DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement filed February 24, 2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered because the references are not cited in the parent application(s).
Claim Objections
Claims 3, 15 and 17 are objected to because the following elements lack proper antecedent basis in the claim(s):
Claims 3 and 17 line 2: “the outside (of a shell portion)”
Claim 15 line 7: “the drumhead”
Appropriate correction is required.
Claim 15 is objected to because of the following informalities: This claim includes the limitation “over the upright portion of the shell portion, the at least one”. This limitation should be changed to state “over the upright portion of the shell, the at least one” for consistency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 4-6, 8, 18 and 19 are rejected 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.
Claims 4-6, 18 and 19 include limitations pertaining to “the membrane”. However there is a lack of antecedent basis for “the membrane” as the claims previously describe at least one membrane. It is unclear whether applicants intend to reference the at least one membrane, or further limit the at least one membrane to a single membrane. For examining purposes, these limitations are interpreted as pertaining to “the at least one membrane”.
Claim 8 is directed to the “drumhead of claim 1, wherein” and includes limitations pertaining to “the plurality of first recessed relief portions” and “the plurality of second recessed relief portions”. However there is a lack of antecedent basis for “the plurality of first recessed relief portions” and “the plurality of second recessed relief portions” as these elements were introduced in claim 7. It is unclear whether applicants intend claim 8 to depend from claim 7, or introduce new elements into the claim. For examining purposes, this claim is interpreted as being directed to the “drumhead of claim 7, wherein”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 14-18 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Good (US 5,920,021).
Claims 1 and 15: Good discloses a drumhead (12) for a percussion instrument and a percussion instrument (drum 10), shown in FIG. 3 to comprise a shell (11) having an upright portion (upper edge 11a), and: a stretchable membrane affixed in a tensioned state over the upright portion of the shell (column 2 lines 26-30). The membrane has a striking portion for receiving a strike from a user (column 1 lines 42-43), and an outer peripheral portion (angled edge 12a); and a rigid frame (annular metallic flange 14) integrally fixed to the outer peripheral portion of the membrane (column 2 lines 5-8). The frame is shown to have an outer edge defining an outermost edge of the drumhead; wherein the frame comprises a hardened resin annular body in which the outer peripheral portion of the at least one membrane is contained (column 3 lines 18-21), and wherein each side of the annular body of the frame has a surface shape defined by a mold used to manufacture said frame, as is recognized in the art.
Claims 2 and 16: Good discloses a drumhead and percussion instrument as stated above, where the hardened resin annular body is shown in FIG. 4 to be composed of a resin material that is free of any other materials, except for the outer peripheral portion of the at least one membrane contained therein.
Claims 3 and 17: Good discloses a drumhead and percussion instrument as stated above, where the annular body of the frame is shown in FIG. 3 to have an inner circumference that is configured to fit over the outside of a shell portion of a percussion instrument (column 2 lines 26-30).
Claims 4 and 18: Good discloses a drumhead and percussion instrument as stated above, where the membrane is shown in FIG. 4 to extend partially into the resin annular body of the frame by length that is less than a shortest radial width of the frame.
Claims 14 and 23: Good discloses a drumhead as stated above, where the resin is bonded to the frame by hardening of the material (column 3 lines 18-20). The resin then comprises a heat-melt resin that hardens when cooled would shrink at least slightly in size when cooled, as is recognized in the art.
Claims 24 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Belli (US 5,385,076).
Claim 24: Belli discloses a method of making a drumhead (2) for a percussion instrument (column 1 lines 6-12), comprising: providing a stretchable membrane having a striking portion (striking surface 4) for receiving a strike from a user. An outer peripheral portion (peripheral sidewall 6) is shown in FIGS. 1 and 3, where a rigid outer frame (annular shoulder 8) is integrally fixed to the outer peripheral portion of the membrane (column 6 lines 1-5). The frame is shown in FIG. 1 to have an outer edge defining an outermost edge of the drumhead; wherein integrally fixing the rigid outer frame comprises molding a hardened resin annular body in an enclosed mold that contains the outer peripheral portion of the at least one membrane (column 5 lines 48-51).
Claim 25: Belli discloses a method as stated above, where the enclosed mold comprises an injection mold (column 7 lines 31-34).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5, 6 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Good (US 5,920,021) in view of Belli (US 5,385,076).
Claims 5, 6 and 19: Good discloses a drumhead and percussion instrument as stated above, where the membrane is shown in FIG. 4 to extend into the annular body of the frame. This reference fails to disclose the membrane to extend through a radially inward facing side surface of the annular body of the frame.
However Belli teaches a drumhead (2) and percussion instrument where a membrane is shown in FIG. 3 to extend through a radially inward facing side surface of an annular body of frame (annular shoulder 8).
Given the teachings of Belli, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the drumhead and percussion instrument disclosed in Good with providing the membrane to extend through a radially inward facing side surface of the annular body of the frame. Doing so would provide “a drumhead that is installable on a conga, bongo or any standard drum shell utilizing a tension hoop” as taught in Belli (column 1 lines 7-12), thereby increasing its versatility.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Good (US 5,920,021) in view of Miller et al. (US 6,350,941 B1).
Claim 7: Good discloses a drumhead as stated above, but fails to disclose the annular body of the frame to have an upper surface that includes a plurality of first recessed relief portions, the annular body of the frame to have a lower surface that includes a plurality of second recessed relief portions.
However Miller et al. teaches a drumhead where an annular body of a frame (drum hoop 10) is shown in FIG. 1 to have an upper surface that includes a plurality of first recessed relief portions (flange of upper outer edge 18, upper annular barb 24) and a lower surface that includes a plurality of second recessed relief portions (annular barb 22, lower annular barb 24).
Given the teachings of Miller et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the drumhead and percussion instrument disclosed in Good with providing the annular body of the frame to have an upper surface that includes a plurality of first recessed relief portions, the annular body of the frame to have a lower surface that includes a plurality of second recessed relief portions. Doing so would “engage and retain the resin used to secure the peripheral edge of drum head in the annular interior space of [frame]” as taught in Miller et al. (column 4 lines 29-34).
Claims 9-11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Good (US 5,920,021) in view of May et al. (US 8,148,619 B1).
Claim 9: Good discloses a drumhead having a membrane, as stated above. This reference fails to disclose the membrane to be a first membrane and further including a second membrane, the first membrane being separable from the second membrane in the striking portion of the membranes.
However May et al. teaches a drumhead shown in FIG. 5 to include a first membrane (non-battered surface 40) and a second membrane (battered surface 42). The first membrane is separable from the second membrane in a striking portion of the membranes, represented by space (63).
Given the teachings of May et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the drumhead and percussion instrument disclosed in Good with providing the membrane to be a first membrane and further including a second membrane, the first membrane being separable from the second membrane in the striking portion of the membranes. Doing so would “provide an improved device for damping resonating sounds emanating from a [struck] drumhead membrane that utilizes non-adhesive means to secure the damping device to the drumhead playing surface” as taught in May et al. (column 3 lines 34-38).
Claim 10: Good modified by May et al. discloses a drumhead as stated above, where the second membrane is shown in FIG. 5 of May et al. to be fixed to the rigid frame via the first membrane, while having less tension than the first membrane due to raised portions of the second membrane, and space (63) between the first and second membranes.
Claim 11: Good modified by May et al. discloses a drumhead as stated above, where the first membrane is shown in FIG. 5 of May et al. to be below the second membrane and the second membrane defines a striking surface in the striking portion of the second membrane. These references fail to disclose the second membrane to be below the first membrane and the first membrane to device a striking surface in the striking portion of the first membrane.
However it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the second membrane to be below the first membrane and the first membrane to device a striking surface in the striking portion of the first membrane instead of the first membrane to be below the second membrane and the second membrane to define the striking surface in the striking portion of the second membrane, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Doing so would provide a more traditional appearance of the drum due to the higher tensioned membrane being the visible membrane.
Claim 20: Good discloses a percussion instrument having a membrane, as stated above. This reference fails to disclose the membrane to be a first membrane and further including a second membrane, the first membrane being separable from the second membrane in the striking portion and the second membrane to be fixed to the rigid frame with less tension than the first membrane.
However May et al. teaches a drumhead shown in FIG. 5 to include a first membrane (non-battered surface 40) and a second membrane (battered surface 42). The first membrane is separable from the second membrane in a striking portion of the membranes, represented by space (63). The second membrane is shown to be fixed to the rigid frame via the first membrane, while having less tension than the first membrane due to raised portions of the second membrane, and space (63) between the first and second membranes.
Given the teachings of May et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the drumhead and percussion instrument disclosed in Good with providing the membrane to be a first membrane and further including a second membrane, the first membrane being separable from the second membrane in the striking portion and the second membrane to be fixed to the rigid frame with less tension than the first membrane. Doing so would “provide an improved device for damping resonating sounds emanating from a [struck] drumhead membrane that utilizes non-adhesive means to secure the damping device to the drumhead playing surface” as taught in May et al. (column 3 lines 34-38).
Claims 12, 13, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Good (US 5,920,021) in view of Yoshino et al. (US 6,756,535 B1).
Claims 12, 13, 21 and 22: Good modified by May et al. discloses a drumhead as stated above, but fails to disclose the stretchable membrane to comprise a first membrane of an air permeable mesh material and a second membrane of an air permeable mesh material.
However Yoshino et al. teaches a drumhead where a first membrane (first net 56) if shown in FIG. 5 to be of an air permeable mesh material and a second membrane (second net 58) to be of an air permeable mesh material (column 5 lines 51-55).
Given the teachings of Yoshino et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the drumhead and percussion instrument disclosed in Good with providing the stretchable membrane to comprise a first membrane of an air permeable mesh material and a second membrane of an air permeable mesh material. Doing so would provide a drumhead “which is excellent in percussion feeling and in which the percussion sound is extremely quiet” as taught in Yoshino et al. (column 2 lines 3-5)
Allowable Subject Matter
Claim 8 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 8: Although the prior art (US 5,920,021) teaches a drumhead (12) for a percussion instrument shown in FIG. 3 to comprise a shell (11) having an upright portion (upper edge 11a), and: a stretchable membrane affixed in a tensioned state over the upright portion of the shell (column 2 lines 26-30), the membrane has a striking portion for receiving a strike from a user (column 1 lines 42-43), and an outer peripheral portion (angled edge 12a); and a rigid frame (annular metallic flange 14) integrally fixed to the outer peripheral portion of the membrane (column 2 lines 5-8), the frame is shown to have an outer edge defining an outermost edge of the drumhead; wherein the frame comprises a hardened resin annular body in which the outer peripheral portion of the at least one membrane is contained (column 3 lines 18-21), and additional prior art (US 6,350,941 B1) teaches in FIG. 1 the annular body of the frame to have an upper surface that includes a plurality of first recessed relief portions (flange of upper outer edge 18, upper annular barb 24), the annular body of the frame to have a lower surface that includes a plurality of second recessed relief portions (annular barb 22, lower annular barb 24), the prior art does not teach nor suggest a plurality of pin traces located within the plurality of first recessed relief portions, and wherein each pin trace is in alignment with a second recessed relief portion of the plurality of second recessed relief portions. The combinations of the claimed limitations are novel and found to be allowable over prior art. The cited references taken singly or in combination do not anticipate nor make obvious applicant's claimed invention.
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 12 and 13 of U.S. Patent No. 10,043,499 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because any limitation not present in the claims of the U.S. Patent are disclosed in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER UHLIR whose telephone number is (571)270-3091. The examiner can normally be reached M-F 8:30-4.
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/Christopher Uhlir/Primary Examiner, Art Unit 3619 January 24, 2026