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 .
Response to Arguments
Applicant’s arguments have been considered but are moot because of new ground of rejection based on applicant’s amendment.
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.
Claims 1-7 and 21-25 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. As recited in claims 1 and 21, the negative limitation “the design pattern is free of cutting markings” is considered new matter. This statement excludes cutting markings from the design pattern as part of the claimed invention. Such an exclusion was not described in the application as originally filed.
Claim Rejections - 35 USC § 102
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)(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 1-5 and 7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Feliu De La Pena (US 10,561,186).
Feliu De La Pena teaches the fabric (1) for piecing a portion of a quilt as claimed including a design pattern (2) disposed on a first surface of the fabric (1); and a guide pattern (4, 5) disposed on the first surface of the fabric, the guide pattern comprising one or more sets of markings, wherein the one or more sets of markings define boundaries for the design pattern. The recitation “the fabric is configured to be folded and sewn along each marking of the one or more sets of markings, whereby the design pattern is aligned and the one or more sets of markings are no longer visible on the first surface” is a method step within the product claim that does not provide any specific product limitations. As such the functional recitation does not distinguish over Feliu De La Pena’s prior art product. Even so, Feliu De La Pena’s fabric is capable of such functions and in fact is sewn and folded along the guide pattern. The new matter recitation “the design pattern is free of cutting markings” is found within the teachings of Feliu De La Pena given the fact that the actual design pattern (2) is outlined by seam line (4) and cutting markings (5) which are outside the design pattern and outside the seam lines. Regarding claim 2, the one or more sets of markings (4, 5) are disposed on the first surface in a vertical orientation, a horizontal orientation, or a diagonal orientation (Figure 1). Regarding claim 3, the one or more sets of markings (4, 5) comprise a first set of markings and a second set of markings, further wherein the first set of markings are disposed in a first diagonal orientation on the first surface, and further wherein the second set of markings are disposed in a second diagonal orientation on the first surface (Figure 1). Regarding claim 4, the one or more sets of markings comprise a third set of markings and a fourth set of markings, further wherein the third set of markings are disposed in a vertical orientation on the first surface, and further wherein the fourth set of markings are disposed in a horizontal orientation on the first surface at least to the extent claimed as seen in figure 1. Regarding claim 5, the one or more sets of markings comprise a first set of markings and a second set of markings, further wherein the first set of markings are disposed in a vertical orientation on the first surface, and further wherein the second set of markings are disposed in a horizontal orientation on the first surface. Regarding claim 7, the one or more sets of markings comprise a first set of markings and a second set of markings, and wherein the first set of markings intersect with the second set of markings. Regarding claim 21, Feliu De La Pena teaches the fabric for piecing a portion of a quilt, the fabric comprising: a design pattern (2) disposed on a first surface of the fabric, wherein the design pattern is free of cutting markings (the actual design pattern (2) is outlined by seam line (4) and cutting markings (5) which are outside the design pattern and outside the seam lines; a guide pattern (4, 5) disposed on the first surface of the fabric, the guide pattern comprising one or more sets of markings, wherein the one or more sets of markings define boundaries for the design pattern, further wherein the one or more sets of markings comprise a first set of markings and a second set of markings, and further wherein the first set of markings intersect with the second set of markings. The recitation “the fabric is configured to be folded and sewn along each marking of the one or more sets of markings, whereby the design pattern is aligned and the one or more sets of markings are no longer visible on the first surface” is a method step within the product claim that does not provide any specific product limitations. As such the functional recitation does not distinguish over Feliu De La Pena’s prior art product. Even so, Feliu De La Pena’s fabric is capable of such functions and in fact is sewn and folded along the guide patterns seen in figure 2. Regarding claim 22, the first set of markings are disposed in a first diagonal orientation on the first surface, and further wherein the second set of markings are disposed in a second diagonal orientation on the first surface Regarding claim 23, the first set of markings are disposed in a vertical orientation on the first surface, and further wherein the second set of markings are disposed in a horizontal orientation on the first surface. Regarding claim 24, each side of the fabric comprises an offset at each marking of the first and second set of markings.
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 6 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Feliu De La Pena.
Feliu De La Pena teaches the invention substantially as claimed as previously indicated in the rejection to claim 1. However while Feliu De La Pena shows an offset at and between each marking, it is not indicated as 1/4th of an inch. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose from different offsets including 1/4th of an inch for the purpose of optimizing the seam allowance and/or cutting allowance for the individual fabric pieces.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 extension fee 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 date of this final action.
Applicant is reminded that all business with the Patent and Trademark Office should be transacted in writing. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt. 37 C.F.R. 1.2
Further it is noted that a complete response must satisfy the requirements of 37 C.F.R. 1.111, including:
-The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.
-A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
-Moreover, The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06, MPEP 714.02. The "disclosure" includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danny Worrell whose telephone number is (571)272-4997. The examiner can normally be reached on M-Th.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANNY WORRELL/Primary Examiner, Art Unit 3732
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