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 .
Status of Claims
This action is in response to the application as filed on February 27, 2023. Claims 1-20 are pending.
Priority
Applicant appears to desire a claim of priority to Application No. 17/807,941 and its parent applications. However, Applicant has not properly claimed priority and no benefit of priority has been made of record as indicated on the Official Filing receipt dated March 31, 2023. Therefore, the applications filing date of February 27, 2023 is used for purposes of determining prior art.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, a backing sheet having a first side; wherein the second side of the first erasable writing element, the second side of the first category indicator, and the second side of the surround are removably interconnected to the first side of the backing sheet by the micro-suction elements and the surface of the surround is continuous with the non-porous writing surface of the first erasable writing element and the surface of the first category indicator must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-20 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
In re claims 1 and 12, the language “wherein the surface of the surround is continuous with the non-porous writing surface of the first erasable writing element and the surface of the first category indicator” and “wherein the surface of the surround is continuous with the non-porous writing surfaces of the plurality of erasable writing elements and the surfaces of the plurality of category indicators” is indefinite. It is not clear what is meant by the term continuous within the context of the claim. The claim previously recites separate elements of first erasable writing element, a first category indicator, and a surround, each having a surface side and a micro-suction side. The claim recites “wherein the micro-suction elements of the first category indicator are adapted to interconnect with the non-porous writing surface of the first erasable writing element.” Therefore, these elements are separable as one is placed on the other. Moreover, the surface of the first side of writing element connects with the second, micro-suction side of the category element. Continuous means something that happens, exists, or extends without interruption, breaks, or pauses. Therefore, it is unclear how the first side of the surround can be continuous without interruption with both with the non-porous writing surface of the first erasable writing element and the surface of the first category indicator. According to Applicant’s specification, at ¶37, the surround1101 is configured to be peeled from the backing sheet 1050 to leave the at least one erasable writing element 1100 on the backing sheet 1050. Therefore, for purposes of claim interpretation this term is construed to mean that the surround surface at least a portion of the writing element and category indicator and is of similar width. Claims 9 is rejected for the same language and reasoning with regard to the second writing element.
In re claims 3 and 18, the claims recite the limitations “the perimeter” at line 2. There is insufficient antecedent basis for these limitations in the claim. It is also unclear what is meant by perimeter as now boundary or shape that makes this term clear has been recited with regard to the category indicator. For purposes of claim interpretation this term is construed to mean an indication generally conforming to the shape of the category indicator in its horizontal plane.
Claims 2-11 and 13-20 are depend from a rejected base claim, and therefore are rejected for at least the reasons provided for the base claim.
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 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.
Claims 1-9, 12, 13, and 16-20 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Publication No. 2018/0311995 by Pañeda (“Pañeda”) in view of US Patent No. 4,652,239 to Brimberg (“Brimberg”) and further in view of US Publication No. 2006/0059734 by Drie et al. (“Drie”).
In re claims 1 and 12, Pañeda discloses an erasable writing element kit [Fig. 3, Abstract] comprising: one or a plurality of first erasable writing elements comprising a pliant layer having a first side and a second side, the first side comprising a non-porous writing surface and the second side comprising a plurality of micro-suction elements [Fig. 3 #1, ¶¶9-14 describes self-adhesive and reusable support for notes, the self-adhesive and reusable support for notes comprises a flat laminar body that in turn comprises a first flat surface and a second flat surface opposite from the first surface. The flat laminar body comprises micro suction cups distributed on the first flat surface and a writable surface on the second surface]; one or a plurality of a first category indicator comprising a perimeter and a pliant layer having a first side and a second side, the first side comprising a surface and the second side comprising a plurality of micro-suction elements [Fig. 3 #1’, ¶¶9-14 describe another second note element. The self-adhesive and reusable support for notes comprises a flat laminar body that in turn comprises a first flat surface and a second flat surface opposite from the first surface. The flat laminar body comprises micro suction cups distributed on the first flat surface and a writable surface on the second surface with. It is noted that term “category” does not further limited the structure of the second element as it is either an intended use of the element or is directed to non-functional descriptive material and the note is cable of present indicia thereon that indicates a category]; and a backing sheet having a first side [Fig. 3 #2]; wherein the second side of the first erasable writing element, the second side of the first category indicator, and the second side of the surround are removably interconnected to the first side of the backing sheet by the micro-suction elements [Fig. 3 shows elements 1 and 1’ on backing sheet 2, ¶¶25-27 describes the objects on sheet 2 each have a side with tiny micro suction cups which facilitates the adherence thereof both on surfaces that are smooth (like the sheet)]; wherein the micro-suction elements of the first category indicator are adapted to interconnect with the non-porous writing surface of the first erasable writing element [Fig. 9 shows ¶31 describes the elements 1 may be placed onto the other by means of the micro suction cups].
Pañeda does not explicitly teach a surround comprising a pliant layer having a first side and a second side, the first side comprising; wherein the surface of the surround is continuous with the non-porous writing surface of the first erasable writing element and the surface of the first category indicator.
However, Brimberg teaches an element storage assembly or kit formed of flexible sheet of static cling vinyl electrostatically adhered to the coated surface thereof, the vinyl sheet being die cut into a plurality of graphic symbol elements and shapes. The graphic symbol elements are peeled from the substrate and electrostatically adhered to the work surface of a flexible work sheet. Fig. 6 of shows the sheet 35 with graphic elements 38. The sheet 35 surrounds the graphic elements. The graphics elements 38 are die-cut from the sheet 35 The surface of the sheet/surround 35 is continuous with the surface of the graphic elements 38. See, e.g., col. 4, ll. 27-42.
It is noted that sheet 35 of Brimberg is manufactured by a calendaring process. Therefore, although the surround of Brimberg does not include micro-suction elements, when combined with Pañeda to form a continuous sheet, the surround would also contain the micro suction elements of Pañeda and the shapes 1 would be die cut as the sheet would be formed as one continuous element.
Pañeda and Brimberg are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda and to use a surround and die cut the note elements, as taught by Brimberg, in order to improve the manufacture process, for example, by providing protection of the surround around the writing elements during sales and shipping.
As noted above, Pañeda doesn’t explicitly teach the one or a plurality of the note elements is a category indicator. However, this is an intended use and/or nonfunctional descriptive material that does not further limit the structure of the claimed system. However, even if this term provided additional structure or patentable weight to the claim, Drie teaches category elements for a dry erase writing kit [Fig. 2 #28, for example, days of the week].
Pañeda and Drie are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of Pañeda and to include the category elements, as taught by Drie, in order to improve user experience, for example, by providing premade elements to help organize their activities.
In re claims 2 and 16, Pañeda discloses further comprising printed matter visible from the first side of the first erasable writing element [Fig. 5, ¶29 describes flat surface 11 which shows the message “HELLO”].
In re claims 3, 17, and 18, Pañeda discloses a writing kit. It is noted the limitations wherein the printed matter comprises a placeholder having a profile matching the perimeter of the first category indicator is directed to non-functional descriptive material that does not further limit the structure of the claim. However, even if this term provided additional structure or patentable weight to the claim, Drie teaches a placeholder having a profile matching the perimeter of the first category indicator [Fig. 2 #28, for example, place holders for a day of the week placed within perimeter of day matching the width].
Pañeda and Drie are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda and to include the printed matter comprises a placeholder having a profile matching the perimeter of the first category indicator, as taught by Drie, in order to improve user experience, for example, by providing premade elements to help organize their activities.
In re claim 4, Pañeda discloses a writing kit. It is noted the limitations wherein the first erasable writing element further comprises a plurality of horizontal ruled lines is directed to non-functional descriptive material that does not further limit the structure of the claim. However, even if this term provided additional structure or patentable weight to the claim, Drie teaches wherein the first erasable writing element further comprises a plurality of horizontal ruled lines [Fig. 3A, ## 32 shows ruled lines, ¶¶43,44].
Pañeda and Drie are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda and to include the ruled lines, as taught by Drie, in order to improve user experience, for example, by providing premade elements to help organize their writing activities.
In re claim 5, Pañeda discloses the first category indicator further comprises printed matter visible from the first side of the first category indicator [Fig. 5, ¶29 describes flat surface 11 which shows the message “HELLO”]. However, to the extent Pañeda is lacking printed matter on a first side of the category indicator, Drie teaches category indicators that include printed matter [Fig. 2 #28, for example, Saturday].
Pañeda and Drie are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda and to include the printed matter on the category indicators, as taught by Drie, in order to improve user experience, for example, by providing premade elements to help organize their activities.
In re claim 6, Pañeda discloses, further comprising a second category indicator comprising a pliant layer having a first side and a second side, the first side comprising a surface and the second side comprising a plurality of micro-suction elements, wherein the second category indicator comprises a perimeter different from the perimeter of the first category indicator [Fig. 3 #1’, ¶¶9-14 describe another second note element. The self-adhesive and reusable support for notes comprises a flat laminar body that in turn comprises a first flat surface and a second flat surface opposite from the first surface. The flat laminar body comprises micro suction cups distributed on the first flat surface and a writable surface on the second surface with. It is noted that term “category” does not further limit the structure of the second element as it is either an intended use of the element or is directed to non-functional descriptive material and the note is cable of present indicia thereon that indicates a category].
As noted above, Pañeda doesn’t explicitly teach one of the note elements is a category indicator. However, this is an intended use and/or nonfunctional descriptive material that does not further limit the structure of the claimed system. However, even if this term provided additional structure or patentable weight to the claim, Drie teaches multiple category elements for a dry erase writing kit [Fig. 2 #28, for example, days of the week].
Pañeda and Drie are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda and to include the category elements, as taught by Drie, in order to improve user experience, for example, by providing premade elements to help organize their activities.
In re claim 7, Pañeda discloses the second category indicator further comprises printed matter visible from the first side of the second category indicator [Fig. 5, ¶29 describes flat surface 11 which shows the message “HELLO”]. However, to the extent Pañeda is lacking printed matter on a first side of the category indicator, Drie teaches category indicators that include printed matter [Fig. 2 #28, for example, Saturday].
Pañeda and Drie are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda and to include the printed matter on the category indicators, as taught by Drie, in order to improve user experience, for example, by providing premade elements to help organize their activities.
In re claim 8, Pañeda lacks wherein the printed matter of the first category indicator is different than the printed matter of the second category indicator. However, Drie teaches multiple category indicators having different printed matter [Fig. 2 #28, for example, Monday and Saturday].
Pañeda and Drie are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda and to include the printed matter of different category indicators, as taught by Drie, in order to improve user experience, for example, by providing premade elements to help organize their activities.
In re claim 9, Pañeda does not explicitly teach the surface of the surround is continuous with the surface of the second category indicator.
However, Brimberg teaches an element storage assembly or kit formed of flexible sheet of static cling vinyl electrostatically adhered to the coated surface thereof, the vinyl sheet being die cut into a plurality of graphic symbol elements and shapes. The graphic symbol elements are peeled from the substrate and electrostatically adhered to the work surface of a flexible work sheet. Fig. 6 of shows the sheet 35 with graphic elements 38. The sheet 35 surrounds the graphic elements. The graphics elements 38 are die-cut from the sheet 35 The surface of the sheet/surround 35 is continuous with the surface of the graphic elements 38. See, e.g., col. 4, ll. 27-42.
Pañeda and Brimberg are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda and to include a surround having a continuous surface, as taught by Brimberg, in order to improve the manufacture process, for example, by providing protection of the surround around the category elements during sales and shipping.
In re claim 13, Pañeda lacks, but Brimberg teaches a first folding axis [col. 5, ll. 31-39, col. 6, l. 66-col. 7, l. 4, describe a fold line 74].
Pañeda and Brimberg are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda to include the fold line, as taught by Brimberg, in order to facilitate storage and/or shipping of the kit.
In re claim 19, Pañeda lacks, but Drie teaches the plurality of category indicators have at least two different perimeter shapes [Figs. 1 and 2, category indicators have different shapes and sized 22, 28, 62, 64].
Pañeda and Drie are both considered to be analogous to the claimed invention because they are in the same field of dry erase writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda to include different category shapes, as taught by Drie, in order to improve user experience, for example, allowing the user to identify the objects by shape.
In re claim 20, Pañeda in view of Drie teaches a plurality of placeholders is adapted to be filled in to record completion of a repeating event [Figs. 1 and 2, teaches a calendar which can record repeating events. Moreover this limitation is an intended use that does not further limit the structure of the claim and therefore does not patentably distinguish over the art of record].
Claims 10, 14, and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Pañeda in view of Brimberg and Drie and further in view of US Patent No. 6,102,199 to Ho (“Ho”).
In re claim 10 and 14, Pañeda lacks, but Ho teaches a writing implement storage device comprising: a pliant layer having a first side and a second side [Fig. 5, shows sheet 101 having two side], a first portion adapted to interconnect to an existing surface [Fig. 5 shows hanger 102]; and a second portion comprising an aperture configured to receive and hold a writing implement [Fig. 5 shows aperture 115 for pen 118]; wherein the second portion is hingedly interconnected to the first portion [Fig. 5 shows hinges 113C and 113R on the sheet 101].
Pañeda and Ho are both considered to be analogous to the claimed invention because they are in the same field of providing writing surfaces for notes or writing kits. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda to include the pen holder, as taught by Ho, in order to improve user experience, for example, by conveniently providing a place for a writing element with which to take notes.
Ho teaches the pen holder for note use as hanger to attach itself and not the micro suction elements to attach the tag and pen. Pañeda and Ho are both considered to be analogous to the claimed invention because they are in the same field of providing writing surfaces for notes or writing kits. Because both Pañeda and Ho teach hanging/attaching means, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to substitute the hanger of Ho with the micro suction element of Pañeda to achieve the predictable result of attaching the pen holder to a surface.
In re claim 15, Pañeda as modified by Ho teaches a single aperture for a pen, but lacks a second aperture configured to receive a writing implement therethrough.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Pañeda in view of Ho to include a second aperture as the courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, see, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Allowable Subject Matter
Claim 11 is dependent upon a rejected base claim, but would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b), set forth in this Office action and rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art of record does not anticipate or obviate the following recitations “teaches a writing implement storage device comprising: a pliant layer having a first side and a second side, the first side comprising a surface and a second side comprising a plurality of micro-suction elements; a first portion adapted to interconnect to an existing surface; and a second portion comprising an aperture configured to receive and hold a writing implement; wherein the second portion is hingedly interconnected to the first portion; and wherein the writing implement storage device is interconnected to the backing sheet wherein the surface of the surround is continuous with the surface of the writing implement storage device” in combination with the rest of the elements in claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew Bodendorf whose telephone number is (571) 272-6152. The examiner can normally be reached M-F 9AM-5PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached on (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW BODENDORF/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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