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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being of U.S. Patent No. 10937397. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regrading claim 1, both the present application and claim 1 of US Patent number 10937397 disclose the use of a pick comprising: a first contoured side; a second contoured side (see the first and second contour sides in figure 4); and a peripheral edge defined by an exterior perimeter where the first contoured side joins the second contoured surface (see the first and second contoured surfaces in figure 4).
Regarding claim 2, both the present application and claim 2 of US Patent number 10937397 disclose the use of a pick comprising: wherein the first contoured surface defines a first curved surface along an entire length from a first side of the exterior perimeter to an indentation on the first contoured side and a second curved portion along another entire length from the indentation to an opposite side of the exterior perimeter.
Regrading claim 3, both the present application and claim 3 of US Patent number 10937397 discloses wherein the first curved surface and second curved surface defines a concave curve, convex curve, or a combination thereof (page 4, lines 24-30).
Regrading claim 4, both the present application and claim 4 of US Patent number 10937397 disckose wherein the first contoured side comprises an elongated indention in a central region of the first contoured side providing directional stability for a user's finger positioned thereon.
Regrading claim 5, both the present application and claim 5 of US Patent number 10937397 disclose wherein the peripheral edge defines a first striking point and a second riking point, and the first striking point having a different flexibility than the second striking point.
Regrading claim 6, both the present application and claim 6 of US Patent number 10937397 disclose wherein the peripheral edge defines a first thickness at the first striking point and a second thickness at the second striking point to create different flexibilities of the pick during use.
Regrading claim 7, both the present application and claim 7 of US Patent number 10937397 disckose wherein the pick comprises a flexible material.
Regrading claim 8, both the present application and claim 8 of US Patent number 10937397 disckose wherein the flexible material comprises a shore hardness D of between 30 and 90.
Regrading claim 9, both the present application and claim 9 of US Patent number 10937397 disckose wherein the flexible material comprises polyester, co-polyester based thermoplastic elastomers, and combinations thereof.
Regrading claim 10, both the present application and claim 10 of US Patent number 10937397 disckose wherein the first contoured side comprises one or more combinations of curves at a striking point to define a striking angle.
Regrading claim 11, both the present application and claim 11 of US Patent number 10937397 disckose wherein the first contoured side comprises one or more combinations of curves at a second striking point to define a second striking angle different from the striking angle.
Regrading claim 12, both the present application and claim 12 of US Patent number 10937397 disckose wherein the first contoured side defines one or more curved surfaces to define a grip location.
Regarding claims 13 and 14, US Patent number 10937397 does not disclose the use of a set of picks, differing shore hardness’ and differing gripping locations.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed by the applicant to include a set of picks with differing shore hardness’ and differing gripping locations since sets of picks with a specific hardness having different gripping locations is conventional and well known in the art.
Regarding claim 15, US Patent number 10937397 does not disclose wherein the set of picks has one or more combinations of curves to define a gripping location that is different from the others of the set of picks.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed US Patent number 10937397 to include a set of picks with d the set of picks has one or more combinations of curves to define a gripping location that is different from the others of the set of picks since the use of curves that define a gripping location conventional and well known in the art.
Regrading claim 16, both the present application and claim 16 of Patent number 10937397 disckose wherein the peripheral edge defines two corners for striking a stringed instrument on a same side of the pick.
Regrading claim 17, both the present application and claim 16 of Patent number 10937397 disckose wherein the first contoured side defines a concave surface and a convex surface along a line traversing the pick, where the two corners are on the same side of the line traversing the pick.
Regrading claim 18, both the present application and claim 18 of Patent number 10937397 disclose, wherein a plane traversing one of the two corners containing the peripheral edge of the pick at the one corner is out of plane from a second plane traversing another of the two corners containing the peripheral edge of the pick at the another of the two corners.
Regarding claim 19, Patent number 10937397 does not disclose the two corners are linearly aligned to strike a same string of the stringed instrument simultaneously when the pick is in a first orientation.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed in US Patent number US Patent number 10937397 to include a pick with two corners as a matter of design choice.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The “set of picks” is not found in the specification.
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)(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 3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Martini (WO2023020886).
Regarding claim 1, Martini (WO2023020886) discloses the use of a pick comprising: a first contoured side; a second contoured side (see the first and second contour sides in figure 4); and a peripheral edge defined by an exterior perimeter where the first contoured side joins the second contoured surface (see the first and second contoured surfaces in figure 4).
Regarding claim 3, Martini (WO2023020886) discloses wherein the first curved surface and second curved surface defines a concave curve, convex curve, or a combination thereof (page 4, lines 24-30).
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.
Claims 2 and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Martini (WO2023020886) in view of Lawrence (2,481,759).
Martini (WO2023020886) discloses the use of a pick comprising: a first contoured side; a second contoured side (see the first and second contour sides in figure 4); and a peripheral edge defined by an exterior perimeter where the first contoured side joins the second contoured surface (see the first and second contoured surfaces in figure 4).
Martini does not disclse the use of an indentation.
Regarding claim 2, Lawrence disclosed wherein the first contoured surface defines a first curved surface along an entire length from a first side of the exterior perimeter to an indentation on the first contoured side and a second curved portion along another entire length from the indentation to an opposite side of the exterior perimeter (see the curved portions in figure 1 and the indentation between the curves).
Martini (WO2023020886) does not disclose first and second striking points.
Regarding claims 5 and 6, Lawrence (2,481,759) discloses the use of a guitar pick where a peripheral edge defines a first striking point and a second striking point, and the first striking point having and creating different flexibility than the second striking point (based on the picks being capable of having differing thicknesses as recited in column 3, lines 15-18).
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed in Martini (WO2023020886) to include first and second striking points as disclosed in Lawrence in order to provide a pick that is capable of strumming multiple strings.
Regarding claim 7, Martini (WO2023020886) does not disclose a pick that comprises a flexible material.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed in Martini (WO2023020886) to include a flexible material since flexible materials are well knonw in the art and since Martini discloses that his device can be made from different materials (column 3, lines 15-18).
Regarding claim 8 Martini (WO2023020886) does not disclose a pick, wherein the flexible material comprises a shore hardness D of between 30 and 90.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed in Martini (WO2023020886) to include a material since with a specific hardness since specific hard shore materials are well knonw in the art.
Regarding claim 9, Martini (WO2023020886) does not disclose the use of flexible materials that comprise polyester, co-polyester based thermoplastic elastomers, and combinations thereof.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed in Martini (WO2023020886) to include a flexible material since flexible materials are well knonw in the art and since Martini discloses that his device can be made from different materials (column 3, lines 15-18).
Regarding claim 10, Lawrence (2,481,759) discloses wherein the first contoured side comprises one or more combinations of curves at a striking point to define a striking angle (see the curves and striking point in figures 74 and 80).
Regarding claim 11, Lawrence (2,481,759) discloses wherein the first contoured side comprises one or more combinations of curves at a second striking point to define a second striking angle different from the striking angle (see the curves and striking point in figures 74 and 80).
Regarding claim 12, Martini (WO2023020886) does not disclose wherein the first contoured side defines one or more curved surfaces to define a grip location.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed in Martini (WO2023020886) to specifically define a grip location since specifically defined grip locations are conventional and well known in the art.
Martini (WO2023020886) discloses the use of a pick comprising: a first contoured side; a second contoured side (see the first and second contour sides in figure 4); and a peripheral edge defined by an exterior perimeter where the first contoured side joins the second contoured surface (see the first and second contoured surfaces in figure 4).
Regarding claim 13, Martini (WO2023020886) does not disclose a set of picks.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed in Martini (WO2023020886) to include a set of picks as recited by the application since the use of sets of picks is conventional in the art.
Regarding claims 14 and 15 , Martini (WO2023020886) does not disclose the use of a set of picks with differing shore hardness’ and differing gripping locations between the set of picks.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed by the applicant to include a set of picks with differing shore hardness’ and differing gripping locations since sets of picks with a specific hardness having different gripping locations is conventional and well known in the art.
Regrading claims 16, Martini (WO2023020886) does not disclose discloses wherein the peripheral edge that defines two corners for striking a stringed instrument on a same side of the pick.
Leong (US20040194607A1) discloses wherein the peripheral edge that defines two corners (114,116) for striking a stringed instrument on a same side of the pick.
However, i it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the device as disclosed in Martini (WO2023020886) to include a set of picks and the two corners as recited in Leong to provide a
Regrading claim 17, Leong (US20040194607A1) discloses wherein the first contoured side defines a concave surface and a convex surface (see figure 1) along a line traversing the pick, where the two corners are on the same side of the line traversing the pick (see figure 1).
Regrading claim 18, Leong (US20040194607A1) discloses wherein a plane traversing one of the two corners containing the peripheral edge of the pick at the one corner is out of plane from a second plane traversing another of the two corners containing the peripheral edge of the pick at the another of the two corners (see the corner in figure 1).
Regrading claim 19, Leong (US20040194607A1) discloses wherein the two corners are linearly aligned to strike a same string of the stringed instrument simultaneously when the pick is in a first orientation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIMBERLY R LOCKETT whose telephone number is (571)272-2067. The examiner can normally be reached 8:30-5:00 pm M-F.
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/KIMBERLY R LOCKETT/Primary Examiner, Art Unit 2837
