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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 13 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. As summarized in the 2019 Revised Patent Subject Matter Eligibility Guidance, examiners must perform a Two-Part Analysis for Judicial Exceptions.
Step 1
In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture, or composition of matter. The instant invention encompasses a string art nail position guide assembly (i.e., system) in claims 1-12 and a method of creating a pattern for a string art design (i.e., method) in claims 13-14. All claims are directed to one of the four statutory categories and meet the requirements of Step 1.
Step 2A
Prong One
The claimed invention is directed to an abstract idea without significantly more. The instant invention is broadly directed to a system and method for a “string art kit for positioning nails in a frame” (Specification, page 1, line 30).
Claim 13 recites the following (with emphasis added):
A method of creating a pattern for a string art design, the method comprising:
providing a frame comprising a wooden material;
providing a string art nail position guide assembly being configured to facilitate a user in inserting a plurality of nails into the frame to define a pattern for a string art design,
the string art nail position guide assembly comprising:
a guide board being positionable over the frame;
a plurality of apertures extending through the guide board;
a punch board;
a guide nail extending through the punch board wherein the guide nail is configured to facilitate a user in forming a plurality of guide holes in the frame,
the guide nail being positionable through each aperture of the plurality of apertures wherein the plurality of apertures is configured to facilitate the user in aligning the plurality of guide holes in the frame when the guide board is positioned over the frame and when the punch board is positioned over the guide board;
a plurality of nails being insertable into the frame to define a pattern for a string art design,
the plurality of guide holes being configured to facilitate the user in positioning the plurality of nails centrally within the plurality of apertures extending through the guide board wherein the plurality of guide holes is configured to facilitate the user in inserting the plurality of nails perpendicularly into the frame;
positioning the guide board over the frame;
positioning the punch board over the guide board wherein the guide nail extends through a first aperture of the plurality of apertures;
hammering the guide nail into the frame through the first aperture of the plurality of apertures to form a first guide hole of the plurality of guide holes;
removing the guide nail from the first aperture of the plurality of apertures;
positioning the punch board over the guide board wherein the guide nail extends through a second aperture of the plurality of apertures;
hammering the guide nail into the frame through the second aperture of the plurality of apertures to form a second guide hole of the plurality of guide holes,
the second guide hole of the plurality of guide holes being aligned with the first guide hole of the plurality of guide holes;
placing a first nail of the plurality of nails into the first guide hole of the plurality of guide holes through the first aperture of the plurality of apertures;
placing a second nail of the plurality of nails into the second guide hole of the plurality of guide holes through the second aperture of the plurality of apertures;
hammering the first nail and the second nail into the frame through guide board wherein the guide board holds the first nail and the second nail upright and wherein the guide board is configured to facilitate the user in hammering the first nail and the second nail to extend upwardly from the frame to the same height; and
removing the guide board from the frame.
Claim 13 encompasses the abstract idea, which is also encompassed by the dependent claim 14.
Claims 13-14 recite the steps for creating a string art design utilizing wood, nails, string, and various alignment indicators. The method is directed to certain methods of organizing human activity. These limitations, when given their broadest reasonable interpretation, recite instructions for utilizing the assembly kit, which is categorized as managing personal behavior (e.g., following rules or instructions). Thus, the steps are directed to certain methods of organizing human activity.
Prong Two
This judicial exception is not integrated into a practical application because mere instruction, or merely using a tool to perform the abstract idea, adding insignificant extra solution activity, and/or generally linking the use of the abstract idea to a technological environment or field is not considered integration into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because any additional elements must amount to more than a recitation of the words “apply it” (or an equivalent) or more than mere instructions to implement an abstract idea. The conventional usage of tools as presented amount to merely field of use type limitations and/or extra solution activity to implement certain methods of organizing human activity.
Step 2B
Step 2B in the analysis requires us to determine whether the claims do significantly more than simply describe that abstract method. Mayo, 132 S. Ct. at 1297. We must examine the limitations of the claims to determine whether the claims contain an "inventive concept" to "transform" the claimed abstract idea into patent-eligible subject matter. Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298). The transformation of an abstract idea into patent-eligible subject matter "requires ‘more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’’" Id. (quoting Mayo, 132 S. Ct. at 1294) (alterations in original). "A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’" Id. (quoting Mayo, 132 S. Ct. at 1297) (alterations in original). Those "additional features" must be more than "well-understood, routine, conventional activity." Mayo, 132 S. Ct. at 1298.
The present claims do not include the additional elements that are sufficient to amount to significantly more than the judicial exception. Any potentially technical aspects of the claims are well-known, generic components performing conventional functions (e.g., Specification, page 2, lines 4-5, “String art generally consists of inserting a plurality of nails into a frame, then wrapping string around the nails to form a design.”). The present claims have been analyzed both individually and in combination and, the instant claims do not provide any improvement of the functioning of any technical field. There do not appear to be any meaningful limitations other than those that are well-understood, routine, and conventional in the field. Thus, the present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are not patent eligible.
The claims are generally linked to implement an abstract idea on various elements intended for creating an artistic design. When looked at individually and as a whole, the claim limitations are determined to be an abstract idea without "significantly more," and thus not patent eligible.
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.
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.
Claims 1-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Dunn [US6149436A], Hayes [US4079764A], and Arbuckle [US20190202044A1].
Regarding claim 1, Dunn discloses:
A string art nail position guide assembly (Dunn, Claim 1, “A kit for making a string design”) comprising:
a frame (Dunn, col 3, line 37, “wooden board 69”);
a plurality of nails being insertable into the frame to define a pattern for a string art design (Dunn, Fig. 1, nails 75),
Although, Dunn discloses a string art device as cited above and a paper sheet similar to the guide board disclosed in claim 1, Dunn does not disclose a guide board specifically as recited in claim 1.
Hayes, however, discloses:
a guide board being positionable over the frame (Hayes, col 2, lines 13-18, “Referring to FIG. 1 of the drawing, the tool comprises a planar gripping body 10 which is configured for placement over the edge of a segment of upholstery material 12 (FIG. 2) for supporting a decorative nail 14 while the nail is being driven through the upholstery material into an underlying furniture frame F.”);
a plurality of apertures extending through the guide board (Hayes, Fig. 1, Slots 27);
It would have been obvious to one of ordinary still in the art before the effective filing date of the claimed invention to include in the String Art device of Dunn the nail guiding tool as taught by Hayes since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Although, Dunn/Hayes discloses a string art device and guide tool as cited above, Dunn/Hayes does not disclose a punch board as recited in claim 1.
Arbuckle, however, discloses:
a punch board (Arbuckle, Abstract, “nail-inserting punch assemblies”);
a guide nail extending through the punch board wherein the guide nail is configured to facilitate a user in forming a plurality of guide holes in the frame (Arbuckle, Fig. 8, Proprietary Nail 20),
the guide nail being positionable through each aperture of the plurality of apertures (Arbuckle, [0007], “A secondary benefit is that all nails or studs may be placed with the head protruding at a desired (preferably identical) distance out from the wall, and at a desired angle for precision positioning.”)
wherein the plurality of apertures is configured to facilitate the user in aligning the plurality of guide holes in the frame when the guide board is positioned over the frame and when the punch board is positioned over the guide board (Arbuckle, [0033], “Apertures 19 may be provided in the handles 21 of the punch assemblies 11 and/or 16 in order to allow for viewing (which may include magnification) through the punch assemblies for more accurate placement of nails or studs.”); and
the plurality of guide holes being configured to facilitate the user in positioning the plurality of nails centrally within the plurality of apertures extending through the guide board wherein the plurality of guide holes is configured to facilitate the user in inserting the plurality of nails perpendicularly into the frame (See citations above.).
It would have been obvious to one of ordinary still in the art before the effective filing date of the claimed invention to include in the string art device with nail guiding capabilities of Dunn/Hayes the ability to punch the nails into the frame as taught by Arbuckle since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 2, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 1, the guide board further comprising a first end, a second end, and a notch extending into the first end (Hayes, Fig. 1, The first end contains notches (i.e., slots 27), then the second end is located at the other end of the elongated handle 28 where slot 34 is located.).
Regarding claim 3, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 2, wherein the notch is triangular (Hayes, Fig. 3, Slot 27 is displayed in a triangular shape.).
Regarding claim 4, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 1, wherein the plurality of apertures is aligned along the guide board (Hayes, Fig. 1 a plurality of apertures may be aligned through the use of slots 27 and the punch board disclosed in Arbuckle as cited above.).
Regarding claim 5, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 1, wherein the plurality of apertures is centrally positioned on the guide board.
Hayes, in Fig. 1, discloses slots 27 along the first end of the guide tool. As cited in MPEP2144.04, Section V, and provided below for ease of reference, making an element integral to the claim does not provide patentable weight over the prior art. Specifically, making the plurality of apertures integrally positioned within the center of the guide board does not provide patentable weight over Dunn/Hayes/Arbuckle as the tools disclosed equip the user with the means to create apertures through a wooden board – including within the center of the board.
In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.") (MPEP2144.04, Section V, B.).
Regarding claim 6, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 1, wherein each aperture of the plurality of apertures is spaced from an adjacent aperture of the plurality of apertures by between 0.1 inches and 0.5 inches (Hayes, col 2, lines 23-26, “Preferably, the openings are located at evenly spaced longitudinal intervals approximately one-half inch laterally inwardly from the working edge”).
Regarding claim 7, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 1, wherein the punch board has a width being less than a width of the guide board and wherein the punch board has a length being less than a length of the guide board wherein the punch board is positionable over the guide board wherein the punch board is configured to facilitate the user in hammering the plurality of nails evenly into the frame through the guide board (Arbuckle, A singular punch assembly of Arbuckle can be found in Fig. 3, which is notably meant to fit in the palm of a user’s hand as indicated by the method of use that includes holding a punch assembly in each hand of Arbuckle.).
Regarding claim 8, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 1, wherein the guide nail is positioned adjacent to a primary end of the punch board wherein the punch board is configured to facilitate the user in holding the guide nail while the user is forming the plurality of guide holes in the frame (Arbuckle, Fig. 8, the Proprietary Nail 20 is on a primary end of the punch assembly.).
Regarding claim 9, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 1, wherein the plurality of nails extend upwardly from the frame when the plurality of nails are inserted into the frame wherein the plurality of nails is configured to enable the user to wrap string around the plurality of nails according to the pattern thereby forming the string art design (Dunn, Fig. 1, Nails 75 extend upwardly from the wooden board 69.).
Regarding claim 10, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 1, each nail of the plurality of nails further comprising a head extending outwardly from an elongated body, the elongated body having a pointed end distal to the head, the pointed end being positionable within an associated guide hole of the plurality of guide holes (Dunn, Fig. 1, At the bottom right of Fig. 1, a stack of nails are displayed. At the top of an elongated body is a flat head. Distal to the head is a pointed end. Arbuckle, Fig. 8, Arbuckle also discloses a Proprietary Nail depicted in Fig. 8 wherein the head is at the top of the nail as positioned in the drawing and the point is positioned at the bottom of the nail as positioned in the drawing.).
Regarding claim 11, Dunn/Hayes/Arbuckle discloses:
The string art nail position guide assembly of claim 10, wherein the head has a diameter being less than a diameter of each aperture of the plurality of apertures extending through the guide board wherein the guide board is removable from the frame when each nail of the plurality of nails is positioned within an associated aperture of the plurality of apertures (Hayes, col 2, lines 23-28, Preferably, the openings are located at evenly spaced longitudinal intervals approximately one-half inch laterally inwardly from the working edge and have diameters for frictionally receiving the shanks 20 of standard decorative furniture nails having enlarged decorative heads 22. Arbuckle, Fig. 8, Arbuckle also discloses a Proprietary Nail depicted in Fig. 8 wherein the head is the size of the elongated body.).
Regarding claim 13, the claim shares similar limitations to claims 1-11. For citations on rejection, see the rejection of claims 1-11 above.
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Dunn, Hayes, and Arbuckle as applied to claims 1-11 and 13 above, and further in view of Hull [US5595369A].
Regarding claim 12, the claim shares similar limitations to claims 1-11. For citations on rejection, see the rejection of claim 1-11 above.
Regarding the limitations recited in claim 12 that cannot be found either implicitly or explicitly within claims 1-11, Dunn/Hayes/Arbuckle discloses:
a punch board having a primary end (See claim 8) and a secondary end (Arbuckle, Fig. 8),
each nail of the plurality of nails being smaller than the guide nail,
each nail of the plurality of nails having a height being less than a height of the guide board.
Although, Dunn/Hayes/Arbuckle does not explicitly disclose using nails smaller than a guide nail or nails shorter in height than the height of the guide board, these limitations are insufficient to distinguish the claimed invention from the prior art. As cited in MPEP 2144.04, Section IV, and provided below for ease of reference, 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.
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.).
In 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), the 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 (MPEP 2144.04, Section IV, A).
Dunn/Hayes/Arbuckle discloses a string art device as cited above, but Dunn/Hayes/Arbuckle does not disclose a handgrip, arm, and through hole for straightening nails.
Hull, however, discloses:
a handgrip being engageable with a nail of the plurality of nails wherein the handgrip is configured to facilitate the user in straightening the nail within the frame (Hull, col 4, lines 50-53, “It may be advantageous to straighten the nail or rotate the hammer to take advantage of a nail that can slant into the jaws of this insert.”),
the handgrip comprising:
a plate, the plate being rectangular wherein the plate is configured to facilitate the user in gripping the handgrip (Hull, col 4, lines 13-15, “The insert 25 has no moving parts and is formed from a generally rectangular block having top and bottom surfaces 71 and 72, sides 73 and 74 and front and rear ends 75 & 76.”);
an arm being coupled to and extending outwardly from the plate, the arm being coplanar with the plate, the arm being elongated (Hull, Fig. 14, The handle 10 extends outwardly from the rectangular insert/plate 25 and exists on the same plane as the insert/plate 25.); and
a through hole extending through the arm (Hull, Figs. 2-4, opening 12), the through hole being spaced from the plate, the through hole having a diameter exceeding a diameter of the head of the nail of the plurality of nails wherein the nail is positionable within the through hole to engage the handgrip with the nail (Hull, Figs. 12-15, The through hole/opening 12 (as seen in previous figures) accommodates the nail to engage the handgrip with the nail.).
It would have been obvious to one of ordinary still in the art before the effective filing date of the claimed invention to include in the string art nail assembly of Dunn/Hayes/Arbuckle the nail extracting and straightening system as taught by Hull since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 14, the claim shares similar limitations to claims 1-12. For citations on rejection, see the rejection of claims 1-12 above.
Conclusion
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/Z.J.P./Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715