DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election without traverse of Group I, claims 1-4, 9 and 10, in the reply filed on 11 January 2026 is acknowledged.
Claim Rejections – 35 USC § 112
3. 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.
4. Claims 1-4 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.
Claim 1 recites “a paint by numbers sheet…comprising…a set of numbered acrylic paint cups”. It appears this should instead recite, for example, a paint by numbers “kit”, since a sheet cannot reasonably include a set of cups.
Claim 1 is also rejected because it does not end with a period “.”, and does not include punctuation to separate each section of the claim.
Dependent claims 2-4 inherit the deficiencies of parent claim 1, and are thus rejected for the same reasons.
Claim Rejections - 35 USC § 102
5. 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.
6. Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wittmeyer, JR et al. (US 2004/0229193 A1).
Regarding claim 9, Wittmeyer discloses a method of painting a surface, comprising:
providing a paint by numbers sheet (sheet 20) with a plurality of numbered regions on the sheet (Fig. 4A), wherein the numbered regions are individually cut (e.g. die cut – Par. 46);
removing a release liner (release strip 36) from an adhesive (30) applied to the back of the sheet;
applying the adhesive on the paint by numbers sheet to a surface (Par. 47 – some adhesive remains, which is used to transfer to another surface); and
removing a transfer film (release coating – Par. 40).
Claim Rejections - 35 USC § 103
7. 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.
8. 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.
9. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wittmeyer, JR et al. (US 2004/0229193 A1) in view of Johnson JR. (US 2002/0123026 A1).
Regarding claim 10, Wittmeyer does not appear to explicitly disclose providing numbered acrylic paint cups corresponding to the numbered regions. However, Johnson discloses a similar apparatus for painting and transferring paint by numbers sheets (Par. 3) that discloses the use of numbered paint cups for paint by numbers were well known to those of ordinary skill in the art before the effective filing date of the invention (see Par. 34). To the extent that Johnson does not disclose the cups are acrylic, the examiner takes OFFICIAL NOTICE that the concept and advantages of utilizing acrylic for cups were well known to those of ordinary skill in the art before the effective filing date of the invention. Accordingly, it would have been obvious to one skilled in the art before the effective filing date of the invention to modify the teachings of Wittmeyer by providing numbered acrylic cups for Wittmeyer’s paint, to obtain predictable results of facilitating the user’s painting of the sheet.
10. Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Wittmeyer, JR et al. (US 2004/0229193 A1) in view of Avery et al. (US 2002/0064762 A1) and Johnson JR. (US 2002/0123026 A1).
Regarding claim 1, Wittmeyer discloses a paint by numbers sheet for applying to a surface, comprising:
a self-adhesive sheet (sheet 20 with adhesive 30 applied), backed by a release liner (release strip 36);
a plurality of numbered regions on the sheet (see Fig. 4A), wherein the numbered regions are individually cut (e.g. die cut – Par. 46); and
a transfer sheet (release coating – Par. 40).
Wittmeyer does not appear to disclose the self-adhesive sheet is a vinyl sheet. However, Avery discloses self-adhesive vinyl sheets for coloring and transferring to another surface (see abstract). It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the teachings of Wittmeyer by utilizing self-adhesive vinyl for the paint-by-numbers sheet, as taught by Avery, to obtain predictable results of removing and transporting the sheet to another surface such as a window or refrigerator.
Wittmeyer further does not appear to disclose a set of numbered acrylic paint cups. However, Johnson discloses a similar apparatus for painting and transferring paint by numbers sheets (Par. 3) that discloses the use of numbered paint cups for paint by numbers were well known to those of ordinary skill in the art before the effective filing date of the invention (see Par. 34). To the extent that Johnson does not disclose the cups are acrylic, the examiner takes OFFICIAL NOTICE that the concept and advantages of utilizing acrylic for cups were well known to those of ordinary skill in the art before the effective filing date of the invention. Accordingly, it would have been obvious to one skilled in the art before the effective filing date of the invention to modify the teachings of Wittmeyer by providing numbered acrylic cups for Wittmeyer’s paint, to obtain predictable results of facilitating the user’s painting of the sheet.
Regarding claim 2, Avery further discloses the paint by numbers sheet is self-adhesive vinyl (see abstract).
Regarding claim 3, Wittmeyer further discloses the release liner is non-stick paper (Par. 43).
Regarding claim 4, Johnson further discloses the transfer sheet is transparent (Par. 59).
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER EGLOFF whose telephone number is (571)270-3548. The examiner can normally be reached on Monday - Friday 9:00 am - 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (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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/Peter R Egloff/
Primary Examiner, Art Unit 3715