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 .
Information Disclosure Statement
The listing of references (e.g., “Electro-active paper actuators” by J. Kim and Y. B. Seo, in Smart Materials and Structures, Vol. 11, pp. 355 – 360, 2002) 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 subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. 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).
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits (e.g., “making such novel support mediums”) or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The use of various trade names or marks used in commerce (e.g., Bluetooth) has been noted in this application. The terms should be accompanied by the generic terminology; furthermore, the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because it contains one or more embedded hyperlink(s) and/or other form of browser-executable code (e.g., website links and references to download PDF files). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 6-9, 11-13, and 16-17 are objected to because of the following informalities:
Regarding claim 6, the claim language is narrative in form by reciting “man-made”, “grown by man”, and “non-natural”. As written, the Applicant’s disclosure states that only men may practice the production of the nanomaterial; however, given the typical use of “man-made” and “grown by man” as a narrative substitute for the term “synthetic”, the Examiner assumes the Applicant intended to recite the following (or a similar variation): “…at least one nanomaterial that is synthetic or human-cultivated via agricultural means.”
Note: The Examiner’s proposed amendment only recites two items in the list as the original claim recited three items. This is due to the fact that directly or indirectly man-made and non-natural are interpreted to be encompassed by the term “synthetic” and the recitation of both is redundant and ambiguous.
Regarding claims 7-9, 11-13, 16-17, the phrases, “the finished or unfinished work”, “the unfinished or finished, two or three-dimensional support medium and/or work”, and similar derivations lack antecedent basis.
Regarding claim 13, the claim recites, “…by the American Association of Museums,” with a comma appended to the end of the item in the list; however, the previous item in the list contained a semi-colon appended to the end of the item in the list. For the purposes of continuity and consistency, a semi-colon should be used instead of the comma.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
See claims 1, 2, 5, 7, and 15 for the limitations interpreted under 35 U.S.C. 112(f) for utilizing the word, “means”.
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 11 and 13 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The claims are interpreted to read on a human organism due to the claim limitations cited being dependent on the presence and cooperation of a human organism.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 7629400 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it would be impossible to materially practice the instant invention without infringing upon the patented invention. Specifically, all of the limitations of the instant invention are taught by the patented invention.
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 1-18 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.
Claims 1-18 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. The Examiner lists examples of indefinite language below but does not mean to indicate the listed examples below are the only examples of indefinite language present. Applicant’s cooperation is requested in correcting any errors of which Applicant may become aware in the claims.
Various relative terms are used throughout the claims (e.g., “it”, “itself”, “more complex”, “conventional”, “these”, “established”, “well known”, “designer”, “architect”, “artist”, “scholar”, “improve”, “curator”, “proven expertise”, “contemporary design”, “critic”, “improve”). The terms are relative terms which renders the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. By utilizing these terms, the intended structure of the claimed invention is indefinite.
For the purposes of examination, regarding the terms that refer to preceding terms (e.g., “it”, “itself”, “these”), the Examiner assumes the terms refer to the object(s) recited that directly precedes the usage of the relative term.
For the purposes of examination, regarding the terms that refer to subjective merits (e.g., “more complex”, “conventional”, “these”, “established”, “well known”, “designer”, “architect”, “artist”, “scholar”, “improve”, “curator”, “proven expertise”, “contemporary design”, “critic”, “improve”), the Examiner assumes the terms are intended as exemplary and not intended to limit the scope of the claims.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “utilitarian” in claim 2 is used by the claim to denote a type of electronic device, while the accepted meaning is, “of or relating to or advocating utilitarianism” (Merriam-Webster Dictionary) while the accepted meaning of utilitarianism is, “a doctrine that the useful is the good and that the determining consideration of right conduct should be the usefulness of its consequences” (Merriam-Webster Dictionary). The term is indefinite because the specification does not clearly redefine the term. Furthermore, if the Applicant intended to utilize the term with the accepted meaning, the term is a relative term which renders the claim indefinite. The term “utilitarian” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. By utilizing the term, the intended structure of “the work” is indefinite.
Furthermore, regarding claim 2, the claim appears to directly contradict claim 1, which claim 2 directly depends upon, as claim 1 recites, “creating or designing the support medium or the work as or into a two or three-dimensional work of design that is applied art, architecture or an artwork that lacks a means of actively changing more complex than or other than a conventional on/off or dimmer” and claim 2 recites, “the image support or the work is made as or into a work of design that is applied art, a work of architecture or an artwork with a means of actively changing that is a conventional on/off or dimmer”. This creates ambiguity and confusion as both claims appear to be referring to the same support medium or work.
For the purposes of examination, the Examiner assumes that the Applicant intended this language to be exemplary and not to limit the scope of the claims.
The term “distinct” in claims 1 and 15 is a relative term which renders the claim indefinite. The term “distinct” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. By utilizing the term “distinct” without clarifying what the edges or boundaries are distinct from, the structure of the claimed invention is indefinite.
For the purposes of examination, the Examiner interprets the limitation to be met so long as the edges or boundaries are visible to the naked eye.
The phrase “partially or entirely transparent or translucent” in claims 14 and 18 is unclear and ambiguous. The term “transparent” has the accepted meaning of “having the property of transmitting light without appreciable scattering so that bodies lying beyond are seen clearly” (Merriam-Webster Dictionary). In other words, the term “transparent” means to allow light to pass through an object without the object dispersing the light, such as a window. The term “translucent” has the accepted meaning of “transmitting and diffusing light so that objects beyond cannot be seen clearly” (Merriam-Webster Dictionary). In other words, the term “transparent” means to allow light to pass through an object with minimal light dispersion by the object, such as a piece of paper. The inclusion of both terms, “transparent” and “translucent”, with the terms, “partially or entirely” may result in confusion as it is unclear how an object may be “partially transparent” without being “translucent”, and it is unclear how am object may be “entirely translucent” without being “partially translucent”.
For the purposes of examination, the Examiner assumes the Applicant intended to recite, “partially or entirely transparent”, which encompasses the term, “translucent”.
The phrase “so that it is a whole in and of itself” in claims 1 and 15 is unclear and ambiguous. The phrase “so that it is a whole in and of itself” is not in accordance with proper claim drafting conventions, as it is vague and conversational, lacking the precision and formality required for patent claims. Claim language should clearly and concisely define the scope of the invention without relying on informal expressions. In this case, it results in extensive ambiguity as it is unclear whether the Applicant is stating the claimed invention is only “distinct edges or boundaries” or has a different intended meaning.
Regarding claims 1 and 15, the term “making” as used throughout the claims (e.g., “making the support medium or work so that it is macroscopic and two or three-dimensional”) is unclear and ambiguous. Specifically, due to the accepted meaning of “making” is (emphasis added) “the act or process of forming, causing, doing, or coming into being” (Merriam-Webster Dictionary), it is unclear whether the Applicant intended for the claimed invention to require a microscopic substance before making the support medium or work into a macroscopic product – thereby excluding macroscopic products – or if macroscopic products may also be used in the construction of the claimed invention. Furthermore, it is unclear whether the Applicant intended for the claimed invention to be a dimension other than two or three-dimensional before making the support medium or work into a two or three-dimensional product – thereby excluding two or three-dimensional products – or if two or three-dimensional products may also be used.
For the purposes of examination, the Examiner assumes the Applicant has no preference regarding the initial size or dimension of the ingredients so long as the process results in a macroscopic, two or three-dimensional product.
Regarding claims 1-18, the claims either directly or through the claims’ dependencies refer to the “work” as a by-product of the methods cited within the claims; however, the preamble of the claims initially recited within claims 1 and 15 state the method is “a method of making a macroscopic, two or three-dimensional image-making support medium”; therefore, it is unclear whether the Applicant intended to claim a support medium for making a work, the work, or the work is required to be made during the process of making the support medium.
Regarding claims 1 and 15, the term, “nature” as used is unclear and indefinite due to its relative and potentially overly-broad interpretation due to the accepted meaning of the term, “nature” to mean, “the external world in its entirety” (Merriam-Webster Dictionary). Specifically, the use of the term, “nature” results in the required origins of the nanomaterial being indefinite; therefore, the required nanomaterial is indefinite.
Although one may interpret, “nature” to refer to biomes unobstructed by humans, the phrase “not found” is unclear and ambiguous as the claims and specification do not disclose how the invention prevents the nanomaterial from being transported into and located within biomes unobstructed by humans.
For the purposes of examination, the Examiner assumes the term, “synthetic” is an adequate replacement for the phrase, “not found in nature”.
The phrase, “about as complex” in claim 1 is a relative term which renders the claim indefinite. The phrase, “about as complex” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, the disclosure does not provide sufficient detail to determine how complex an object must be to satisfy the limitation.
For the purposes of examination, the Examiner assumes this language is exemplary and not intended to limit the scope of the claims.
The phrase, “actively changing or interactivity” in claim 1 is a relative term which renders the claim indefinite. The phrase, “actively changing or interactivity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, the disclosure does not provide sufficient detail to determine what may constitute “actively changing” or “interactivity”.
The Examiner assumes that any form of change and interaction, whether implicit or explicit, meets the limitation as intended by the Applicant.
The term “title” in claim 13 is a relative term which renders the claim indefinite. The term “title” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, it is unclear what form of “title” is required by the Applicant. For example, as currently recited, the Applicant could be requiring the work being named “design”, “architecture”, or “art”, or, the Applicant could be requiring the work have the terms “design”, “architecture, or “art” inscribed atop the work similar to the title of a book is written atop a book cover’s design.
Regarding claim 13, the limitations requiring recognition of a third-party results in ambiguity and confusion as the standards of a third-party are not objective and subject to change; thereby, resulting in uncertainty on when infringement has occurred under appropriate laws (See Limelight Networks, Inc. v. Akamai Techs, Inc., 572 U.S. 915 (2014)). Furthermore, the recitation of “a curator with proven expertise … at an American museum” is ambiguous as it is unclear whether the curator must be actively employed by an American museum (which could be North America or South America), have previously been employed by an American museum, or be able to provide any form of proof that they have attended any museum within an American continent.
The term “image-making support medium” in claims 1 and 15, the term “support medium” in claims 1, 5-7, and 9, the term “image support” in claims 2-4, 10, 14, and 16-18, and the term, “support work” in claim 11 are relative terms which renders the claim indefinite. The disclosure does not clearly identify whether these terms are intended to refer to the same product, a separate product for each reference, or a combination of the two options. The disclosure does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, the terms are used in the claims and specification in a manner that is unclear and seemingly interchangeable. It is ambiguous whether these terms refer to the same entity or distinct entities. This lack of clarity renders the scope of the claim uncertain, as one of ordinary skill in the art cannot reasonably determine the roles or relationships of the objects within the context of the claimed invention.
For the purposes of examination, the Examiner assumes the terms are intended to be synonymous with each other.
Regarding claims 8, 11-13, and 17, the claims omit “the image[-making] support [medium]” as found within the other claims to accompany “or the work”, which results in ambiguity and confusion. Specifically, it is unclear whether the Applicant unintentionally omitted “the image[-making] support [medium]” and these claims should recite “the image[-making] support [medium] or the work”, as found in surrounding claims, or whether this was an intentional exclusion by the Applicant and these claims only apply to “the work”. Furthermore, if the claims are intended to only apply to “the work”, it is unclear whether these limitations are optional under circumstance where “the image[-making] support [medium]” is present instead of “the work”; therefore, the claims are deemed indefinite.
For the purposes of examination, the Examiner assumes the Applicant intended to omit “the image[-making] support [medium]”, and the claim limitations are optional when prior art is cited to match “the image[-making] support [medium]”.
The phrase “finished or unfinished”, and its similar derivations (e.g., unfinished or finished), in claim 7-9, 11-13, 16-17 are relative terms which render the claims indefinite. The phrase “finished or unfinished”, and its similar derivations (e.g., unfinished or finished), is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, since a process can either be completed (i.e., finished) or a work-in-progress (i.e., unfinished), it is unclear what significance or impact the Applicant intended for the inclusion of the phrase “finished or unfinished”, and its similar derivations (e.g., unfinished or finished), to have on the limiting of the scope of the claims.
For the purposes of examination, the Examiner assumes the phrase “finished or unfinished”, and its similar derivations (e.g., unfinished or finished), is intended as exemplary and not to limit the scope of the claims.
The term “on/off” as found in claims 1, 2, and 15 is unclear and indefinite as the disclosure provides no definition of the term. Based on the presence of the term “dimmer” within the same context, the Examiner assumes the Applicant intended to refer to a light switch that allows a light to be toggled between the on and off positions, which does not limit the scope of the claims as one of ordinary skill in the art would understand that, even though a light has transitioned from off to on, the light may always transition from on to off again.
Claim limitations “means of actively changing” and “means of having and using electricity” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
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 1-18 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention as evidenced via the disclosure of Hyman [US 20030035917 A1].
Regarding claim 1, Hyman discloses:
A method of making a macroscopic, two or three-dimensional image-making support medium (Hyman, [0012], “The invention also relates to a method for preparing this fine-art, image-making support medium.”) that facilitates the creation and display of a two or three-dimensional macroscopic work of design that is applied art, architecture and/or art (Hyman, [0010], “facilitate the creation or preservation of the image by at least one fine-art stabilizer” and Hyman, [0012], “processing the polymerization reaction mixture into a 2- or 3-dimensional shape.”),
making the support medium or work so that it is macroscopic and two or three-dimensional (Hyman, [0012], “processing the polymerization reaction mixture into a 2- or 3-dimensional shape.”), and so that it is a whole in and of itself with distinct edges or boundaries (Hyman, Figs 1-4 and 17 display works and image support with distinct edges or boundaries.),
making the support medium or the work with at least one nanomaterial that is not found in nature, and that is other than a carbon nanotube or fullerene added to conductive polymer or to a material that has conductive polymer to improve its conductive or emissive properties (Hyman, [0176], “One kind of image support stabilizer includes at least one polymer that is a transparent polymer or a synthetic translucent polymer. Typically, the volume of these image support stabilizers has a percentage of transparent or synthetic translucent polymer that is at least about 51%, preferably at least about 55%, more preferably, at least about 65%, still more preferably at least about 75%, and most preferably at least about 85%, in different embodiments. Another kind of image support stabilizer includes at least one polymer that is a synthetic absorbent polymer or a conductive polymer.”), and
creating or designing the support medium or the work as or into a two or three-dimensional work of design that is applied art, architecture or an artwork that lacks a means of actively changing more complex than or other than a conventional on/off or dimmer (Hyman, [0010], “The stabilizer can be used to in an amount or design sufficient to protect the at least one polymer against (a) discoloration over time that is visible in the image, (b) changes to its form or surface over time that are visible in the image or (c) changes that reduce its strength, its stability or its permanence.”).
Regarding claim 2, Hyman discloses:
The method of claim 1 in which the image support or the work is made as or into a work of design that is applied art, a work of architecture or an artwork with a means of actively changing that is a conventional on/off or dimmer, that is about as complex as a conventional on/off or dimmer, or that is less complex than a conventional on/off or dimmer (Hyman, [0102], “with a stabilizer that prevents or decreases the chances of undesirable change in the image over time, and/or in other ways described herein.” In this citation, Hyman discloses a stabilizer that decreases the chances of undesirable change, which indicates change over time remains to a degree.), and
the work is other than a conventional utilitarian computer, camera, phone, personal digital assistant device, digital photo frame, digital picture frame, portable media player device or wrist watch that is capable of actively changing or interactivity (Hyman, [0286], “All of these elements can, if desired, be used to contribute to the inventive image's aesthetic, and/or if desired for other purposes, e.g., to give the image an interactive or utilitarian element.” As noted by the inclusion of “if desired”, Hyman discloses that if not desired, these elements may be omitted.).
Regarding claim 3, Hyman discloses:
The method of claim 1 in which the image support or the work is made with at least one macroscopic material, composition, mechanism or device (Hyman, [0261], “The polymers of the invention are not typically fibrous, interwoven, or made of macroscopic strands like many conventional images, though such elements can be used in inventive images e.g., fibers, paper and strands of all kinds can be used as part of inventive images, for example, on and/or in their surfaces.”).
Regarding claim 4, Hyman discloses:
The method of claim 3 in which the macroscopic material, composition, mechanism or device is
visible, and/or it is part or all of the form and/or structure of the image support or the work (See citation of claim 3 where the term “macroscopic” is used with the conventional meaning of “observable by the naked eye” (Merriam-Webster Dictionary), which results in a visible material/composition that is at least part of the form and/or structure.).
Regarding claim 5, Hyman discloses:
The method of claim 1 in which the support medium and/or the work is made with:
a material or composition that is:
polymer, glass, crystal, clay, ceramic, cement, metal, sheetrock, plaster, paper, wood, stone, a gem, fabric, fiber, a textile, yarn or thread (Hyman, [1245], “For instance, it might be formed as a transparent polymer with embedded items that are opaque, translucent or both (such as embedded pieces of preformed polymer, wood, glass, metal, paper, a fiber stabilizer, lumps of dry paint, pastels, clay, checkers, dominos, and/or rubber, etc.).”);
a conventional art medium or material;
an organic or natural material or composition;
a means of having and using electricity;
an ink, paint or dye (Hyman, [0134], “Examples of colorants and coloration for inventive images are pigments, dyes, color from light, pixels, particles (such as blades of grass, rocks, gems, stones, particles of glass, metal, paper, sand, coffee, reflective particles);”);
one of these made with at least one nanomaterial;
a nanocomposite or hybrid nanomaterial;
a material, composition, mechanism or device that is free of nanomaterials; or
two or more of these.
Regarding claim 6, Hyman discloses:
The method of claim 1 in which the support medium and/or the work is made with at least one nanomaterial that is directly or indirectly man-made, grown by man or non-natural (See citations within claim 1 above.).
Regarding claim 7, Hyman discloses:
The method of claim 1 in which the unfinished or finished, two or three-dimensional support medium and/or work is made with a means of display, presentation, mounting or installation; it is made to support itself and/or it is architecture (Hyman, Claim 7, “image-making support medium or its at least one polymer having the capacity for self-support or the capacity to be free standing; a layer or part that provides support to the at least one polymer; a frame, a base, wire, a material, a device or a part for mounting, installation or display;”).
Regarding claim 8, Hyman discloses:
The method of claim 1 in which the unfinished or finished, two or three-dimensional work of design, architecture or art is displayed, installed, mounted, presented and/or it is capable of being used as design, architecture or art (See citation within claim 7 above.).
Regarding claim 9, Hyman discloses:
The method of claim 1 in which the unfinished or finished, two or three-dimensional support medium or work functions as furniture or it is wearable (Hyman, [0103], “Examples of images are … furniture design”).
Regarding claim 10, Hyman discloses:
The method of claim 1 in which the image support or the work is made with a paint, an ink, a pigment, a primer or a dye that has at least one nanomaterial (See citations within claim 5 above.).
Regarding claims 11 and 13, the subjective performance of the process and recognition of the work, such as the experience-level or virality of a designer, architect, and/or artist, does not functionally or structurally relate to the physical substrate of the invention; therefore, any claim limitation directed towards this form of limitation within the invention (as seen in claims 11 and 13) does not provide patentable weight over the prior art. Among other reasons, this is due to the inability to properly identify whether infringement has occurred under applicable laws as the determination of sufficient experience-level is subjective and dependent on the individual reviewer.
Regarding claim 12, the written contents of a work of art, regardless of the work of art’s state of completion, such as signatures, distinguishing marks, or being accompanied by certifications or invoices, do not functionally or structurally relate to the physical substrate of the invention; therefore, any claim limitation directed towards the printed matter within the invention (as seen in claim 12) does not provide patentable weight over the prior art. As cited in the MPEP, "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268 (See MPEP 2111.05 on Functional and Nonfunctional Descriptive Material.). Furthermore, a functional or structural relationship between the printed matter and the physical substrate of the invention alone is insufficient to provide patentable weight over a prior art. As cited in the MPEP, the relationship must be “new and nonobvious” (MPEP 2111.05, Section II).
Regarding claim 14, Hyman discloses:
The method of claim 1 in which the image support or the work is partially or entirely transparent or translucent so that light can pass into or through it; the image support or the work is made with polymer that is transparent or translucent; or part or all of the image support or the work is capable of functioning as a window (See citations within claim 1 above.).
Regarding claim 15, the claim shares similar limitations to claim 1. For citations on rejection, see the rejection of claim 1 above. However, claim 1 does not discuss light emitters or the capability of light emission.
Regarding light emitters or the capability of light emission, Hyman discloses:
making the support medium or the work capable of light emission with one or more light emitters (Hyman, [0272], “Conductive polymers are one of many ways of creating light emitting image supports (e.g., stabilizers), and inventive images according to the invention, which can, if desired, be further processed (e.g., using additive and/or subtractive processes such as those described herein). Light emitted from an inventive image and light hitting an inventive image can be modified in a many ways, e.g., using coloration, marking, attachments, filters, lenses, subtractive processes, etc.”);
the light emitter or emitters are one or more: small molecule organic light-emitting diode (SMOLED); organic light-emitting diode (OLED) free of conductive polymer; phosphorescent OLED (PHOLED); stacked OLED (SOLED); or OLED made with at least one quantum dot (Hyman, [0221], “If desired, one or more parts or layers in an inventive image may be partially, principally, or completely comprised of one or more ingredients other than the inventive medium, e.g., light sources and other elements to give it light effects (such as light bulbs, LEDs, EL Lamps, reflective materials, iridescent materials, prisms, etc.);” and Hyman, [0286], “Organic LEDs are compatible with standard silicon driving circuitry, which may be used as desired in inventive images.” and Hyman, [0293], “Conductive polymers or polymer LEDs may be formed into inventive images and/or onto inventive images or image supports that are even, regular, flat, planar, rectilinear, geometric, and/or exact, but they are not restricted to such kinds of forms.”).
Regarding claim 16, Hyman discloses:
The method of claim 15 in which the unfinished or finished, two or three-dimensional image support or work is made with at least one light emitting diode (LED), at least one organic light-emitting diode (OLED), it is made with at least one transparent or translucent LED or OLED, or it is made with a combination of these (See citations within claim 15 above.).
Regarding claim 17, Hyman discloses:
The method of claim 15 in which the finished or unfinished work is lighting design which is applied art, or part or all of the image support or the work is capable of functioning as lighting (See citations within claim 15 above.).
Regarding claim 18, Hyman discloses:
The method of claim 15 in which the image support or the work is partially or entirely transparent or translucent so that light can pass into or through it; part or all of the light emitter is capable of being transparent or translucent; the image support or the work is made with polymer that is transparent or translucent; or part or all of the image support or the work is capable of functioning as a window (See citations within claims 1 and 15 above.).
Conclusion
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/Z.J.P./Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715