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 .
Election/Restrictions
It is noted that the claims as presented are directed to a product and method of forming the product. As currently presented, the method is the assembly of the product and its examination in conjunction with the product does not represent a serious burden at this time; therefore, no restriction is required. However, if subsequent amendments to the claims result in diverging subject matter and searches between the claimed inventions, the examiner reserves the right to restrict at that time. The Office also notes that when the prior art device is the same as a device described in the specification for carrying out the claimed method it can be assumed the device will inherently perform the claimed process, In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). The Office further specifically notes the following in the event that a restriction is required in the future: “All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.”
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, 5, 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weeks (US 4230224 A) in view of Joulia (US 6070749 A) and Parren (US 4901848 A) and Kulukundis (GB 2431222 A).
Weeks discloses:
1. An attachable lighter holder device (figs 1-9) comprising: a body and a fastener comprised of a male member (such as in fig 5 with a snap fastener having a male member. The Office notes that is well within the skill to reverse one end of the fastener with the other such as swapping male for female as the same function is provided. In addition to the above, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to reverse the parts of female to male as it has been held that that the reversal parts of an invention on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). With respect to first and second openings, Joulia discloses related art to male fasteners and also discloses the concept of providing a removable feature through the use of first and second openings (openings for example adjacent 209s features in fig 14 where the fastener is removable, configured to secure the fastener to the body within the second opening, such as in fig 14). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Weeks in view of Joulia (by provide multiple openings on the holder to provide a removable function for the fastener) in order to provide enhanced function for the device such as the ability to clean parts via removal as well as to provide the ability to easily replace broken parts.
With respect to engraved, the Office notes that claims 1, 5 are being treated as product-by-process limitations and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above). Nevertheless, Parren discloses an indicia engraved into the body (60 as in fig 1, col. 3: 50-70). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Parren (by providing the above) in order to provide information to the user such as advertising or user identification.
With respect to flexible silicon body, the Office notes that Kulukundis discloses the above (claim 11, 12). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Kulukundis (by providing the above material) in order to provide rubber materials in order to assist in the removal and application of the holder to the desired item. Furthermore, though not required the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Leshin, 125 USPQ 416.
The Combined Reference discloses:
5. The attachable lighter holder device of claim 1, wherein the fastener removably attaches to the body (as in Joulia already provided in claim 1).
Claim(s) 7, 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weeks (US 4230224 A) in view of Joulia (US 6070749 A) and Kulukundis (GB 2431222 A).
Weeks discloses:
7. An attachable lighter holder device (figs 1-9) comprising: a body and a fastener positioned on the body (such as in fig 5 with a snap fastener having a male member. The Office notes that is well within the skill to reverse one end of the fastener with the other such as swapping male for female as the same function is provided. In addition to the above, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to reverse the parts of female to male as it has been held that that the reversal parts of an invention on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). With respect to first and second openings, Joulia discloses related art to male fasteners and also discloses the concept of providing a removable feature through the use of first and second openings (openings for example adjacent 209s features in fig 14 where the fastener is removable, configured to secure the fastener to the body within the second opening, such as in fig 14). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Weeks in view of Joulia (by provide multiple openings on the holder to provide a removable function for the fastener) in order to provide enhanced function for the device such as the ability to clean parts via removal as well as to provide the ability to easily replace broken parts.
With respect to flexible silicon body, the Office notes that Kulukundis discloses the above (claim 11, 12). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Kulukundis (by providing the above material) in order to provide rubber materials in order to assist in the removal and application of the holder to the desired item. Furthermore, though not required the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Leshin, 125 USPQ 416.
With respect to another magnet fastener, the Office notes that Weeks already discloses mutiple fasteners (such as in fig 7 including magnets). It is well within the skill of one of ordinary skill in the art to provide multiple types of fasteners such as the removable fastener already provided above and a magnetic fastener such as to provide the means to attach to a variety of different types of items such as one with a compatible fastener to the removable fastener and another magnetic fastener. The Office further notes that in order to advance prosecution for Applicant that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the device (such as by duplicating fasteners) because it has been held that the duplication of parts on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute one fastener for another because it has been held that substituting equivalents known for the same purpose on the basis of its suitability for the intended use was an obvious extension of the prior teachings.. Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat.Inter. 1980), 209 USPQ at 759.
As discussed above, the applied prior art teaches the product as claimed. To the extent that the claimed product performs the claimed method, the prior art product performs the method steps, as claimed.
Response to Arguments
Applicant's arguments with respect to the claims have been considered but are moot because in view of the amendment the search has been updated and a new rejection has been made.
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 ANDREW D PERREAULT whose telephone number is (571)270-5427. The examiner can normally be reached Monday - Friday 7:00am-5:30pm.
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/ANDREW D PERREAULT/Primary Examiner, Art Unit 3735