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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because a mere arrangement of printed matter, though seemingly a “manufacture,” is rejected as not being within the statutory classes. See in re Miller, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969); EX part Gwin, 112 USPQ 439 (Bd. App. 1955); and In re Jones, 373 f.2d 1007, 153 USPQ 77 (CCPA 1967). In the present application, the claimed printed matter se-forth a mere arrangement of printed matter that is not functionally related to the substrate and, therefore, does not distinguish the invention from prior art in terms of patentability. Although printed matter must be considered, in this situation, it is not entitled patentable weight. The printed matter claimed herein conveys no meaningful information in regard to the substrate, which they are arranged on and do not require any size relationship of the substrate, and do not require any particular substrate to effectively convey the information. Accordingly, there being no functional relationship of the printed material to the substrate, as noted above, there is no reason to give patentable weight to the content of the printed matter which, by itself, is no-statutory subject matter.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Step 1: The claims are directed to a method and a system which falls within one of the statutory categories of invention. Step 2A, Prong One: Independent claim(s), recite(s) providing and showing. The claims and background of the application do not put any limits on the plain meanings of providing and showing. The broadest reasonable interpretation of the steps is that those steps fall with the mental process grouping of abstract ideas because they cover concepts performed in the human mind, selection by a human and/or can be presented using a piece of paper or in this case card, including providing and showing. Step 2A, Prong Two: The claims recite a word cards. This judicial exception is not integrated into a practical application because these limitations do not impose any meaningful limits on the claims. Again, the word cards just have information on them. With these limitations, the word cards are used as a tool to perform the generic function of providing or showing information. Therefore, in these limitations the word cards are used to perform an abstract idea, as discussed above in Step, 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic word cards. Even when viewed in combination, these word cards do not integrate the recited judicial exception into a practice application, and the claim is directed to the judicial exception. Step 2B: As explained in the Step 2A, Prong Two, these word cards. These word cards in the limitations are at best mere instructions to “apply” the abstract ideas, which cannot provide an inventive concept. See MPEP 2106.05(f). The additional elements were both found to be insignificant extra-solution activity in Step 2A, Prong Two, because they were determined to be insignificant limitations as necessary providing or showing information. As discussed in Step 2A, Prong Two above, the word cards elements amount to providing and showing information and are well-understood, routine and conventional activity. Therefore, even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception with word card and insignificant extra-solution activity, which do not provide an inventive concept. So, these claims are in eligible.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by each separately.
Each separately - Morrison (U.S. Patent Number 8,851,895) and Rehbein et al. (U.S. Publication Number 2004/0083111) and Visser et al. (U.S. Patent Number 5,743,740) all disclose a word card as we know the information of the card is printed matter (see pictures).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KESHA FRISBY whose telephone number is (571)272-8774. The examiner can normally be reached Monday-Friday 730AM-4PM.
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/KESHA FRISBY/Primary Examiner, Art Unit 3715