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 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, 3, 5-6, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Zur (US 20260041061 A1, as cited on previous 892) in view of Ma (CN 222170892 U, as cited on previous 892), hereinafter referred to as Zur and Ma, respectively, as best understood in light of the 112(b) issues addressed above.
Regarding claim 1:
Zur discloses a toy ball (ball assembly 10, Fig 1), comprising:
an elastic shell (outer shell 12, Fig 1; ¶0044) defining a receiving cavity (shell interior 19, Fig 2); and
an actuation module (inner control assembly 18, Fig 2) configured to provide a driving force, mounted in the receiving cavity (see Fig 2) and detachably connected to the elastic shell (¶0044);
wherein the elastic shell a hard inner layer defining the receiving cavity and an elastic outer layer covering an outer side of the hard inner layer, and the elastic layer comprises rubber/silicone or other soft material, the elastic outer layer is bonded to the outer side of the hard inner layer (¶0044; Figs 1, 2, and 5)
Zur fails to disclose wherein the elastic outer layer comprises expanded thermoplastic polyurethane (E-TPU).
Ma discloses a multi-layer elastic pet toy shell a hard plastic inner layer and an elastic outer layer comprising expanded thermoplastic polyurethane (E-TPU) (claim 10).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have formed the soft elastic outer layer of Zur of ETPU, rather than rubber, as in Ma, the result having a reasonable expectation of success. One would have been motivated to make this modification based on animal chew preference and ability, and as in Ma, ETPU has good elastic wear resistance, tearing and biting resistance, and is safe and non-toxic (Pg 3, ¶1). Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 3:
Zur as modified discloses the limitations of claim 1 above and further discloses wherein a portion of the hard inner layer and a portion of the elastic outer layer form a first half shell (second outer shell portion 16, Fig 2), and another portion of the hard inner layer and another portion of the elastic outer layer form a second half shell (first outer shell portion 14, Fig 2) the first half shell and the second half shell are threadably 9connected to each other to enclose the receiving cavity (¶0006; see Fig 2).
Regarding claim 5:
Zur as modified discloses the limitations of claim 3 above and further discloses wherein an inner side of each of the first half shell and the second half shell defines a positioning hole (aperture in receiver members 46a and 46b, in which protrusion members 44a-44b are engaged, Fig 5), the actuation module comprises two positioning posts (protrusion members 44a-44b, Fig 5), and the two positioning posts are respectively engaged with the positioning hole of the first half shell and the positioning hole of the second half shell thereby detachably connecting the actuation module to the elastic shell (see Figs 2 and 5).
Regarding claim 6:
Zur as modified discloses the limitations of claim 5 above and further discloses wherein the positioning hole of the first half shell and the positioning hole of the second half shell have different shapes (see Figs 2-5; ¶0038).
Regarding claim 14:
Zur as modified discloses the limitations of claim 1 above and further discloses wherein an outer surface of the elastic shell comprises at least one groove (groove 20, Fig 1).
Regarding claim 16:
Zur as modified discloses the limitations of claim 3 above.
Although Zur, as filed 07/17/2025, seems to teach the engagement portions as in claim 2 (see Fig 5), the provisional application, whose priority date is relied upon for consideration of Zur as prior art, fails to specifically display or disclose wherein the hard inner layer of the first half shell protrudes from a side facing away from the receiving cavity to form a first engagement portion, the first engagement portion is embedded into the elastic outer layer of the first half shell, the elastic outer layer of the second half shell protrudes from a side facing away from the receiving cavity to form a second engagement portion, the second engagement portion is embedded into the hard inner layer of the second half shell.
Regardless, Ma, as best understood, further contemplates engagement portions of the hard inner layer, extending away from the receiving cavity, on either half shell, and embedding into the elastic outer layer (see projections 302, Fig 5; see also Fig 2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided engagement portions between the hard inner layer and elastic outer layer of Zur, as in Ma, the result having a reasonable expectation of success. One would have been motivated to make such a modification in order to make the connection between the layers more secure, thereby making it harder for an animal to remove the upper layer from the lower layer, an event which may be dangerous.
Claims 4 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Zur and Ma, as applied to claim 3 above, further in view of Shi (CN 208783507 U, as cited on previous 892), hereinafter referred to as Shi.
Regarding claim 4:
Zur as modified discloses the limitations of claim 3 above.
Zur as modified fails to specifically disclose a waterproof ring, wherein the waterproof ring is disposed at a threaded connection between the first half shell and the second half shell.
Shi discloses a similar two-piece pet toy ball with a waterproof ring disposed at a threaded connection between the first half shell and the second half shell (rubber ring 13, Fig 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided a rubber ring bellow the threads, at the threaded connection between the first half shell and second half shell of Zur, as in Shi, the result having a reasonable expectation of success. One would have been motivated to make this modification because, as disclosed in Shi, the ring helps improve the tightness/seal of the connection between the two half shells, and may help to prevent damage between the shells during movement (Pg 5, ¶4).
Regarding claim 18:
The modified reference discloses the limitations of claim 4 above and Shi further discloses wherein the second half shell defines an installation groove adjacent to an external thread, the waterproof ring is received in the installation groove and configured to seal the receiving cavity when the first half shell and the second half shell are connected (see Figs 4-5; Pg 5, ¶4).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zur and Ma, as applied to claim 5 above, further in view of Xie (WO 2020211163 A1, as cited on previous 892), hereinafter referred to as Xie.
Regarding claim 7:
Zur as modified discloses the limitations of claim 6 above and further discloses wherein the positioning hole of the first half shell has a circular cross-section, the positioning hole of the second half shell has a square cross-section (see Figs 2 and 4; ¶0038), the actuation module comprises a first positioning post and a second positioning post on opposite sides of the actuation module respectively matching the corresponding positioning holes (protrusion members 44b and 44a, Figs 2 and 4; ¶0038), the first positioning post being a cylinder and the second positioning post being a quadrangular prism (see Figs 2 and 4).
Zur as modified fails to specifically disclose wherein the positioning hole of the first half shell has a hexagonal cross-section, the first positioning post being a regular hexagonal prism and the second positioning post being a regular quadrangular prism.
Ma discloses a very similar rolling pet toy ball, with an actuation module comprising a first positioning post being a hexagonal prism (movable head 7, Fig 1; see Fig 5 for shape) and a second positioning post being a quadrangular prism (fixing head 3, Fig 1; see Fig 4 for shape), the half shells each having a positioning hole, one positioning hole having a square cross section (first slot 101, Fig 4), and the other positioning hole having a hexagonal cross-section (second slot 102, Fig 5).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the actuation module of Zur to include two posts extending from the housing of the actuation module and engaging with the half shells through holes of matching polygonal shape, the posts simultaneously driven by the motor to cause ball motion, as in Ma, the result having a reasonable expectation of success. One would have been motivated to make this modification in order to allow for more efficient and symmetrical torque transfer to the outer shell, while reducing strain on the motor. Further, such a modification would amount to a substitution of functional equivalents, the modification being a simple substitution of one known pet toy ball torque transfer element for another, and would obtain predictable results. KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739, 1740, 82 USPQ2d 1385, 1395, 1396 (2007).
Zur and Ma disclose the limitations of claim 7 above with the exception of the hexagonal prism/quadrangle prism posts being regular (under the understood geometrical definition of all sides being equal and all angles being equal), however it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have specifically, with a reasonable expectation of success, provided the prisms as regular prisms in order to allow for a more even distribution of wear about the perimeter of the posts since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Zur and Ma, as applied to claim 1 above, further in view of Hsieh (TW M594335 U, as cited on previous 892), hereinafter referred to as Hsieh.
Regarding claim 15:
Zur as modified discloses the limitations of claim 1 above.
Zur as modified fails to specifically disclose wherein an overall diameter of the toy ball is in a range from 7 cm to 9.5 cm, and a thickness of the elastic outer layer is in a range from 7 mm to 30 mm.
Hsieh discloses a similar rolling pet ball with multi-layer shell, the shell having an elastic outer layer (rubber outer layer 12, Fig 3), and a rigid inner layer (rigid inner layer 14, Fig 3), the ball having an overall diameter of about 5 cm to 30 cm (Pg 3, ¶2 - encompassing the claimed range), and the thickness of the elastic outer layer being about 10 mm to 50 mm (Pg 3, ¶2 - encompassing ~87% of the claimed range).
Given the contemplated ranges of Hsieh encompass the claimed ranges nearly entirely, and the applicant does not provide criticality or evidence of unexpected results for the narrower claimed range, the examiner asserts that Hsieh teaches the claimed range with “sufficient specificity”, (See MPEP 2131.03), and that it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided the elastic outer layer and shell of Zur with dimensions based on the range taught by Hsieh, the result having a reasonable expectation of success. One would have been motivated to make this modification in order to optimize size and durability to the animal user’s size/chewing capabilities.
Alternatively, in the absence of any stated problems solved by or any stated advantage obtained by having a certain feature as claimed in the instant invention, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided the elastic outer layer thickness and ball diameter of Zur to be within the narrower claimed ranges in order to optimize size and durability to the animal user’s size and chewing capabilities, the result having a reasonable expectation of success. In light of the disclosure of Hsieh, one of ordinary skill in the art would recognize that ball diameter and elastic layer thickness are known variables in the dog toy art, prime for obvious variation and optimization. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Response to Arguments
Applicant's arguments filed 06/26/2026 have been fully considered but they are not persuasive.
On pages 11-12 of the remarks, the applicant notes that Zur’s outer shell is built for light transmission at transparent portions 50, and that the soft rubber/silicone material exists only as strategically placed segments at the non-transparent portions, and therefore replacing Zur’s outer cover with an opaque foam of E-TPU in a manner where the outer side of the hard inner layer was covered, as claimed, would render Zur unsatisfactory for its intended purpose.
The examiner respectfully disagrees. The proposed modification of Zur with Ma does not suggest completely replacing the outer layer of Zur (with its grooves for transparency) with the exact outer layer of Ma, which has no grooves for transparency, rather, the examiner stated that it would have been obvious to have used E-TPU in place of rubber/silicone in forming the outer cover of Zur, E-TPU being an art-recognized suitable dog toy material, and being desirable due to its desirable properties, as mentioned in Ma (Pg 3, ¶1). The applicant contends that replacing the rubber/silicone with E-TPU would render Zur inoperable for its light-transmitting purpose; however, the examiner asserts that one of ordinary skill in the art, when looking at Zur and Ma, would not have modified Zur with Ma in a manner where the transparent portions were covered. The applicant provides no evidence that, if the outer layer of Zur, with its grooves, was made of E-TPU (with the same grooves), that light would not be able to be transmitted through said grooves. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). If the applicant is suggesting that the outer layer of Zur (with grooves/transparent segments 50) does not cover the hard inner layer, as required in the newly amended claim, the examiner respectfully disagrees. The claim does not require that the hard inner layer be fully covered (i.e. no transparent areas 50 showing between gaps in elastic outer covering), so under the broadest reasonable interpretation (BRI) of the term ‘covered’, Zur reads on this limitation.
On page 12, the applicant contends that In re Leshin is not applicable to the material change suggested by the examiner, as the claimed subject matter is not a mere material selection but requires restructuring of Zurs segmented covering into a full structural foam layer.
The examiner respectfully disagrees, and notes that, as explained above, the applicant is misinterpreting the examiner’s rejection. The examiner is not requiring a full restructuring into a fully covering foam layer, but rather a simple substitution of the material forming the cover of Zur with a different known dog toy material. In re Leshin is entirely applicable, as it finds that selecting a known material for use in forming a known structure, previously made of a similar material, was obvious. In this case, E-TPU is known from Ma to be used in forming a protective layer on a hard inner shell in the dog toy art. Zur discloses a protective layer on a dog toy formed of a similarly soft elastic outer shell (rubber/silicone). When looking at Zur and Ma, one of ordinary skill in the art would recognize E-TPU of Ma to be a known material suitable for the intended purpose of providing a protective outer shell for a dog toy.
On page 12 the applicant contends that neither Zur not Ma teaches a bonded relationship between a hard inner layer and an E-TPU outer layer.
The examiner respectfully disagrees. Under BRI of the plain meaning of the term, the term ‘bonded’ means ‘connected or binded’ (Dictionary.com). From Fig 5 of Zur, it is clear that the inner and outer layer are connected together. As above, E-TPU material is known from Ma.
On page 13, the applicant contends that the proposed combination would not have been predictable, given solid rubber/silicone, as in Zur, can be over-molded directly onto a hard plastic substrate, and E-TPU, as in Ma, does not stand up to over-molding. The applicant contends that to apply Ma’s E-TPU to Zur, structural and process changes would be required (in regard to how the outer layer is bonded to the inner layer), such changes yielding unpredictable results and not being a simple substitution of materials.
The examiner respectfully disagrees. First the examiner notes that “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859, 225 USPQ 1, 6 (Fed. Cir. 1985) (en banc)) (“Etter's assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”). See also In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”); In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Further, regardless, the examiner notes that it would be well within the level of ordinary skill to modify the attachment between the outer and inner shell, if needed, when modifying the material to be an E-TPU shell, in order to secure the E-TPU shell to the inner layer of Zur. In fact, Ma contemplates a way of attaching E-TPU to a hard inner layer (through projections, as discussed in claim 16 rejection above).
On pages 13-14, the applicant argues that there is not an articulated motivation for the combination grounded in the references as a whole, in that Zur already provides protection and durability, and does not identify any deficiency in the bite resistance of the outer material.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The fact that Zur does not identify a deficiency is moot. Ma discloses benefits and desirable properties of an E-TPU material (Pg 3, ¶1), and given such disclosure, one of ordinary skill in the art would find it obvious to try and use the beneficial material of Ma in Zur, in attempt to better optimize the properties of the ball.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/B.V.S./Examiner, Art Unit 3642
/ASSRES H WOLDEMARYAM/Primary Examiner, Art Unit 3642
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