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 .
Response to Amendment
The amendment filed 11/06/2025 has been entered. Claims 1, 4, 6, 8-9, 13, 15, and 19-20 are pending in the application.
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 13, 15, and 19-20 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 13 of “said (triangular shaped) proximal end portion includes a top surface comprising a fingerhold indentation” 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). Applicant’s specification (Para. 0035) discloses: “the rectangular middle portion 404 includes a thumb resting area or fingerhold, and further includes a thumb grip indentation for gripping the tool 400 during the scraping process.” Applicant’s specification does not disclose “said (triangular shaped) proximal end portion includes a top surface comprising a fingerhold indentation” and therefore the recited limitation is directed to new matter.
The recitation in claim 19 of “said triangular shaped proximal end portion includes a fingerhold indentation; wherein said fingerhold indentation is a thumb grip and comprises a nail nick extending curvilinearly from a first of side of said base to a second opposing side of said base” 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). Applicant’s specification (Para. 0035) discloses: “the rectangular middle portion 404 includes a thumb resting area or fingerhold, and further includes a thumb grip indentation for gripping the tool 400 during the scraping process.” Applicant’s specification does not disclose “said triangular shaped proximal end portion includes a fingerhold indentation; wherein said fingerhold indentation is a thumb grip and comprises a nail nick extending curvilinearly from a first of side of said base to a second opposing side of said base” and therefore the recited limitation is directed to new matter.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore:
The recitation in claim 4 of “said base includes a fingerhold indentation” must be shown or the feature(s) canceled from the claim(s). It is noted that claim 4 is dependent on independent claim 1. It is noted that claim 1 is directed to figure 2 of applicant’s drawings. In figure 2 of applicant’s drawings part number 202 is listed (in applicant’s specification) as the claimed “thumb grip indentation”, and part number 204 is listed as the claimed “nail nick”. Applicant’s drawings do not show the claimed “fingerhold indentation” (of claim 4) in figure 2 of applicant’s drawings.
The recitation in claim 13 of “said proximal end portion includes a top surface comprising a fingerhold indentation for gripping of said tool for scratching off a selected area of film coverings on the ticket protecting printed numerals and text thereunder, wherein said fingerhold indentation is a thumb grip and comprises a nail nick” must be shown or the feature(s) canceled from the claim(s). It is noted that claim 13 is directed to figure 4 of applicant’s drawings. It is noted that applicant’s specification (Para. 0035) discloses: “the rectangular middle portion 404 includes a thumb resting area or fingerhold, and further includes a thumb grip indentation for gripping the tool 400 during the scraping process.” Figure 4 of applicant’s drawings does not show the claim recitation of “the top surface comprises a fingerhold indentation; said fingerhold indentation is a thumb grip and comprises a nail nick”. It is noted that the claimed “nail nick” is disclosed in applicant’s specification as being directed to the embodiment of figure 2 of applicant’s drawings. Applicant’s specification (Para. 0019) discloses: “FIG. 2 illustrates a perspective view showing a thumb grip indentation and nail nick on the base of the one potential embodiment of the lottery ticket scratching tool of the present invention in accordance with the disclosed architecture”. Applicant’s specification (Para. 0032) discloses: “FIG. 2 illustrates a perspective view showing a thumb grip indentation and nail nick on the base of the one potential embodiment of the lottery ticket scratching tool of the present invention in accordance with the disclosed architecture. The top surface 104 of the base 102 of the tool 100 includes a thumb grip indentation 202 for providing a better grip to a user scratching off a lottery ticket. The thumb grip indentation 202 can be in the form of a thumb-shaped depression. Further, the top surface 104 can also include a nail nick 204 for assistance with positioning and securing a user's thumb in place on the base 102”.
The recitation in claim 19 of “said triangular shaped proximal end portion includes a fingerhold indentation; wherein said fingerhold indentation is a thumb grip and comprises a nail nick extending curvilinearly from a first of side of said base to a second opposing side of said base” must be shown or the feature(s) canceled from the claim(s). It is noted that claim 19 is directed to figure 4 of applicant’s drawings. Applicant’s specification (Para. 0035) discloses: “the rectangular middle portion 404 includes a thumb resting area or fingerhold, and further includes a thumb grip indentation for gripping the tool 400 during the scraping process.” It is noted that the claimed “nail nick” is disclosed in applicant’s specification as being directed to the embodiment of figure 2 of applicant’s drawings. Applicant’s specification (Para. 0019) discloses: “FIG. 2 illustrates a perspective view showing a thumb grip indentation and nail nick on the base of the one potential embodiment of the lottery ticket scratching tool of the present invention in accordance with the disclosed architecture”. Applicant’s specification (Para. 0032) discloses: “FIG. 2 illustrates a perspective view showing a thumb grip indentation and nail nick on the base of the one potential embodiment of the lottery ticket scratching tool of the present invention in accordance with the disclosed architecture. The top surface 104 of the base 102 of the tool 100 includes a thumb grip indentation 202 for providing a better grip to a user scratching off a lottery ticket. The thumb grip indentation 202 can be in the form of a thumb-shaped depression. Further, the top surface 104 can also include a nail nick 204 for assistance with positioning and securing a user's thumb in place on the base 102”.
No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 4, 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lychwick (20110146019) in view of Landwehr (20140290070), Steinmetz (20020152572), and Audino (20170189793).
Regarding claim 1, Lychwick (Figures 1-3) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (Para. 0013) including a base, wherein said base comprises an oval shaped proximal end portion (7) (Para. 0014), a middle portion (6) having a rectangular cross section, and a curved distal end (4); said curved distal end (4) including a scratching terminal edge (2) (Para. 0013).
Lychwick does not teach a rectangular middle portion, wherein said oval shaped proximal end portion comprises a thumb grip indentation and a nail nick, a keyhole in said oval shaped proximal end portion, wherein said terminal edge includes a plurality of polymer scratching teeth; said plurality of polymer scratching teeth are serrated; wherein said plurality of polymer scratching teeth are semi-rigid; wherein each of said plurality of polymer scratching teeth comprising a pointed tooth with a first tooth arm, a second tooth arm, and a tooth base; 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.
Landwehr teaches a rectangular middle portion (See fig. 1).
Steinmetz (Figures 1-10) teaches proximal end portion comprises a thumb grip indentation and a nail nick (Fig. 1, Part No. 122) (Para. 0041).
Audino teaches a keyhole (12) in said proximal end portion (Para. 0021), wherein 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 of is fully capable of performing the claim recitations of “for gripping of said tool”, “for securing a finger of a user against said tool”, “for enabling attachment of said tool to a keychain”, “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.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Lychwick with a rectangular middle portion as taught by Landwehr as a means of mere design choice (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), to provide Lychwick 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 that which assist in gripping the scratcher/scraper (Steinmetz: Para. 0041, 0046), and to provide Lychwick 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 claim 4, the modified Lychwick (Figures 1-3) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (Para. 0013) including a base.
The modified Lychwick does not teach said base includes a fingerhold indentation for gripping of said tool.
Steinmetz (Figures 1-10) teaches said base includes a fingerhold indentation (Fig. 2, Part No. 122; Fig. 10, Part No. 172) for gripping of said tool (Fig. 2, Part No. 122; Fig. 10, Part No. 172) (Para. 0041).
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 Lychwick with said base includes a fingerhold indentation for gripping of said tool as taught by Steinmetz as a means of providing a scratcher/scraper with an indentation having a series of flutes or raised ridges that which assist in gripping the scratcher/scraper (Steinmetz: Para. 0041, 0046).
Regarding claims 8-9, the modified Lychwick (Figures 1-3) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (Para. 0013) including a base.
The modified Lychwick does not teach said keyhole includes a diameter from 0.2 inches to 0.8 inches, and said serrated 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 for said keyhole includes a diameter from 0.2 inches to 0.8 inches and said serrated 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 Lychwick in view of Landwehr, Steinmetz, and Audino, further in view of Strickman (20090300921).
Regarding claim 6, the modified Lychwick (Figures 1-3) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (Para. 0013) including a base.
The modified Lychwick 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 Lychwick with said tool is illuminated as taught by Strickman as a means of providing a scratching tool with a light source (Strickman: Para. 0019).
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lychwick in view of Steinmetz, Landwehr, Strickman, and Audino.
Regarding claim 13, Lychwick (Figures 1-3) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (Para. 0013) including a base, wherein said base comprises a proximal end portion, a middle portion (6), and a curved distal end (4); said curved distal end including a scratching terminal edge (2) (Para. 0013); said proximal end portion includes a top surface.
Lychwick does not teach said base comprises triangular shaped proximal end portion, a rectangular middle portion; a keyhole in said triangular shaped proximal end; said proximal end portion includes a top surface comprising a fingerhold indentation; wherein said fingerhold indentation is a thumb grip and comprises a nail nick; wherein said terminal edge includes a plurality of polymer scratching teeth; wherein said base further comprises an illuminated indicia; wherein said plurality of polymer scratching teeth are semi-rigid; wherein each of said plurality of polymer scratching teeth comprising a tooth with a first tooth arm, a second tooth arm, and a tooth base; 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 less than said tooth arm length.
Steinmetz (Figures 1-10) teaches said base comprises triangular shaped proximal end portion (Fig. 2, Part No. 110; Also see fig. 10); a keyhole (Fig. 2 and 10, Part No. 140) in said triangular shaped proximal end (Para. 0042-0043); said proximal end portion includes a top surface comprising a fingerhold indentation (See fig. 1-4, Part No. 120) (Para. 0041); wherein said fingerhold indentation is a thumb grip and comprises a nail nick (122) (Para. 0041).
Landwehr teaches a rectangular middle portion (See fig. 1).
Strickman (Figures 1-26) teaches said base comprises an illumination light (See fig. 1, Part No. 14) (Para. 0019).
It is noted that the claim recitation of “said base further comprises an illuminated indicia” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404). Where a product merely serves as a support for printed matter, no functional relationship exists. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product. An example in which a product merely serves as a support would occur for a deck of playing cards having images on each card. See In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished). In Bryan the applicant asserted that the printed matter allowed the cards to be “collected, traded, and drawn,” “identify and distinguish one deck of cards from another,” and “enable the card to be traded and blind drawn.” However, the court found that these functions do not pertain to the structure of the apparatus and were instead drawn to the method or process of playing a game. In the instant case, there is no functional relationship between the substrate (the base) and the indicia as the base merely serves as support for the indicia. Furthermore, the relationship between the printed matter the substrate (the playing surface) is not new and obvious as it is known to have indicia on a base (See for example: Fisher (20180221758), Strumke (6470574), Messinger (8191773), Panfili (6775912)) of a scratching apparatus. Therefore, the printed matter is not given patentable weight.
Audino teaches said terminal edge includes a plurality of polymer scratching teeth (14, 16) (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 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 less 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 enabling attachment of said tool to a keychain”, “for gripping of said tool for scratching off a selected area of film coverings on the ticket protecting printed numerals and text thereunder”, “for securing a finger of a user against said tool” 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.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Lychwick with said fingerhold indentation is a thumb grip and comprises 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 that which assist in gripping the scratcher/scraper (Steinmetz: Para. 0041), to provide Lychwick with a rectangular middle portion as taught by Landwehr as a means of mere design choice(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), to provide Lychwick with said base comprises an illumination light as taught by Strickland as a means of providing a scratching tool with a light source (Strickman: Para. 0019), and to provide Lychwick with a first tooth arm, a second tooth arm, and a tooth base 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 claim 15, the modified Lychwick (Figures 1-3) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (Para. 0013) including a base.
Lychwick does not teach said polymer scratching teeth are serrated. Audino teaches said scratching teeth are serrated (Para. 0022, 0026).
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 Lychwick with said scratching teeth are serrated as taught by Audino as a means of providing a scratching tool with teeth for scratching hidden numbers covered by removable coatings (Audino: Para. 0026).
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lychwick in view of Steinmetz, Landwehr, Stanford (6009590), and Audino.
Regarding claim 19, Lychwick (Figures 1-3) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (Para. 0013) including a base, wherein said base comprises a proximal end portion (7), a middle portion (6), and a curved distal end (4); said curved distal end including a scratching terminal edge (2) (Para. 0013); said base includes an area generally 2 inches by 2 inches; said triangular shaped proximal end portion includes a fingerhold indentation, wherein said fingerhold indentation is a thumb grip and comprises a nail nick extending curvilinearly from a first of side of said base to a second opposing side of said base; wherein said base further comprises an engraved indicia; wherein said plurality of polymer scratching teeth are semi-rigid; wherein each of said plurality of polymer scratching teeth comprising a pointed tooth with a first tooth arm, a second tooth arm, and a tooth base; 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.
Lychwick does not teach said base comprises a triangular shaped proximal end portion, a rectangular middle portion, a keyhole in said triangular shaped proximal end portion; said terminal edge includes a plurality of polymer scratching teeth, wherein said plurality of polymer scratching teeth are serrated; said keyhole includes a diameter from 0.2 inches to 0.8 inches; said plurality of polymer scratching teeth include a length from 0.100 inches to 0.150 inches, said base includes an area generally 2 inches by 2 inches; said triangular shaped proximal end portion includes a fingerhold indentation, wherein said fingerhold indentation is a thumb grip and comprises a nail nick extending curvilinearly from a first of side of said base to a second opposing side of said base; wherein said base further comprises an engraved indicia; wherein said plurality of polymer scratching teeth are semi-rigid; wherein each of said plurality of polymer scratching teeth comprising a pointed tooth with a first tooth arm, a second tooth arm, and a tooth base; 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.
Steinmetz (Figures 1-10) teaches said base comprises a triangular shaped proximal end portion (see fig. 2 and 10); a keyhole (Fig. 10, Part No. 140) in said triangular shaped proximal end portion (Para. 0042-0043); said triangular shaped proximal end portion includes a fingerhold indentation (See fig. 2 and 10), wherein said fingerhold indentation is a thumb grip and comprises a nail nick (See fig. 2 and 10) (Para. 0041, 0046) extending curvilinearly from a first of side of said base to a second opposing side of said base (See fig. 2 and 10).
Landwehr teaches a rectangular middle portion (See fig. 1).
Stanford (Figures 1-6) teaches said base further comprises an engraved indicia (Fig. 6, Part No. 4) (Col. 2, Lines 51-59).
It is noted that the claims are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of “engraved indicia” is being interpreted to mean “cut or carve (a text or design) on a surface.” As an alternative rejection, the claim recitation of “indicia” is being interpret as printed matter.
It is noted that the claim recitation of “indicia” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. In the instant case, there is no functional relationship between the substrate (the base) and the indicia as the base merely serves as support for the indicia. Furthermore, the relationship between the printed matter the substrate (the playing surface) is not new and obvious as it is known to have indicia on a base (See for example: Fisher (20180221758), Strumke (6470574), Messinger (8191773), Panfili (6775912)) of a scratching apparatus. Therefore, the printed matter is not given patentable weight.
Audino teaches said terminal edge includes a plurality of polymer scratching teeth (14, 16) (Para. 0022, 0026); wherein said plurality of polymer scratching teeth are serrated (Para. 0026); wherein said plurality of polymer scratching teeth are semi-rigid (Para. 0022); 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 enabling attachment of said tool to a keychain”, “for gripping of said tool for scratching off a selected area of film coverings on the ticket protecting printed numerals and text thereunder”, “for securing a finger of a user against said tool” 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.
It is noted that the claim recitation of “said keyhole includes a diameter from 0.2 inches to 0.8 inches; said plurality of polymer scratching teeth include a length from 0.100 inches to 0.150 inches, said base includes an area generally 2 inches by 2 inches” is 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 for the claimed dimensions 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)).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Lychwick with said fingerhold indentation is a thumb grip and comprises 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 that which assist in gripping the scratcher/scraper (Steinmetz: Para. 0041), to provide Lychwick with a rectangular middle portion as taught by Landwehr as a means of mere design choice (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), to provide Lychwick with said base further comprises an engraved indicia as taught by Stanford providing a scratching tool with an engraved/recessed surface (Stanford: Col. 2, Lines 51-59), and to provide Lychwick 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 claim 20, the modified Lychwick (Figures 1-3) teaches a scratch-off ticket scratching tool comprising: a one-piece tool (Para. 0013) including a base.
The modified Lychwick does not teach said scratching teeth include an arrangement from 4 teeth per inch to 12 teeth per inch.
Audino teaches said terminal edge includes a plurality of polymer scratching teeth (14, 16) (Para. 0022, 0026).
It is noted that the claim recitation of “said scratching teeth include an arrangement from 4 teeth per inch to 12 teeth per inch” is directed to the number of teeth along a dimension of the 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 to provide the combination of prior art with said scratching teeth include an arrangement from 4 teeth per inch to 12 teeth per inch 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)).
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 Lychwick with a plurality of scratching teeth as taught by Audino as a means of providing a scratching tool with teeth for scratching hidden numbers covered by removable coatings (Audino: Para. 0026).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4, 6, 8-9, 13, 15, 19-20 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.
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.
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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/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711