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 .
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.
Claim Interpretation
Claims 6 and 13 include the limitation “partitioned”. However, based on Applicant’s Figures and Specification, there is no physical structure of any kind on any part of the lower surface. The “partition” is only based on an imaginary line drawn from the top surface at the break from incline to horizontal down to the bottom surface. As such, the limitation “partitioned” will not be required to be of any physical structure.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Flowers, US 2004/0003572 A1 alone.
Regarding claim 1, Flowers teaches a multipurpose stone laying tool (Figures 1 and 5) for positioning irregularly sized and shaped stones (Figure 1) comprising:
a first transverse surface (lower horizontal surface as shown in Figure 5);
a second transverse surface (upper horizontal surface as shown in Figure 5); and
a tapered surface (inclined surface as shown in Figure 5), wherein the tapered surface forms an angled end (“pointed tip end”; [0025]) with the first transverse surface;
wherein the first and second transverse surfaces are flat planar surfaces without indentations; and
wherein the multipurpose stone laying tool is a solid wood tool (“made of wood” [0026]).
While Flowers fails to disclose that the first transverse surface is 0.375 inches in width, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the width of the first transverse surface to be 0.375 inches to make the tool easier to use based on the size of the stones to be laid.
While the resulting combination fails to explicitly disclose that the multipurpose stone laying tool has a tensile strength of between 1.10 and 1.40 N/m², Flowers discloses that the tool is preferably made of wood and discusses “not substantially deformed under the weight of the masonry objects” (last seven lines of [0026]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tool of the resulting combination to have a sufficient tensile strength, including in the range of 1.1 and 1.40 N/m², to be able to work with heavy stone without deforming.
Regarding claim 2, while Flowers discloses that the angle can be approximately 30 degrees, but fails to disclose approximately a 23-degree angle, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the angled end to be an approximately 23-degree angle based on the range of gap sizes desired between stones since the wedge portion is inserted between stones to maintain a desired gap size (a 23-degree angle would yield a slightly smaller gap between stones than a 30-degree angle). It is noted that Applicant’s specification discloses that the angled end could be 23° or any other suitable acute angle based on the wants/needs of a user (Applicant’s [0029]).
Regarding claim 3, as shown in Figure 5, the first transverse surface is substantially parallel to the second transverse surface.
Regarding claim 4, as shown in Figure 5, the first transverse surface and the second transverse surface terminate at a planar end (28).
Regarding claim 5, as shown in Figure 5, the planar end is positioned opposite of the angled end.
Regarding claim 6, as shown in Figure 5, the first transverse surface is “partitioned” into two portions, the portion directly underneath the inclined surface and the other portion being directly underneath the second transverse surface (upper horizontal surface).
Regarding claim 7, the resulting combination from claim 6 includes the first portion being positioned corresponding to the tapered surface.
Regarding claim 8, the resulting combination from claim 7 includes the second portion being positioned corresponding to the second transverse surface.
Regarding claim 9, while there is no perspective view corresponding to Figure 5, based on the views of the other embodiments (Figures 2, 3, 4, and 6), it appears obvious that the width of the tapered surface, the first transverse surface, the second transverse surface, and the planar end are the same measurement.
Regarding claim 10, the tool of the resulting combination includes a first face and a second face (two side faces, one shown in Figure 5) that opposes the first face.
Regarding claim 11, as shown in Figure 5, a portion of the first face and the second face is formed by the tapered surface and the first transverse surface is triangular and a remaining portion is rectangular.
Regarding claim 12, Flowers teaches a multi-purpose stone laying tool for positioning irregularly sized and shaped stones (Figures 1 and 5) comprising:
a lower transverse surface (lower horizontal surface as shown in Figure 5);
an upper transverse surface (upper horizontal surface as shown in Figure 5);
a tapered surface (inclined surface as shown in Figure 5);
wherein the tapered surface forms an angled end with the lower transverse surface;
wherein the upper transverse surface extends from the tapered surface to a planar end (left side as shown in Figure 5);
wherein the lower transverse surface extends from the angled end to the planar end (shown in Figure 5);
wherein the multipurpose stone laying tool is manufactured from solid wood (“made of wood” [0026]); and
wherein the first and second transverse surfaces are flat planar surfaces without indentations.
While Flowers discloses that the angle can be approximately 30 degrees, but fails to disclose approximately 23-degrees at the angled end, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the angled end to be an approximately 23-degree angle based on the range of gap sizes desired between stones since the wedge portion is inserted between stones to maintain a desired gap size (a 23-degree angle would yield a slightly smaller gap between stones than a 30-degree angle). It is noted that Applicant’s specification discloses that the angled end could be 23° or any other suitable acute angle based on the wants/needs of a user (Applicant’s [0029]).
While the resulting combination fails to explicitly disclose that the multipurpose stone laying tool has a tensile strength of between 1.10 and 1.40 N/m² and a notched impact strength of 25 Kj/ m², Flowers discloses that the tool is preferably made of wood and discusses “not substantially deformed under the weight of the masonry objects” (last seven lines of [0026]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tool of the resulting combination to have a sufficient tensile strength, including in the range of 1.1 and 1.40 N/m², and a sufficient notched impact strength including 25 Kj/ m² to be able to work with heavy stones without deforming.
Regarding claim 13, the resulting combination includes the lower transverse surface being “partitioned” into two portions, the portion directly underneath the inclined surface and the other portion being directly underneath the upper horizontal surface.
Regarding claim 14, the resulting combination from claim 13 includes the first portion being positioned corresponding to the tapered surface.
Regarding claim 15, the resulting combination from claim 14 includes the second portion being positioned corresponding to the second transverse surface.
Regarding claim 16, while Flowers’s Figure 5 shows a generally short-rectangular peg portion but fails to explicitly disclose a height of the planar end, a length of the upper transverse surface and the second portion of the lower transverse surface be generally the same measurement thereby providing a generally square portion, this appears to be merely a matter of change in shape since it would not change the function to make the generally short-rectangular peg portion a hair shorter to be a square. It has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the generally short-rectangular portion to be a generally square portion with a height of the planar end, a length of the upper transverse surface and the second portion of the lower transverse surface be generally the same measurement based on design choice lacking criticality. It is further noted that Applicant’s specification discloses that a height of the planar end, a length of the upper transverse surface and the second portion of the lower transverse surface be generally the same measurement thereby providing a generally square portion ([0034], emphasis added by Examiner).
Regarding claim 17, the resulting combination includes the lower transverse surface being substantially parallel to the upper transverse surface.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Flowers, US 2004/0003572 A1 in view of Tavy et al., US 2012/0297714 A1.
Regarding claim 18, Flowers teaches a method of laying stones of various shapes and sizes allowing for a perfect stone fit (Figures 1, 5, and 7-8), the method comprising the steps of:
providing a combined peg and wedge tool (Figure 5); and
positioning at least one first combined peg and wedge tool between two stones, such that a pointed wedge end is placed between the two stones (Figures 7 and 8);
wherein the combined peg and wedge tool comprises a first flat planar transverse and a second flat planar transverse surface without indentations.
While Flowers fails to disclose utilizing the at least one first and second combined peg and wedge tools to lift and position the two stones, Tavy teaches a very similar tool and discloses utilizing the at least one first and second combined peg and wedge tools to lift and position the two tiles (bottom half of [0070]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Flowers’s method in view of Tavy’s suggestion to include utilizing the at least one first and second combined peg and wedge tools to lift and position the two stones as an additional way to use the tool.
While the resulting combination fails to explicitly disclose that the combined peg and wedge tool has a tensile strength of between 1.10 and 1.40 N/m² and a notched impact strength of 25 Kj/ m², Flowers further discloses that the tool is preferably made of wood and discusses “not substantially deformed under the weight of the masonry objects” (last seven lines of [0026]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tool of the resulting combination to have a sufficient tensile strength, including in the range of 1.1 and 1.40 N/m², and a sufficient notched impact strength including 25 Kj/ m² to be able to work with heavy stones without deforming.
While the resulting combination fails to explicitly disclose that the tool is manufactured from injection molded acrylonitrile butadiene styrene, Flowers further discloses that the tool can alternately be made of any material that is not substantially deformed under the weight of the masonry objects including materials such as hard plastic. The Examiner took Official Notice in the previous office action that injection molding is an old and well-known method of molding and acrylonitrile butadiene styrene is an old and well-known thermoplastic. Applicant failed to challenge the Official Notice in their arguments. Under the guidelines of MPEP 2144.03, to adequately traverse Official Notice, an applicant must specifically point out the supposed errors in the Examiner’s action including stating why the noticed fact is not considered to be common knowledge or well-known in the art. A general allegation that the claims define a patentable invention without any reference to the Examiner’s assertion of Official Notice would be inadequate. Since applicant did not adequately traverse the Examiner’s assertion of Official Notice, the facts are now considered to be admitted prior art (MPEP 2144.03). Applicant’s traversal is considered inadequate because there was no reference to the Examiner’s assertion of Official Notice. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tool of the resulting combination to be manufactured from injection molded acrylonitrile butadiene styrene since it is a commonly available thermoplastic and injection molding is a common method of molding.
Tavy further discloses that an advantage of having a tool with a wedge end (wedge portion) attached to a portion of uniform thickness (tongue portion) is that “the same spacers may be used both for traditional (i.e. uniform-thickness) spacing and for minor modifications thereto” (last five lines of [0058]). Flowers further discloses positioning two tools in one gap between two stones if the stones are long and may require more than one tool (Figure 8; [0029]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position at least one second combined peg and wedge tool between the two tiles, such that a planar peg end is placed between the two tiles in view of Tavy’s further disclosure of being able to use both ends of the tool and Flowers’s disclosure of using two tools between a gap between two stones as a way to maintain the desired spacing even if two stones have a non-uniform gap when placed adjacently.
Regarding claim 19, the resulting combination includes the combined peg and wedge tool comprising a pointed wedge end and a planar peg end.
Regarding claim 20, the resulting combination includes second flat planar transverse surface extending from the tapered surface, which is substantially parallel to said first flat planar transverse surface. While Flowers discloses that the angle can be approximately 30 degrees, but fails to disclose approximately 23-degrees at the angled end, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the angled end to be an approximately 23-degree angle based on the range of gap sizes desired between stones since the wedge portion is inserted between stones to maintain a desired gap size (a 23-degree angle would yield a slightly smaller gap between stones than a 30-degree angle). It is noted that Applicant’s specification discloses that the angled end could be 23° or any other suitable acute angle based on the wants/needs of a user ([0029]).
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the arguments are against the rejection prior to the claim amendments. The rejection above has been modified to address the amended claims. Applicant’s arguments against Tavy’s tool having indentations are moot since Tavy is no longer relied on for the tool.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited sheet. Examiner notes that Joos, US 4,908,952 was previously cited for teaching a similar tool that also does not have the indentations as claimed and can be made of wood.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Sebesta can be reached at 571-272-0547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671