DETAILED ACTION
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
Claims 1-20 are pending.
Claims 12-20 are withdrawn.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. Such a reference, for example, is on Page 2 of Applicant’s Specification.
Drawings
The replacement drawings filed 11/18/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In response to the drawing objections for shading, Applicant included replacement sheets addressing Fig. 1-6. In doing so, Applicant has effectively removed original Fig. 5-8 and 10. The removal of Fig. 5-8 and 10 no longer discloses the features or views therein and changes the scope of the disclosure as originally filed. As such, the replacement sheets constitute new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Specification
The amendment filed 11/18/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In response to the drawing objections for shading, Applicant included amendments to the specification addressing Fig. 1-6. [0046]-[0047] were amended to describe original figures in place of removed figures. [0048]-[0052] were amended to remove descriptions of original figures. [0055], [0058], and [0061] mirror these changes. In doing so, Applicant has effectively removed original Fig. 5-8 and 10 (and any description thereof in the specification as originally filed). The removal of Fig. 5-8 and 10 and specification description thereto no longer discloses the features or views therein and changes the scope of the disclosure as originally filed. As such, the amendments to the specification constitutes new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
Claim(s) 1-11 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. This is a new matter type rejection.
Re claim 1, claim 1 recites, “a support structure with a hemispherical structure configured to receive a portion of the decorate structure” in lines 3-4 However, after a review of the original disclosure (and of the disclosure of the applications to which the pending application claims priority, if such priority is claimed), the Examiner can find no support for “a hemispherical structure.” In addition, Merriam- Webster defines “hemispheric” as “having the shape of a half of a sphere or roughly spherical body.” However, the specification makes no mention of a hemispherical structure. Although the figures (as originally filed) disclose a support structure including a curved receptacle to receive the decorative structure (see, for example, Fig. 1-2 element 16), this structure cannot be considered as having the shape of a half of a sphere or roughly spherical body. Thus, there appears to be no support as originally filed for the limitation. In the event that the Applicant is of the opinion that this language is supported as originally filed, the Examiner requests Applicant to please cite to where the language is supported as originally filed.
Claims 2-11 are rejected as being dependent on a rejected claim.
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 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.
Re claim 1, claim 1 recites, “a support structure with a hemispherical structure configured to receive a portion of the decorate structure” in lines 3-4 However, after a review of the original disclosure (and of the disclosure of the applications to which the pending application claims priority, if such priority is claimed), the Examiner can find no support for “a hemispherical structure.” In addition, Merriam- Webster defines “hemispheric” as “having the shape of a half of a sphere or roughly spherical body.” However, the specification makes no mention of a hemispherical structure. Although the figures (as originally filed) disclose a support structure including a curved receptacle to receive the decorative structure (see, for example, Fig. 1-2 element 16), this structure cannot be considered as having the shape of a half of a sphere or roughly spherical body. Thus, it is unclear how the support structure has a hemispherical body. For the purposes of this examation, this language will be interpreted as a support structure to elevate and receive a portion of the decorative exterior structure.
Re claim 6, claim 6 recites claim 6 recites, “the patio” in line 2. There is insufficient antecedent basis for this limitation in the claims. It appears this language is intended to recite, “the outdoor patio” and will be interpreted as such.
Claims 2-4, 7-11 are rejected as being dependent on 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.
Claim(s) 1-4, 8, 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over The Big Duck (https://web.archive.org/web/20210512135441/https://www.roadsideamerica.com/story/2173#google_vignette – May 12, 2021) in view Mimetic Architecture (https://www.cnn.com/style/article/mimetic-architecture-osm) and Neiman et al (“Neiman”) (US 2020/0327759).
Re claim 1 as best understood in view of the rejection under 35 USC 112 above, The Big Duck discloses a building (Fig. 1, Page 1) to provide retail space (Page 1, 2nd paragraph) in which a class of products is exhibited or sold (Page 1, 2nd paragraph disclosing the sale of ducks and eggs), the building (Fig. 1, Page 1) comprising:
a decorative exterior structure (Fig. 1, Page 1) shaped like an item (Fig. 1, Page 1 being duck shaped) in the class of products (Page 1, 2nd paragraph disclosing the sale of ducks and eggs);
a display floor (Page 1, 2nd paragraph disclosing sale of items in the belly) in the building (Fig. 1, Page 1),
but fails to disclose the decorative exterior structure including a support structure with a hemispherical structure configured to receive a portion of the decorative exterior structure for positioning the decorative exterior structure above a ground, the support structure providing an entrance, and the display floor accommodating a plurality of kiosks; each kiosk displaying a plurality of products within the class of products.
However, Mimetic Architecture discloses the decorative exterior structure (see examiner comments) including a support structure (see examiner comments) with a hemispherical structure (as best understood in view of the rejection under 35 USC 112 above) configured to receive a portion of the decorative exterior structure (see examiner comments) for positioning the decorative exterior structure (see examiner comments) above a ground (see examiner comments), the support structure (see examiner comments) providing an entrance (see examiner comments).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck with the decorative exterior structure including a support structure with a hemispherical structure configured to receive a portion of the decorative exterior structure for positioning the decorative exterior structure above a ground as disclosed by Mimetic Architecture in order to provide an area below the decorative structure for storage, for passing through the structure, or to provide an entrance with displays for patrons.
In addition, Nieman discloses the display floor (180) accommodating a plurality of kiosks (185); each kiosk (185) displaying a plurality of products ([0035]) within the class of products ([0035]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck with the display floor accommodating a plurality of kiosks; each kiosk displaying a plurality of products within the class of products as disclosed by Neiman in order to display products available together with price and other descriptive information ([0035]).
Re claims 2-3, The Big Duck as modified discloses the building of claim 1 [and claim 2, below] but fails to disclose wherein the class of products is jewelry and the structure is shaped like a ring [claim 2], and wherein the class of products is jewelry and the structure is shaped like a ring and wherein the ring comprises at least one set jewel [claim 3].
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck wherein the class of products is jewelry and the structure is shaped like a ring [claim 2], and wherein the class of products is jewelry and the structure is shaped like a ring and wherein the ring comprises at least one set jewel [claim 3] in order to better attract prospective buyers of jewelry. It has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. MPEP 2144.04 (I).
Re claim 4, The Big Duck as modified discloses the building of claim 1 but fails to disclose wherein the display floor is encompassed within the portion of the building that appears like the set jewel.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck wherein the display floor is encompassed within the portion of the building that appears like the set jewel in order to provide sufficient sales space, as modified to be a ring, the set jewel location would have the greatest amount of floor space in a ring shaped building. It has been held that rearrangement of parts is considered within the level of ordinary skill in the art. In re Japikse, 181 F.2d 1019. In addition, selection of location a display floor in a set jewel portion of a ring shaped building is well within the level of ordinary skill in the art.
Re claim 8, The Big Duck as modified discloses the building of claim 1 further comprising the entrance (Page 1 Fig. 1-2) at one end (Page 1 Fig. 1-2) of the display floor (Page 1, 2nd paragraph disclosing sale of items in the belly), Neiman discloses an exit (110 and/or 194) at the opposite end of (Fig. 2A) the display floor (180, 190), and a checkout counter (192) disposed adjacent the exit (194, 110) of the display floor (180, 190).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck an exit at the opposite end of the display floor, and a checkout counter disposed adjacent the exit of the display floor as disclosed by Neiman in order to allow for more entrances/exits in the event of emergency, or to provide for a flow of customers into/out of the building.
Re claim 10, The Big Duck as modified discloses the building of claim 1 Neiman discloses wherein at least one of the plurality of kiosks (185) is a digital kiosk (185, see also [0035]-[0036] and [0038]).
Re claim 11, The Big Duck as modified discloses the building of claim 1 Neiman discloses wherein each of the plurality of kiosks (185) is indexed with a kiosk value ([0035] disclosing display of descriptive information) and each of the plurality of products ([0035] disclosing types of products displayed) is indexed with a product value (such as the type) such that a customer can refer to the kiosk value ([0035] disclosing display of descriptive information) and the product value (such as the type) to identify a particular product ([0035]).
Additionally, the language “can” is language that suggests or makes optional the subsequent limitation or limitations. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. See § MPEP 2103 (C).
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over The Big Duck (https://web.archive.org/web/20210512135441/https://www.roadsideamerica.com/story/2173#google_vignette – May 12, 2021) in view of Mimetic Architecture (https://www.cnn.com/style/article/mimetic-architecture-osm), Neiman et al (“Neiman”) (US 2020/0327759) and Vriens (US 2009/0183439).
Re claim 5, The Big Duck as modified discloses the building of claim 3, but fails to disclose wherein the display floor is elevated above ground level and an elevator, escalator, or set of stairs is encompassed within a portion of a band of the ring.
However, Vriens discloses wherein the display floor ([0077]) is elevated above ground level (via 20) and an elevator ([0075]), escalator, or set of stairs is encompassed within ([0075]) a portion of a band of the ring (as modified).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck wherein the display floor is elevated above ground level and an elevator, escalator, or set of stairs is encompassed within a portion of a band of the ring as disclosed by Vriens in order to provide a scenic view of the surrounding areas, while simultaneously allowing for simple transportation of people and goods to the elevated display floor.
Re claim 6, The Big Duck as modified discloses the building of claim 1, but fails to disclose wherein the building further comprises an outdoor patio surrounding at least a portion of the display floor, wherein the patio is shaped to conform to the shape of the item in the class of products.
However, Vriens discloses wherein the building (100) further comprises an outdoor patio (801) surrounding at least a portion of the display floor ([0077]), wherein the patio ([0077]) is shaped to conform to the shape (Fig. 4) of the typical item (100) in the class of products (Fig. 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck wherein the building further comprises an outdoor patio surrounding at least a portion of the display floor, wherein the patio is shaped to conform to the shape of the typical item in the class of products as disclosed by Vriens in order to provide a scenic view of the surrounding areas, while simultaneously allowing for simple transportation of people and goods to the elevated display floor.
Re claim 7, The Big Duck as modified discloses the building of claim 1, but fails to disclose wherein the display floor is elevated above ground level and the building comprises an elevator shaft that is effectively camouflaged from viewers at a distance.
However, Vriens discloses wherein the display floor ([0077]) is elevated above ground level (via 20) and the building (100) comprises an elevator shaft (interior to 20 being the shaft) that is effectively camouflaged from viewers at a distance (the shaft being obscured by 20).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck wherein the display floor is elevated above ground level and the building comprises an elevator shaft that is effectively camouflaged from viewers at a distance as disclosed by Vriens in order to provide a scenic view of the surrounding areas, while simultaneously allowing for simple transportation of people and goods to the elevated display floor.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over The Big Duck (https://web.archive.org/web/20210512135441/https://www.roadsideamerica.com/story/2173#google_vignette – May 12, 2021) in view of Mimetic Architecture (https://www.cnn.com/style/article/mimetic-architecture-osm), Neiman et al (“Neiman”) (US 2020/0327759) and Vayda (US 5,113,974).
Re claim 9, The Big Duck as modified discloses the building of claim 1, but fails to disclose further comprising a dock for customers to pick up online purchases.
However, Vayda discloses further comprising a dock (Col 6 line 65-69) for customers to pick up online purchases (Col 6 line 65-69; the dock is capable of use to pick up online purchases).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of The Big Duck further comprising a dock for customers to pick up online purchases as disclosed by Vayda in order to allow delivery to/from the building (Col 7 lines 5-29), as is the normal and logical manner of use of docks.
Examiner Comments
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717
1152
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Response to Arguments
Information Disclosure Statement: Applicant provided no remarks regarding the Information Disclosure Statement. The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. Such a reference, for example, is on Page 2 of Applicant’s Specification.
Objections to the Drawings: Applicant’s argument with respect to the drawings (only for those reasons stated in the previous rejection) is persuasive and objection to the drawings is hereby withdrawn. However, as addressed above, Applicant’s amendments/replacement figures constitute new matter.
Claim Rejections 35 USC 112: Applicant’s argument with respect to the claims rejected under 35 USC 112 is partially persuasive and rejection of the claims pursuant to 35 USC 112 (for those reasons stated in the previous rejection) is hereby [partially withdrawn. However, the rejection of claim 6 does not appear to have been addressed and that rejection is maintained.
Claim Rejections 35 USC 103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
Applicant argues the amendment language of claim 1. This language is addressed in view of the rejection under 35 USC 112 above, as well as Mimetic Architecture.
Applicant argues that the Big Duck is disposed on the ground. Although the Big Duck does not disclose a support structure as claimed, Mimetic Architecture does so, and modification of the Big Duck therewith would be obvious for those reasons provided above.
Applicant’s arguments concerning Neiman have been considered. However, Neiman is merely relied upon as disclosing kiosks, and not any decorative exterior structure or support structure.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at (571)270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635