DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 18, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-4 & 9-21 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. With respect to Claims 1 & 20, the mere absence of a positive recitation is not a basis for an exclusion where the original disclosure is silent as to such claim scope. Since the original disclosure does not expressly state an uncovered vertically-mountable display case or a front surface of the front layer is uncovered, the claims do not adequately support such an exclusionary aspect. Consequently, the remaining claims are rejected since they are dependent, either directly or indirectly, upon a rejected claim.
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 1-4 & 9-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kester [US 2009/0033183] in view of Bowen et al., [US 7,410,053], Vaulted Vinyl [Facebook 2018 – known hereafter as VV] and McMurray [US 7,090,313]. For examination purposes, collectibles {Claim 1} and a protector {Claim 4} are interpreted as positively claimed features in combination with the display case. Kester teaches of an uncovered display case (100), the display case comprising: one or more collectibles (defined as “products” - note [0016]) each having a height, a depth and a width (conventional to three dimensional items); a discrete vertically-arranged rigid front layer (such as the material defining (105), which may consist of a layer of a fiberglass shell or a layer of plastic coating – note [0035]), the front layer formed of a thin rigid material sheet (sheet of fiberglass / sheet of plastic for example), the front layer having a vertically arranged forward facing uncovered front surface (as shown in fig. 1A); a discrete vertically-arranged pliable foam layer (such as the foam layer that is filled within the case apart from the fiberglass or plastic coating – pliable as referenced by the 1.5 pound foam) separate from and fixedly attached to the front layer; a vertically-arranged back layer (such as the material defining (106), which may consist of a layer of fiberglass shell or a layer of plastic coating similar in scope to the rigid front layer), the back layer being separate from the foam layer, fixedly attached to the foam layer and formed of a continuous thin rigid material sheet (sheet of fiberglass / sheet of plastic for example); a plurality of front layer openings (such as 110’s for instance) in the front layer; a plurality of foam layer openings in the foam layer (viewed as the same openings (110) leading into the foam layer), the plurality of foam layer openings aligned with a respective one of the front layer openings, the height and width of each of the plurality of foam layer openings being configured to receive one of the collectibles (disclosed); and a mounting means (112) in the back layer used to vertically mount the display case [0021]. Kester teaches applicant’s basic inventive claimed display case as outlined {mapped} above, including the display case able to be made of any material such as wood, plastic, metal, foam or combination of materials [0035]; but 1) does not show the front and back layers as being “discrete” and/or “single piece(s)” (i.e., distinct and separable components from each other), 2) does not disclose the depth of the foam layer openings being less than a depth of the collectibles as prescribed by applicant, such that each collectible projects out of the display case when placed within the openings; 3) does not detail a friction fit between the collectibles and the foam layer openings; and 4) does not show one or more mounting holes in both the back layer and rear foam surface of the foam layer that are accessible via the foam layer openings. As to the use of a discrete single piece front & back layers, Bowen is cited as an evidence reference for the known technique of providing a display case (20) having a discrete single piece front layer (32), a discrete single piece foam layer (34) separate from and fixedly attached to the front layer, and a discrete single piece back layer (62) separate from the front layer and the foam layer, with the back layer being fixedly attached to the foam layer (note that an embodiment can contain just (32, 34 & 62) as the main components of a case – col. 4, lines 52-56) with the back layer formed of a continuous thin rigid material sheet (tough clear plastic sheet). Accordingly, the position is taken that it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the manufacturing of Kester’s device so as to produce discrete individual layers, i.e., a single piece front layer attached to a single piece foam layer attached to a single piece back layer (as opposed to a combined front and back layer of fiberglass forming a shell around a foam layer) in view of Bowen’s teaching, with a reasonable expectation of success, because this arrangement would enhance the versatility of the prior art’s device by providing an alternative means by which the display case can be manufactured where the rigidity of the case can be strengthened due to the discrete layers being coupled on opposite sides of the foam layer and increased variability for layered materials since each layer can be replaced by a different material of choice as dependent by the needs and/or preferences of an end user. As to the special relationship between collectibles and the openings, VV is cited as an evidence reference for the known technique of forming openings within a foam layer (page 2) that is used to store collectibles by friction fit (pages 3-4) so that the collectibles project out the foam layer when placed into respective openings due to the openings having a depth that is less than the same depth of the collectibles (page 3), whereby the plurality of foam layer openings partially extend into the foam layer to form a rear foam layer wall with a rear surface in the foam layer (note page 2 depiction). Accordingly, the position is taken that it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Kester so as to vary the depth of the openings within the foam layer so that they are less than a depth of a collectible in view of VV’s teaching, with a reasonable expectation of success, because this arrangement would enhance the versatility of the prior art’s device by providing a more aesthetically pleasing appearance of the stored collectible due to the collectible being partially shown on four extra sides as opposed to just the front side only if fully inserted within a pocket having an equal depth, thereby allowing a viewer a great degree of observation of the stored collectible, while the friction fit would allow a product to remain securely held in place within the opening thereby reducing the chances of a product being displaced upon accidental bumping of the display case. As to the use of wall mounting openings within multiple layers of a device, McMurray is cited as an evidence reference for the known use of providing mounting holes (apertures – col. 6) within varying layers / structures (in this instance, a back panel (18) that is covered with a fabric layer -col. 8) for the purpose of securing a display case (12) to a wall (col. 6). Accordingly, the position is taken that it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Kester so as to incorporate mounting holes within multiple layers of a rear structure in view of McMurray’s teaching, with a reasonable expectation of success, because this arrangement would enhance the versatility of the prior art’s device by providing a convenient and economical means (holes through portions of a multi-layer rear wall structure) by which a user may simply mount the display case to a wall via the insertion of fasteners through the holes, where the holes would be accessible from a front side of the case, i.e., through an internal opening / cavity along the front of the display case. Regarding Claim 2, as modified, the height of each combined front layer and foam opening can be 5-8% greater than a height of the collectibles (note VV for instance showing the collectibles having a same height and slightly larger height of each opening – page 4, also note Kester stating that the depth and width of the storage openings may be any size or shape capable of storing or displaying a product – [0018]). Regarding Claim 3, as modified, the height of each opening can be 6-7% greater than a height of a collectible (note VV for instance showing the collectibles having a same height and slightly larger height of each opening – page 4, also note Kester stating that the depth and width of the storage openings may be any size or shape capable of storing or displaying a product – [0018]). Regarding Claim 4, as modified, the height of each opening can be 1-2% greater than a height of a protector so as to enable a snug friction fit (note snug fit shown withing VV – page 3, also note Kester stating that the depth and width of the storage openings may be any size or shape capable of storing or displaying a product – [0018]). Regarding Claim 9, as modified, the display case stores collectibles each having a same height and a same width (note VV for instance), wherein the case further comprises the foam layer having a front surface (adjacent the front layer) and a rear surface (adjacent the back layer); the front layer being fixedly attached to the front surface of the foam layer and each of the plurality of front layer openings align with a respective one of the plurality of foam openings (fig. 1A of Kester and fig. 1 of Bowen); and the back layer fixedly attached to the rear surface of the foam layer (note Bowen’s figures). Regarding Claim 10, as modified, the rear foam wall comprising a continuous uninterrupted internal rear foam wall (shown as the bottom of the pocket in the prior art – Kester, Bowen, VV for instance). Regarding Claim 11, as modified, the internal rear foam wall has the mounting holes that are accessible via the openings. Regarding Claim 12, as modified, the internal rear foam wall does not have any openings that might affect its structural support (prior to modification, the rear foam wall is devoid of mounting openings, but such mounting holes present are not deemed to affect structural support due to their small profile - which is not the same as saying the rear foam wall does not have any openings, just no openings {such as really large openings} that affect the structural integrity of the case). Regarding Claim 13, as modified, Kester describes different shaped products that each having a top, bottom, left side and right side, along with openings that each include a top, bottom, left side and right side. Kester does not disclose that the shape of the products is identical to the shape of the openings; but VV does show collectibles having a cubical shape along with cubical shaped openings that form a friction fit once the collectible is inserted within the opening. As modified, the top, bottom and sides of the collectible would form a friction fit with the respective top, bottom and sides of the opening (note page 3 of VV for instance). Regarding Claim 14, as modified, the back layer does not have any openings that might affect its structural support (which is not the same as saying the back layer does not have any openings, just no openings {such as really large openings} that affect the structural integrity of the case). Regarding Claim 15, as modified, both the collectibles and the plurality of openings can have a cuboid shape (note page 3 of VV for instance), such that the cuboid shape of the collectibles aligns with the cuboid shape of the openings. Regarding Claim 16, as modified, the front surface of the foam layer is planar, the rear surface of the foam layer is planar and the back layer is a thin planar sheet (note the layers as shown in Bowen). Regarding Claim 17, as modified, both the collectibles and the plurality of foam layer openings can have a cuboid shape (note page 3 of VV for instance), such that the cuboid shape of the collectibles aligns with the cuboid shape of the openings. Regarding Claim 18, as modified, the front layer is a thin planar sheet (clear plastic film or sheet - Bowen), the foam layer has a planar front surface and a planar back surface, and the back layer is a thin planar sheet (same material as front layer). Regarding Claim 19, as modified, the back layer may be made from a variety of materials (note Kester [0035] & Bowen (col. 3)), but the prior art does not specify carbon fiber. As to this type of material, the position is taken that it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize a varying array of known materials for the manufacture of the back layer {such as carbon fiber for instance}, with a reasonable expectation of success, depending upon the personal preferences of the designer and/or the designated environment for the finished product since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); and In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Regarding Claims 20-21, the position is taken that the similarly claimed features have adequately been mapped within the above rejections and therefore a redundant mapping of the same features is superfluous.
Response to Arguments
Applicant’s amendments to the claims and accompanying arguments, filed June 18, 2026, with respect to the outstanding 103 rejections have been fully considered, but are moot because the arguments do not apply to the mapping of the limitations as they relate to the references being used in the current rejection. Upon further search, review and consideration; the position is maintained that the combined prior art rejections in view of Kester, Bowen et al., Vaulted Vinyl and McMurray remain a viable accounting of the claimed subject matter.
In response to applicant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
With respect to the references as applied, it is noted that the base reference to Kester clearly demonstrates and accounts for an uncovered vertically mountable display case, where the front layer includes a vertically arranged forward facing uncovered front surface. The supporting reference to Bowen is solely cited for the known technique of providing discrete single piece front and back layers relating to a display case. The supporting reference to Vaulted Vinyl is solely cited for the known special relationship between collectibles fitted within like-shaped openings of a foam layer. The supporting reference to McMurray is solely cited for the known technique of providing mounting holes through various layers of structure in order to mount a display case to a wall. Accordingly, since the base reference accounts for the newly amended claimed subject matter, while the supporting references cure deficiencies within the base reference, the position is taken that a prima facie case of obviousness has been established since applicants claimed invention only unites old elements with no change in their respective functions. Common sense directs one to look with care at a patent application that claims as innovation the combination of known devices according to their established functions, as such, the examiner has identified reasons that would have prompted a person of ordinary skill in the art to combine the elements in the same way as the claimed new invention does.
Where a claimed improvement on a device or apparatus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ. 2d 1509, 1518-19 (BPAI, 2007) (citing KSR v. Teleflex, 127 S.Ct. 1727, 1740, 82 USPQ. 2d 1385, 1396 (2007)). Applicant claims a combination that only unites old elements with no change in the respective functions of those old elements, and the combination of those elements yields predictable results; absent evidence that the modifications necessary to effect the combination of elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ. 2d at 1518-19 (BPAI, 2007) (citing KSR, 127 S.Ct. at 1740, 82 USPQ. 2d at 1396. Accordingly, since the applicant[s] have submitted no persuasive evidence that the combination of the above elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a) because it is no more than the predictable use of prior art elements according to their established functions resulting in the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement. Consequently, the rejections are deemed adequate to support the legal conclusion of obviousness.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure – see the attached Form PTO-892 showing a display case with a front layer having openings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES O HANSEN whose telephone number is (571)272-6866. The examiner can normally be reached Mon-Fri 8 am - 4:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
JOH
June 26, 2026
/James O Hansen/Primary Examiner, Art Unit 3637
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