teaches the dog training place holder system of claim 1, and Kuehr as modified by Caruso, Yates and Slater further teaches said colored (Col. 4, lines 4-7 and lines 25-35 of Kuehr as the poncho is made of a fabric, and so is colored) single-ply waterproof fabric (Col. 4, lines 4-7 and lines 25-35 as Kuehr states that the poncho is not restricted to a specific type of fabric and the fabric can be made of any type of construction, and so Kuehr teaches the poncho to be a single-ply waterproof fabric, and Col. 5, lines 25-26 of Caruso).
However, Kuehr as modified by Caruso, Yates and Slater does not explicitly state where said colored waterproof fabric is colored yellow.
Kath teaches where said colored waterproof fabric is colored yellow ([0012]).
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 colored waterproof fabric of Kuehr as modified by Caruso, Yates and Slater to be yellow in order to allow for the dog to easily identify the body as it is known that yellow is one of the colors that dogs see the best.
Regarding claim 4, Kuehr as modified by Caruso, Yates and Slater teaches the dog training place holder system of claim 1, and Kuehr as modified by Caruso, Yates and Slater further teaches said colored (Col. 4, lines 4-7 and lines 25-35 of Kuehr as the poncho is made of a fabric, and so is colored) single-ply waterproof fabric (Col. 4, lines 4-7 and lines 25-35 as Kuehr states that the poncho is not restricted to a specific type of fabric and the fabric can be made of any type of construction, and so Kuehr teaches the poncho to be a single-ply waterproof fabric, and Col. 5, lines 25-26 of Caruso).
However, Kuehr as modified by Caruso, Yates and Slater does not explicitly state where said colored waterproof fabric is colored blue and yellow.
Kath teaches where said colored waterproof fabric is colored blue and yellow ([0012]).
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 colored waterproof fabric of Kuehr as modified by Caruso, Yates and Slater to be blue and yellow in order to allow for the dog to easily identify the body as it is known that blue and yellow are the colors that dogs see the best.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kuehr as modified by Caruso, Yates and Slater as applied to claim 1 above, and further in view of Dost (US 6637367 B1).
Regarding claim 5, Kuehr as modified by Caruso, Yates and Slater teaches the dog training place holder system of claim 1, but is silent about further comprising a carry pouch.
Dost teaches a carry pouch (Col. 3, lines 4-5 and fig. 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a carry pouch as taught by Dost into the apparatus of Kuehr as modified by Caruso, Yates and Slater in order for the user to carry the pouch (Col. 3, lines 30-33 of Dost).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kuehr as modified by Caruso, Yates and Slater as applied to claim 1 above, and further in view of Cheng (US 20100206247 A1).
Regarding claim 6, Kuehr as modified by Caruso, Yates and Slater teaches the dog training place holder system of claim 1, and Kuehr further teaches further comprising a selectively positionable cinch strap (20, 48 and 50) configured for placement over said body when said body is placed in a covering position on a dog (figs. 1-2).
However, Kuehr as modified by Caruso, Yates and Slater is silent about a separate selectively positionable cinch strap.
Cheng teaches a separate selectively positionable cinch strap (250 and 252 and [0026]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a separate selectively positionable cinch strap as taught by Cheng into the apparatus of Kuehr as modified by Caruso, Yates and Slater in order to adjust the placement of the strap based on the size of the animal ([0027] of Cheng).
In the event that the applicant disagrees with the examiner’s interpretation of Cheng teaching the cinch strap to be separate, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the cinch strap of Kuehr as modified by Caruso, Yates, Slater and Cheng to be separate, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art (in order to adjust the placement of the strap based on the size of the animal ([0027] of Cheng). Nerwin v. Erlichman, 168 USPQ 177,179.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kuehr as modified by Caruso, Yates and Slater as applied to claim 1 above, and further in view of Hurwitz (US 20100277945 A1).
Regarding claim 7, Kuehr as modified by Caruso, Yates and Slater teaches the dog training place holder system of claim 1, but is silent about further comprising an attachable banner.
Hurwitz teaches further comprising an attachable banner ([0011]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include an attachable banner as taught by Hurwitz into the apparatus of Kuehr as modified by Caruso, Yates and Slater in order allow the user to customize the cover around the animal ([0011] of Hurwitz).
Response to Arguments
Applicant’s arguments with respect to claim(s) 07/15/2026 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.
Applicant argues “Applicant respectfully traverses and submits to establish a prima facie case of obviousness, the PTO must show "some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references." In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); Tec Air, Inc. v. Denso Mfg. Michigan, Inc., 192 F.3d 1353 (Fed. Cir. 1999). There is no suggestion to combine, however, if a reference teaches away from its combination with another source. See In re Fine at 1075. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant ... [or] if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Importantly, if when combined, the references "would produce a seemingly inoperative device," then they teach away from their combination. In re Sponnoble, 405 F.2d 578, 587 (Fed. Cir. 1969); see also In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) (finding no suggestion to modify a prior art device where the modification would render the device inoperable for its intended purpose); Ex parte Esquivel, No. 2009-1392 (BPAI 2009) (finding that Examiner failed to establish a prima facie case of obviousness where Examiner's combination of references to meet a claimed limitation would render one of the references unsatisfactory for its intended purpose); Ex parte Seyyedy, No. 2009-1696 (BPAI 2009) (finding that Examiner failed to establish obviousness where the cited references were based on disparate principles of operation).
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L Gore & Associates, Inc. v. Garlock, Inc., 712 F.2d 1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). MPEP 2142.02.VI: "prior art must be considered in its entirety, including disclosures that teach away from the claims."
Furthermore, "if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious." In re Ratti, 270 F.2d 810 (Fed. Cir. 1959) (emphasis added). See KSR Int'1 Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007) ("[W]hen the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be non-obvious.").
MPEP 2143.01 states: If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984); In re Chen (Appeal No. 2013-000462).
The mere fact that references can be combined or modified does not render the resultant combination obvious unless the prior art also suggests the desirability of the combination. In re Mills, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990). Examiner's main position that modifications of the prior art to meet the claimed invention would have been "well within the ordinary skill of the art at the time the claimed invention was made" because the references relied upon teach that all aspects of the claimed invention were individually known in the art is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993). See also In re Kotzab, 217 F.3d 1365, 1371, 55 USPQ2d 1313, 1318 (Fed. Cir. 2000).
As stated in In re Carroll: "In deciding obviousness, one must look at the prior art from the vantage point in time prior to when the invention was made; hindsight obviousness after the invention was made is not the test." 601 F.2d 1184 (C.C.P.A. 1979). See also In re Shaffer, 229 F.2d 476 (C.C.P.A. 1956). Therefore, the Federal Circuit has consistently held that a person of ordinary skill in the art must not only have had some motivation to combine the prior art teachings, but some motivation to combine the prior art teachings in the particular manner claimed. See, e.g., In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) ("Particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed."); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) ("In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed."). Teleflex v. KSR International, 04-1152 (CAFC 2005).
Using an applicant's disclosure as a blueprint to reconstruct a claimed invention from isolated pieces of prior art contravenes the statutory mandate of Section 103, which requires judging obviousness at the point in time when the invention was made. See Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988).
Applying these standards to the instant case, Applicant respectfully submits that the object of the instant invention is to provide a lightweight, removable, planar placeholder that visually marks a dog's position, can be used as an inclement-weather cover for the dog while secured on the dog. See paragraph [00013]. This objective is achieved by providing the planar body formed from a single-ply fabric without molded or structurally contoured elements. The claimed body is a substantially rectangular single-ply, planar sheet with a continuous peripheral binding and without structurally contoured elements. The slit in the planar body allows a leash to pass through the mat without bunching or deforming the mat.”.
The examiner respectfully disagrees. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant further argues “The claimed placeholder unit has no neck cutout, no shaping, and no contouring. It is a flat, continuous rectangle with a peripheral low-profile binding, which acts as edge finishing. In contrast, Kuehr's trim 40 is used to secure multiple layers of fabric. It forms contoured garment edges; it is part of garment construction, not sheet finishing; it does not run around a continuous rectangular periphery; and it does not apply to a single-ply planar sheet.”.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “no neck cutout, no shaping,” and “a flat, continuous rectangle”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Also, the “no contouring” raises a 112(a) and 112(b) rejection as the amendment “without structurally contoured elements” is new matter because there is no support for this amendment in the original disclosure. Also, the amendment “without structurally contoured elements” raises a 112(b) rejection because it is unclear as to how the body does not comprise of structurally contoured elements when the figures clearly depicts the body to comprise of various structurally contoured elements around the grommets and the low-profile binding.
Also, Kuehr teaches said body being formed from a single-ply waterproof fabric (Col. 4, lines 4-7 and lines 25-35) as Kuehr states that the poncho is not restricted to a specific type of fabric and the fabric can be made of any type of construction, and so Kuehr teaches the poncho to be a single-ply waterproof fabric, and since the poncho is made of a fabric, it will be colored.
Also, Kuehr still teaches the body to be without structurally contoured elements as figs. 1-2 and Col. 3, lines 58-60, Col. 4, lines 25-35 depicts the body to not be restricted to a specific construction and that the addition of strap 44 is optional.
Applicant further argues “This is a reinforced, multi-layer, structurally contoured garment region, not a slit in planar sheet, as claimed in claim 1. The webbing strap 44 of Kuehr is added material, not an opening; it is stitched to the garment. It creates a reinforced, load-bearing region supporting a loop 26 (hardware). This feature is part of a multi-layer garment construction. The buttonhole 30 of Kuehr is a garment feature allowing a leash to pass through to a harness. It is part of a multi-layer, sewn garment, it is not transverse to a front edge of a planar body formed as a planar sheet. To meet the slit limitation of instant claim 1, one would have to remove Kuehr's webbing strap 44, remove loop 26, remove buttonhole 30, remove the reinforcement, flatten the garment, replace the reinforced region with a transverse slit formed in a single-ply planar body. Nothing in Kuehr suggests these modifications. Examiner's suggested interpretation of Kuehr's teaching is impermissible hindsight.”.
The examiner respectfully disagrees. See rejection above as Kuehr teaches a single-ply waterproof fabric, and Caruso is also relied upon to teach said body (12) being formed from a sheet of single-ply fabric (Col. 5, lines 25-26).
Also, Kuehr still teaches the body to be without structurally contoured elements as figs. 1-2 and Col. 3, lines 58-60, Col. 4, lines 25-35 depicts the body to not be restricted to a specific construction and that the addition of strap 44 is optional.
Applicant further argues “Thus, Kuehr fails to disclose at least the following claimed features of claim 1:
" A substantially rectangular body. Instead, Kuehr teaches a U-shaped body.
" The front edge of the rectangular body. In Kuehr, the front edge of the dog's hooded
poncho is formed by unnumbered front edges of the extenders 24, as can be seen in Kuehr's Figure 3.
" Said body being formed from a sheet of colored single-ply waterproof fabric. Kuehr fails to teach the use of colored fabric. The Examiner's suggestion that "the poncho is capable of being a single-ply waterproof fabric that is colored" is improper on its face. When the prior art is missing a structural feature, merely asserting the prior art is capable of including that structural feature, without more is not enough. A claim reciting structural features is
not properly rejected by prior art merely capable of having the missing structural feature
added to it. MPEP 2114.
"A low-profile binding (40) secured about the peripheral edge of the body. Kuehr uses the peripheral binding only when the poncho has a lining: "If a lining is employed, the lining and waterproof outer fabric can be sewn or otherwise bound by tape and the like forming trim 40." Col. 4, lines 9-11. The single-ply embodiment of Kuehr does not have a trim/binding. Thus, if the Examiner uses the single-ply embodiment to correspond to the claimed invention, then the structural element of binding is not present in the cited prior
art.
" At least two fasteners formed adjacent opposing front corners of the body. The Examiner identified the cutout in the poncho 10 of Kuehr as having a front edge 8. However, the fasteners 46, 52 of Kuehr are not formed adjacent the cutout edge 8 but are sewn to the extenders 24. Thus, Kuehr fails to teach a structural limitation of "the at least two grommets formed adjacent opposing corners of the front edge."
" A slit-shaped elongated leash opening formed through the planar single-ply body.”.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues “Even assuming that the front edge of the poncho is formed by the forward ends of the extenders 24, Kuehr uses hook and ioop fasteners 46, 52 to attach the extenders to one another. Col. 3, lines 6 - 12. The mere presence of grommets on the ends of the straps in Yates does not establish obviousness of the instant claims because there is nothing in Kuehr or Yates points to the desirability or possibility of the suggested combination. The suggested combination is the product of impermissible hindsight reconstruction.
Besides, Yates does not cure Kuehr's deficiencies. Yates discloses a pet garment with grommets for leash attachment. It does not disclose a planar rectangular sheet, a single-ply body, a transverse slit-shaped leash opening, a carabiner securing two corners of a sheet, nor a peripheral binding on a planar sheet. In effect, Yates reinforces the garment-based nature of the combination and does not cure the deficiencies of the primary cited reference. Neither reference teaches or suggests a rectangular planar body formed without structurally contoured elements.”.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
As stated above, the fasteners of Kuehr would be substituted with the grommets as taught by Yates in order to enhance the securement of the body onto the animal (Col. 6, lines 18-26 of Yates). Therefore, the applicant has not provided sufficient evidence as to how Kuehr would not be able to be modified with Yates.
Applicant further argues “Nothing in Slater suggests corner-to-corner engagement of the rectangular planar body by a carabiner. Slater's carabiner is used to attach straps to a body component, not to join corners of a sheet. Slater has no grommet-to grommet engagement. Instead, Slater's structure includes a body component 10, straps 31, 32, and fasteners for attaching the straps to the body component. Just like Kuehr and Yates, Slater fails to teach a single-ply sheet, opposing corners, grommets at those corners, a carabiner engaging both grommets, and a placeholder unit placed on a dog.”.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues “As to claim 9, the Examiner relies on Kuehr, col. 4, lines 5 - 7: "As is quite apparent, the present clothing article can be employed as a rain poncho with a sturdy rain hood which can be selectively applied to head 1 of dog 10 as needed. Torso portion 12 can simply consist of a water repellent fabric or could be lined with a soft and warm fabric such as fleece in regions where extreme cold conditions are at issue." Applicant respectfully submits that claim 9 is not about water repellant material. The Examiner's citation to Kuehr's waterproof fabric, fleece lining, and trim does not teach or suggest the functional limitation of claim 9 - a material that "facilitates recognition by a dog." None of the cited references address canine behavioral recognition. Since Examiner employed impermissible hindsight reconstruction in the rejection of claim 9, prima facie obviousness of claim 9 has not been established. See In re Carroll, 601 F.2d 1184 (C.C.P.A. 1979)”.
The examiner respectfully disagrees. As stated above, Kuehr teaches a material that facilitates recognition by a dog (Col. 4, lines 4-7 and 25-35) as the low- profile binding and said colored single-ply waterproof fabric is not limited to a specific material and construction, and so Kuehr teaches a material that facilitates recognition by a dog.
Applicant further argues “These are human-recognized fabric patterns and fashion choices, not canine recognition- oriented choices. Nothing in this paragraph suggests selecting blue or yellow, or blue/yellow because dogs see blue and yellow, or selecting any color for canine easy recognition, or selecting color materials for training purposes. The Examiner is reading a purpose into Kath catalog of fabric patterns that is not there. Kath's disclosure of a fabric-and-pattern list for a wearable harness, not a teaching of selecting blue for a planar placeholder sheet used in positional dog training. Kath does not provide a motivation to modify Kuehr/Yates/Slater to include the claimed blue coloration, and the structural configuration of claim 1 remains missing. Because Examiner employed impermissible hindsight reconstruction in the rejection of claims 2 - 4, prima facie obviousness of claims 2-4 has not been established. See In re Carroll, 601 F.2d 1184 (C.C.P.A. 1979). Reconsideration and withdrawal of the rejection of claims 2 - 4 under Section 103 is respectfully requested.”.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Also, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
It is well known that blue and yellow are colors that dogs see, and Kath uses blue and yellow for the colored waterproof fabric that the dog wears ([0012] of Kath).
Applicant further argues “claim makes it clear that Cheng's detachable straps 250, 252 are part of the torso cover,not "a separate selectively positionable cinch strap configured for placement over said body when said body is placed in a covering position on a dog," as recited in instant claim 6. "Detachable" does not mean that the straps are "selectively positionable independent of the raincoat."
Kuehr teaches a belly strap 20 that is affixed at one end to the torso cover. See, claim 8 of Kuehr and Fig. 3. The belly strap is integrated into the garment's construction; it is used to secure the garment around the dog's torso. The belly strap 20 is a structural component of a wearable garment, not a separate accessory, as claimed in claim 6. In contrast, the cinch strap of the instant invention is a separate accessory positioned over a planar sheet when it is placed on the dog. The structure, function and context are different, and Examiner failed to articulate any motivation for a POSITA to replace the fixedly attached belly strap 20 of Kuehr with a separately positionable strap.
Thus, Nerwin v. Erlichman does not apply. Nerwin only applies when the prior art discloses the same structure (albeit made of separate components), performing the same function and used for the same purpose. Kuehr's belly strap 20 is a garment strap; Cheng's straps 250, 252 are part of contoured raincoat. Nerwin cannot be used to justify removing Cheng's straps from a raincoat and converting them into separate accessories that can be used for a different purpose.
Furthermore, since the instant wearable mat is designed to also serve as a place holder mat for a dog to lie down or sit, the permanently attached Kuehr's belly strap and the loop will present an opportunity for a dog to chew the garment, resulting in potential harm to the animal. Thus, it is not a mere design choice but a real-life situation that must be taken into account when designing such items for an animal.”.
The examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Also, Cheng teaches a separate selectively positionable cinch strap as the cinch strap 250 and 252 is detachable and can be attached to 220, 222, 230, 232, 240 and 242 as stated in [0026-0027] as 220, 222, 230, 232, 240 and 242 receives the cinch strap.
The applicant further argues “Because replacing the permanently attached belly strap and loop of Kuehr with a separately positionable strap will require complete redesign of Kuehr and since "the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, the teachings of the references are not sufficient to render the claims prima facie obvious." In re Ratti, 270 F.2d 810 (Fed. Cir. 1959) (emphasis added). See KSR Int'1 Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007) ("[W]hen the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be non-obvious."). The applicant respectfully requests reconsideration and withdrawal of the rejection of claim 6.”.
The examiner respectfully disagrees as Kuehr would not require a complete redesign, as one of ordinary skill in the art would modify the selectively positionable cinch strap of Kuehr to be separate in order to adjust the placement of the strap based on the size of the animal ([0027] of Cheng).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). There is no reasoning as to why Kuehr would not be capable of having the selectively positionable cinch strap to be separate as taught by Cheng.
The applicant further argues “There must be an articulated reasoning why the suggested combination would be considered by a POSITA and how such combination could be executed, considering that Kuehr teaches a raincoat for a dog, Yates teaches a harness made of narrow strips and Slater teaches a protective apparel for an animal. Making holes to add detachable decorations as taught by Hurwitz will make the raincoat and protective cover unsuitable for their intended purposes. Absent such critical reasoning, prima facie obviousness of claim 7 cannot be established.
Further, Hurwitz teaches away from the functionality and stated purpose of Kuehr.
Hurwitz's apertures 555 and 565 are large enough to accept a button shaft 556; they are designed
for snap-fit or cap-fit retention; they are intended to house LED-capable decorative attachments.
These are big holes that would turn Kuehr's raincoat into a sieve - water enters through every
aperture, the poncho loses its weatherproof function, and the garment fails its stated purpose. The suggested modification contradicts the functionality of the primary reference. Under KSR, a modification that defeats the primary purpose of the reference is not a predictable variation - it is a teaching away.”.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Simply that there are differences between two references is insufficient to establish that such references "teach away" from any combination thereof. In re Beattie, 974 F.2d 1309, 1312-13, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
Examiner would also like to state that the argument that “These are big holes that would turn Kuehr's raincoat into a sieve - water enters through every aperture, the poncho loses its weatherproof function, and the garment fails its stated purpose.” is unpersuasive as Kuehr teaches a slit opening to allow a leash to pass through and the body of Hurwitz is water repellent despite the apertures ([0011]) and so the argument that “These are big holes that would turn Kuehr's raincoat into a sieve - water enters through every aperture, the poncho loses its weatherproof function, and the garment fails its stated purpose.” is unpersuasive.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAHAR ALMATRAHI whose telephone number is (571)272-2470. The examiner can normally be reached M-F 7:30-5:30.
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/SAHAR ALMATRAHI/Examiner, Art Unit 3643
/DAVID J PARSLEY/Primary Examiner, Art Unit 3643
