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 Arguments
Applicant’s arguments, filed 4/2/2026, with respect to claim objections for claims 9 and 24 have been fully considered and are moot in light of the recent amendments to the claims. The objections of 12/3/2025 have been withdrawn because the claims were cancelled.
Applicant’s arguments, filed 4/2/2026, with respect to drawing objections have been fully considered and are moot in light of the recent amendments to the claims. The objection of 12/3/2025 have been withdrawn because the claims were cancelled and amended accordingly to overcome the drawing rejections.
Applicant’s arguments, filed 4/2/2026, with respect to the double patenting rejections have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration and in light of the claim amendments, a new ground(s) of rejection is made as a nonstatutory statutory double patenting rejection.
Applicant’s arguments, filed 4/2/2026, with respect to 35 U.S.C 112(b) for claims 7, 8, and 16 have been fully considered and are moot in light of the recent amendments to the claims. The rejections of 12/3/2025 have been withdrawn because the claims were cancelled.
Applicant’s arguments, filed 4/2/2026, with respect to 35 U.S.C 112(b) for claims 14 have been fully considered and are moot in light of the recent amendments to the claims. The rejections of 12/3/2025 have been withdrawn because the claims were amended.
Applicant’s arguments, filed 4/2/2026, with respect to 35 U.S.C 112(d) for claims 24 have been fully considered and are moot in light of the recent amendments to the claims. The rejections of 12/3/2025 have been withdrawn because the claims were cancelled.
Applicant’s arguments, filed 4/2/2026, with respect to the rejection(s) of under 35 USC 103 with respect to the unexamined amended claim language of an electronic simulated fire bed assembly received on the foundation, said electronic simulated firebed projecting visually simulated flames and fire effects onto the rear imaging screen portion have been fully considered and are persuasive. Upon further consideration, a new ground(s) of rejection is made in view of GB2275105A O’Niell.
Applicant’s arguments, filed 4/2/2026, with respect to 35 USC 103 have been fully considered and are persuasive regarding that Miles glass panel 38 is not a decorative grill. The rejection of 12/3/2025 has been withdrawn.
Applicant's arguments filed 4/2/2026, with respect to the issues below, have been fully considered but they are not persuasive:
Regarding applicant’s arguments that Miles fender 16 is not a decorative grill, filed 4/2/2026, the fender 16 is a grille shape and is interpreted by the examiner to be decorative.
Regarding claim 25, applicant’s arguments that Milnes does not teach a rear imaging screen being received in a lip channel, the examiner respectfully disagrees. In the interest of compact prosecution fig. 5 of Milnes is added below in further detail.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, and 6 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, and 6 of copending Application No. 17/694,403 (reference application) in view of US8166965B2 Miles in view of Claim(s) in view of GB2275105A O’Niell (see rejections below).
This is a provisional nonstatutory double patenting rejection.
Instant application 17/694,403
Application 17/694,424
1. (currently amended)
A ready to assemble simulated fireplace insert kit comprising:
a firebox panel having a rear imaging screen portion and [[a]] forwardly extending left and right side portions;
a foundation having a front, a top, opposing left and right sides, and a rear;
said firebox panel having a lower peripheral edge removably secured to said foundation, first and second upright structural supports each having a lower end secured to said foundation adjacent to said front, said forwardly extending side panel portions of said firebox panel engaging said upright[[s]] structural supports whereby said foundation and said upright structural supports transfer structural rigidity to said firebox panel;
and an electronic simulated firebed assembly received on the foundation, said electronic simulated firebed projecting visually simulated flames and fire effects onto the rear imaging screen portion.
1. (Currently amended)
A furniture assembly comprising, in combination:
a ready to assemble simulated fireplace insert kit comprising:
a firebox panel having a rear imaging screen portion and a forwardly extending portion;
a foundation having a front, a top, opposing left and right sides, and a rear;
said firebox panel having a lower peripheral edge configured to be secured to said foundation, first and second upright structural supports each having a lower end configured to be secured to said foundation adjacent to said front, said forwardly extending panel portion of said firebox panel engaging said upright[[s]] structural supports whereby said foundation and said upright structural supports transfer structural rigidity to said firebox panel;
and an electronic simulated firebed assembly configured to be received on the foundation;
and a furniture piece comprising:
a furniture base having an upper surface, a furniture top having a lower surface, left and right furniture sides extending between the upper surface of the furniture base and the lower surface of the top and structurally supporting said top above said base when assembled therewith to form an insert cavity within said furniture assembly, wherein said assembled simulated fireplace kit is slidably received into said insert cavity.
Claim 3
wherein said forwardly extending panel portion comprises left and right side panel portions extending forwardly from side edges of said rear imaging screen portion
2. (currently amended)
wherein each of said upright supports has a rearwardly facing panel receiving channel, said left and right forwardly extending side panel portion of said firebox panel having a respective forward edge portion secured to said rearwardly facing panel receiving channel of said upright structural supports.
Claim 2
wherein each of said upright supports has a rearwardly extending firebox panel attachment structure, said forwardly extending portion of said firebox panel having a respective forward edge portion configured to be secured to said rearwardly extending firebox panel attachment structures of said upright structural supports.
Claim 4 (currently amended)
wherein said rearwardly extending firebox panel attachment structures facing panel receiving channel comprises a planar flange extending along at least a portion of said upright support
Claim 4
wherein said rearwardly extending firebox panel attachment structures comprise a planar flange extending along at least a portion of said upright supports
Claim 6 (currently amended)
wherein said left and right forwardly extending side panel portions of said firebox panel each have a lower peripheral edge secured to said foundation.
Claim 6
wherein said left and right side panel portions of said firebox panel each have a lower peripheral edge removably secured to said foundation.
Thus, it is apparent that the more specific patent claims 1-8 encompass application claims 1-8, respectively. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Note that since application claims 1-8 are anticipated by patent claims 1-8, respectively, and since anticipation is the epitome of obviousness, then application claims 1-8 are obvious over patent claims 1-8, respectively.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2, 4, 6, 11, is/are rejected under 35 U.S.C. 103 as being unpatentable over US8166965B2 Miles in view of Claim(s) in view of GB2275105A O’Niell.
Regarding claim 1,
Miles teaches, except where struck through,
A ready to assemble simulated fireplace insert kit (insert assembly 10) comprising:
a firebox panel having a rear imaging screen portion (firebox 18, specifically rear wall 22) and forwardly extending portion (opposed side walls 24 and 26);
a foundation (burner plate 56) having a front, a top, opposing left and right sides, and a rear (figs. 2, 3, 4, 5);
said firebox panel having a lower peripheral edge removably secured to said foundation (base rim 20 has bores 120),
first and second upright structural supports each having a lower end secured to said foundation adjacent to said front (see annotated fig. 3 below),
said forwardly extending panel portion of said firebox panel engaging said upright structural supports (figs. 1-7) whereby said foundation and said upright structural supports transfer structural rigidity to said firebox panel (the result of being attached to each other is inherent to create greater structural rigidity);
While Miles does teach a firebed (burner 32) assembled on a foundation (56), the difference between the prior art and the claimed invention is that Miles does not teach: and an electronic simulated fire bed assembly received on the foundation, said electronic simulated firebed projecting visually simulated flames and fire effects onto the rear imaging screen portion.
O’Niell teaches Specifically, O’Niell teaches an electronic simulated fire bed assembly (page 1 lines 1 to 11 and bracket 18, fuel 9, reflector 3, bulbs 10 and 11, electrically driven fan 16, sparks 25, color generating members 6, and simulated fuel 5) received on the foundation (30, 31, 33, and 32 make up a foundation as seen in figs. 1 and 2), said electronic simulated firebed projecting visually simulated flames and fire effects onto the rear imaging screen portion (page 15 lines 10 to 19).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to replace the gas burner 32 and pilot 34 of Miles with the simulated flame parts (previously discussed) of O’Niell as made obvious by O’Niell’s teachings that gas or electric fires may be used interchangeably to create a fire image (O’Niell page 1 lines 1 to 11).
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Regarding claim 2,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claim 1 (as discussed above)
wherein each of said upright supports has a rearwardly facing panel receiving channel, said left and right forwardly extending portion of said firebox panel having a respective forward edge portion secured to said rearwardly facing panel receiving channel of said upright structural supports (See annotated fig. 3 below and fig. 2).
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Regarding claim 4,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of (as discussed above)
wherein said rearwardly facing panel receiving channel comprise a planar flange extending along at least a portion of said upright supports (see the annotated fig. 3 of claim 2, the rearwardly extending firebox panel attachments are a flange).
Regarding claim 6,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claim 2 (as discussed above)
wherein said left and right forwardly extending side panel portions of said firebox panel each have a lower peripheral edge (rim 20) removably secured to said foundation (column 7 lines 15 through 26).
Regarding claim 11,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claim 1 (as discussed above)
wherein said kit further comprises a heater unit located in an interior space defined within the foundation (burner 34 is on top of burner plate 56 and is therefore within the foundation as it is part of it).
Regarding claim 12,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claim 1 (as discussed above)
wherein said kit further comprises a decorative grill secured to the front of the foundation (see fig. 5, is a decorative face frame, decorative fender 16).
Regarding claim 13,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claim 1 (as discussed above)
wherein said kit further comprises a transparent viewing panel received and supported at the front of the foundation between said first and second upright supports (window and glass panel 38 see figs. 4 and 5 column 6 lines 12 to 23).
Regarding claim 14,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claim 13 (as discussed above)
wherein each of said upright structural supports each has an inwardly facing glass receiving channel (the glass of glass panel 38 is taught in Miles to be integral to glass panel 38 and therefore the box created by the opening of glass panel 38 contains attachment structures to contain the glass which are inwardly extending see annotated fig. 2 below and therefore inherently contains the glass of glass panel 38 per column 6 lines 12 to 23), said transparent viewing panel having opposing side edges received within said glass receiving channel (see annotated fig.2 below).
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Regarding claim 15,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of 14 (as discussed above) and further teaches wherein said transparent viewing panel comprises glass (glass panel 38 per column 6 lines 12 to 23).
The difference between the prior art and the claimed invention is that Miles does not teach: and said viewing panel attachment structures comprise inwardly extending channels.
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Further, there were design incentives for implementing the claimed variation. Specifically, O’Niell teaches a simulated flame fireplace insert (page 1 lines 1 to 11) and said viewing panel attachment structures comprise inwardly extending channels (27 front glass panel retaining bracket, retaining side brackets 28, and 29 front glass channel and 29 front glass channel is a channel).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify the front glass panel 38 of Miles with the 29 front glass channel of O’Niell for the purpose of retaining glass and other structural members (Miles page 11 lines 25 through 37).
Regarding claims 17 and 19,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claims 1 and 2 respectively (as discussed above)
wherein said kit further comprises a horizontal structural support extending between upper ends of said first and second upright structural supports (see annotated fig.2 below).
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Regarding claims 18, and 20,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claims 17 and 19 respectively (as discussed above)
wherein said horizontal structural support comprises a structural connector secured between respective upper ends of said first and second upright structural supports (see annotated fig. 5 below).
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Regarding claims 25,
Miles as modified teaches,
The ready to assemble simulated fireplace insert kit of claim 1 (as discussed above)
wherein said foundation includes an upwardly facing lip channel, said lower peripheral edge of said rear imaging screen of said firebox panel received in said lip channel (see fig. 5 the upward facing channel is formed by burner plate 56 and short inlet pipes 74 to meet with rear wall 22).
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Regarding claims 27,
Miles teaches,
A ready to assemble simulated fireplace insert kit (insert assembly 10) comprising:
a firebox panel structure comprising a rear imaging screen (firebox 18, specifically rear wall 22), and left and right side panels (see annotated fig. 3 below);
a foundation (burner plate 56) having a front, a top, opposing left and right sides, and a rear (figs. 2, 3, 4, 5);
said left and right side panels of said firebox panel structure each having a lower peripheral edge secured to said foundation (base rim 20 has bores 120),
first and second upright structural supports each having a lower end removably secured to said foundation (figs. 1-7),
said left and right side panel portions of said firebox engaging said rear imaging screen and said upright structural supports whereby said foundation and said upright structural supports transfer structural rigidity to said firebox panel structure (the result of being attached to each other is inherent to create greater structural rigidity);
While Miles does teach a firebed (burner 32) assembled on a foundation (56), the difference between the prior art and the claimed invention is that Miles does not teach: an electronic simulated firebed assembly received on the foundation, said electronic simulated firebed assembly projecting visually simulated flames and fire effects onto a rear imaging screen portion.
O’Niell teaches Specifically, O’Niell teaches an electronic simulated fire bed assembly (page 1 lines 1 to 11 and bracket 18, fuel 9, reflector 3, bulbs 10 and 11, electrically driven fan 16, sparks 25, color generating members 6, and simulated fuel 5) received on the foundation (30, 31, 33, and 32 make up a foundation as seen in figs. 1 and 2), said electronic simulated firebed projecting visually simulated flames and fire effects onto the rear imaging screen portion (page 15 lines 10 to 19).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to replace the gas burner 32 and pilot 34 of Miles with the simulated flame parts (previously discussed) of O’Niell as made obvious by O’Niell’s teachings that gas or electric fires may be used interchangeably to create a fire image (O’Niell page 1 lines 1 to 11).
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Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over US8166965B2 Miles in view of GB2275105A O’Niell in view of US 20060230656 A1 Spengler
Regarding claim 26,
Miles as modified teaches, The ready to assemble simulated fireplace insert kit of claim 4 (as discussed above).
The difference between the prior art and the claimed invention is that Miles does not teach: wherein said foundation includes left and right upwardly facing side channels, said side panel portions of said firebox panel received in said side channels.
Spengler teaches an artificial portable fireplace (Spengler abstract claim 1).
Before the effective filing date of the claimed invention, there had been a recognized problem or need in the art to solve the problem of providing structures for attaching parts of a portable fireplace to each other (Spengler par. 8).
There were a finite number of identified and predictable potential solutions to the recognized need or problem evidenced by Spengler teaching structure to connect parts together as is evident by locking channels 80 and 62 of Spengler.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try using channels to connect and retain parts (Spengler par. 5 and 8) of firebox 18, specifically rear wall 22 and opposed side walls 24 and 26 to the burner plate 56 of Miles.
The results would have been predictable, since Spengler teaches the attached lock channels 80 and 62 to secure and retain parts (Spengler par. 5 and 8).
Therefore one of ordinary skill in the art would have pursued the known potential solutions with a reasonable expectation of success.
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 ADAM M ECKARDT whose telephone number is (313)446-6609. The examiner can normally be reached 6 a.m to 2:00 p.m EST Monday to Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Landrum can be reached at (571) 272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ADAM MICHAEL. ECKARDT
Assistant Examiner
Art Unit 3761
/ADAM M ECKARDT/Examiner, Art Unit 3761
/WOODY A LEE JR/Primary Examiner, Art Unit 3761
Prosecution Insights