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 § 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.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Shizuo (JPS59160569 A).
Regarding claim 1, Shizuo discloses a metal mask [0001], comprising: a body having a first surface in contact with a surface of a workpiece, a second surface opposite the first surface and a third surface between the first surface and the second surface; and an eave portion continuous from the body and projecting externally from the first surface, wherein the eave portion is arranged away from the surface of the workpiece (see annotated figure below).
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Regarding claim 2, the annotated figure above depicts wherein the third surface includes a step portion forming the eave portion.
Regarding claim 4, Shizou does not explicitly discloses wherein the body and the eave portion are made of metal [0001].
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.
Claim(s) 3 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shizuo (JPS59160569 A) in view of Yasumasa (JPS6261360A).
Regarding claim 3, Shizuo does not explicitly disclose wherein the third surface has a sloping surface extending from the first surface towards the second surface, and the eave portion is arranged above the sloping surface. However, MPEP 2144.04 states It has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v, Levous et aI., 3 USPQ 23. Further analogous art, Yasumasa depicts wherein the third surface has a sloping surface extending from the first surface towards the second surface, and the eave portion is arranged above the sloping surface (figure 1, C). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a sloping surface extending from the first surface towards the second surface since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination.
Regarding claim 5, Shizou does not explicitly disclose wherein the third surface is a sloping surface extending continuously from an edge of the first surface to an edge of the second surface, and the eave portion protrudes outward from the edge of the second surface relative to the edge of the first surface. However analogous art, Yasumasa depicts wherein the third surface is a sloping surface extending continuously from an edge of the first surface to an edge of the second surface, and the eave portion protrudes outward from the edge of the second surface relative to the edge of the first surface (figure 1, C). MPEP 2144.04 states It has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v, Levous et aI., 3 USPQ 23. Hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a sloping surface extending from the first surface towards the second surface since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination.
Regarding claim 6, Yasumasa depicts the sloping surface has a curved surface shape (figure 1 C).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shizuo (JPS59160569 A).
Regarding claim 7, With regard to the claim recitations regarding the method of forming the apparatus, such relate only to the method of producing the claimed apparatus, which does not impart patentability to the apparatus claims. Note that determination of patentability is based on the product apparatus itself, In re Brown, 173 USPQ 685, 688, and the patentability of a product does not depend on its method of production, In re Pilkington, 162 USPQ 145, 147; see also In re Thorpe, 227 USPQ 964 (CAFC 1985). Note also that it is Applicant's burden to prove that an unobvious difference exists, In re Marosi, 218 USPQ 289, 292-293 (CAFC 1983), and Applicant must show that different methods of manufacture produce articles having inherently different characteristics, Ex: parte Skinner, 2 USPQ2d 1788. See MPEP § 2113. Further, MPEP 2144.04 states In re Larson, 340 F.2d 965, 968, 133 USPQ 347, 349 (CCPA 1965); In re Lockhart, 90 USPQ 214. The use of a one piece construction instead of the structure disclosed in the prior art would be obvious. It has been held to be within the general skill of one working in the art to make plural parts unitary or integral. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the body and eave portions molded integrally since it has been held that making in one piece an article which has formerly been formed in multiple pieces involves only routine skill in the art.
Conclusion
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754
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