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 .
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.
Regarding claims 1 and 6, it is unclear what sort of device is required as the preamble claims a device, but the body of the claim only has articles. A device DOES something, i.e. it performs a function, such as a heat transfer press. The device is not described in any fashion. A board and a heat transfer sheet do not do anything. For the purposes of examination, this is considered to be a kit.
Claims 16 and 17 recite the limitation "the marker" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, they are considered to depend from claim 15.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102a1 as being anticipated by How to heat press DTF transfers to customize skateboards. (abbreviated How to) (https://www.youtube.com/watch?v=wmZFlUbvj_E)
Regarding claims 1 and 2, How to teaches applying a heat transfer film to a skateboard comprising providing a heat transfer film with a design and transferring it to the skateboard.
Regarding claim 3, DTF film can be peeled while hot, and thus would be considered a hot-peel transfer.
Regarding claims 4 and 5, How to shows the design can be a picture.
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(s) 6-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over How to in view of Ruiz de Vinaspre(US Publication 2014/0070524)
How to does not disclose using a drawing utensil with the transfer, but it does disclose the transfer process is known in general for transferring designs to fabrics. Ruiz de Vinaspre teaches a method for transferring an image to an article such as fabric or leather[0001]comprising a heat transfer sheet and a pen which can be used to draw a design on the sheet which is then transferred.[0018] It would have been obvious to one of ordinary skill at the time of filing to include a writing utensil with the board and heat transfer sheet of How to since this would allow the user to draw their own image for transfer as taught by Ruiz de Vinaspre.[0018]
Regarding claim 19, How to teaches placing the transfer on the surface of the board, applying heat, and removing the transfer. Ruiz de Vinaspre teaches drawing or coloring a design on the transfer sheet[0018] prior to transferring it. It would have been obvious to one of ordinary skill at the time of filing to draw a design on the transfer sheet of How to as taught by Ruiz de Vinaspre since this would allow the user to draw their own image for transfer as taught by Ruiz de Vinaspre.[0018]
Regarding claims 8 and 20, DTF film can be peeled while hot, and thus would be considered a hot-peel transfer.
Regarding claims 9 and 10, How to shows the design can be a picture.
Regarding claim 11, Ruiz de Vinaspre shows the drawn image can be an outline.(Figure 1)
Regarding claims 11-14, while Ruiz de Vinaspre does not disclose paint pens, it does disclose a variety of writing utensils including crayons and pencils.[0018] It would have been obvious to one of ordinary skill at the time of filing to use either an acrylic or fabric paint pen to create the design on the heat transfer sheet since they are well-known and conventional in the crafting arts in general.
Regarding claim 15, Ruiz de Vinaspre teaches the writing utensil can be a marker.[0018]
Regarding claims 16 and 17, one in the art would appreciate the marker of Ruiz de Vinaspre would be a permanent marker since the design was intended to be transferred to form a permanent image.
Regarding claim 18, the sheet has a texture of some kind, whether smooth or rough. It is noted that a texture includes any type of texture.
Claim Objections
Applicant is advised that should claim 16 be found allowable, claim17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/ Primary Examiner, Art Unit 1746