DETAILED ACTION
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.
Claims 1-2, 5-6, 9-15, 17-20, are rejected under 35 U.S.C. 103 as being unpatentable over Barast (FR 921,290) (See NPL for English Translation).
In respect to claims 1-2, 11-13, 18, and 20, Barast discloses a “modular note taking system” comprising: a plurality of writing surfaces 3 each having elongated openings 4, such that when the writing surfaces are stacked together the elongated openings of each of the plurality of writing surfaces forms an elongated slot; the elongated slots are configured to receive substantially cylindrical elongated binding elements 1; the binding elements are further configured to retain the plurality of writing surface
by passing through the elongated slots, wherein the binding elements are configured to be fully rotatable through the elongated slots (via its continuous cylindrical shape) (0001-0002; Figs. 1-2).
Barast do not disclose a particular axial length of the binding elements along the longitudinal axis which is 10-120 mm, however a length within this extensive range is readily deduced: A standard sheet size in a bound volume has a length of 11”, and Figure 2 shows an exemplary embodiment with 3 equally spaced lengths of binding elements (with approximately 4 length spaces between each binding element, and ½ length on the top and bottom) thus each length is 11”/(4 + 4 + 3 + 1) = 0.92” = 23.3 mm. If the “standard” is argued against, even halving the length of the book to 5.5” or doubling or quadrupling the size, would still conform with this range. Regardless, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
The binding elements may be any material, including any metal (0002). Although Barast do not specifically teach particular metals such as steel, it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide steel as the metal material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Thus, the steel binding elements are capable of magnetic attraction to a “attachment portion of a support surface” which is structurally undefined and may constitute something as simple as a magnetic strip. Similarly, the binding elements have an opening (the center of the substantially cylindrical “barrel” shape) which is capable of receiving a structurally undefined “support member”.
In respect to claims 5-6, 9-10, and 15, the “attachment portion” and the “support surface” are recited as a functionality capability of the binding element. The binding element is capable of interacting with an attachment portion and a support surface with the claimed elements.
In respect to claims 17 and 19, Barast discloses that the plurality of writing surfaces have a turning edge and that the elongated slot is configured to receive the magnetically attractive (steel) binding element such that it circumscribes the turning edge (Fig. 2).
Claims 1, 11, 21, and 22, are rejected under 35 U.S.C. 103 as being unpatentable over Spinner (US 2,251,343).
Spinner discloses a “modular note taking system” comprising: a plurality of writing surfaces 11 each having elongated openings 12, such that when the writing surfaces are stacked together the elongated openings of each of the plurality of writing surfaces forms an elongated slot; the elongated slots are configured to receive substantially cylindrical elongated binding elements 13 (Fig. 2); the binding elements are further configured to retain the plurality of writing surface by passing through the elongated slots, wherein the binding elements are configured to be fully rotatable through the elongated slots (Fig. 2). Spinner further discloses a “bend-assist opening” 15 (Fig. 5). Although this opening is for securing the binding element in a cylindrical shape, the use as a “bend-assist” is intended use and does not provide any particular structure. The opening could conceivably used by an arbitrary bending machine to assist in bending.
Spinner does not disclose a particular axial length of the binding elements along the longitudinal axis which is 10-120 mm, however a length within this extensive range is readily deduced: A standard sheet size in a bound volume has a length of 11”, and Figure 2 shows a binding element which would appears to fall within the extension length range claimed. Regardless, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
The binding elements may be any “thin and resilient” material. Although Spinner does not specifically teach steel, it is a “thin and resilient” material, and it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide steel as the metal material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Thus, the steel binding elements are capable of magnetic attraction to a “attachment portion of a support surface” which is structurally undefined and may constitute something as simple as a magnetic strip. Similarly, the binding elements have an opening (the center of the substantially cylindrical “barrel” shape) which is capable of receiving a structurally undefined “support member”.
Allowable Subject Matter
Claims 3 and 4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
The arguments against Freres were mostly not persuasive, however arguments against Freres not being capable of being “fully rotatable” were persuasive. New art has been cited above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-T 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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