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 Rejections - 35 USC § 112
Claims 30-32 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. Claims 30-32 have been added to include the term “non-removably”. The subject matter added was not previously described in the application as filed and therefore constitutes new matter. While the specification outlines that “the base object of the present system is configured to adhere to the resin and bond with the resin when the resin is cured,” (application specification paragraph 25) there is no disclosure that the resin is “non-removably” adhered to the base object. Applicants previous reply admits that there is no disclosure using the term “non-removably” in the specification as originally filed. The specification only describes that the resin “solidifies,” “bonds,” “adheres,” and “affixes” the components upon curing. However, there is no disclosure that this adherence is “non-removable”. While the resin and the base are disclosed as adhering to each other there is no disclosure that such adherence is non-removable. The claim term raises the issue of new matter not disclosed at the time of filing.
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 30-32 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.
Claims 30-32 recite the limitation "non-removably" in the limitation "wherein resin non-removably bonds to the base object when the resin is cured.” The term "non-removably" renders the claim indefinite because it is unclear as to the metes and bounds of this limitation. The term is not found in the specification. As can best be understood by the examiner the applicant is referring to the adherence of the resin onto the base object in the claimed inventions solidified state.
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.
Claim(s) 1, 4-9, 11-13, 16-19, 30-31 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US5934969 to Rehkemper et al.
Regarding claim 1, Rehkemper et al teaches a kit for creating a miniature replica of a food (frog) or beverage item, the kit comprising: a base object 18 that forms a base of the miniature replica of the food (frog) or beverage item, the base object comprising a miniature replica of a component of the food or beverage item (frog); a resin container (container in which 30 is stored) storing a curable viscous resin 30 configured to be applied to the base object and to solidify and bond to the base object when the resin is cured (taught by Rehkemper et al since the resin bonds to the base object when the resin is cured without any intervention by the user after the resin is set, see claim 1 of Rehkemper et al. In other words when the cast is set), the resin container comprising a miniature replica of a container associated with the food or beverage item (jar); and one or more ingredient objects 22, 28 configured to be at least partially embedded in the resin, the one or more ingredient objects comprising miniature replicas of one or more ingredients associated with the food or beverage item.
Regarding claim 4, Rehkemper et al teaches wherein one or more properties of the resin 30 are customized to one or more of: the base object, the one or more ingredient objects, or the food or beverage item.
Regarding claim 5, Rehkemper et al teaches wherein the one or more properties comprise one or more of: color, translucency, opacity, viscosity, or density (See Col 3-4 Ln 61-20).
Regarding claim 6, Rehkemper et al teaches further comprising: a container 10, 36 housing the base object, the resin container, and the one or more ingredient objects, at least a portion of the container being reconfigurable to serve as a display device for the miniature replica of the food or beverage item.
Regarding claim 7, Rehkemper et al teaches wherein a surface of the base object comprises a material configured to bond with the resin when the resin is cured (Fig 5 Col 3-4 Ln 61-40).
Regarding claim 8, Rehkemper et al teaches wherein the component of the food or beverage item comprises one of: a beverage vessel, a food dish, or a food item (frog).
Regarding claim 9, Rehkemper et al teaches wherein the resin container associated with the food or beverage item comprises one of: a milk container, a syrup container, a frosting container (jar, container Fig 4), a juice container, a liquor bottle, a soda bottle, or a coffee bottle.
Regarding claim 11, Rehkemper et al teaches a kit for creating a miniature replica of a food or beverage item, the kit comprising: a base object 18 that forms a base of the miniature replica of the food or beverage item, the base object comprising a miniature replica of a component of the food or beverage item; a resin container (jar container figure 4) storing a resin 30 configured to be applied to the base object and to solidify and bond to the base object when the resin is cured forming a composite assembly (taught by Rehkemper et al since the resin does solidify and is bonded to the base object without any intervention by the user after the resin is set, see claim 1 of Rehkemper et al. In other words the when the cast is set it does not need to be removed and can remain in its solid state); one or more ingredient objects 22, 28 configured to be at least partially embedded in the resin, the one or more ingredient objects comprising miniature replicas of one or more ingredients associated with the food or beverage item; and a container housing 10, 36 the base object, the resin container, and the one or more ingredient objects, at least a portion of the container being reconfigurable to serve as a display device for the miniature replica of the food or beverage item.
Regarding claim 12, Rehkemper et al teaches the kit of claim 11, wherein the resin container comprises a miniature replica of a container associated with the food or beverage item (jar, container figure 4).
Regarding claim 13, Rehkemper et al teaches the kit of claim 12, wherein the resin container associated with the food or beverage item comprises one of: a milk container, a syrup container, a frosting container (jar, container Figure 4), a juice container, a liquor bottle, a soda bottle, or a coffee bottle.
Regarding claim 16, Rehkemper et al teaches the kit of claim 11, wherein one or more properties of the resin 30 are customized to one or more of: the base object, the one or more ingredient objects, or the food or beverage item.
Regarding claim 17, Rehkemper et al teaches the kit of claim 16, wherein the one or more properties comprise one or more of: color, translucency, opacity, viscosity, or density (See Col 3-4 Ln 61-20).
Regarding claim 18, Rehkemper et al teaches the kit of claim 11, wherein a surface of the base object 18 comprises a material configured to bond with the resin when the resin is cured (Fig 4-5).
Regarding claim 19, Rehkemper et al teaches the kit of claim 11, wherein the component of the food or beverage item comprises one of: a beverage vessel, a food dish, or a food item (frog).
In re claim 30, Rehkemper et al teaches the kit of claim 1, wherein the resin non-removable bonds to the base object when the resin is cured (see 112 rejections above, but also taught by Rehkemper et al since the resin does solidify and is non-removably adhered to the base object without any intervention by the user after the resin is set, see claim 1 of Rehkemper et al. In other words when the cast is set, it does not need to be removed and can remain in its solid and non-removably adhered state).
In re claim 31, Rehkemper et al teaches the kit of claim 11, wherein the resin non-removable bonds to the base object when the resin is cured (see 112 rejections above, but also taught by Rehkemper et al since the resin does solidify and is non-removably adhered to the base object without any intervention by the user after the resin is set, see claim 1 of Rehkemper et al. In other words when the cast is set, it does not need to be removed and can remain in its solid and non-removably adhered state).
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-3, 14-15, 21-28, 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rehkemper et al as applied to claims 1 and 11 above and further in view of US 2008/0318489 to Eisenhut et al.
In re claim 2, Rehkemper et al teaches the kit of claim of claim 1, wherein the resin is configured to solidify to thereby affix the resin to the base object and to affix the one or more ingredient objects at least partially within the resin (col 3-4 Ln 60-40).
Rehkemper et al is silent as to the resin being configured to solidify when exposed to ultraviolet light.
Eisenhut et al teaches, within the same field of endeavor, a resin 24 that is configured to solidify when exposed to ultraviolet light (Para 20, 38, 39, 44, 45).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have provided the resin as taught by Rehkemper et al as being an ultraviolet curable resin as taught by Eisenhut et al in order to allow for resin to be hardened more quickly and at the user’s desire, with a reasonable expectation of success.
Regarding claim 3, the modified reference teaches the kit of claim 2, and Eisenhut further teaches wherein the base object and the resin comprise complementary properties that enable the resin to remain adhered to the base object prior to exposure to the ultraviolet light and enable the ultraviolet light to penetrate the resin (Para 36, 42).
In re claim 14 Rehkemper et al teaches the kit of claim of claim 11, wherein the resin is configured to solidify to thereby affix the resin to the base object and to affix the one or more ingredient objects at least partially within the resin (col 3-4 Ln 60-40).
Rehkemper et al is silent as to the resin being configured to solidify when exposed to ultraviolet light.
Eisenhut et al teaches, within the same field of endeavor, a resin 24 that is configured to solidify when exposed to ultraviolet light (Para 20, 38, 39, 44, 45).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have provided the resin as taught by Rehkemper et al as being an ultraviolet curable resin as taught by Eisenhut et al in order to allow for resin to be hardened more quickly and at the user’s desire, with a reasonable expectation of success.
In re claim 15, the modified reference teaches the kit of claim 14, and Eisenhut further teaches wherein the base object and the resin comprise complementary properties that enable the resin to remain adhered to the base object prior to exposure to the ultraviolet light and enable the ultraviolet light to penetrate the resin (Para 36, 42).
In re claim 21, Rehkemper et al teaches a kit for creating a miniature replica of a food or beverage item, the kit comprising: a base object 18 that forms a base of the miniature replica of the food or beverage item, the base object comprising a miniature replica of a component of the food or beverage item; a resin container (Jar container Fig 4) storing a resin 30 configured to be applied to the base object and to solidify and bond to the base object when the resin is cured forming an integrated multi-component structure (taught by Rehkemper et al since the resin does solidify and is bonded to the base object without any intervention by the user after the resin is set, see claim 1 of Rehkemper et al. In other words when the cast is set does not need to be removed and can remain in its solid and bonded state); and one or more ingredient objects 22, 28 configured to be at least partially embedded in the resin, the one or more ingredient objects comprising miniature replicas of one or more ingredients associated with the food or beverage item (food coloring); wherein the resin is configured to solidify to thereby affix the resin to the base object and to affix the one or more ingredient objects at least partially within the resin (Fig 4-5); and wherein the base object and the resin comprise complementary properties that enable the resin to remain adhered to the base object.
Rehkemper et al teaches the claimed invention except for wherein the resin is configured to solidify when exposed to ultraviolet light and that the when exposed to the ultraviolet light and enable the ultraviolet light to penetrate the resin.
Eisenhut et al teaches wherein the resin 24 is configured to solidify when exposed to ultraviolet light and that the when exposed to the ultraviolet light and enable the ultraviolet light to penetrate the resin (Para 20, 38, 39, 44, 45).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have provided the resin as taught by Rehkemper et al as being an ultraviolet curable resin as taught by Eisenhut et al in order to allow for resin to be hardened more quickly and at the user’s desire, with a reasonable expectation of success.
In re claim 22, Rehkemper et al as modified teaches the kit of claim 21, wherein one or more properties of the resin are customized to one or more of: the base object, the one or more ingredient objects, or the food or beverage item (Col 3-4 Ln 60-40).
In re claim 23, Rehkemper et al as modified teaches the kit of claim 22, wherein the one or more properties comprise one or more of: color, translucency, viscosity, or density (Col 3-4 Ln 60-40).
In re claim 24, Rehkemper et al teaches the kit of claim 21, wherein the resin container comprises a miniature replica of a container associated with the food or beverage item (jar).
In re claim 25, Rehkemper et al teaches the kit of claim 24, wherein the resin container associated with the food or beverage item comprises one of: a milk container, a syrup container, a frosting container (jar, container Fig 4), a juice container, a liquor bottle, a soda bottle, or a coffee bottle.
In re claim 26, Rehkemper et al as modified teaches the kit of claim 21, further comprising: a container 10, 36 housing the base object, the resin container, and the one or more ingredient objects, at least a portion of the container being reconfigurable to serve as a display device for the miniature replica of the food or beverage item.
In re claim 27, Rehkemper et al as modified teaches the kit of claim 21, wherein a surface of the base object comprises a material configured to bond with the resin when the resin is cured 18 (Figure 4-5).
In re claim 28, Rehkemper et al as modified teaches the kit of claim 21, wherein the component of the food or beverage item comprises one of: a beverage vessel, a food dish, or a food item (frog).
In re claim 32, Rehkemper et al as modified teaches the kit of claim 11, wherein the resin non-removable bonds to the base object when the resin is cured (see 112 rejection above, but also taught by Rehkemper et al since the resin does solidify and is non-removably adhered to the base object without any intervention by the user after the resin is set, see claim 1 of Rehkemper et al. In other words when the cast is set, it does not need to be removed and can remain in its solid and non-removably adhered state).
Response to Arguments
Applicant's arguments filed 5/19/2026 have been fully considered but they are not persuasive. Applicant argues that Rehkemper et al is dissectible and therefore does not teach “a curable viscous resin configured to be applied to the base object and to solidify and non-removably adhere to the base object.” This is not found to be persuasive. Rehkemper et al clearly articulates as outlined in the rejection above a curable viscous resin 30 configured to be applied to the base object 18 and to solidify and bond to the base object (claim 1 of Rehkemper et al “a casting compound for filling said mold cavity to generate a solid model having the external appearance of the creature, said casting compound being curable to solidify from a liquid state when in said mold;” and col 4 Ln 7-11:“The molding material 30, when prepared, is poured into the mold through an appropriate fill port 32 in the mold, which is coupled by a sprue 34 to the interior mold volume to be filled. The mold is filled with the casting material, the internal organs being surrounded and embedded thereby. With the mold filled, the material is permitted to set… With the molding compound properly cured, the mold is opened and the cast "creature" removed.”). Applicant has failed to persuasively show how the product of Rehkemper et al is structurally different from the claimed invention. Applicant argument is directed to an intended use of the final product as taught by Rehkemper et al, but not to the final product produced. That doesn’t change the fact that Rehkemper et al discloses every limitation of the claimed invention of using a curable viscous resin configured to be applied to the base object and to solidify and bond to the base object. Rehkemper et al’s resin is described as solidifying and forming part of the completed miniature replica, just like applicants. Applicant’s arguments are not commensurate with the scope of the claim. The resin of Rehkemper et al is cured to bond to the base object. Applicants’ argument that the device can be used in a different way post curing is immaterial to the teachings of the prior art over the claimed invention. The bonding of Rehkemper et al results in a structurally integrated assembly just the same as applicants claimed invention.
Applicant’s arguments on page 11-12 are directed to the rejection of claims 2-3, 14-15 and 21-28 as being unpatentable over Rehkemper et al in view of Eisenhut et al.
In response to applicant's argument that Rehkemper et al and Eisenhut et al are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Rehkemper et al and Eisenhut et al are directed to curable resins used produce solidified children’s toys of miniature replicas. While Rehkemper et al fails to teach a light curable resin, Eisenhut et al teaches light curable resins are well known for producing casts. These light curable resins are well known in the art and their use would yield predictable results.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Eisenhut et al teaches that it is well known to use light curable resins to allow for the quick molding of objects (para 14).
Applicant’s arguments that Rehkemper et al is capable of being used as a dissectible toy after it is solidified doesn’t change that the fact that its cured state the resin is solidifies and is bonded to / non-removably adhered to the base object.
Allowable Subject Matter
Claims 10, 20 and 29 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.
Claims 10, 20 and 29 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSHUA DANIEL HUSON whose telephone number is (571)270-5301. The examiner can normally be reached Monday-Friday 7-330.
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, Joseph Thomas can be reached at (571) 272-8004. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D HUSON/Supervisory Patent Examiner, Art Unit 3642
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