DETAILED ACTION
Remarks
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
Applicant’s election without traverse of Invention II (claims 11-20) in the reply filed on 8/12/25 is acknowledged. Accordingly, claims 1-10 are withdrawn, and claims 11-20 are under examination.
Claim Objections
Claims 13, 14, and 15 are objected to because of the following informalities: In claims 13, 14, and 15, the limitation “glass cling” should be modified to read “glass cling devices” to be consistent with terminology used in preceding claims. Appropriate correction is required.
Claim Rejections - 35 USC § 103 (AIA )
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 11 and 12 are rejected under 35 U.S.C. 103 as being obvious over ABUNDANCE OF GRACE1 in view of US 2024/0169850 A1 to DEANDINO.
Regarding claim 11, ABUNDANCE OF GRACE teaches a method for providing self-help to a consumer using positive affirmation (Title: WOMAN OF WORTH CLING AFFIRMATIONS), comprising: 1) providing a self-help kit, comprising: a) a plurality of glass cling devices, wherein each glass cling device includes a plastic strip configured for being removably affixed to a mirror or reflective glass (Image showing plurality of static clings; Instructions: Hang up on a bathroom mirror . . . Clings are easy to remove; Details: Static cling); b) a different positive affirmation imprinted on each cling device of the plurality of glass cling devices (Image showing 12 static clings, including 6 clings with different positive affirmations imprinted on each static cling); c) a document including a set of printed instructions that describes a method for self-help utilizing the plurality of glass cling devices (Website describes instructions: “Hang up on a bathroom mirror, inside shower, or on your kitchen window. Clings are easy to remove and a beautiful visual to bring the Lord’s Truth into your days!”); and d) packaging configured for holding, transporting and displaying the plurality of glass cling devices (Details: Includes a clear zipper bag to store clings; Image showing pack of clings in clear zipper bag); and 2) placing at least one cling device of the plurality of glass cling devices on a mirror or reflective glass (Website describes instructions: “Hang up on a bathroom mirror; Image showing clings attached to mirror).
Although ABUNDANCE OF GRACE does not expressly disclose: 3) periodically standing in front of the mirror or reflective glass, looking at oneself in the mirror or reflective glass and reading the positive affirmation of the at least one cling device out loud, DEANDINO teaches an apparatus having interactive features and a method for its use in promoting mirror talk with positive affirmations (Abstract). DEANDINO further teaches the apparatus supports a mirror and stores a plurality of affirmation tags for the user to removably attach to one or more tag holders next to the mirror (par. 0009). DEANDINO further teaches providing instructional indicia printed on cardstock (par. 0071) wherein a user speaks or reads the words of the indicia 110 followed by the words of the indicia 111 on each tag 104 while facing the front side 105 of the apparatus 100, thus reciting a plurality of self-affirming statements to the user's own reflection in the mirror 102 (par. 0054). DEANDINO teaches doing this on a regular basis, such as daily (par. 0072). DEANDINO teaches the claimed apparatus and method promote positive self-affirmation, and more particularly, a method and apparatus to encourage children regular self-affirmation in children and young people (par. 0002).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the method of providing printed instructions and performing the process of reading printed positive affirmations while facing a mirror on a regular basis such as daily, as taught by DEANDINO, into the invention of ABUNDANCE OF GRACE, in order to promote positive self-affirmation by applying a known technique to improve the use of similar devices in the same way. Moreover, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate providing printed instructions for how to perform the technique, as taught by DEANDINO, into the invention of ABUNDANCE OF GRACE, in order to ensure the end user properly performs the intended technique of using the static clings, thereby improving the likelihood of encouraging self-affirmation by the end user.
Regarding claim 12, ABUNDANCE OF GRACE teaches the elements above, but does not expressly disclose wherein each cling device of the plurality of glass cling devices measures about 2 inches by about 11 inches. However, limitations relating to the size of the cling device are not sufficient to patentably distinguish over the prior art. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.). Moreover, because a cling having the claimed dimensions would not perform differently than the cling of ABUNDANCE OF GRACE (i.e., both would perform the same function of providing a substrate for supporting printed indicia and capable of attachment to a mirror surface), the limitation of claim 12 does not patentably distinguish from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)(Federal Circuit held that, 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). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cling devices of ABUNDANCE OF GRACE, as a matter of design choice, to include clings that measure about 2 inches by about 11 inches, because Applicant has not disclosed that the claimed dimensions provide an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected ABUNDANCE OF GRACE’s clings, and applicant’s invention, to perform equally well with either the dimensions taught by ABUNDANCE OF GRACE or the claimed dimensions because both dimensions would perform the same function of providing a substrate for supporting printed indicia to be read by a human on a mirror. Therefore, it would have been prima facie obvious to modify ABUNDANCE OF GRACE to obtain the invention as specified in claim 12 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of ABUNDANCE OF GRACE. See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
Claim 13 is rejected under 35 U.S.C. 103 as being obvious over ABUNDANCE OF GRACE in view of DEANDINO, as applied to claim 12, in further in view of US 2008/0314943 A1 to GREENWOOD.
Regarding claim 13, ABUNDANCE OF GRACE teaches the elements above, but does not expressly disclose wherein each cling device of the plurality of glass cling includes a removable paper backing. However, GREENWOOD teaches the use of a paper liner on static cling material in order to prevent the static cling sheets from sticking together during processing (par. 0071). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate paper liners on cling material, as taught by GREENWOOD, into the modified invention of ABUNDANCE OF GRACE, in order to in order to prevent the static cling sheets from sticking together during processing, including prior to use by the end user, thereby making it easier for the end user to remove individual clings from the storage bag without the clings sticking to each other.
Claim 14 is rejected under 35 U.S.C. 103 as being obvious over ABUNDANCE OF GRACE in view of DEANDINO and GREENWOOD, as applied to claim 13, in further view of US 5,899,010 to PECK.
Regarding claim 14, ABUNDANCE OF GRACE teaches the elements above, but does not expressly disclose wherein each cling device of the plurality of glass cling is composed of polyvinyl chloride. However, PECK discloses that static cling material is known in the art, and that static cling vinyl which is well known and consists primarily of highly plasticized polyvinyl chloride is greatly preferred because of its low cost and efficacy (col. 2, lines 54-59). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use polyvinyl chloride, as taught by PECK, as the static cling material used in the modified method of ABUNDANCE OF GRACE, as a well-known static cling material known for its low cost and efficacy.
Claims 15 and 18-19 are rejected under 35 U.S.C. 103 as being obvious over ABUNDANCE OF GRACE in view of DEANDINO, GREENWOOD, and PECK, as applied to claim 14, in further view of US 6,308,445 B1 to PORRARO.
Regarding claim 15, ABUNDANCE OF GRACE teaches the elements above, but does not expressly disclose wherein each cling device of the plurality of glass cling is clear. However, PORRARO teaches that static cling vinyl is typically transparent (col. 2, lines 14-17). Thus, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate transparent static cling material, as taught by PORRARO, into the modified invention of ABUNDANCE OF GRACE, in order to use a common static cling vinyl material, thereby achieving the predictable result of improved cost-effectiveness and availability.
Regarding claim 18, ABUNDANCE OF GRACE teaches the elements above, but does not expressly disclose wherein the document including a set of printed instructions that describes the method for self-help utilizing the plurality of glass cling devices comprises a paper document. However, DEANDINO further teaches providing instructional indicia printed on cardstock (par. 0071). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate providing printed instructions on paper (e.g., cardstock) for how to perform the technique, as taught by DEANDINO, into the invention of ABUNDANCE OF GRACE, in order to ensure the end user properly performs the intended technique of using the static clings, thereby improving the likelihood of encouraging self-affirmation by the end user.
Regarding claim 19, ABUNDANCE OF GRACE further teaches wherein the plurality of glass cling devices comprises four glass cling devices (Image showing plurality of static clings, including at least four clings; Instructions: Hang up on a bathroom mirror . . . Clings are easy to remove; Details: Static cling).
Claims 16-17 are rejected under 35 U.S.C. 103 as being obvious over ABUNDANCE OF GRACE in view of DEANDINO, GREENWOOD, PECK, and PORRARO, as applied to claim 15, in further view of US 2018/0325315 A1 to SHERIDAN.
Regarding claim 16, ABUNDANCE OF GRACE teaches the elements above, but does not expressly disclose wherein each positive affirmation is imprinted onto each cling device of the plurality of glass cling devices using a solvent-based ink.
Regarding claim 17, ABUNDANCE OF GRACE teaches the elements above, but does not expressly disclose wherein each positive affirmation is imprinted onto each cling device of the plurality of glass cling devices using an aqueous latex ink.
Regarding claims 16 and 17, SHERIDAN teaches printing on a static cling decal using latex or solvent inks in order to create visually discernable aesthetic elements (par. 0026).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the use of latex or solvent inks, as taught by SHERIDAN, into the modified invention of ABUNDANCE OF GRACE, in order to use a known type of ink in a similar method, thereby achieving the predictable result of a static-cling compatible ink to create a visually discernable aesthetic element.
Claim 20 is rejected under 35 U.S.C. 103 as being obvious over ABUNDANCE OF GRACE in view of DEANDINO, GREENWOOD, PECK, and PORRARO, as applied to claim 19, in further view of US 4,590,610 to RYHNE.
Regarding claim 20, ABUNDANCE OF GRACE further teaches wherein the packaging comprises a clear plastic bag (Details: Includes a clear zipper bag to store clings; Image showing pack of clings in clear zipper bag), but does not expressly disclose a hook coupled to the bag for hanging the packaging for display at a point of sale. However, RYHNE discloses that a known type of display hanger includes a plastic hook (col. 1, lines 30-36). RYHNE further teaches a device related to packaging of articles of merchandise, including a transparent plastic bag, wherein the transparent plastic bag includes a hook for hanging the transparent plastic bag from a peg or rod of a display (col. 1, lines 5-10; col. 2, lines 42-52). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a hook attached to a transparent plastic bag, as taught by RYHNE, into the modified invention of ABUNDANCE OF GRACE, thereby applying a known technique of hanging articles merchandise, including plastic bags, from a display.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Hull whose telephone number is 571-272-0996. The examiner can normally be reached on Monday-Friday from 8:00am to 5:00pm MST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai, can be reached at telephone number 571-272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES B HULL/Primary Examiner, Art Unit 3715
1 ABUNDANCE OF GRACE, “Woman of Worth | Cling Affirmations”, accessed at https://abundanceofgrace.com/products/woman-of-worth-cling-affirmations?variant=42635180114095 (7/19/2023).