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 § 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 and 2 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.
Regarding claim 1, claim 1 is directed to “A glassware having a decorative piece permanently attached to it comprising: selecting a decorative piece from a plurality of decorative pieces; cleaning a portion of the glassware to which the decorative piece is to be attached; applying a glue to a backside of the decorative piece, said backside to be fitted against an outer surface of the glassware, and said glue including a resin sensitive to ultraviolet (UV) light; radiating the glassware and decorative piece fitted to the glassware with an ultraviolet light for a predetermined period of time for the light to cure the resin and permanently affix the decorative piece to the glassware.”
As written, the preamble of claim 1 is directed to a product (i.e. the glassware), but the body of claim 1 is written as if claim 1 is a process claim. Therefore, there is ambiguity as to whether the claim is a product or a process claim.
Given claim 2, which depends on claim 1, also is directed to glassware, the examiner believes Applicant’s intentions for claim 1 is for the claim to be a product claim. Further given the process limitations which suggest intent for a product-by-process claim, the examiner suggests amending claim 1 such that it is directed to a glassware formed by a process comprising the limitations recited in the body of claim 1 to remove any ambiguity.
Regarding claim 2, claim 2 depends directly on claim 1. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the same reasons as claim 1.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Narita (WO 2015/005057 A1, referencing a machine translation thereof provided with this Office Action) in view of Beasley (US 2008/0121331 A1).
Regarding claim 1, Narita discloses a glassware having a decorative piece permanently attached to it (“wine glass” 10: e.g. Fig. 1, 2; § Description p. 2, l. 6, to p. 11, l. 15) comprising:
a decorative piece (“decoration” formed of a “cloth”, e.g. “cloth” 20, or alternative to said “cloth”: e.g. Fig. 1, 2; § Description, p. 2, l. 10, to p. 9. l. 17; p. 10, ll. 13 – 14); and
a glue applied to the backside of the decorative piece, wherein said backside is fitted against an outer surface of the glassware, and said glue including a resin sensitive to ultraviolet (UV) light that has been radiated with ultraviolet light to cure the resin and permanently affix the decorative piece to the glassware (“ultraviolet curing adhesive” 30 which is cured by “irradiating” with ultraviolet light: e.g. Fig. 1, 2; § Description, p. 2, l. 10, to p. 3, l. 5; p. 3, l. 16, to p. 4, l. 3; p. 4, l. 14, to p. 5, l. 12; p. 6, l. 3, to p. 9, l. 3; p. 10, l. 20, to p. 11, l. 6).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113, I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP § 2113, I.
Save for any structure the recitation of “cleaning a portion of the glassware to which the decorative piece is attached” may provide, the examiner observes Narita’s glassware, decorative piece, and glue form the same structure as is implied by the recited process limitations.
Although Narita is not explicit as to the glassware being made with a step of cleaning a portion of the glassware to which the decorative piece is to be attached, or the resulting product thereof, this feature would have been obvious in view of Beasley.
Beasley discloses cleaning a portion of glass to which a decorative piece is to be attached since an unclean surface will have improper bonding due to foreign bodies between the decorative piece and the glass (e.g. ¶ [0022]).
Accordingly, it would have been obvious to make Narita’s glassware with a step of cleaning the portion of the glassware to which the decorative piece is to be attached as Beasley suggests, the motivation being to ensure proper bonding of the decorative piece to the glassware.
Accordingly, given the observations above regarding Narita’s glassware structure being the same as that claimed except for an indication of a structure resulting from a cleaning, the extra step Beasley suggests performing indicates the structure of the glassware formed by the steps Narita and Beasley discloses is the same as that which results from the claimed process limitations. A prima facie case of obviousness is therefore properly established with respect to claim 1.
Regarding claim 2, Narita discloses the glassware is, e.g. a stemmed wineglass (e.g. Fig. 1, 2; p. 5, ll. 9 – 12).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783