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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/15/2025 has been entered.
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, 3, 5, 7-10, 12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Brondfield (5519940) in view of McDonald (4687369) and Valdez (5396713).
Regarding claim 1, Brondfield (Figures 1-7) teaches a marking apparatus for marking lines on a surface comprising: a key section (See fig. 1) comprising a plurality of key section pieces (Fig. 1-3, Part No. 100 and 200), and wherein the plurality of key section pieces are configured to be coupled with each other (See fig. 1, 6) (Col. 3, Lines 17-46), and wherein the plurality of three-point arc section pieces are configured to be coupled with each other (See fig. 1, 6) (Col. 3, Lines 17-46), wherein each key section piece and each three-point arc section piece further comprises one or more openings (Fig. 2, Part No. 130; Fig. 3, Part No. 204), and wherein the one or more openings are configured to enable marking of the lines on the surface (Col. 5, Lines 7-17).
It is noted that the prior art of Brondfield is fully capable of performing the claim recitation of “for marking lines on a surface”. Brondfield (Col. 5, Lines 7-17) discloses: “the plurality of panels, which are now aligned so that they define an aperture having the profile of a basketball foul lane and key, are secured into place using adhesives, such as tape, or weights. At this point, paint is applied to the surface exposed by the aperture, thus painting the profile of a basketball foul lane and key, including a foul line and baseline, on the surface. The opposing surfaces of the panels heretofore described form a mask to keep spills and drips off of the surface to be painted. After the painting has been completed, the stencils should be removed from the surface and discarded.” The claim recitation of “for marking lines on a surface” is merely intended use as this limitation does not have any structural elements.
Brondfield does not teach each key section piece comprises at least one of protruding portions or recessed portions, each three-point arc section piece comprises at least one of protruding portions or recessed portions, wherein each key section piece and each three-point arc section piece defines a plane parallel to a length and width of each key section piece and each three-point arc section piece, wherein a shape of the protruding portions and a shape of the recessed portions are defined within the plane, and wherein the shape of the protruding portions of the key section pieces in the plane is substantially similar to a shape of the recessed portions of the key section pieces in the plane, such that the protruding portions of a first key section piece are insertable into the recessed portions of a second key section piece and an end of the protruding portions of the first key section piece contacts a perimeter of the shape of the recessed portions of the second key section piece to form an interlocking connection along the plane between the first and second key section pieces; the key section further comprises a plurality of key section alignment pieces, wherein each key section alignment piece comprises a first alignment indentation in the plane and a second alignment indentation in the plane, the first alignment indentation being along a side of the key section alignment piece and the second alignment indentation being along an opposite side of the key section alignment piece, wherein the first alignment indentation is spaced apart from the second alignment indentation, wherein at least one of the one or more openings are arranged between the first alignment indentation and the second alignment indentation, and wherein each of the first alignment indentation and the second alignment indentation comprises at least two sides that form an orthogonal angle in the plane.
It is noted that the claim recitation of “a key section, a three-point arc section” are directed to the structures formed using the claimed pieces. The prior art of Brondfield is fully capable of forming the claim recitations “key section” and “three-point arc section” as the claimed sections are formed by curved and straight pieces. Brondfield discloses curved and straight pieces as claimed (See fig. 1-3).
McDonald (Figures 1-13) teaches pieces of a marking apparatus that comprise at least one of protruding portions (32) or recessed portions (29), pieces of the marking apparatus define a plane parallel to a length and width of each piece (See fig. 10, 12), wherein a shape of the protruding portions (Fig. 10, Part No. 32) (Col. 4, Lines 2-15) and a shape of the recessed portions (29) are defined within the plane, and wherein the shape of the protruding portions of the pieces in the plane is substantially similar to a shape of the recessed portions of the pieces in the plane, such that the protruding portions of a first piece are insertable into the recessed portions of a second piece and an end of the protruding portions of the first piece contacts a perimeter of the shape of the recessed portions of the second piece to form an interlocking connection along the plane between the first and second pieces (See fig. 10) (Col. 4, Lines 2-15).
Valdez (Figures 1-22) teaches providing alignment stencils with a first alignment indentation (Fig. 3, Part No. 28) in the plane and a second alignment indentation (Fig. 3, Part No. 28) in the plane, the first alignment indentation being along a side of the alignment stencil and the second alignment indentation being along an opposite side of alignment stencil, wherein the first alignment indentation is spaced apart from the second alignment indentation, wherein at least one of the one or more openings (Fig. 3, Part No. 16) are arranged between the first alignment indentation and the second alignment indentation (See fig. 3), and wherein each of the first alignment indentation and the second alignment indentation comprises at least two sides that form an orthogonal angle in the plane (See fig. 3) (Col. 3, Lines 1-8 and 27-33).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Brondfield with the protruding portions of a first piece are insertable into the recessed portions of a second piece as taught by McDonald as a means of providing pieces of a marking apparatus with ends that mate/interlock to attach the pieces of the marking apparatus (McDonald: Col. 4, Lines 2-15), and to provide Brondfield with a first alignment indentation in the plane and a second alignment indentation in the plane as taught by Valdez as a means of providing stencils with cutouts on opposite sides of the stencils (Valdez: Col. 3, Lines 1-8 and 27-33; Col. 4, Lines 37-40).
Regarding claim 3, the modified Brondfield (Figures 1-7) teaches a shape of the one or more openings is substantially rectangular (Fig. 2, Part No. 130; Col. 3, Lines 28-31) (See fig. 3, Part No. 204; Col. 3, Lines 48-51).
Regarding claim 5, the modified Brondfield (Figures 1-7) teaches plurality of key section pieces (Fig. 1-3, Part No. 100 and 200) and a plurality of three-point arc section pieces (Fig. 1-3, Part No. 100 and 200).
The modified Brondfield does not teach a shape of the protruding portions of the three-point arc section pieces is substantially similar to a shape of the recessed portions of the three-point arc section pieces, such that the protruding portions of a first key three-point arc section piece are insertable into the recessed portions of a second three-point arc section piece to form an interlocking connection.
McDonald (Figures 1-13) teaches a shape of the protruding portions (Fig. 10, Part No. 32) (Col. 4, Lines 2-15) of the pieces is substantially similar to a shape of the recessed portions (29) of the pieces, such that the protruding portions of a piece are insertable into the recessed portions of a second piece to form an interlocking connection (Col. 4, Lines 2-15).
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 Brondfield with the protruding portions of a first piece are insertable into the recessed portions of a second piece as taught by McDonald as a means of providing pieces of a marking apparatus with ends that mate/interlock to attach the pieces of the marking apparatus (McDonald: Col. 4, Lines 2-15).
Regarding claim 7, the modified Brondfield (Figures 1-7) teaches the plurality of key section pieces and the plurality of three-point arc section pieces comprise cardboard material (Col. 3, Lines 21-28).
Regarding claim 8, the modified Brondfield (Figures 1-7) teaches plurality of key section pieces (Fig. 1-3, Part No. 100 and 200) and a plurality of three-point arc section pieces (Fig. 1-3, Part No. 100 and 200).
The modified Brondfield does not teach the plurality of key section pieces and the plurality of three-point arc section pieces each comprises an identifier.
It is noted that the claim recitation of “an identifier” 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. See also Ex parte Gwinn, 112 USPQ 439, 446-47 (Bd. Pat. App. & Int. 1955), in which the invention was directed to a set of dice by means of which a game may be played. The claims differed from the prior art solely by the printed matter in the dice. The claims were properly rejected on prior art because there was no new feature of physical structure and no new relation of printed matter to physical structure. In the instant case, there is no new feature of physical structure, no new relation of printed matter to physical structure, and the relationship between the printed matter and product is not new and unobvious. Therefore, the printed matter is not given patentable weight.
Regarding claim 9, the modified Brondfield (Figures 1-7) teaches plurality of key section pieces (Fig. 1-3, Part No. 100 and 200) and a plurality of three-point arc section pieces (Fig. 1-3, Part No. 100 and 200).
The modified Brondfield does not teach the identifier is a letter.
It is noted that the claim recitation of “the identifier is a letter” 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 new feature of physical structure, no new relation of printed matter to physical structure, and the relationship between the printed matter and product is not new and unobvious. Therefore, the printed matter is not given patentable weight.
Regarding claim 10, Brondfield (Figures 1-7) teaches a marking apparatus for marking lines on a surface comprising: a plurality of connectable pieces (Fig. 1-3, Part No. 100 and 200), wherein each connectable piece further comprises one or more openings (Fig. 2, Part No. 130; Fig. 3, Part No. 204) exposing the surface, and wherein the one or more openings are configured to enable marking of the lines on the surface (Col. 5, Lines 7-17).
It is noted that the prior art of Brondfield is fully capable of performing the claim recitation of “for marking lines on a surface”. Brondfield (Col. 5, Lines 7-17) discloses: “the plurality of panels, which are now aligned so that they define an aperture having the profile of a basketball foul lane and key, are secured into place using adhesives, such as tape, or weights. At this point, paint is applied to the surface exposed by the aperture, thus painting the profile of a basketball foul lane and key, including a foul line and baseline, on the surface. The opposing surfaces of the panels heretofore described form a mask to keep spills and drips off of the surface to be painted. After the painting has been completed, the stencils should be removed from the surface and discarded.” The claim recitation of “for marking lines on a surface” is merely intended use as this limitation does not have any structural elements.
Brondfield does not teach wherein each connectable piece defines a plane parallel to a length and width of each connectable piece and each connectible piece comprises at least one of protruding portions or recessed portions, the protruding portions having a shape defined within the plane, and the recessed portions having a shape defined in the plane, wherein the shape of the protruding portions in the plane is substantially similar to the shape of the recessed portions in the plane, such that the protruding portions of a first connectable piece are insertable into the recessed portions of a second connectable piece and an end of the protruding portions of the first connectable piece contacts a perimeter of the shape of the recessed portions of the second connectable piece to form an interlocking connection along the plane between the first and second connectable pieces; the plurality of connectable pieces further comprises a plurality of connectable alignment pieces, wherein each connectable alignment piece comprises a first alignment indentation in the plane and a second alignment indentation in the plane, the first alignment indentation being along a side of the connectable alignment piece and the second alignment indentation being along an opposite side of the connectable alignment piece, wherein the first alignment indentation is spaced apart from the second alignment indentation, wherein at least one of the one or more openings are arranged between the first alignment indentation and the second alignment indentation, and wherein each of the first alignment indentation and the second alignment indentation comprises at least two sides that form an orthogonal angle in the plane.
McDonald (Figures 1-13) teaches each connectable piece defines a plane parallel to a length and width of each connectable piece and each connectible piece comprises at least one of protruding portions (Fig. 10, Part No. 32) (Col. 4, Lines 2-15) or recessed portions (29), the protruding portions having a shape defined within the plane, and the recessed portions having a shape defined in the plane, wherein the shape of the protruding portions in the plane is substantially similar to the shape of the recessed portions in the plane, such that the protruding portions of a first connectable piece are insertable into the recessed portions of a second connectable piece and an end of the protruding portions of the first connectable piece contacts a perimeter of the shape of the recessed portions of the second connectable piece to form an interlocking connection along the plane between the first and second connectable pieces (See fig. 10) (Col. 4, Lines 2-15).
Valdez (Figures 1-22) teaches providing alignment stencils with a first alignment indentation (Fig. 3, Part No. 28) in the plane and a second alignment indentation (Fig. 3, Part No. 28) in the plane, the first alignment indentation being along a side of the stencil and the second alignment indentation being along an opposite side of the stencil, wherein the first alignment indentation is spaced apart from the second alignment indentation (See fig. 3), wherein at least one of the one or more openings (Fig. 3, Part No. 16) are arranged between the first alignment indentation and the second alignment indentation, and wherein each of the first alignment indentation and the second alignment indentation comprises at least two sides that form an orthogonal angle in the plane (See fig. 3) (Col. 3, Lines 1-8 and 27-33).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Brondfield with the protruding portions of a first connectable piece are insertable into the recessed portions of a second connectable piece as taught by McDonald as a means of providing pieces of a marking apparatus with ends that mate/interlock to attach the pieces of the marking apparatus (McDonald: Col. 4, Lines 2-15), and to provide Brondfield with a first alignment indentation in the plane and a second alignment indentation in the plane as taught by Valdez as a means of providing stencils with cutouts on opposite sides of the stencils (Valdez: Col. 3, Lines 1-8 and 27-33; Col. 4, Lines 37-40).
Regarding claim 12, the modified Brondfield (Figures 1-7) teaches a shape of the one or more openings is substantially rectangular (Fig. 2, Part No. 130; Col. 3, Lines 28-31) (See fig. 3, Part No. 204; Col. 3, Lines 48-51).
Regarding claim 14, the modified Brondfield (Figures 1-7) teaches the plurality of connectible pieces comprise cardboard material (Col. 3, Lines 21-28).
Regarding claim 15, the modified Brondfield (Figures 1-7) teaches a marking apparatus comprising: a plurality of connectable pieces (Fig. 1-3, Part No. 100 and 200).
The modified Brondfield does not teach each connectible piece comprises an identifier.
It is noted that the claim recitation of “an identifier” is directed to printed matter.
It is noted that the claim recitation of “an identifier” 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 new feature of physical structure, no new relation of printed matter to physical structure, and the relationship between the printed matter and product is not new and unobvious. Therefore, the printed matter is not given patentable weight.
Regarding claim 16, the modified Brondfield (Figures 1-7) teaches a marking apparatus comprising: a plurality of connectable pieces (Fig. 1-3, Part No. 100 and 200).
The modified Brondfield does not teach the identifier comprises a letter.
It is noted that the claim recitation of “the identifier comprises a letter” is directed to printed matter. It is noted that the claim recitation of “the identifier is a letter” 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 new feature of physical structure, no new relation of printed matter to physical structure, and the relationship between the printed matter and product is not new and unobvious. Therefore, the printed matter is not given patentable weight.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3, 5, 7-10, 12, and 14-16 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
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/C.G./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711