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 .
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 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.
DETAILED ACTION
This is the first action for application #18/623362, “SV Base” Silicone Gaming Mousepad, filed 4/1/2024. Claims 1-11 are pending.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because numeral “101” defines polished silica (a polish) and numeral “102” defines Vynex (an additive) which are both added to the silicone during production and therefore are not actually visible in the drawings. Since they are not visible in the drawings, they should not have reference numerals. The only elements that should have reference numerals in the drawings are the base (100), the stitched edges (98), the design (99), and the fabric layer (103). Therefore, numerals “101” and “102” should be removed from the drawings.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the logos, text, or designs embedded directly into the silicone base must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Figures 1 and 2 show a top view of the mousepad and depict logos/designs thereon, labeled as “99” in Figure 2. However, this is unclear since the top view would be depicting the fabric layer and it is not clear how the design embedded in the silicone base would be visible through the fabric layer. It is not clear if “99” is the logos embedded in the silicone base.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to because some reference numerals are placed before the element being defined, and some numerals are placed after the element being defined. Any numeral being used to define an element should be placed in parentheses directly after the element being defined. This should be consistent throughout the specification.
The specification is objected to because the silicone base is referred to as “silicone base [100],[101],[102]”. The silicone base should only be referred to as “100”, and numerals “101” and “102” should be deleted since the polish and additives are not visible in the figures. If specific layers were depicted in a drawings, then each layer could be identified with a numeral.
The specification is objected to because in para [0022], materials are defined as “[100],[101],[102]”. However, numeral “100” was previously used to define the base as a whole, not a material. Additionally, numerals “101”, and “102” were used to define polished silica and Vynex, not materials in general. These numerals should be removed.
Claim Objections
Claim 4 is objected to because there are no preceding articles (a, the) before the phrase “vynex coating”. 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 1-11 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 pre-AIA the applicant regards as the invention.
Regarding Claim 1:
-It is claimed that the fabric surface is directly attached to the silicone base “without a middle layer”. However, this is unclear since para [0007] teaches that the fabric is attached to the silicone base by applying heavy duty commercial glue to the silicone base and then placing the fabric surface on top. Therefore, there is at least a middle layer of glue therebetween.
Regarding Claim 4:
-It is claimed that the mousepad comprises a vynex “coating”. This is unclear since this is not disclosed in the specification. The specification merely states using vynex or other stiffness additives as one of the components of the material composition of the silicone base (para [0020]), and using vynex or other materials to reach the desired firmness for the base (para [0023]). How the vynex is used or applied (such as a coating) is not disclosed.
Regarding Claim 10:
-It is claimed that the logos, text, or designs are embedded directly into the silicone base. However, this is unclear since Figures 1 and 2 show a top view of the mousepad and depict logos/designs thereon, labeled as “99” in Figure 2. However, since the top view would be depicting the fabric layer, it is not clear how the design embedded in the silicone base would be visible through the fabric layer. No designs have been depicted in the silicone layer.
Regarding Claim 11:
-There is no antecedent basis for “the production process”, “the silicone base”, or “the fabric surface”.
-It is claimed that after the mold embeds the logos, text, design, or artworks into the silicone base, that a heavy duty glue is applied to the base and then a fabric surface is placed on top of the base. However, it is unclear how the logos etc would be visible if the fabric layer is placed on top. If the logos are only visible on the underside of the base, then it is not clear how the logos are visible in Figures 1 and 2.
-The phrase “sewing stitched edges into the silicone base” is unclear since it would not make sense that the stitched edges themselves were sewn into the base. Rather, the Examiner assumes the edges of the fabric layer and silicone layer are sewn together.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2022/0129090 (Lai).
Regarding Claim 1, as best understood, Lai teaches a gaming mousepad, comprising:
a silicone base (12; Figures 1 and 2; para [0016]); and
a fabric surface (13; para [0016]), wherein the fabric surface (13) is directly attached to the silicone base (as best understood, via adhesive 3 in the same manner as the current invention; para [0020]) without a middle layer.
Regarding Claim 9, as best understood, Lai teaches the gaming mousepad of claim 1, wherein the mousepad is square or rectangular (as depicted in Figure 1).
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 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.
Claims 2, 3, 6-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Lai in view of US 2010/0183814 to Rios et al. (hereinafter ‘Rios’).
Regarding Claim 2, as best understood, Lai teaches the gaming mousepad of claim 1, but does not specifically teach wherein the silicone base comprises polished silica. However, Rios, which is drawn to a method of manufacture for silicone used for creating a mousepad (para [0138] teaching a variety of different products that could use the silicone, with one of the products being the bottom of a mouse pad), further teaches that reinforcing fillers, such as fumed silica, can be added to the silicone composition (para [0060], [0113]). Therefore, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to use reinforcing fillers such as polished silica as taught by Rios, in the silicone used for the base of Lai, in order to improve mechanical strength and durability of the mousepad.
Regarding Claim 3, as best understood, Lai teaches the gaming mousepad of claim 1, but does not specifically teach wherein the silicone base has 25A, 30A, 35A, 40A, 50A, or 60A firmness. However, Rios, which is drawn to a method of manufacture for silicone used for creating a mousepad (para [0138] teaching a variety of different products that could use the silicone, with one of the products being the bottom of a mouse pad), further teaches that reinforcing fillers, such as fumed silica, can be added to the silicone composition (para [0060], [0113]), and that depending on the desired characteristics of the cured silicone, the silicone composition would be adjusted to arrive at the desired hardness (para [0041], [0069] teaching hardness between 20A and 60A). Therefore, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to use reinforcing fillers and different compositions for the silicone as taught by Rios, in the silicone used for the base of Lai, through routine experimentation and design by one of skill in the art in order to result in the hardness suitable for the user’s preference.
Regarding Claim 6, as best understood, Lai teaches the gaming mousepad of claim 1, but does not specifically teach further comprising additives to calibrate the firmness or softness of the silicone. However, Rios, which is drawn to a method of manufacture for silicone used for creating a mousepad (para [0138] teaching a variety of different products that could use the silicone, with one of the products being the bottom of a mouse pad), further teaches that different additives such as reinforcing fillers, can be added to the silicone composition (para [0059],[0060], [0113]), and that depending on the desired characteristics of the cured silicone, the silicone composition would be adjusted to arrive at the desired hardness (para [0041], [0069] teaching hardness between 20A and 60A). Therefore, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to use additives and different compositions for the silicone as taught by Rios, in the silicone used for the base of Lai, through routine experimentation and design by one of skill in the art in order to result in the hardness suitable for the user’s preference.
Regarding Claim 7, as best understood, Lai teaches the gaming mousepad of claim 1, but does not specifically teach further comprising logos, text, or designs. However, Rios, which is drawn to a method of manufacture for silicone used for creating a mousepad (para [0138] teaching a variety of different products that could use the silicone, with one of the products being the bottom of a mouse pad), further teaches that the mousepad could further comprise designs (para [0074] teaching patterns such as fish scales or “s-shaped”) and graphics (para [01115]). Therefore, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to comprise designs/graphics as taught by Rios on the mousepad of Lai, since designs improve the aesthetic of the mousepad based on the user’s preferences and interests.
Regarding Claim 8, as best understood, Lai teaches the gaming mousepad of claim 1, but does not specifically teach further comprising one or more additives to enhance anti-slip properties. However, Rios, which is drawn to a method of manufacture for silicone used for creating a mousepad (para [0138] teaching a variety of different products that could use the silicone, with one of the products being the bottom of a mouse pad), further teaches that different additives can be added to the silicone composition (para [0041],[0059],[0060], [0113]) depending on the desired characteristics of the cured silicone, and that the slip-resistance is a function of the coefficient of friction which can be adjusted accordingly (para [0071],[0077]). Therefore, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to use additives and different compositions for the silicone as taught by Rios, in the silicone used for the base of Lai, through routine experimentation and design by one of skill in the art in order to result in the slip resistance suitable for the user’s preference.
Regarding Claim 10, as best understood, Lai and Rios combined teach the gaming mousepad of claim 7, and Rios further teaches wherein the logos, text or designs are embedded directly into the silicone base (para [0074] ‘imparted by methods such as molding’).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lai in view of https://www.digispec.com/mousepads/vynexHeavy.php to Digispec.
Regarding Claim 4, as best understood, Lai teaches the gaming mousepad of claim 1, but does not specifically teach further comprising vynex coating. However, Digispec, which is also drawn to a mousepad having a rubber base (see under #Options) teaches having a vynex surface (see under #Options). Therefore, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to use a vynex surface as taught by Digispec on the mousepad of Lai in order to improve durability and scratch resistance (see under #Product).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lai in view of US 2020/0163453 (Crockett).
Regarding Claim 5, as best understood, Lai teaches the gaming mousepad of claim 1, but does not teach wherein the mousepad has stitched edges that are directly stitched from the fabric surface into the silicone base. However, Crockett, which is also drawn to a mousepad having a base (106) and an upper layer (102; Figure 1; para [0043] teaching that the two layers may include different combinations of materials to match their intended use and purpose, and specifically teach fabric and silicone rubber as options), further teaches attaching the upper layer to the base layer via an adhesive (para [0055]) and then sewing the edges together along the edges (para [0056]). Therefore, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to sew the fabric and silicone layers of Lai together along their edges in order to improve durability (as taught by Crockett in para [0056]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lai in view of Rios, and further in view of Crockett.
Regarding Claim 11, Lai teaches a mousepad, comprising: a fabric surface (13; Figures 1,2; para [0015]) adhesively attached (via 3) to a silicone base (12; para [0015]). Lai does not specifically teach a method of manufacturing specifically comprising:
creating one or more custom molds with logos, text, design or artworks;
pouring raw materials into the one or more custom molds in the production process to embed the logos, text, design or artworks into the silicone base;
applying heavy duty commercial glue to the silicone base;
placing the fabric surface on top of the silicone base; and
sewing stitched edges into the silicone base.
However, Rios, which is drawn to a method of manufacture for silicone used for creating a mousepad (para [0138] teaching a variety of different products that could use the silicone, with one of the products being the bottom of a mouse pad), further teaches:
creating one or more custom molds with logos, text, design or artworks (para [0074] teaching molding a variety of different designs into the silicone);
pouring raw materials into the one or more custom molds in the production process to embed the logos, text, design or artworks into the silicone base (para [0044] teaching using a gel formulation to improve flowability for molding; para [0074]).
Additionally, Crockett, which is also drawn to a mousepad having a base (106) and an upper layer (102; Figure 1; para [0043] teaching that the two layers may include different combinations of materials to match their intended use and purpose, and specifically teaches fabric and silicone rubber as options), further teaches:
applying glue to the silicone base (para [0055]);
placing the fabric surface on top of the silicone base (para [0055]); and
sewing stitched edges into the silicone base (para [0056]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to use molds to create designs in the silicone layer of Lai, as taught by Rios, and to assembly the adhesive connected fabric and silicone layers of Lai by applying adhesive to the base, laying the fabric on top of the silicone base, and then sewing together along their edges in order to improve durability (as taught by Crockett in para [0056]).
While the adhesive used is not highlighted as heavy duty commercial adhesive, it would have been obvious before the effective filing date of the claimed invention to one of skill in the art with a reasonable expectation of success to determine the optimum adhesive based on the materials of the layers, and desired characteristics.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Prior art has been listed in the PTO-892 form.
US 2023/0051605 (Lu et al.) and US 8,394,482 (Chou) teach a mousepad having a silicone base with a fabric upper layer.
US 2010/0270697 (Hu) and US 2007/0069097 (Hsieh) teach pouring silicone into a mold to make the pad body.
US 6,770,581 (DeMott et al.) teach placing a fabric layer on a rubber base, cutting to size and sewing the edges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to INGRID M WEINHOLD whose telephone number is (571)272-8822. The examiner can normally be reached on Monday-Tuesday 7:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached on 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/INGRID M WEINHOLD/
Primary Examiner, Art Unit 3632