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 Objections
Claim 15 is objected to because of the following informalities:
Claim 15 recites “the main body is tuned into” in line 1 and appears should recite “turned into”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 17-22 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.
Regarding claim 17, claim 17 recites “the first background portion has a first thickness” in claim 17, while claim 1 recites “the background section includes a first background portion having a thickness..”. It is unclear if “the first thickness” is the same as or different from the thickness in claim 1.
Regarding claim 17, claim 17 recites “the second background portion has a second thickness different from the first thickness” in claim 17, while claim 1 recites “a second background portion having a thickness..”. it is unclear if the “second thickness” is the same as or different from that recited in claim 1.
Claims 18-22 are rejected by virtue of their dependence on a rejected base claim.
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 1-9, and 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Katano JP 2019062783A (Espacenet Translation) in view of Vicentini US 2008/0008785.
Regarding claim 1, Katano discloses a confection comprising a main body having a plate shape (slab of confectionery 10A, main body (20A) is tabular) (Abstract, Fig. 1, Fig. 4A). Katano discloses that a character section (23A) is formed in the main body (20A) and a background section (24A). Katano discloses that the background section includes a first background section and a second background section (see annotated Fig 1 below).
Katano discloses that the background includes a first background portion having a thickness equal to a thickness of the character section (Fig. 4A, Espacenet Translation, [0027]). It is noted that Katano discloses that the plate shaped confectioneries (10A and 10B) of the present invention are not limited to the above described embodiment and can be modified and improved as appropriate (Espacenet Translation, [0036]).
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Claim 1 differs from Katano in the recitation that the second background portion has a thickness different from the thickness of the character section.
However, absent evidence of criticality, the modification of the second background portion to have a different thickness from the character section is seen to be a mere change in shape/size of the second background portion (MPEP 2144.04.IV.A,B).
Additionally, Vicentini discloses a food product comprising main body (2) having a central portion (3) and at least one peripheral portion (4) extending therefrom, and the peripheral portion has one or more removable areas (5) having different mechanical strength from the central portion to facilitate separation and removal or one or more removable areas by a user (abstract). Vicentini discloses that the removable areas can be differentiated from the central portion by having a different thickness from the central portion (3) to facilitate removal ([0020]-[0021]). Therefore, it would have been obvious to one of ordinary skill in the art to modify the second background portion to have a thickness different from the thickness of the character section as suggested by Vicentini in order to facilitate removal of the second background portion
Regarding claim 2, Katano discloses that the character section can have a thickness greater than or equal to the background section (See Fig.2, 4A, 4B) (‘783, Espacenet Translation [0027]). Therefore, Katano suggests a providing a background with a thickness that is equal to or less than the character section. To provide the second background portion with a thickness that is specifically less than the first background section (which is the same as the character section) is seen to be selection of a known thickness of the second background portion.
Regarding claim 3, Katano discloses that a front surface of the character section (23A) does not form a continuous surface with a front surface of the first background portion (groove 25 separates the front surface of the character section from the front surface of the first background portion).
Regarding claim 4, Katano discloses that the character section (23A) is provided adjacent to the first background portion and the second background portion (see annotated Fig. 1 in claim 1 above) (‘783, Espacenet Translation [0007]).
Regarding claim 5, Katano discloses that the character section (23A) is provided adjacent to the first background portion and the second background portion with a groove (25) disposed therebetween (see annotated Fig. 1 in claim 1 above, and Fig. 2) (‘783, Espacenet Translation [0007], [0018]).
Regarding claim 6, Katano obviously discloses that the groove (25) has a thickness smaller than the thickness of the second background portion (‘783, See Figs. 1-4) (‘783, Espacenet Translation [0020]).
Regarding claim 7, Katano discloses that the groove (15) is provided around an entire periphery of the character section (23A) (‘783, Fig. 1) (‘783, Espacenet Translation [0018], [0024]).
Regarding claim 8, Katano discloses that the main body can be divided at the groove (25) and in a region other than the groove (‘783, See Fig. 3) (‘783, Espacenet Translation [0020], [0023]).
Regarding claim 9, Katano discloses that the main body is divided more easily at the groove than in the region other than the groove (‘783, See Fig. 3, 5) (‘783, Espacenet Translation [0020], [0023], [0026]).
Regarding claim 13, claim 13 differs from Modified Katano in the recitation that the second background portion is specifically divided more easily than the character section. However as discussed above, Vicentini discloses a food product comprising main body (2) having a central portion (3) and at least one peripheral portion (4) extending therefrom, and the peripheral portion has one or more removable areas (5) having different mechanical strength from the central portion to facilitate separation and removal or one or more removable areas by a user (abstract). Vicentini discloses that the removable areas can be differentiated from the central portion by having a different thickness from the central portion (3) to facilitate removal ([0020]-[0021]). Therefore, the art already recognizes adjusting different portions of a product to allow portions to be removed. Based on the art as a whole it would have been obvious to one of ordinary skill in the art to adjust the ease at which the second background section is divided as a matter of design and preference.
Regarding claim 14, Katano discloses that the main body includes four edges (Fig. 1) and the first background portion (non brick background in Fig. 1) includes at least two edges of the four edges (Fig. 1).
Regarding claim 15, Katano discloses that the main body is turned into after a dividing operation, a first aspect in which the character section is divided from the first background portion and the second background portion (‘783, Fig. 3).
Regarding claim 16, Katano discloses the main body includes a base, the base is constituted by a chocolate including a puff (Fig. 2, 6, Espacenet Translation [0010], [0014], [0020], [0029], [0035]).
Claim 16 differs from the embodiment of Figs. 1-4 of Katano in the recitation that the character section and the first background portion are constituted by a chocolate including no puff.
Katano discloses that the character section can be constituted by a chocolate including no puff in another embodiment ([0029], [0032], Fig. 5-6). It would have been obvious to one ordinary skill in the art to modify the first embodiment such that the character section and the first background portion are constituted by a chocolate including no puff, as a matter of taste preference and design choice.
Regarding claim 17, Katano discloses that the character section includes a plurality of parts (Fig. 1, 3), as discussed in the rejection of claim 1, the first background has a first thickness and the second background portion has a second thickness different from the first thickness.
Claim 17 differs from Modified Katano in the recitation that a portion of the plurality of parts is formed continuously from the second background portion, however absent compelling evidence of criticality modifying a portion of the plurality of parts to be formed continuously from the second background portion is seen to be a matter of design preference. “matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art” (MPEP 2112.01.III).
Regarding claims 18 and 19, claims 18 and 19 differs from Modified Katano in the recitation that the first thickness is specifically larger than the second thickness, however absent compelling evidence of criticality this is seen to be a change in size/shape of the second background portion (MPEP 2144.04.IV.A,B).
Regarding claim 20, as discussed above Katano discloses that the character section can have a thickness greater than or equal to the background section (See Fig.2, 4A, 4B) (‘783, Espacenet Translation [0027]). Therefore, Katano suggests a providing a background with a thickness that is equal to or less than the character section. Thus, Katano teaches that the character section includes a portion having the first thickness (thickness of the first background section).
Regarding claim 21, claim 21 differs from Modified Katano in the recitation that the portion of the plurality of parts formed continuously from the second background portion is a portion of the face part constituting the character section, however absent compelling evidence of criticality modifying the portion of the plurality of parts formed continuously from the second background portion to be a portion of the face part constituting the character section, is seen to be a matter of design preference. “matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art” (MPEP 2112.01.III).
Regarding claim 22 claim 22 is rejected for the same reasons given above as for claim 17 and 21.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Katano JP 2019062783A (Espacenet Translation) in view of Vicentini US 2008/0008785 in view of Yoneda JP H0648796U (Espacenet Translation).
Regarding claim 10, Katano teaches that the character section includes a plurality of parts (Fig. 3). Claim 10 differs from Katano in that the groove is provided between the plurality of parts.
Yoneda discloses providing a central design and a background design where the central design includes a plurality of parts and a groove (2) is provided between the plurality of parts (See Figs. 1-4B). Yoneda discloses that the purpose is to enjoy breaking each part (‘796 Espacenet Translation, [0014]). It would have been obvious to one of ordinary skill in the art to modify Katano such that the groove is provided between the plurality of parts of the character section in order to provide increased enjoyment of breaking the character section.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Katano JP 2019062783A (Espacenet Translation) in view of Vicentini US 2008/0008785 in view of Savelieva US 2015/0024097.
Regarding claim 11, Katano discloses in another embodiment that the main body includes a base, the character section is formed by being layered on the base and the background portion is formed only by the base (Figs. 5, 6). Therefore, it would have been obvious to one of ordinary skill in the art to modify the character section of the embodiment of Fig. 1 to be formed by being layered on the base of the main body,
Claim 11 differs from Katano in the recitation that the first background portion is formed by being layered on the base.
Savelieva discloses providing confectionery with multiple layers for decoration ([0008]). It would have been obvious to one of ordinary skill in the art to modify Katano such that the first background portion is formed by being layered on the base as a matter of design choice.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Katano JP 2019062783A (Espacenet Translation) in view of Vicentini US 2008/0008785 in view of Savelieva US 2015/0024097 in view of Newsteder US 4,778,683.
Regarding claim 12, Modified Katano discloses that the character section includes an eye part (231) (Fig. 1, 3).
Claim 12 differs from Modified Katano in the recitation that the base is specifically visible through the eye part. However, it is noted that Katano does disclose that the eye is recessed (Espacenet Translation [0027]).
Newsteder discloses forming a multicolor chocolate product (Figs. 15-19). Figure 18 clearly shows that the base layer is visible though a design (recesses in “A” and “P”). Thus, showing it was a known technique in the art to provide a base layer visible through another layer for a layered confection product. It would have been obvious to one of ordinary skill in the art to modify Modified Katano such that the base is specifically visible through the eye part, as a matter of design choice. It has been held that “Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.D).
Conclusion
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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