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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Structural components in claims 1 and 13
Functional components in claims 1 and 13
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1, 10, and 19, and also claims 2-9 and 11-12 by dependency, 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.
Claim 1 recites “the insert” in line 3. There is insufficient antecedent basis for this limitation in the claim. It is not clear whether this element is referring to the previously introduced “insert cabinet” or is introducing a new element. For the purposes of this Office Action, the limitation is being interpreted as introducing a new element and is being read as “an insert”.
Claim 10 recites the limitation "the heater" in line 1. There is insufficient antecedent basis for this limitation in the claim. The claim as written depends from claim 2, but the heater was not introduced in claims 1 or 2, but rather was introduced in claim 3. It is not clear, then, if this claim is intended to require the limitations of claim 3. For the purposes of this Office Action, claim 10 is being interpreted as depending from claim 3 rather than claim 2.
Claim 19 also recites the limitation "the heater". There is insufficient antecedent basis for this limitation in the claim. The claim as written depends from claim 14, but the heater was not introduced in claims 13 or 14, but rather was introduced in claim 15. For the purposes of this Office Action, “the heater” is being interpreted as “a heater”.
Claims 2-9 and 11-12 are also rejected based on their dependency from claim 1.
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.
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 2022/0299210 by Jones et al (hereinafter “Jones”).
Regarding claim 1, Jones discloses a method of assembling an electric fireplace (Abstract, Figs 23-30 show assembly method steps of furniture console kit 100 with fireplace insert 300) comprising:
providing structural components of an insert cabinet (Fig 6 ready-to-assemble fireplace kit 300 comprises glass panel 302, firebox panel 304, face frame or grill 308 with upright structural supports 310, and foundation unit 306; paragraph [0150]);
providing functional components of the insert (Fig 6 ready-to-assemble fireplace kit comprises electronic fire bed assembly 312 and heater assembly 320 shown in Fig 11);
assembling the insert cabinet separately from a fireplace cabinet (Figs 23-28 show assembly of the insert cabinet 300 separate from furniture console kit 100; paragraph [0164], assembled insert cabinet 300 is ready for assembly with previously assembled furniture console kit 100); and
installing the assembled insert cabinet into the fireplace cabinet to achieve a fully assembled electric fireplace (Figs 29-30; paragraph [0165]).
Regarding claim 2, Jones discloses that the structural components of the insert cabinet comprise panels selected from the group consisting of a bottom panel, a top panel, a right panel, a left panel, a back panel, and a front panel (Fig 6 structural components include at least foundation unit 306 having a bottom panel, left and right side panel portions 316 and 318, rear imaging screen panel portion 314 as a back panel, and viewing panel 302 as a front panel).
Regarding claim 3, Jones discloses that the functional components of the insert comprise logs, a grate, and a heater (Fig 25 functional components comprise at least log set 340, ember bed and grate assembly 338, and heater assembly 320 shown in Fig 11).
Regarding claim 4, Jones discloses that the bottom panel includes a bottom panel portion coupled to a lower brace (Fig 23 bottom panel portion of foundation unit 306 is coupled to face frame 308).
Regarding claim 5, Jones discloses that the right and left panels respectively include right and left panel portions coupled to right and left braces (Fig 24 right and left panels 318/316 include portions that are coupled to upright structural supports 310; paragraph [0155]).
Regarding claim 6, Jones discloses that the front panel is made of a transparent or semi- transparent material (paragraph [0151], front panel 302 is a viewing panel made of tempered glass).
Regarding claim 8, Jones discloses that the logs are positioned within the grate (Fig 25; paragraph [0162]), and the grate is placed on the bottom panel of the insert cabinet (Fig 26; paragraph [0163]).
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.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of US 2011/0250978 by O’Neill (hereinafter “O’Neill”).
Regarding claim 7, Jones teaches the method of claim 1 (see details in claim 1 rejection above). Jones teaches that the structural components of the insert cabinet, particularly the panel 304 made up of the right panel, left panel, and back panel, are made of MDF, but may be made up of other rigid materials (paragraph [0153]). Jones does not explicitly teach that the structural components of the insert cabinet are made of particle board.
However, O’Neill teaches a casing for an electric fireplace which is made of particle board (Figs 38-39, external casing 230 for simulated fuel bed 232; paragraph [0195] housing 230 may be made from particle board).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to make the structural components, particularly the right panel, left panel, and back panel from particle board, since it has been held to be within the general skill of a worker in the art to select known [as evidenced by O’Neill] material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of US 2023/0204172 by Walker et al (hereinafter “Walker”).
Regarding claim 9, Jones teaches the method of claim 2 (see details in claim 2 rejection above). The previously cited embodiment of Jones further teaches a cord aperture in the bottom panel for connecting an electrical cord (Fig 26 connections 352 is made through bottom plate 306; paragraph [0158], also see Fig 62). Although the cited embodiment of Jones referenced above teaches a heater positioned at the bottom of the insert of the foundation unit, Jones also teaches in other embodiments that positioning the heater at the top of the insert cabinet may be equally desirable (Figs 133-137 for example; paragraph [0219]).
Walker further teaches an electric fireplace insert (Fig 2 fireplace insert 210) having a bottom panel (Fig 8 base support 266) and a back panel (Fig 8 back panel 270), a simulated fuel source with logs and a grate (Fig 22 simulated fuel source 220), and a heater positioned at the top of the insert (Fig 3 heater assembly 250), where the back panel of the insert features a cord aperture permitting the passage of an electrical cord which connects the heater with the simulated fuel source (Figs 6-7 cable 604 is shown passing through opening 710 in back panel; paragraph [0079]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the method of Jones such that the heater is at the top of the insert cabinet and the back panel of the insert cabinet features a cord aperture permitting the passage of an electrical cord. The cord aperture in the back panel would more directly connect the fire simulating structure with the heater when the heater is positioned at the top of the insert cabinet. One of ordinary skill in the art would recognize that this repositioning of parts would not alter the function of the heater and associated electrical cord and would produce a predictable and equally desirable result. It has been held (In re Japikse, 86 USPQ 70} that rearrangement of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI-C).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Jones.
Regarding claim 10, Jones teaches the method of claim 3 (see details in claim 3 rejection above). Although the cited embodiment of Jones referenced above teaches a heater positioned at the bottom panel, Jones also teaches in other embodiments that positioning the heater at the top of the insert cabinet coupled to a top panel may be equally desirable (Figs 133-137 for example with heater 1208 positioned at top and coupled with the heater casing which forms the top panel; paragraph [0219]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the method of Jones such that the heater is at the top of the insert cabinet. One of ordinary skill in the art would recognize that this repositioning of parts would not alter the function of the heater and would produce a predictable and equally desirable result. It has been held (In re Japikse, 86 USPQ 70} that rearrangement of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI-C).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of the video presentation titled “NookNova 23” Electric Home Depot Fireplace Replacement” by “Tech Influence”, published September 12, 2022 (see NPL in attached PTO-892, hereinafter “Tech Influence”).
Regarding claim 11, Jones teaches the method of claim 1 (see details in claim 1 rejection above).
But Jones does not explicitly teach that the insert cabinet is coupled to the fireplace cabinet with fasteners.
However, Tech Influence teaches a similar method of inserting an electric fireplace insert into a fireplace cabinet to achieve a fully assembled electric fireplace (see screenshots A and B from Tech Influence below). Tech Influence teaches that the fireplace insert is coupled to the fireplace cabinet with fasteners (see screenshot B).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the method of Jones such that the insert cabinet is coupled to the fireplace cabinet with fasteners, as taught by Tech Influence, so that the user can easily and securely attach the insert cabinet to the fireplace cabinet with standard tools.
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Screenshot A from Tech Influence video showing assembled fireplace insert and assembled fireplace cabinet before fireplace insert is inserted into fireplace cabinet (timestamp 1:57)
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Screenshot B from Tech Influence video showing the step of coupling the fireplace insert to the fireplace cabinet with fasteners (timestamp 2:54)
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of the video presentation titled “PuraFlame Electric Fireplace Unbox, Installation and Review” by “DIY with Andrew Bacon”, published February 1, 2022 (see NPL in attached PTO-892, hereinafter “DIY with Andrew Bacon”).
Regarding claim 12, Jones teaches the method of claim 1 (see details in claim 1 rejection above).
But Jones does not explicitly teach that the insert cabinet is coupled to the fireplace cabinet through a friction fit.
However, DIY with Andrew Bacon teaches a similar method of inserting an electric fireplace insert into a fireplace cabinet to achieve a fully assembled electric fireplace (see screenshot C from DIY with Andrew Bacon below). DIY with Andrew Bacon teaches that the fireplace insert is coupled to the fireplace cabinet through a friction fit without fasteners so that it can be easily inserted and removed as needed (see screenshot C).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the method of Jones such that the insert cabinet is coupled to the fireplace cabinet through a friction fit, as taught by DIY with Andrew Bacon, so that the user can easily and removably couple the insert cabinet with the fireplace cabinet.
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Screenshot C from DIY with Andrew Bacon video showing the step of coupling the fireplace insert to the fireplace cabinet through a friction fit (timestamp 3:09)
Claims 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of the video presentation of installing an Electric Fireplace Insert titled “How to Install an Amazon Electric Fireplace Insert – Step-by-Step Guide” by “Matt’s World DIY”, published January 10, 2023 (see NPL in attached PTO-892, hereinafter “Matt’s World DIY”).
Regarding claim 13, Jones teaches a method of packaging and shipping an electric fireplace assembly (Abstract, simulated fireplace kit packed and shipped in flat format), comprising:
providing parts of an insert for the electric fireplace comprising structural components and functional components (Fig 6 ready-to-assemble fireplace kit 300 includes at least glass panel 302, firebox panel 304, face frame or grill 308 with upright structural supports 310, and foundation unit 306, electronic fire bed assembly 312, and heater assembly 320 shown in Fig 11
providing parts of a fireplace cabinet including structural components of the fireplace cabinet (paragraph [0006], a furniture assembly kit is also provided; console 100 shown with structural components assembled in Figs 29-30);
shipping the structural components of the insert and the structural components of the fireplace cabinet in disassembled form (Abstract and paragraph [0005], components are shipped in flat format and assembled by end user).
Jones does not explicitly teach the step of providing instructions to a user for assembling the insert and installing the insert into the fireplace cabinet.
However, Matt’s World DIY teaches that it is known to provide instructions to a user for assembling an electric fireplace insert and installing the insert into a receiving space (see screenshot D below).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the method of Jones to include the step of providing instructions to a user for assembling the insert and installing the insert into the fireplace cabinet, in order to help the user to understand the assembly process and provide a better user experience.
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Screenshot D from Matt’s World DIY video showing instructions provided to a user for assembling and installing a fireplace insert (timestamp 1:20)
Regarding claim 14, Jones teaches that the structural components of the insert comprise panels selected from the group consisting of a bottom panel, a top panel, a right panel, a left panel, a back panel, and a front panel (Fig 6 structural components include at least foundation unit 306 having a bottom panel, left and right side panel portions 316 and 318, rear imaging screen panel portion 314 as a back panel, and viewing panel 302 as a front panel).
Regarding claim 15, Jones teaches that the functional components of the insert comprise logs, a grate, and a heater (Fig 25 functional components comprise at least log set 340, ember bed and grate assembly 338, and heater assembly 320 shown in Fig 11).
Regarding claim 16, Jones teaches that the bottom panel includes a bottom panel portion coupled to a lower brace (Fig 23 bottom panel portion of foundation unit 306 is coupled to face frame 308).
Regarding claim 17, Jones teaches that the right and left panels respectively include right and left panel portions coupled to right and left braces (Fig 24 right and left panels 318/316 include portions that are coupled to upright structural supports 310; paragraph [0155]).
Regarding claim 18, Jones teaches that the front panel is made of a transparent or semi- transparent material (paragraph [0151], front panel 302 is a viewing panel made of tempered glass).
Regarding claim 19, Jones teaches the method of claim 14 (see details in claim 14 rejection above). Although the cited embodiment of Jones referenced above teaches a heater positioned at the bottom panel, Jones also teaches in other embodiments that positioning the heater at the top of the insert cabinet coupled to a top panel may be equally desirable (Figs 133-137 for example with heater 1208 positioned at top and coupled with the heater casing which forms the top panel; paragraph [0219]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the method of Jones such that the heater is at the top of the insert cabinet. One of ordinary skill in the art would recognize that this repositioning of parts would not alter the function of the heater and would produce a predictable and equally desirable result. It has been held (In re Japikse, 86 USPQ 70} that rearrangement of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI-C).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Matt’s World DIY, as applied to claim 13 above, and in further view of Tech Influence.
Regarding claim 20, Jones teaches the method of claim 13 (see details in claim 13 rejection above). But Jones does not explicitly teach that the insert cabinet is coupled to the fireplace cabinet with one of fasteners, adhesive and a friction fit.
However, Tech Influence teaches a similar method of inserting an electric fireplace insert into a fireplace cabinet to achieve a fully assembled electric fireplace (see screenshots A and B from Tech Influence above). Tech Influence teaches that the fireplace insert is coupled to the fireplace cabinet with fasteners (see screenshot B above).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the method of Jones such that the insert cabinet is coupled to the fireplace cabinet with fasteners, as taught by Tech Influence, so that the user can easily and securely attach the insert cabinet to the fireplace cabinet with standard tools.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2005/0133022 by Jones teaches a fireplace assembly (gas or electric) which is inserted into a furniture assembly.
US 2010/0307477 by Gallo teaches a fireplace insert assembly received in a piece of furniture.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amy E Carter whose telephone number is (703)756-5894. The examiner can normally be reached Monday-Friday 8:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached at 571-272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMY E CARTER/Examiner, Art Unit 3762
/Allen R. B. Schult/Primary Examiner, Art Unit 3762
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