DETAILED ACTION
Claim Objections
The objection to claim 1 is withdrawn in view of Applicant’s amendment, filed October 14, 2025.
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.
Claim 8 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor regards as the invention.
The meaning of claim 8 is unclear because its last line recites that a dry erase element is “integrated into” the base and/or into the award element of a trophy. As the instant disclosure discusses the same dry erase element, which is shown in Figures 1-3, as being “affixed or integrated with the trophy” at pre-chosen positions (Applicant’s published application, par. 22), it is unclear if the terms “affixed” and “integrated” are intended to be synonyms or have different meanings. Now-cancelled claim 9 supported a conclusion that “integrated” merely means “attached”, rather than “integrally formed with”, because it recited that the dry erase element is a whiteboard and because a trophy having an award element or base that is entirely a white board is never disclosed. For the sake of compact prosecution and because the instant disclosure describes the same trophies as having their dry erase elements either “affixed” or “integrated”, the terms are considered herein to be synonyms meaning “connected” by whatever means (e.g. the dry erase element may be attached to a trophy with an adhesive or it may be a part that was originally molded into/formed with the trophy award element or base). Appropriate correction is required.
Claim Rejections - 35 USC § 102
The rejections made under 35 U.S.C. 102 in the previous Office Action are withdrawn in view of Applicant’s amendment, filed October 14, 2025.
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, 3-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Just Craft (Just Craft, “How to Make Trophy for Mother’s Day, Father’s Day, Teacher’s Day: Handmade Trophy” video on YouTube.com, 2020, p. 1-13) in view of Maker (Maker, J., “Make It Copper: Copper Spray Paint Comparisons”, 2018, p. 1-24) or Stagl (US Pat. No. 5,424,137), and Pro (Pro, “PRO® Pro Dry Erase Tape: Erasable Surface Tape”, 2020, p. 1).
Regarding claims 1, 3, 4, and 8, Just Craft teaches trophies, each comprising a base comprising a material (i.e. “first material”) and having a first physical form with first physical dimensions and an upper, award element comprising a material (i.e. “first material or second different material”) and having a second, different physical form with second physical dimensions that are different from the first physical dimensions that is secured on top of and extending upwardly from the base (p. 1-9, photographs). Each of the trophies also includes a label, or “plate”, with seemingly handwritten text attached to, or “integrated into”, its base or award element (p. 1-9, photographs).
The teachings of Just Craft differ from the current invention in that the disclosed trophies are not explicitly taught to include a base or award element comprising a plastic material with a metallic coating. However, as shown in the images on pages 5 through 8, Just Craft’s trophy including a ball-shaped award element and base appears to be made from a plastic basketball and a plastic cup (p. 5-8, photographs). Pages 9 and 10 show that Just Craft achieves a metallic appearance by painting the adjoined elements with spray paint (p. 9-10, photographs). Maker further teaches that copper spray paint can make practically anything look decorative and trendy, and that copper metallic paint is “totally a thing” and can be used to paint pretty much anything (p. 2, text). Maker also teaches that she used copper metallic paint to paint a variety of different surface types, including plastic, and that Rust-Oleum Specialty Metallic Copper Spray Paint stood out as the best spray paint, providing the most genuine copper color and covering objects very well (p. 5, 9, text). Maker discloses that Rust-Oleum’s Specialty Metallic line also comes in gold, silver, and brass, can be applied to various types of surfaces, and includes real metal leafing (p. 9-10, text). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize a plastic cup (i.e. a cup comprising a “first material”) and a plastic ball (i.e. a ball comprising “the first material or a second different material) respectively as the base and award elements of Just Craft’s trophy because the parts appear to be plastic and because plastic is old and well-known as a useful material for crafts and trophies, and to cover those parts using a metallic spray paint (i.e. the components comprise a first material and/or a second material comprising plastic with a metallic coating), such as a Rust-Oleum Specialty Metallic Paint in copper or other metallic colors, because Maker teaches that the paint is useful for decorating a variety of different surface types to achieve good coverage, a genuine color, and a desired, e.g. trendy an “totally a thing”, decorative appearance. As noted above, in addition qualifying as a “metallic coating” because it is referred to as such, a coating made of the disclosed paint qualifies as a “metallic coating” because it comprises real metal flakes.
Stagl further teaches that inexpensive trophies are conventionally made of plastic parts and that the plastic parts can be metallized to have the appearance of a precious or semiprecious metal, which improves both the appearance and feel of quality of the inexpensive product (col. 1, ln. 15-31). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize base and/or award elements that are made from metallized plastic (i.e. the components comprise a first material and/or a second different material comprising plastic with a metallic coating) because Stagl teaches that plastic is a conventional and inexpensive material for trophy components and in order to achieve a desired decorative appearance of a metal, thereby improving the overall appearance and feel of quality of the product.
The teachings of Just Craft differ from the current invention in that the labels are not described and, therefore, not taught to be or include dry erase elements or whiteboards. However, Just Craft’s handmade products are clearly decorative and fall in the field of “crafting”. Pro further teaches a dry-erase tape that has a surface that can be repeatably written on and erased with dry-erase markers (p. 1). Pro’s cut-to-fit, peel-and-stick tape transforms surfaces in to a whiteboard (i.e. the segments of tape are “whiteboards”), and advantageously is stain-proof, wherein it erases cleanly “every time”, and is excellent for home décor projects, handmade gifts, and various arts and crafts (p. 1). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize Pro’s dry-erase tape as, to make, or in place of the labels on Just Craft’s trophies, including the labels that are affixed to the award element or base of Just Craft’s trophies, because the tape is white, as is compatible with Just Craft’s teachings, transforms surfaces into whiteboards, making them possible to be repeatedly non-permanently marked and erased with dry-erase markers, is stain-proof, and is excellent for home décor projects, handmade gifts, and various arts and crafts. As the dry erase element in the prior art product is white and not disclosed to have a metallic coating, the dry erase element comprises a third material that is necessarily different (i.e. at least in terms of colorant additives or coatings) from the first and second materials.
The requirement that the claimed product is a “trophy”, that the trophy is “handheld”, that the trophy is reusable, that writing on the dry-erase element may be changed to reuse the trophy, and any other limitations regarding the ability to apply and remove written text from dry-erase elements for the “reuse” of the trophy are statements of intended use. Just Craft and Pro’s products meet these requirements because they and their component parts are capable of being used as claimed.
Regarding claims 5 and 6, as shown in the photographs, the labels (i.e. “dry-erase elements”) on Just Craft and Scotch’s trophies include a separate surface, have a shape, and are affixed to a surface of the award element or base at a location. As there is ample space available and Scotch’s tape can be cut to whatever size or shape is desired by a user, there are multiple places (i.e. “dry erase element locations”), e.g. on the front or back of the award element or on the front or back of the base, where such dry erase elements that have been cut from the tape (i.e. which is a sheet-shaped component) can be affixed and used.
As there is no apparent, structural difference between a shape that has been “predetermined” and one that has not, the requirement that the shape or shapes of the dry-erase elements are “predetermined” does not distinguish the claimed invention over the prior art.
Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Just Craft, Maker or Stabl, and Pro, as applied to claims 1 and 5 above, and further in view of JBC (JBC, “Pressure Sensitive Tapes & Adhesives”, 2019, p. 1-3) and/or Kramer (US Pat. No. 4,190,691).
Regarding claims 7 and 19, as discussed above, Just Craft et al. render obvious trophies including a base supporting an award element thereon and with a sheet-shaped, dry-erase element (i.e. the dry-erase element is “provided as a sheet”) that includes a first, dry-erase surface for making non-permanent markings thereon adhered to a location on the base or the award element. As the surfaces are dry-erase surfaces, they are reusable and allow the trophy to be reused.
In view of the above, Just Craft et al. render obvious a trophy meeting the limitations of claims 7 and 19, but differ from the current invention in that the dry-erase elements are not explicitly taught to include a second surface opposite the first surface that comprises a pressure-sensitive adhesive surface, which is positioned between the rest of the dry-erase element and the trophy. However, Pro’s dry-erase tape, which is used to form the dry-erase elements in the prior art product, includes an acrylic adhesive and a liner (p. 1).
JBC further teaches that pressure-sensitive adhesives (“PSAs”) advantageously are triggered by pressure and do not require a solvent, water, or heat to be activated, and that acrylic PSAs tend to provide heat and environmental resistances (p. 2). Kramer also teaches that it is well known in the art to apply a PSA with a release liner to the back of indicia members for trophies so that a supply of the indicia members may be easily stored and mounted (e.g. on a trophy) when desired, and that the release liner may be removed to permit adhesive mounting of the indicia member in a desired location (col. 2, ln. 60-col. 3, ln. 2). Accordingly, it would have been obvious to one of ordinary skill in the art to a pressure-sensitive adhesive (“PSA”), including an acrylic PSA, as the adhesive on the back (i.e. on the second surface, opposite the first, dry-erasable surface) of the dry-erasable elements on the prior art trophy, i.e. positioned between the dry-erase element(s) and the award element or the base (i.e. thereby locating the PSA as claimed), and to secure the dry-erase elements to desired locations on the trophy using the PSA because JBC teaches that PSAs do not require solvents, heat, or water to be activated and that acrylic PSAs offer heat and environmental resistances, because Kramer teaches that pressure-sensitive adhesives are well known in the art for securing together trophy parts, including securing together the indicia members with the other part(s) of the trophy, and so that the elements may be handled and, if desired, easily stored until they are desired to be placed on the trophy.
Response to Arguments
Applicant's arguments filed October 14, 2025 have been fully considered but they are not persuasive or are moot in view of the current rejections.
Applicant has argued that the amendments to claim 8 overcome the rejection made previously under 35 U.S.C. 112(b) because “integrated into” (line 8) has been changed to “integrated with”. However, the claim remains indefinite because the new last line still uses the “integrated into” language.
Applicant has further argued that the claims as amended are distinguished over Just Craft and Pro because the claims now recite that the award element and/or base comprise a plastic material with a metallic coating and that there is no motivation to combine elements of such materials with a dry erase element as claimed. Applicant has also argued that the combination would actually be discouraged because the adhesive surface of the tape would likely disrupt and remove the metallic coating. However, it would have been obvious to one of ordinary skill in the art to configure Just Craft’s trophy to comprise award and/or base elements made of a plastic material coated with a metallic coating for the reasons discussed above. It also would have been obvious to utilize a dry erase element meeting the claim requirements for the reasons discussed above. Applicant has presented no evidence to support the assertion that such a combination would be discouraged because the adhesive on the dry erase element would damage the metallic coating. Moreover, this argument seems particularly unpersuasive, given that the instant disclosure, which is currently presumed to be enabled, teaches both metal-coated plastic trophy parts and using an adhesive to attach a dry erase element to a trophy, but does not teach any special steps for making such a combination operable.
Applicant’s arguments with respect to Terzian and Schainbaum are moot in view of the current rejections.
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 JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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