DETAILED ACTION
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)(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.
Claims 1, 4, 7-8, 10-12, 19-20, and 22-24, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Copley (US 2004/0040195).
In respect to claim 1, Copley discloses: an article 120, comprising artwork (e.g. photograph, art) 104’’’ and a magnet (top component of attachment device 328, which shows two magnets); a mounting board 324, the rear surface of the mounting board 324 is removably attachable to a display surface 108’’’; an intermediate sheet located between the article 120 and the mounting board 324 (intermediate sheet defined as the bottom component of the attachment device 328) (0046); the attachment of the intermediate sheet may comprise an impermeant “removably adhesively attached” connection (any of the magnetic planar sheets may be permanently or removably attached via adhesive, to either the mounting board “spacer”, the artwork, or the display surface) (0047).
In respect to claim 4, Copley discloses that the magnetically receptive material is on a first face of the sheet 140 (e.g. “imbued” with rubber steel), with the second face of the sheet having a permanent adhesive for attachment to the mounting board (0027).
In respect to claims 7-8, Copley discloses the claimed invention for the reasons stated above.
In respect to clams 10-12, Copley discloses the claimed invention including that the article may comprise paper (0018).
In respect to claim 19, Copley discloses framing the article before mounting (0018).
In respect to claims 20 and 22-24, Copley discloses the claimed invention for the reasons stated above. Copley discloses all of the structure claimed for the reasons detailed above. Copley discloses removing a first artwork and replacing it with a second artwork (0028), and that the mounting board may be foamboard (0020).
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.
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.
Claims 1-4, 7-8, 10-12, 19-20, and 22-24, are rejected under 35 U.S.C. 103 as being unpatentable over Copley (US 2004/0040195).
In respect to claim 1, Copley discloses: an article 120, comprising artwork (e.g. photograph, art) 104 and a magnet 136; a mounting board 108, the rear surface of the mounting board 108 is attachable to a display surface (e.g. door, wall) (0023); an intermediate sheet 140 located between the article 120 , the intermediate sheet having a magnetically-receptive material 140 on one side, and an adhesive on the other side adjacent to and adhesively attached to the front surface of the mounting board (0027), enabling the article to be removably attached to the mounting board (0027; Fig. 1A-1B). In respect to the amended subject matter, Copley indeed discloses that the intermediate sheet 140 is permanently attached to the mounting board, however, in later embodiments, the applicant states that adhesive attachments of various elements may be “not permanent” and “impermanent” (0035; 0047), including adhesive attachment to the mounting board. It would have been obvious to modify the first embodiment (Fig. 1) of Copley to include an impermanent adhesive in view of further teaches of different embodiments. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, utilizing a impermanent adhesive over a permanent adhesive for readily obvious reasons: removal of the intermediate sheet e.g. for using the mounting board for different purposes, changing the size or layout of multiple intermediate sheets etc.
In respect to claim 2, Copley disclose a variety of methods for suspending the mounting board on a display surface, including a magnet sheet, which one of ordinary skill understands to include adhesive to adherence to the mounting board (0023). Regardless, the applicant does not positively recite a display surface. A display surface, may contain an adhesively attached element (e.g. hook, etc.) that would be capable of hanging on the mounting board.
In respect to claim 3, the mounting board is not claimed as part of the “article”, furthermore, the attachment of the article, even if including the mounting board, is an intended use, as claimed, however, Copley discloses several fastening means for the mounting board (0023).
In respect to claim 4, Copley discloses that the magnetically receptive material is on a first face of the sheet 140 (e.g. “imbued” with rubber steel), with the second face of the sheet having a permanent adhesive for attachment to the mounting board (0027).
In respect to claims 7-8, Copley discloses the claimed invention for the reasons stated above.
In respect to clams 10-12, Copley discloses the claimed invention including that the article may comprise paper (0018).
In respect to claim 19, Copley discloses framing the article before mounting (0018).
In respect to claims 20 and 22-24, Copley discloses the claimed invention for the reasons stated above. Copley discloses all of the structure claimed for the reasons detailed above. Copley discloses removing a first artwork and replacing it with a second artwork (0028), and that the mounting board may be foamboard (0020).
Claims 5, 14-15, and 22, are rejected under 35 U.S.C. 103 as being unpatentable over Copley (US 2004/0040195) in view of Kleissler et al. (US 2006/0021272).
In respect to claims 5, 14, and 15, Copley substantially discloses the claimed invention, but does not disclose a peelable liner on the adhesive of sheet 140, however, Kleissler et al. teach a similar photo mount in the art which contains an adhesive material 84 which further includes release liner 86 (0028; Fig. 3A). It would have been obvious to provide the adhesive on the sheet taught in Copley with a release liner in view of Kleissler et al. to protect the adhesive before use. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, the extremely well-known provision of a release liner on adhesive to protect the adhesive from prematurely sticking.
In respect to claim 22, Copley substantially discloses the claimed invention, but does not disclose that the adhesive on the attachment sheet is “aggressively repositionable”, however, Kleissler et al. teach a similar photo mount in the art which utilizes a repositionable adhesive which is “aggressive” as it may be “adhered to and removed from a variety of substrates multiple times without significant loss of adhesive capability”, which is within the definition provided in the Specification that it may be repositioned but still holds during normal use (0020). It would have been obvious to provide the adhesive on the attachment sheet taught in Copley as the repositionable adhesive taught in Kleissler et al. to allow the attachment to be reattached e.g. during misapplication as is well-known in the art and inherent in the term “repositionable”. Furthermore, it is noted Copley uses a permanent adhesive, however, the adhesive in Kleissler et al. is “aggressive” and retains its holding power, and would not destroy or teach away from the invention.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Copley (US 2004/0040195) in view of ProMag (2023).
Copley substantially discloses the claimed invention including that magnetic sheeting gets weaker with lower thicknesses, including 0.015”, but does not disclose explicitly disclose the PPI for such materials, however, ProMag teaches known magnetic sheeting, including 0.015” sheeting, which has a PPI of 16. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, as demonstrated by ProMag, that lower thicknesses of magnetic sheet require more PPI to maintain sufficient magnetic pull (the magnetic pull drops substantially as the thickness lowers, thus the PPI is increased to compensate).
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Copley (US 2004/0040195) in view of DIY Gold Prints (2023).
Copley substantially discloses the claimed invention, but does not disclose various treatments to the photograph e.g. foil, embellishing, laminating, border “frame” etc. however, DIY Gold Prints teaches embellishing artwork, and it would have been obvious to provide any artwork/photograph in Copley with embellishing treatments as taught by DIY Gold Prints to provide “shiny and sparkly” to an existing display. Furthermore, the claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, embellishing of photographs with foil/lamination for aesthetic reasons. This embellishment has no relation to the magnetic system allegedly invented, and would work seamlessly therewith.
Response to Arguments
Applicant's arguments filed 04/06/26 have been fully considered but they are not persuasive.
The applicant contends that Copley fails to disclose that adhesives used in the device are removably attached. Although this is true for the embodiment of Figure 1, other embodiments explicitly disclose that the same “attachment devices” which comprise two magnets adhesively adhered to adjacent bodies, may be “impermanent” and thus “removable”. The 35 USC 102(a)(1) rejection has been amended to refer to a later embodiment which explicitly discloses removable adhesives.
Furthermore, the original embodiment of Figure 1 is now rejected under 35 USC 103, with the teaching of removably adhesives in further embodiments applied to the Figure 1 embodiment.
The 35 USC 112(b) rejection has been obviated by amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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