This is a Final office action for serial number 17/958,389.
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 .
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 7 recites, “wherein said plurality of sheaths on said panel are positioned in a vertically parallel manner” however the specification appears to teach only wherein said plurality of sheaths on said panel are positioned in a vertically spaced parallel manner therefore claim 7 fails to comply with the written description.
Claims 8 and 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 8 recites, “wherein said plurality of sheaths(280) include a first sheath (280), a second sheath (280), and a third sheath (280) positioned in a vertically parallel manner on said panels” however the specification appears to teach only wherein said plurality of sheaths(280) include a first sheath (280), a second sheath (280), and a third sheath (280) positioned in a vertically spaced parallel manner on said panels therefore claim 8 fails to comply with the written description.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 rejected (claims dependent on a rejected claim are rejected based on their dependence unless otherwise specified)
under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation a plurality of sheaths securely fixed to said plurality of panels, and the claim also recites sheaths are permanently fixed and integral to said panels which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation said plurality of wire assemblies are removably fixed within a plurality of said sheaths, and the claim also recites wherein said wire assemblies are not removable from said sheaths which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 recites the limitation "said number of mating components" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "said number of wire assemblies" in line 7. There is insufficient antecedent basis for this limitation in the claim.
The claims have been rejected under 35 U.S.C. 112 for the above reasons. Please note that the Examiner may not have pointed out each and every example of indefiniteness. The applicant is required to review all the claim language to make sure the claimed invention is clear and definite.
All words in a claim must be considered in determining the patentability of theclaim against the prior art. If no reasonably definite meaning can be ascribed to certainterms in the claim, the subject matter does not become obvious, the claim becomesindefinite. In re Wilson, 424F.2d 1382, 1385 (CCPA 1970). The examiner's analysis ofthe claims, in particular claim language within the claims as rejected under 35 USC 112 above, indicates that considerable speculation as to the meaning of the terms employed and assumptions as to the scope of the claims needs to be made, as the examiner does not understand what is exactly being claimed by the applicant. Any rejection under 35 U.S.C. 102 should not be based on such speculations and assumptions. In re Steele, 305 F.2d 859,862 (CCPA 1962); Ex parte Head, 214 USPQ 551 (Bd.App. 1981). Accordingly, the applicant should not assume that any claims not rejected using prior art is considered allowable since the examiner can not clearly determine the limitations of the claim due to indefiniteness. The applicant should be aware that once the claims have been corrected to remove the problems concerning indefiniteness, prior art may be used to reject the claims and the next action made final or if the application is in a final status the amendment after final may not be entered as requiring further search and/or consideration.
Claim(s) 12, 13, 15, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao 2022/0256780 in view MacKenzie 2,519,678. Zhao discloses an apparatus comprising a plurality of curved panels (20) including at least 3 substantially identical curved panels (20) including a first panel, a second panel and a third panel which do not include a material made of plastic (made of metal or metal mesh), wherein said panels (20) are separate from each other when said apparatus is in a disassembled state (see abstract); a plurality of connection means (31/32) for removably connecting the plurality of panels; (the method of forming the device (sewn) is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight) wherein each of said panels (20) include an inner layers (22), a coverings (23) over said inner layer (22),
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Zhao discloses all of the limitations of the claimed invention except for the plurality of sheaths and a plurality of wire assemblies. MacKenzie discloses that it is known to have a plurality of panels (6 and 7) wherein one panel (6) includes a fixed sheath (9) permanently attached to said panels including a wire assembly (10) including one mating component (12) being a protrusion (12) and another separate panel (7) includes another wire assembly (11) including another mating component (13) being a receptable (end of 11) wherein the protrusion (12) are removably positioned within the receptables (end of 11) wherein said mating components are attached to said wire assemblies while said apparatus is in a disassembled state. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with reasonable expectation of success to have modified Zhao to have included a sheath, a wire assembly including mating components being protrusion and receptables as taught by MacKenzie for the purpose of providing a quick connection or quick disconnection of the panels to each other resulting in an assemble or dissembled separate relation. Zhao in view of MacKenzie discloses a plurality of panels include a first panel, a second panel, and a third panel, wherein said plurality of wire assemblies include a first wire assembly, a second wire assembly, and a third wire assembly, wherein said first wire assembly includes a first mating component, wherein said second wire assembly includes a second mating component and wherein said third wire assembly includes a third mating component, wherein said plurality of sheaths include a first sheath, a second sheath, and a third sheath; wherein said first panel includes said first sheath and wherein said first wire assembly is positioned within said first sheath; wherein said second panel includes said second sheath and wherein said second wire assembly is positioned within said second sheath; wherein said third panel includes said third sheath and wherein said third wire assembly is positioned within said third sheath; wherein said first wire assembly is removably connected to said second wire assembly by said first mating component, removably connecting said first panel to said second panel; wherein said second wire assembly is removably connected to said third wire assembly by said second mating component, removably connecting said second panel to said third panel and wherein said third wire assembly is removably connected to said first wire assembly by said third mating component, removably connecting said third panel to said first panel and inherently teaches the method of connecting the first panel, second panels, and third panels, then positioning the panels together.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao 2022/0256780 in view MacKenzie 2,519,678 in view of Wang CN214258898. Zhao in view of MacKenzie discloses all of the limitations of the claimed invention except for panels not made of molded plastics or metals. Wang teaches that it is known to have an apparatus adapted to cover a base of a tree comprising a panel including a layer is a cardboard layer (see specification) or not made of molded plastics or metals. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with reasonable expectation of success to have modified Zhao in view of MacKenzie to have made the panels not made of molded plastics or metals as taught by Wang for the purpose of providing a mechanically equivalent panel material that is suggested/motivated by Zhao since Zhao teaches that the panel may be made of a rigid material that is bendable and deformable.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao 2022/0256780 in view of MacKenzie 2,519,678 in view of Nevens 7,219,405. Zhao in view of MacKenzie discloses all of the limitations of the claimed invention except for the decorative assembly including a removable patch to one of the panels by a removable fastener. Nevens teaches that it is known to have the decorative assembly (38) including a removable patch to one of the panels by a removable fastener. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with reasonable expectation of success to have modified Zhao in view of Mackenzie to have included a removable patch to one of the panels by a removable fastener as taught by Nevens for the purpose of providing a pleasing aesthetic surface to the apparatus for holiday festivities. Modified Zhao in view of MacKenzie in view of Nevens inherently disclose wherein each said panel includes more than one sheath and more than one wire assembly and wherein no said panel shares a sheath or a wire assembly with any other said panel.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 2-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 18-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art in regards to claim 18 does not disclose positioning (920) the connected first panel (200) and second panel (200) around the base (80) of the tree (90); and connecting (930) a third panel (200) with a third plurality of protrusions (360) and a third plurality of receptacles (370) on a third wire assembly (300) to the second panel (200) by connecting the second plurality of protrusions (360) to the third plurality of receptacles (370); and connecting (940) the third panel (200) with the first panel (200) by connecting the third plurality of protrusions (360) to the first plurality of receptacles (370); wherein said apparatus (100) is in an assembled stated (810) when each said wire assembly (300) is removably connected to least 2 other wire assemblies (300); and wherein said plurality of wire assemblies (300) are positioned within said plurality of sheaths (280) when said apparatus (100) is in said assembled state (810) and when in a disassembled state (850)2 and wherein said sheaths (280) are permanently integral to said panels (200).
Response to Arguments
Applicant's arguments filed March 16, 2016 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness 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).
In response to applicant's argument that the structure and function of MacKenzie is substantially different from both Zhao and the applicant’s disclosure, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as stated clearly within the rejection above the motivation is found in the knowledge generally available to one of ordinary skill in the art since it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with reasonable expectation of success to have modified Zhao to have included a sheath, a wire assembly including mating components being protrusion and receptables as taught by MacKenzie for the purpose of providing a quick connection or quick disconnection of the panels to each other resulting in an assemble or dissembled separate relation as taught or suggested by MacKenzie through the used of a well known means of attachment for multiple panels.
In response to applicant's argument that
The main commonality between Zhao and MacKenzie is that both fail to address any of the three objectives that are addressed by Applicant's invention:
(1) being easier to assemble and disassemble than prior art designs; (2) being comprised of "highly modular, interchangeable, and even identical" pieces; and (3) the apparatus takes minimal space when in a disassembled state, which is convenient for the purposes of storage and transportation.
therefore arguing that Zhao and MacKenzie are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Zhao and MacKenzie are within the field of the inventor’s endeavor, an apparatus adapted to cover a base of a tree.
In response to applicant's argument that
The main commonality between Zhao and MacKenzie is that both fail to address any of the three objectives that are addressed by Applicant's invention:
(1) being easier to assemble and disassemble than prior art designs; (2) being comprised of "highly modular, interchangeable, and even identical" pieces; and (3) the apparatus takes minimal space when in a disassembled state, which is convenient for the purposes of storage and transportation.
, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant's arguments against the references individually, one cannot show nonobviousness 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIMBERLY T WOOD whose telephone number is (571)272-6826. The examiner can normally be reached M-Thur 9:00am-5:30pm flexible schedule.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at (571) 272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIMBERLY T WOOD/ Primary Examiner, Art Unit 3631
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