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 .
The present application has been transferred to examiner Fan Tsang.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lien et al. US8719033 (hereinafter Lien) in view of Mayer et al., US 2012/0304509 (hereinafter Mayer).
Regarding claims 1 and 7, Lien discloses a greeting card having record feature with a circuit board (56, Fig.4). The circuit board of is used to process and perform recording/playing audio messages features. Lien’s circuit board receives an indication (i.e. tearing the trial mode panel 26 in Fig.1 apart from the card) of a user manipulation of a mode of operation switch (third switch 60, Fig.4 and column 5, lines 38-55); then switches from a safe mode (trial mode) to a recipient mode (use mode). It is noted that the claimed “safe mode” provides a different recording/playback feature from the “recipient mode” as disclosed in the specification (see para 19 of the specification. Lien’s “trial mode” and “use mode” are performing similar functions corresponding to the claimed “safe mode” and “recipient mode”; thus, Lien’s “trial mode” and “use mode” read on the claimed “safe mode” and the “recipient mode”. While the card in the recipient mode (use mode), the card will play a pre-recorded sound (see column 7, lines 20-24) continuously until a battery runs out of power. The card/circuit board of Lien will ignore any second or subsequence indication of user manipulation of the mode of operation switch (third switch 60, Fig.4) because the third switch 60 is opened during the recipient mode (use mode). Therefore, the second/subsequence manipulation of switch 60 will have no effect on the card, including when the card is playing a message during the recipient/use mode. However, Lien’s circuit board does not show the claimed processor and computer medium.
On the other hand, Mayer discloses a greeting card having a circuit board with a processor and computer memory in Fig.4 for controlling recording/playing feature of an audio message (see para 27 and 28). Since both Lien and Mayer disclose a similar type of greeting cards, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to use processor/memory as taught by Mayer in the circuit board of Lien because using IC processors in a circuit board would greatly reduce the complexity of the required hardware circuits to perform the audio message recording/playing features.
Regarding claims 2 and 8, Lien’s switch 60 is a one-time use switch (see columns 5, line 48-55).
Regarding claims 3 and 9, see Lien’s trial mode panel 26, fig.1.
Regarding claims 4 and 10, see Lien column 7, lines 51-55.
Regarding claims 5 and 11, it is inherent that the tab (trial mode panel of Lien) is attached to the insulator.
Regarding claims 6 and 12, see Lien’s column 7, lines 1-6 discloses that the user recorded sound is only played once during the trial mode.
Regarding claim 13, Lien discloses a greeting card apparatus having recording feature with a circuit board (56, Fig.4). Lien’s card comprising a switch (third switch 60, Fig.4 and column 5, lines 38-55) for switching the card from a safe mode (trial mode) to a recipient mode (use mode). It is noted that the claimed “safe mode” provides a different recording/playback features (see paragraph 19 of the specification) from the claimed “recipient mode” as disclosed in the specification; and Lien’s “trial mode” and “use mode” are performing similar functions corresponding to the claimed “safe mode” and “recipient mode”. Therefore, Lien’s “trial mode” and “use mode” read on the claimed “safe mode” and the “recipient mode”. The third switch 60 of Lien is a tear switch such that when a user tears the trial mode panel 26 from the card (see column 5, line lines 38-55), the card will be changed from “trial mode” to “use mode”. It is also noted that the card cannot be returned to the “trial mode” once the card is on the “use mode”. Once the card is on the “use mode”, a pre-record sound, such as a songs or a recorded message from a user, can be played according to the corresponding switches are pressed or a card is opened. It is also noted that the pre-recorded sound cannot be modified if the switch, i.e. switch 60 is manipulated by the user since this switch is merely control the card changing from the ”trial mode” to the “use mode”. However, Lien’s circuit board does not show the claimed controller.
On the other hand, Mayer discloses a greeting card having a circuit board with a processor and computer memory in Fig.4 for controlling recording/playing of an audio message (see para 27 and 28). Since both Lien and Mayer disclose a similar type of greeting cards, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to use processor/memory as taught by Mayer in the circuit board of Lien because using IC processors in a circuit board would greatly reduce the complexity of the circuits inside the circuit board.
Regarding claim 14, see cavity/pocket 34 in Fig.2 and column 4, line 2 of Lien.
Regarding claims 15 and 16, see Lien, Fig.2 for two panels 14 and 20; and the fold line 24.
Regarding claim 17, see rejection for claim 3.
Regarding claim 18, see rejection for claim 4.
Regarding claim 19, the trial mode panel 26 (tab) of Lien is pulled out by the user.
Regarding claim 20, see Lien, Fig.4 of the claimed slit between 62 and 60.
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10625531, claims 1-19 od U.S. Patent 11376881 and claims 1-19 of U.S. Patent 11633973. Although the claims at issue are not identical, they are not patentably distinct from each other because claim in the pending application is broader than the one in patents. For example, the subject matter claimed in claim 1 of the pending application, which reciting a controller for controlling the safe mode and the recipient mode switching feature and continuously playing a message till the battery being out of power, is covered by claim 1 of the above three patents. Therefore, the pending claim 1 is anticipated by the claim 1 and/or its dependent claims of the above three patents.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lien et al. US2009/0259474 teaches a greeting card having audio recording capabilities with trial mode feature.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Fan Tsang whose telephone number is (571)272-7547. The examiner can normally be reached M-F 9am-5pm.
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, Fan Tsang can be reached on (571) 272-7547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent -center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FAN S TSANG/ Supervisory Patent Examiner, Art Unit 2694