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 .
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, 4, 13, and 16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 9, 14 and 18 of copending Application No. 18/677,535 (hereinafter ‘535) in view of Stiles US 2,268,529 (“Stiles”).
Above claim 1, “a protective apparatus comprising: a first panel, the first panel including a front side and a back side, the first panel including at least a transparent portion; a rear panel coupled to the first panel, the rear panel including a front side and a back side, the front side of the rear panel including at least four supporting members, each of the at least four supporting members including a flat edge to enable positioning of a collectible object, the flat edge of a first two of the supporting members being parallel to each other, the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the supporting members, a cavity being at least between the flat edges of the four supporting members, the cavity capable of holding the collectible object; and a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel.”
Claim 14 of ‘535 “wherein the first collectible protective apparatus further includes: a first panel, the first panel including a front side and a back side, the first panel including at least a transparent portion; and a rear panel coupled to the first panel, the rear panel including a front side and a back side, the front side of the rear panel including at least four supporting members, each of the at least four supporting members including a flat edge to enable positioning of the collectible object, the flat edge of a first two of the supporting members being parallel to each other, the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the supporting members, a cavity being at least between the flat edges of the four supporting members, the cavity capable of holding the collectible object.”
Claim 14 of ‘535 is not specific regarding a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel.
However, Stiles discloses a mask coupled to a back side of a first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of a protective apparatus between the first panel and a second panel (such as opaque masking 12)(Figs. 1-4; page 2, left column, lines 6-65).
Therefore, 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 to form ‘535 with a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel as taught by Stiles for the reason that a skilled artisan would have been motivated in applying a known technique to a known device ready for improvement to yield predictable results of including a mask within the first and second panels that enhance the viewing of the enclosed images therebetween the panels, as suggested by Stiles (e.g., page 1, lines 6+”The present invention contemplates more particularly the provision of means for mounting pictures, such as positives, for viewing the image thereof under the influence of light transmission, which means permits rapid, convenient assembly while completely enclosing and sealing the picture. Heretofore, in, preparing positives for use as lantern slides, for example, it has been necessary to perform several rather tedious operations. In general, the positive was first cut to size and then placed within a mask of opaque sheet material apertured to correspond with the size of the picture. After centering the film with respect to the aperture and the mask, the assembly was then enclosed on both sides with two identical transparent sheets of glass.”).
Claim 4 recites the same limitations as claim 18 of the ‘535.
Above claim 13, “the method comprising: fabricating a first panel, the first panel including a front side and a back side, the first panel including at least a transparent portion; fabricating a rear panel, the rear panel including a front side and a back side, the front side of the rear panel including at least four supporting members, each of the at least four supporting members including a flat edge to enable positioning of a collectible object, the flat edge of a first two of the supporting members being parallel to each other, the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the supporting members, a cavity being at least between the flat edges of the four supporting members, the cavity capable of holding the collectible object; coupling a mask to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel; and coupling the first panel and the second panel.”
Claim 3 of ‘535, “ the method of claim 1, wherein the first collectible protective apparatus comprises: a first panel, the first panel including a front side and a back side, the first panel including at least a transparent portion; and a rear panel coupled to the first panel, the rear panel including a front side and a back side, the front side of the rear panel including at least four supporting members, each of the at least four supporting members including a flat edge to enable positioning of the collectible object, the flat edge of a first two of the supporting members being parallel to each other, the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the supporting members, a cavity being at least between the flat edges of the four supporting members, the cavity capable of holding the collectible object.”
Claim 3, of ‘535 recites all the limitations as claim 13 except “coupling a mask to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel; and coupling the first panel and the second panel.”
However, Stiles discloses coupling a mask to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel; and coupling the first panel and the second panel (coupling an opaque masking 12 with panels 10)(Figs. 1-4; page 2, left column, lines 6-65).
Therefore, 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 to form ‘535 coupling a mask to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel; and coupling the first panel and the second panel as taught by Stiles for the same reasons discussed above.
Claim 16 recites the same limitations as claim 9 of the ‘535.
This is a provisional nonstatutory double patenting rejection.
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, 5-7, 10-14, and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hager US 4,979, 619 (“Hager”) in view of US 2,268,529 (“Stiles”).
As per claim 1, Hager discloses a protective apparatus (case 10)(Figs. 1-7; 3:4-4:20) comprising:
a first panel (front panel 11)(Figs. 1-4; 3:8-22), the first panel including a front side and a back side (Figs. 1-4), the first panel including at least a transparent portion (made from transparent material)(3:8-10);
a rear panel (rear panel 12)(Figs. 1-3, and 5-7; 3:23-42) coupled to the first panel (Figs. 1, 2 and 7; 3:44-53), the rear panel including a front side and a back side (Figs. 1-3 and 5-7), the front side of the rear panel including at least four supporting members (shoulders 25)(Fig. 5; 3:28-38), each of the at least four supporting members including a flat edge to enable positioning of a collectible object (the shoulders 25 are to support collectible card 13)(Figs. 1-2; 3:27-38), the flat edge of a first two of the supporting members being parallel to each other (Fig. 5), the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the supporting members (Fig. 5), a cavity (a holding zone 26)(Figs. 5 and 6; 3:30-38) being at least between the flat edges of the four supporting members (Figs. 5 and 6), the cavity capable of holding the collectible object (card 13)(Figs. 1 and 2 in conjunction to Figs. 5 and 6; 3:27-39).
Hager is not specific regarding and a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel.
However, Stiles discloses a mask coupled to a back side of a first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of a protective apparatus between the first panel and a second panel (such as opaque masking 12)(Figs. 1-4; page 2, left column, lines 6-65).
Therefore, 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 to form Hager with a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel as taught by Stiles for the reason that a skilled artisan would have been motivated in applying a known technique to a known device ready for improvement to yield predictable results of including a mask within the first and second panels that enhance the viewing of the enclosed images therebetween the panels, as suggested by Stiles (e.g., page 1, lines 6+”The present invention contemplates more particularly the provision of means for mounting pictures, such as positives, for viewing the image thereof under the influence of light transmission, which means permits rapid, convenient assembly while completely enclosing and sealing the picture. Heretofore, in, preparing positives for use as lantern slides, for example, it has been necessary to perform several rather tedious operations. In general, the positive was first cut to size and then placed within a mask of opaque sheet material apertured to correspond with the size of the picture. After centering the film with respect to the aperture and the mask, the assembly was then enclosed on both sides with two identical transparent sheets of glass.”).
As per claim 2, with respect to wherein the first panel and the second panel comprise polycarbonate, the protective apparatus being thereby protected from at least some impacts and UV light, note Hager’s 3:8-10 regarding using such material for front panel 11; note 3:22-25 as the same materials are to be use to form rear panel 12.
As per claim 5, with respect to further comprising an elevated edge along the edge of the first panel or the second panel, the elevated edge extending between the first panel and the second panel, the elevated edge preventing debris from entering the protective apparatus, Hager discloses lip 21 at edges 14-15 of rear panel 11 to abut against region 32 of panel 12, to be ultrasonic sealing thereto (i.e., prevent debris from entering)(Figs. 1, 2, 4 and 6; 3:46-4:2).
As per claim 6, with respect to further comprising an elevated edge along the edge of the first panel or the second panel, the elevated edge extending between the first panel and the second panel, the elevated edge being ultrasonic welded to the first panel or the second panel to prevent tampering with the collectible object, Hager discloses lip 21 at edges 14-15 of rear panel 11 to abut against region 32 of panel 12, to be ultrasonic sealing thereto (Figs. 1, 2, 4 and 6; 3:46-4:2). In addition, the term “to prevent tampering with the collectible object ” does not impart structure, and as discussed hereinafter with respect to claim 7, Hager shows all the structural limitations as claimed and therefore Hager’s device is fully capable for such intended use as claim.
As per claim 7, with respect to wherein the ultrasonic welding of the elevated edge prevents water from entering between the first panel and the second panel if the protective apparatus is submerged, the examiner takes the position that such ultrasonic weld of the rear panel to the front panel, is such “water resistance”, according to applicant’s disclosure. Applicant in at least [0053] states “Portions of the protective apparatus may be coupled together using an ultrasonic welder or laser welding. By coupling the portions together, the protective apparatus may prevent tampering (i.e., tampering may be obvious due to damage to the protective apparatus). In some embodiments, when coupled together, the protective apparatus may be waterproof or water-resistant.”. In addition, it is noted that it has been held that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Hager shows all the structural limitations as claimed (i.e., elevated edges of the first and second panels to be ultrasonic welded) and the term “prevent water from entering” (i.e. “water resistance”) does not impart structure. Thus, Hager’s device is fully capable for such water resistance capability.
As per claim 10, with respect to the mask defining a first window and a second window of the first panel, the second window being rectangular and over at least a portion of the cavity to enable viewing of the collectible object, the first window being rectangular and shorter than the first window, note Stiles’ Figs. 8-10 and page 3, left column, lines 32-54 regarding mask with first and second windows (aperture 26).
Within the modified Hager by the teaching of Stiles, the first’s mask’s window (e.g. Fig. 9 of Stiles) would have been associated within holding zone 26 of Hager (e.g., Fig. 5) and the second mask’s window would have need associated with holding zone 27 of Hager (Fig. 5).
As per claim 11, with respect to wherein the rear panel or the front panel includes a perimeter member at the perimeter of the rear panel or the front panel, the perimeter member configured to engage with the elevated edge to couple the first panel and the second panel together to reduce opportunities for tampering with the collectible object, Hager discloses lip 21 at edges 14-15 of rear panel 11 to abut against region 32 of panel 12, to be ultrasonic sealing thereto (Figs. 1, 2, 4 and 6; 3:46-4:2). In addition, the term “reduce opportunities for tampering with the collectible object” does not impart structure, and as discussed above with respect to claim 7, Hager shows all the structural limitations as claimed and therefore Hager’s device is fully capable for such intended use as claim.
As per claim 12, Hager discloses the elevated edge being ultrasonic welded to the perimeter member, lip 21 at edges 14-15 of rear panel 11 to abut against region 32 of panel 12, to be ultrasonic sealing thereto (Figs. 1, 2, 4 and 6; 3:46-4:2)
As per claim 13, Hager discloses a method for fabricating a protective apparatus (fabricating case 10)(Figs. 1-7; 3:4-4:20), the method comprising:
fabricating a first panel (fabricating a front panel 11)(Figs. 1-4; 3:8-22), the first panel including a front side and a back side (Figs. 1-4), the first panel including at least a transparent portion (the front panel is made from transparent material)(3:8-10);
fabricating a rear panel (fabricating a rear panel 12)(Figs. 1-3, and 5-7; 3:23-42), the rear panel including a front side and a back side (Figs. 1, 2 and 7; 3:44-53), the front side of the rear panel including at least four supporting members (shoulders 25)(Fig. 5; 3:28-38), each of the at least four supporting members including a flat edge to enable positioning of a collectible object (the shoulders 25 are to support collectible card 13)(Figs. 1-2; 3:27-38), the flat edge of a first two of the supporting members being parallel to each other (Fig. 5), the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the supporting members (Fig. 5), a cavity (a holding zone 26)(Figs. 5 and 6; 3:30-38) being at least between the flat edges of the four supporting members (Figs. 5 and 6), the cavity capable of holding the collectible object (card 13)(Figs. 1 and 2 in conjunction to Figs. 5 and 6; 3:27-39), and coupling the first panel and the second panel (Figs. 1, 2 and 7; 3:43-53)
Hager is not specific regarding coupling a mask to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel; and coupling the first panel and the second panel.
However, Stiles discloses coupling a mask to a back side of a first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of a protective apparatus between the first panel and a second panel (such as coupling opaque masking 12 to panels 10)(Figs. 1-4; page 2, left column, lines 6-65).
Therefore, 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 to form Hager’s coupling a mask to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel; and coupling the first panel and the second panel.
as taught by Stiles for the same reasons discussed above with respect to claim 1.
As per claim 14, with respect to wherein the first panel and the second panel are made of polycarbonate, the protective apparatus being thereby protected from at least some impacts and UV light, note Hager’s 3:8-10 regarding using such material for front panel 11; note 3:22-25 as the same materials are to be use to form rear panel 12.
As per claim 17, with respect to the first panel or the second panel further comprising an elevated edge along the edge of the first panel or the second panel, the elevated edge extending between the first panel and the second panel, the elevated edge preventing debris from entering the protective apparatus, Hager discloses lip 21 at edges 14-15 of rear panel 11 to abut against region 32 of panel 12, to be ultrasonic sealing thereto (i.e., prevent debris from entering)(Figs. 1, 2, 4 and 6; 3:46-4:2). In addition, the term “the elevated edge preventing debris from entering the protective apparatus” does not impart structure, and as discussed above with respect to claim 7, Hager shows all the structural limitations as claimed and therefore Hager’s device is fully capable for such intended use as claim.
As per claim 18, with respect to wherein coupling the first panel and the second panel comprises ultrasonic welding an elevated edge to couple the first panel and the second panel, the elevated edge being along the edge of the first panel or the second panel, the elevated edge extending between the first panel and the second panel, the elevated edge preventing debris from entering the protective apparatus, Hager discloses lip 21 at edges 14-15 of rear panel 11 to abut against region 32 of panel 12, to be ultrasonic sealing thereto (Figs. 1, 2, 4 and 6; 3:46-4:2).
As per claim 19, with respect to wherein the ultrasonic welding of the elevated edge prevents water from entering between the first panel and the second panel if the protective apparatus is submerged, the examiner maintains his position that such ultrasonic weld of the rear panel to the front panel, is such “water resistance” according to applicant’s disclosure (note the examiner’s discussion above, with respect to claim 7, which recites similar limitations, thus claim 19 is rejected for the same reasons as set forth in claim 7 above).
Claim(s) 3 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hager and Stiles as applied to claims 1 and 13 above, and further in view of Snoke et al US 5,787,627 (“Snoke”) .
As per claim 3, Hager is not specific regarding further comprising a bumper made of a resilient material that surrounds edges of the first panel and the second panel.
However, Snoke discloses a bumper made of a resilient material that surrounds edges of a first panel and a second panel (construed as frame 10 surrounds edges of panels 12 and 16)(Figs. 1-6; 5:28-7:16).
Therefore, 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 to form Hager’s device with a bumper made of a resilient material that surrounds edges of the first panel and the second panel as taught by Snoke for the reason that a skilled artisan would have been motivated by Snoke’s suggestions to use such bumper as a protective means to firs/front and rear panels that are configure for holding a printed matter (e.g., a picture) within (e.g., 2:6+ “an object of the present invention to provide a framed picture constructed for protecting a frame and a picture covering positioned therein from damage; to provide a picture frame which is integrally formed of a unitary piece of soft, pliable material”).
As per claim 15, Hager is not specific regarding further comprising coupling a bumper made of a resilient material around edges of the first panel and the second panel.
However, Snoke discloses coupling a bumper made of a resilient material around edges of a first panel and a second panel (coupling frame 10 surrounds edges of panels 12 and 16)(Figs. 1-6; 5:28-7:16).
Therefore, 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 to form Hager’s coupling a bumper made of a resilient material around edges of the first panel and the second panel as taught by Snoke for the same reasons discussed above with respect to claim 3.
Claim(s) 4 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hager and Stiles as applied to claims 1 and 13 above, and further in view of Macor US 8,376,133 (“Macor”).
As per claim 4, Hager is nots specific regarding further comprising a security feature between the first panel and the second panel, the security feature including at least one of a near field communication (NFC) chip and a radio frequency identification (RFID) chip, the security feature being beneath the mask such that the security feature is not visible from the front of the first panel.
However, Macor discloses further comprising a security feature between a first panel and a second panel, the security feature including at least one of an NFC chip and an RFID chip (such as RFID 67)(Fig. 5; 5:10-34).
Therefore, 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 to form Hager’s further comprising a security feature between the first panel and the second panel, the security feature including at least one of a near field communication (NFC) chip and a radio frequency identification (RFID) chip as taught by Macor for the reason that a skilled artisan would have been motivated in combining prior art elements according to known methods to yield predictable results forming a protective apparatus for protecting a collectible object that further includes an (RFID) chip that can provide desired data as well as provide security features. Such a (RFID) chip is much preferred within the protective device of Hager to add another level of security as well as any additional desired data.
With respect to, the security feature being beneath the mask such that the security feature is not visible from the front of the first panel, within the modified Hager by the teachings of Stiles (i.e., mask) the (RFID) chip would have been position as such.
In addition, applicant in at least [0070] stats “ In some embodiments, there may be a logo, NFC chip, and/or RFID chip anywhere between or on the top or bottom portions.” . Also, consider the court’s ruling as it has been held that claims which read on the prior art except with regard to the position of the elements were held unpatentable because shifting the position of the elements would not have modified the operation of the device; see In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950);In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Therefore, 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 to position the security feature beneath the mask such that the security feature is not visible from the front of the first panel for the reason that a skilled artisan would have been motivated merely as an obvious engineering choice that would have not changed the function of the (RFID) chip nor such location would have changed the nature of the protective apparatus to receive the collectible object within.
As per claim 16, Hager is not specific regarding further comprising adding a security feature between the first panel and the second panel before the first panel is coupled to the second panel, the security feature including at least one of a near field communication (NFC) chip and a radio frequency identification (RFID) chip, the security feature being beneath the mask such that the security feature is not visible from the front of the first panel.
However, Macor discloses adding a security feature between a first panel and a second panel before the first panel is coupled to the second panel, the security feature including at least one of an (NFC) chip and an (RFID) chip (adding a RFID 67 before ultrasonic of upper hosing 61 and lower housing 79)(Fig. 5; 5:10-34).
Therefore, 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 to form Hager’s adding a security feature between the first panel and the second panel before the first panel is coupled to the second panel, the security feature including at least one of an (NFC) chip and an (RFID) chip as taught by Macor for the same reasons discussed above with respect to claim 4.
With respect to the security feature being beneath the mask such that the security feature is not visible from the front of the first panel, the examiner maintains his position that such modification would have been obvious for the same reasons discussed above with respect to claim 4.
Claim(s) 8 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hager and Stiles as applied to claims 1 and 13 above, and further in view of Grosso US 5,074,593 (“Grosso”).
As per claim 8, Hager does not disclose further comprising a protective layer adhered to the front side of the first panel, the protective layer being transparent and configured to prevent damage to the front side of the first panel.
However, Grosso discloses further comprising a protective layer adhered to a front side of the a panel, the protective layer being transparent and configured to prevent damage to the front side of the first panel (protective sheet 41 adhere to adhesive frame 48 on a first panel)(Fig. 8; 5:21-57).
Therefore, 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 to form Hager’s further comprising a protective layer adhered to the front side of the first panel, the protective layer being transparent and configured to prevent damage to the front side of the first panel as taught by Grosso for the reason that a skilled artisan would have been motivated in combining prior art elements according to known methods to yield predictable results of forming a an enclosed protective apparatus formed by first/front and rear panels that includes a protective layer for protecting the first/front panel from any damage yet allowing the enclosed collectible object to be seen via the transparent protective adhered layer.
As per claim 20, Hager does not disclose further comprising coupling a protective layer to the front side of the first panel, the protective layer being transparent and configured to prevent damage to the front side of the first panel.
However, Grosso discloses coupling a protective layer to a front side of a first panel, the protective layer being transparent and configured to prevent damage to the front side of the first panel (coupling a protective sheet 41 to an adhesive frame 48 on a first panel)(Fig. 8; 5:21-57).
Therefore, 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 to form Hager’s coupling a protective layer to the front side of the first panel, the protective layer being transparent and configured to prevent damage to the front side of the first panel as taught by Grosso for the same reasons discussed above with respect to claim 8.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hager and Stiles as applied to claim 2 above, and further in view of Ueno US 2004/0007870 (“Ueno”).
As per claim 9, Hager is not specific regarding further comprising an identifier that is hot stamped on the polycarbonate.
However, Ueno discloses an identifier that is stamped on a panel (stamped 310 upon panel 304)(Fig. 8; [0068]-[0071]).
Therefore, 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 to form Hager’s with an identifier that is stamped on the panel as taught by Ueno for the reason that a skilled artisan would have been motivated by Ueno’s suggestion to include stamped identifier related to collectible objects (e.g. [0071]).
With respect to the identifier that stamped on the polycarbonate, the panel of Hager is made from polycarbonate and the identifier would have been stamped on the polycarbonate.
With respect to the stamped as “ hot stamped”, it is noted that It has been held that even though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself. The patentability of a
product does not depend on its method of production. If the product in the
product-by-process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The examiner takes the position that the final product of Hager-Ueno would have the identifier is stamped on the panel (as taught by Ueno ) whereas the panel would have been made from polycarbonate (as taught by Hager).
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
In regard to the DP rejection
Applicant did not argue any specific nor provided terminal disclaimer, and therefore the examiner maintains his DP rejection as set forth above.
In regard to the rejection under 35 USC 103-claims 1-2, 5-7, 10-14 and 17-19
Applicant copied the abstract of the reference to Hager, thereafter discussed the reference to Stiles and concluded “Even if Stiles disclosed the claimed mask structure, there- would be no motivation to combine Hager and Stiles. Hager 's panels are configured to be cohesively interbonded at the perimeter, which causes abutting surfaces to establish secure bonding by fusion at the microscopic level. Adding a mask structure as allegedly taught by Stiles would interfere with this bonding mechanism and prevent the secure sealing that is fundamental to Hager's protective apparatus. As such, Stiles does not appear to teach or suggest: a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel as required by claim 1”(remarks pages 6-8).
The examiner respectfully disagrees and further asserts that such is applicant’s own conclusion not based upon the teachings of the prior art and what such teachings would have suggested to a person of ordinary skill in the art.
First, attention to Stiles Figs. 2 and 3, as reproduce hereafter
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Also, consider Stiles’ page 2, left column, lines 38+ “According to one manner of carrying out the present invention, one of the masking members 12 is placed flatwise upon the surface of the adjacent transparency, as shown in Fig. 2, and preferably glued or otherwise caused to adhere in place. In the preferred embodiment wherein the transparent member 10 is relatively stiff and self- supporting the masking member 12 may be correspondingly thin. It has been found that an ordinary opaque decalcomania is entirely suitable for this purpose. More particularly, the mask 12 is of rectangular configuration, having a rectangular aperture 18 of a size corresponding to the proposed picture. It will be obvious from the above disclosure that the mask is opaque”.
Thus, contradicting to applicant’s assertions Stiles appear to teach or suggest: a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel. Within the modified Stiles and Hager, while the mask (as taught by Stiles) within the apparatus, the mask covering an inside of the protective apparatus between the first panel and the second panel.
Second, with respect to the proposed modification, applicant alleged that “Adding a mask structure as allegedly taught by Stiles would interfere with this bonding mechanism and prevent the secure sealing that is fundamental to Hager's protective apparatus”, are clearly applicant’s own conclusions not based upon the teaching of the prior art. The masking means 12, as shown in at least Stiles’ Figs. 2 and 3 (as copied above) does not interfere with any bonding of the front and back panels (e.g., plates 10, as shown in Fig. 1) and position within an interior portion of the frame/panels (where a picture position; which is equivalent to the position of the collectible object, within Hager). Thus, there is nothing that will suggest to one of ordinary skill in the art the utilizing the masking means, as taught by Stiles, within the device of Hager would somehow interfere with the bonding mechanism of Hager, as alleged by applicant.
Furthermore, adding such masking means within Hager would have enhanced the viewing of the protective apparatus of Hager, as suggested by Stiles. Sites, in page 1, left column, lines 6+ states” The present invention contemplates more particularly the provision of means for mounting pictures, such as positives, for viewing the image thereof under the influence of light transmission, which means permits rapid, convenient assembly while completely enclosing and sealing the picture. Heretofore, in, preparing positives for use as lantern slides, for example, it has been necessary to perform several rather tedious operations. In general, the positive was first cut to size and then placed within a mask of opaque sheet material apertured to correspond with the size of the picture”.
To that end, it is noted that it has been held that the expectation of some advantage is the strongest rationale for combining references. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006)”. In this case, the proposed Hager- Stiles would have resulted in advance viewing apparatus, which is a strong motivation for proposed combination.
With respect to claim 13, applicant did not provide any additional arguments regarding the modified Hager- Stiles, and merely stated the prior art (namely Stiles) does not disclose “a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel as required by claim 1”. The examiner respectfully disagrees and maintains his position that the prior art, Stiles, discloses such limitations as set forth above.
In regard to the rejection under 35 USC 103-claims 3 and 15 (remarks pages 8-10)
Applicant did not provide any additional arguments regarding the modified Hager- Stiles, and merely stated the prior art does not disclose “a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel as required by claim 1”. The examiner respectfully disagrees and maintains his position that the prior art, Stiles, discloses such limitations as set forth above.
In regard to the rejection under 35 USC 103-claims 4 and 16 (remarks pages 10-11)
Applicant did not provide any additional arguments regarding the modified Hager- Stiles, and merely stated the prior art does not disclose “a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel as required by claim 1”. The examiner respectfully disagrees and maintains his position that the prior art, Stiles, discloses such limitations as set forth above.
In regard to the rejection under 35 USC 103-claims 8 and 20 (remarks pages 11-12)
Applicant did not provide any additional arguments regarding the modified Hager- Stiles, and merely stated the prior art does not disclose “a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel as required by claim 1”. The examiner respectfully disagrees and maintains his position that the prior art, Stiles, discloses such limitations as set forth above.
In regard to the rejection under 35 USC 103-claim 9 (remarks pages 13-14)
Applicant did not provide any additional arguments regarding the modified Hager- Stiles, and merely stated the prior art does not disclose “a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel as required by claim 1”. The examiner respectfully disagrees and maintains his position that the prior art, Stiles, discloses such limitations as set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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 AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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/A.A.K/Examiner, Art Unit 3711 12/17/2025
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711