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 .
Application Status
Claims 1-25 are pending and have been examined in this application.
This communication is the first action on the merits.
Claims 1-25 are rejected herein.
Information Disclosure Statement
As of the date of this action, an information disclosure statement (IDS) has been filed on 09/05/2015 and reviewed by the Examiner.
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 1-25 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11641957 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims 1-25 of instant application is encompassed by the scope of claims 1-18 of U.S. Patent No. 11641957 B2.
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 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 pre-AIA 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.
Claims 1, 6, 7 and 21 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Runge (U.S. Pat. Pub. No. 9920783 B2).
Regarding claim 1, Runge teaches a repositionable frame system comprising:
a repositionable wall mount (Runge; 12) configured for being repositionably secured to a support surface [capable/intended use], the repositionable wall mount including a first magnetic element (Runge; Col. 8; lines 38-39); and
a frame (Runge; 14) having a rear face that includes a second magnetic element (Runge; Col. 8; line 40) that is magnetically attracted to the first magnetic element resulting in a magnetic coupling between the frame and the repositionable wall mount.
Regarding claim 6, Runge teaches the frame (Runge; 14) includes a perimeter molding portion (Runge; 144) that protrudes rearward relative to the rear face of the frame and is for placement against the support surface, while the rear face and the second magnetic element is offset from the support surface.
Regarding claim 7, Runge teaches an exposed surface of the perimeter molding portion includes a surface texture (Runge; texture at end of 144 see annotated partial figure below) for gripping the support surface.
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Regarding claim 21, Runge teaches a repositionable frame system comprising:
a first part (Runge; 12) that is configured for being repositionably secured to a support surface [capable/intended use], the first part being flexible and including a first magnetic element (Runge; Col. 8; lines 38-39) defining a first face of the first part and a repositionable adhesive (Runge; 124) that is temporarily covered by a release layer (Runge; Col. 4; line 53) that defines a second face of the first part prior to mounting to the support surface; and
a second part (Runge; 14) that includes a frame having a rear face that includes a second magnetic element (Runge; Col. 8; line 40) that is magnetically attracted to the first magnetic element resulting in a magnetic coupling between the frame and the repositionable first part.
Claim Rejections - 35 USC § 103
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 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 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 2-5, 8-16, and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Runge (U.S. Pat. Pub. No. 9920783 B2) in view of Jones (U.S. Pat. No. 3852935).
Regarding claim 2, Runge teaches the repositionable wall mount includes a carrier layer (Runge; 122); having a first face and an opposite second face, the first face being coated with a repositionable adhesive (Runge; 124) for contacting the support surface.
However, Runge is silent to disclose the second face being coated with a permanent adhesive that is permanently bonded to the first magnetic element.
Jones teaches a magnetically receptive rubber layer that is permanently bonded (Jones; Col. 2; lines 21-25).
Runge and Jones are analogous because they are from a similar problem solving area e.g. providing a magnetically charged structure for bonding. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the invention of Runge having a magnetically receptive rubber layer that is permanently bonded to the layer of foam. The motivation would have been to facilitate the use of the product and as well as to provide appropriate strength during the retention.
Regarding claim 3, Runge as modified teaches the first magnetic element (Runge; Col. 8; lines 38-39) comprises a layer of foam (Runge; 122) that is permanently bonded to the permanent adhesive of the second face and a magnetically receptive rubber layer that is permanently bonded to the layer of foam (Jones; Col. 2; lines 21-25).
Regarding claim 4, Runge as modified teaches the magnetically receptive rubber layer comprises a mixture of rubber with ferrous material (Jones; Col. 2; lines 21-25).
Regarding claim 5, Runge as modified teaches the ferrous material (Jones; barium ferrite is a well-known ferrous material) is extruded [product-by-process] into the rubber. Additionally, it is noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (see e.g. MPEP 2113).
Regarding claim 8, Runge as modified suggest the second magnetic element comprises a flexible magnet e.g., the ferrite magnets made of rubber are known to comprise the flexible properties. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the invention of Runge having the second magnetic element comprises a flexible magnet. The motivation would have been to facilitate the use of the product for various type of surfaces.
Regarding claim 9, Runge as modified teaches wherein the flexible magnet is produced by a ferrite magnet material mixed with a flexible rubber binder (Jones: barium ferrite is a well-known ferrous material) which is then extruded or calendared [product-by-process] to form the flexible magnet. Additionally, it is noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (see e.g. MPEP 2113).
Regarding claim 10, Runge as modified teaches the flexible magnet is attached to the rear face with a permanent adhesive (Jones; Col. 2; lines 21-25).
Regarding claim 11, Runge teaches the rear face has a recessed portion (Runge; 20 in which the flexible magnet is placed.
Regarding claims 12 and 13, Runge teaches the perimeter of the molding portion. However, Runge is silent to disclose a thickness of the perimeter molding portion is greater than a thickness of the first magnetic element as recited in claim 12 or the thicknesses being about equal as recited in claim 13. The Examiner notes that it would have been an obvious matter of design choice to make the thickness of the perimeter of the molding portion and the magnetic element being the same, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 14. Runge teaches the first magnetic element comprises a permanent magnet and the second magnetic element comprises ferrous material (Jones; Col. 2; lines 21-25).
Regarding claims 15 and 16, Runge teaches frame includes a rear backing plate (Runge; plate of 14 that contacts with 12) having a recess portion. However, Runge is silent to disclose the material. The Examiner takes the official notice that providing plates made of molded plastic and the plates formed of paper are old and well known in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the invention of Runge having the backing plate made of molded plastic or paper such that the first magnetic element sits in the recess of the backing plate. The motivation would have been to make the product cost effective.
Regarding claim 22, Runge as modified teaches the first part includes a carrier (Runge; 122) on which the repositionable adhesive is layered along a first surface, with a second surface thereof being bonded to a layer of foam to which the first magnetic element is bonded.
However, Runge is silent to disclose the bonding being permanent. Jones teaches a magnetically receptive rubber layer that is permanently bonded (Jones; Col. 2; lines 21-25). Bonding parts to one another permanent is old and well known in the art as evidenced by Jones. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the invention of Runge having a second surface thereof being permanently bonded to a layer of foam to which the first magnetic element is permanently bonded. The motivation would have been to facilitate the use of the product and as well as to provide appropriate strength during the retention.
Regarding claim 23, Runge as modified teaches the first magnetic element comprises a rubber layer with a ferrous material (Jones; Col. 2; lines 21-25) incorporated therein.
Regarding claim 24, Runge as modified suggests the second magnetic element comprises a flexible magnet e.g. the flexible magnet e.g., the ferrite magnets made of rubber are known to comprise the flexible properties.
Regarding claim 25, Runge teaches the carrier (Runge; 122) comprises a flexible plastic film (Runge; Col. 5; lines 7, and 11-12).
Allowable Subject Matter
Claims 17-20 are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUHAMMAD IJAZ whose telephone number is (571)272-6280. The examiner can normally be reached M-F 11:00 am-10:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at 5712728227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MUHAMMAD IJAZ
Primary Examiner
Art Unit 3631
/Muhammad Ijaz/ Primary Examiner, Art Unit 3631