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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/15/2026 has been entered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1, 6, and 8-9 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
The recitation in claim 1 of “an oval shaped proximal thumb grip end portion” is directed to or encompasses a human organism.
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, 6, and 8-9 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.
The recitation in claim 1 of “said base comprises an oval shaped proximal thumb grip end portion, a rectangular middle portion, and a curved distal end, wherein said oval shaped proximal thumb grip end portion comprises a thumb grip indentation for gripping of said tool and a nail nick” is directed to new matter because the recited limitation is not supported by applicant’s originally filed disclosure (claims, specification, drawings filed 12/10/2021). It is noted that applicant’s originally filed specification only discloses the claimed “nail nick” with reference to figure 2 of applicant’s drawings (See applicant’s originally filed specification: Para. 0032). Claim 1 of applicant’s drawings is directed to the embodiment of figure 3 of applicant’s drawings. Applicant’s specification (Para. 0032) discloses: “the scratching tool 300 includes a one-piece structure and includes an oval-shaped first or proximal end 302, a rectangular middle portion 304 and a second or distal curved end 306”. Applicant’s specification (Para. 0034) discloses: “the rectangular middle portion 304 can include a thumb grip area, finger placement area and/or fingerhold, and can further include a thumb grip indentation for gripping the tool 300 during the scraping process”. The embodiment of figure 3 of applicant’s drawings does not disclose a “nail nick” and therefore claim 1 is directed to new matter.
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, 6, and 8-9 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.
The recitation in claim 1 of “said base comprises an oval shaped proximal thumb grip end portion, a rectangular middle portion, and a curved distal end, wherein said oval shaped proximal thumb grip end portion comprises a thumb grip indentation for gripping of said tool and a nail nick” is indefinite because the recited limitation is not supported by applicant’s originally filed disclosure (claims, specification, drawings filed 12/10/2021) and it is unclear what part/feature applicant considers to be the claimed “nail nick” in the claimed embodiment of clam 1. It is noted that applicant’s originally filed specification only discloses the claimed “nail nick” with reference to figure 2 of applicant’s drawings. Claim 1 of applicant’s drawings is directed to the embodiment of figure 3 of applicant’s drawings. Applicant’s specification (Para. 0032) discloses: “the scratching tool 300 includes a one-piece structure and includes an oval-shaped first or proximal end 302, a rectangular middle portion 304 and a second or distal curved end 306”. Applicant’s specification (Para. 0034) discloses: “the rectangular middle portion 304 can include a thumb grip area, finger placement area and/or fingerhold, and can further include a thumb grip indentation for gripping the tool 300 during the scraping process”. The embodiment of figure 3 of applicant’s drawings does not disclose a “nail nick”. Claim 1 is indefinite because it is unclear what part/feature applicant considers to be the “nail nick” in figure 3 of applicant’s drawings.
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 Fisher (20180221758) in view of Stacey (5749578), Steinmetz (20020152572) and Audino (20170189793).
Regarding claim 1, Fisher (Figures 1-4) teaches a scratch-off ticket scratching tool comprising: a one-piece tool including a base, wherein said base comprises an oval shaped proximal thumb grip end portion (See fig. 1), a middle portion (See fig. 1), and a curved distal end (See fig. 1); wherein the tool can be varied in shape, size and materials (Para. 0020); a keyhole (Fig. 1, Part No. 30) (Para. 0018) in said oval shaped proximal end portion (See fig. 1) for enabling attachment of said tool to a keychain; said curved distal end including a scratching terminal edge (24) (Para. 0018), wherein said terminal edge includes a plurality of scratching teeth (26) (Para. 0018); said plurality of scratching teeth are for scratching off a selected area of film coverings on the ticket protecting printed numerals and text thereunder; wherein said plurality of scratching teeth are semi-rigid (Para. 0019); wherein each of said plurality of scratching teeth comprising a tooth base (See fig. 1-4).
Fisher does not teach a rectangular middle portion; said proximal end portion comprises a thumb grip indentation for gripping of said tool and a nail nick for securing a thumb nail of a user against said tool; polymer scratching teeth; said plurality of scratching teeth are serrated; wherein each of said plurality of polymer scratching teeth comprising a pointed tooth with a first tooth arm, a second tooth arm; wherein said first tooth arm and said second tooth arm comprising a tooth arm length and said tooth base comprising a tooth base length; and wherein said tooth base length is greater than said tooth arm length.
It is noted that the prior art of Fisher teaches a scratch-off ticket scratching tool that can be varied in shape, size, and materials (See Fisher: Para. 0020). The claim recitation of “a rectangular middle portion”, “said plurality of scratching teeth are serrated”, and “each of said plurality of polymer scratching teeth comprising a pointed tooth with a first tooth arm, a second tooth arm” are directed to the shape of the claimed apparatus. Providing the prior art of Fisher with a rectangular middle portion, serrated scratching teeth, and a pointed tooth with a first tooth arm and a second tooth arm would have been obvious to one of ordinary skill in the art as a means of merely changing the shape of the scratch tool (See: In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), where the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant). As an alternative rejection, the prior art of Stacey and Audino are being used to teach the claimed “a rectangular middle portion”, “said plurality of scratching teeth are serrated”, and “a pointed tooth with a first tooth arm, a second tooth arm”.
Stacey (Figures 1-26) teaches a rectangular middle portion (Fig. 1, Part No. 28) (Col. 3, Lines 1-13).
Steinmetz (Figures 1-10) teaches said proximal end portion comprises a thumb grip indentation (Para. 0033, 0044) and a nail nick (Fig. 1, Part No. 122) (Para. 0041).
Audino teaches said terminal edge includes a plurality of polymer scratching teeth (14, 16) (Para. 0022, 0026), said plurality of polymer scratching teeth are serrated (Para. 0022, 0026), wherein said plurality of polymer scratching teeth are semi-rigid (Para. 0022, 0026); each of said plurality of polymer scratching teeth comprising a pointed tooth (Fig. 1-2 and 5, Part No. 14) (Para. 0021, 0026) with a first tooth arm, a second tooth arm, and a tooth base (See fig. 1-2); wherein said first tooth arm and said second tooth arm comprising a tooth arm length and said tooth base comprising a tooth base length (See fig. 1-2); and wherein said tooth base length is greater than said tooth arm length (See fig. 1-2).
It is noted that the combination of prior art is fully capable of performing the claim recitations of “for gripping of said tool”, “for securing a thumb nail of a user against said tool”, “for enabling attachment of said tool to a keychain”, and “for scratching off a selected area of film coverings on the ticket protecting printed numerals and text thereunder” as the recited limitation is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Fisher with a rectangular middle portion as taught by Stacey as a means of changing the shape of a middle portion of a lottery ticket scratcher (See: In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)), to provide Fisher with a thumb grip indentation and a nail nick as taught by Steinmetz as a means of providing a scratcher/scraper with an indentation having a series of flutes or raised ridges which assist in gripping the scratcher/scraper (Steinmetz: Para. 0033, 0041, 0046), and to provide Fisher with said tooth base length is greater than said tooth arm length as taught by Audino as a means of providing a scratcher/scraper with pointed scratching teeth protruding from a base of the scratcher/scraper (Audino: Para. 0021, 0026).
Regarding claims 8-9, the modified Fisher (Figures 1-4) teaches a scratch-off ticket scratching tool comprising: a keyhole (Fig. 1, Part No. 30) (Para. 0018) in said oval shaped proximal end portion (See fig. 1); said terminal edge includes a plurality of scratching teeth (26); and the tool can be varied in size, shape, and materials (Para. 0020).
The modified Fisher does not teach said keyhole includes a diameter from 0.2 inches to 0.8 inches, and said teeth include a length from 0.100 inches to 0.150 inches.
It is noted that the limitations of claims 8-9 are directed to dimensions of the claimed apparatus. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to modify the combination of prior art to provide the modified Fisher with said keyhole includes a diameter from 0.2 inches to 0.8 inches and said teeth include a length from 0.100 inches to 0.150 inches as a means of finding the optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fisher in view of Stacey, Steinmetz, and Audino, further in view of Strickman (20090300921).
Regarding claim 6, the modified Fisher (Figures 1-4) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (See fig. 1-4).
The modified Fisher does not teach said tool is illuminated.
Strickman (Figures 1-26) teaches said tool is illuminated (See fig. 1, Part No. 14) (Para. 0019).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Fisher with said tool is illuminated as taught by Strickman as a means of providing a scratching tool with a light source (Strickman: Para. 0019).
Response to Arguments
Applicant's arguments filed 05/15/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art of Steinmetz does not teach the recitation in claim 1 of “said proximal end portion comprises a thumb grip indentation and a nail nick”, this is not found persuasive because Steinmetz teaches proximal end portion comprises a thumb grip indentation and a nail nick (Steinmetz: Fig. 1, Part No. 122; Para. 0041), It is noted that Steinmetz (Para. 0041) discloses: “convex gripping area 120 may include a series of flexible flutes 122 or raised ridges, which assist the gripping of the scratcher 100. While assisting the grip, flutes 122 also add comfort to the grip”. As shown in Fig. 1 of Steinmetz, there is an indentation on which there are “a series of flexible flutes 122 or raised ridges”, where the raised flutes or ridges are the claimed “nail nick”. An indentation and “nail nick” is also shown in figures 7-9 of Steinmetz (See Steinmetz: Para. 0044). Steinmetz (Para. 0031) discloses: “the gripping mechanism may be in any suitable shape. It may have a series of flexible ribs, which are either convex or concave in nature. If the gripping mechanism is concave, the flexible ribs may be either reduced or eliminated. The gripping mechanism may also be flat”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER GLENN whose telephone number is (571)272-1277. The examiner can normally be reached 9:00 a.m. - 5:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, EUGENE KIM can be reached at (571) 272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
