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 .
Drawings
The drawings are objected to because in Fig. 9 display board 102 is mislabeled “101”, and horizontal base 101 is not labeled at all. 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.
Claim Objections
Claim 12 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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, 3, 5-7, and 12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Broussard (3,879,874).
Broussard discloses visual image display board, comprising: a horizontal base (16, Fig. 5); a display board (2, Fig. 1), wherein the display board comprises a front surface, a back surface, a left side, a right side, an upper side and a bottom side, and wherein the bottom side of the display board is coupled to the horizontal base (Fig. 7); an adhesive layer (20, Fig. 7) disposed between the bottom side of the display board and the horizontal base, wherein the adhesive layer couples the display board to the horizontal base (Fig. 7); and one or more photographs (1, Fig. 1) conformally disposed on the front surface of the display board, wherein a shape of the one or more photographs substantially corresponds with a shape of the display board (Fig. 3).
Regarding claim 3, the photograph disclosed by Broussard is of a human female. It is not known whether or not she plays sports, but there is no structural difference between a photograph of a human “sports figure” and a human who does not play sports.
Regarding claim 5, the photograph exactly conforms to and does not overlap any of the display board.
Regarding claim 6, the photograph is attached to the front surface of the display board with adhesive (3, Fig. 1, column 2, lines 9-12).
Regarding claims 7 and 12, see column 2, lines 13-23.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Broussard (3,879,874).
Broussard discloses the invention substantially as claimed, as set forth above. However, it is not known how wide the display board disclosed by Broussard is. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the display board between 1 and 20 cm wide as a matter of design choice and because such a modification would have involved a mere change in the size, shape or proportion of a component, which is generally recognized as being within the level of ordinary skill in the art. See MPEP § 2144(IV).
Claims 8, 9, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Broussard (3,879,874) in view of Pynenburg et al. (6,129,969).
Broussard discloses a visual image display board, comprising: a horizontal base (16, Fig. 5); a display board (2, Fig. 1), wherein the display board comprises a first front surface, a first back surface, a first left side, a first right side, a first upper side and a first bottom side, and wherein the first bottom side of the display board is coupled to the horizontal base (Fig. 7); and an adhesive layer (20, Fig. 7) disposed between the first bottom side of the display board and the horizontal base, wherein the adhesive layer couples the display board to the horizontal base (Fig. 7).
However, the display board disclosed by Broussard is flat and does not include a disarticulated display board member disposed in front of the first front surface of the display board, wherein the disarticulated display board member is formed of a separated portion of the display board. Pynenburg discloses that it was known in the art to cut out a portion of a display board, thus forming a disarticulated display board member, and disposing that display board member in front of the display board. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to remove a portion of the display board disclosed by Broussard and dispose it in front of the rest of the display board, as taught by Pynenburg, in order to give the display board a three-dimensional appearance.
Regarding claim 9, following the teachings of Pynenburg, as explained above, would inherently result in a first portion of the visual image disclosed by Broussard being displayed on the display board, and a second portion of the visual image being displayed on the disarticulated display board member.
Regarding claim 11, the thickness of the display board disclosed by Broussard is 1.5 inches (column 2, lines 33-34), which is 3.81 cm, which falls within the recited range.
Regarding claim 13, the first portion of the visual image disclosed by Pynenburg does not overlap any part of the second portion of the visual image. See Figs. 1 and 5 of Pynenburg.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 4 and 10 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 8, respectively, of prior U.S. Patent No. 11,790,807. This is a statutory double patenting rejection.
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 1-3, 5-9, and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-9, and 11-13 of U.S. Patent No. 11,790,807. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite every limitation in the pending claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The relevance of each reference is explained below, unless the relevance is deemed to be readily apparent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GARY C HOGE whose telephone number is (571)272-6645. The examiner can normally be reached Monday through Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at (571) 272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GARY C HOGE/ Primary Examiner, Art Unit 3631