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 .
Status of Claims
This office action is in response to the patent application 18/884,432 originally filed on September 13, 2024. Claims 1-7 are presented for examination. Claim 1 is independent.
Priority
This application is a continuation of US patent application 18/767,767 (filed 7/9/2024), which is a continuation of US patent application 17/530,280 (filed 11/18/2021), which is a continuation of US patent application 14/498,904 (filed 9/26/2014).
This application claims foreign priority of CA2842734 (Canada), filed February 13, 2014. Certified copies of the priority documents have been received in US patent application 14/498,904.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-12 and 14 of U.S. Patent No. 12,054,002. Although the claims at issue are not identical, they are not patentably distinct from each other, as seen in the table below:
Instant Application
US Patent 12,054,002
1. A an article having a reusable writing surface comprising:
a planar surface;
a water-based film disposed upon the planar surface, wherein the water-based film has a satin finish; and
a first UV film over the water-based film, wherein the first UV film has a gloss finish, thereby providing a surface suitable for writing with a dry erasable pen and allowing erasure of the writing.
8. A workbook page for repeated use comprising:
a substrate with first and second surfaces; and
wherein the layer includes a water-based film disposed upon the at least one of the first and second surfaces, and the water-based film has a satin finish [this limitation moved up for comparison]
at least one of the first and second surfaces having a writing surface including a first UV film, the first UV film having a gloss finish and providing a surface suitable for writing with a dry erasable pen and allowing erasure of the writing;
wherein the at least one of the first and second surfaces includes a layer between the substrate and the first UV film; and
2. The article of claim 1, further comprising a second UV film between the water-based film and the first UV film.
9. The workbook page of claim 8, wherein the layer between the substrate and the first UV film includes a second UV film adjacent the first UV film.
3. The article of claim 2, wherein the second UV film has the same composition as the first UV film.
10. The workbook page of claim 9, wherein the second UV film has the same composition as the first UV film.
4. The article of claim 2, wherein the second UV film has a different composition than the first UV film.
11. The workbook page of claim 9, wherein the second UV film has a different composition than the first UV film.
5. The article of claim 2, wherein the second UV film has a matte finish.
12. The workbook page of claim 9, wherein the second UV film has a matte finish.
6. The article of claim 1, wherein one of the planar surface, the first UV film and the water- based film includes printed matter selected from the group consisting of: grids, lines, polar plots, music staff, guitar tablature and bass tablature.
14. The workbook page of claim 8, wherein one of the substrate, the first UV film and the layer there between includes printed matter selected from the group consisting of: grids, lines, polar plots, music staff, guitar tablature and bass tablature.
7. The article of claim 5, wherein one of the planar surface, the first UV film, the second UV film, and the water-based film includes printed matter selected from the group consisting of: grids, lines, polar plots, music staff, guitar tablature and bass tablature.
14. The workbook page of claim 8, wherein one of the substrate, the first UV film and the layer there between includes printed matter selected from the group consisting of: grids, lines, polar plots, music staff, guitar tablature and bass tablature.
The main difference between US Patent 12,054,002 and the instant claimed invention is that US Patent 12,054,002 states that the claimed invention is “a workbook” in the preamble, while the instant invention may be embodied as any “planar surface”.
Claims 1-7 are also provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, and 9 of copending Application 18/767,676 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the same reasons as provided above.
The only significant differences between the instant application and 18/767,676 is instead of the invention being implemented on one surface of “a sheet substrate having first and second surfaces.” The instant invention can be implemented on any “planar surface.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wittig, Jr. et al. (hereinafter “Wittig,” US 5,371,058).
Regarding claim 1, Wittig discloses an article having a reusable writing surface comprising:
a planar surface (Wittig col. 4 lines 56-64, “primer coating applicable to any type of printing substrate (e.g., paper, cardboard, thermally sensitive record material, label stock, facsimile paper, plastic film, et cetera . . . )”);
a water-based film disposed upon the planar surface (Wittig col. 6 lines 3-5, “the primer of the present invention comprises a water-borne emulsion”), … ; and
a first UV film over the water-based film, wherein the first UV film has a gloss finish (Wittig col. 1 lines 8-20, “One or more layers of a topcoat (e.g. a radiation curable topcoat) may be applied over top of the primer of the present invention to impart additional ultraviolet protection, a glossy appearance and/or improved abrasion resistance.”).
Wittig does not explicitly teach wherein the water-based film has a satin finish. However, the Applicant’s use of a satin finish is an obvious design choice. Applicant has not disclosed that a satin finish to this layer solves any stated problem or is for any particular purpose; by its disclosure in the specification, the satin finish used for the water-based coating appears to be an arbitrary choice. There are a very limited number of coating finishes to choose from—namely matte, eggshell, satin, glossy—and one having ordinary skill in the art may have chosen the optimal finish without undue experimentation. According to Applicant’s disclosure, it appears that any type of finish used for the water-based layer of Wittig or the Applicant would perform equally well. Therefore, it would have been prima facie obvious to modify Wittig to obtain the method as specified in claim 1, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Wittig.
Wittig does not explicitly teach that the surface is suitable for writing with a dry erasable pen and allowing erasure of the writing. However, writing on the surface with a dry erasable pen to allow erasure of the writing is an obvious intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art is capable of performing the intended use, it meets the claim. In this case, “writing with a dry erasable pen and allowing erasure of the writing,” in light of the Applicant’s specification as originally filed, relates to the intended use of a surface in the specific manner described by the claim, which could be performed by Wittig with a reasonable expectation of success.
Regarding claim 2, Wittig discloses a second UV film between the water-based film and the first UV film (Wittig col. 1 lines 8-20, “One or more layers of a topcoat (e.g. a radiation curable topcoat) may be applied over top of the primer of the present invention to impart additional ultraviolet protection, a glossy appearance and/or improved abrasion resistance,” more than one layer of radiation curable topcoat may be applied on top of the water based primer coat).
Regarding claim 3, Wittig discloses wherein the second UV film has the same composition as the first UV film (Wittig col. 1 lines 8-20, “One or more layers of a topcoat (e.g. a radiation curable topcoat) may be applied over top of the primer of the present invention to impart additional ultraviolet protection, a glossy appearance and/or improved abrasion resistance,” same composition is implied).
Regarding claim 6, Wittig does not explicitly teach wherein one of the planar surface, the first UV film and the water-based film includes printed matter selected from the group consisting of: grids, lines, polar plots, music staff, guitar tablature and bass tablature.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to select printed matter from the group consisting of grids, lines, polar plots, music staff, guitar tablature and bass tablature, since it would only depend on the intended use of the system and the desired information to be printed. Further, it has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack 217 USPQ 401, (CAFC 1983) and In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862. The content of the printed matter used does not alter or provide a functional relationship with the substrate. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter (e.g., grids, lines, polar plots, music staff, guitar tablature, or bass tablature) and the substrate (e.g., a planar surface) which is required for patentability.
Claims 4, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Wittig in view of Yamazaki (US 2011/0117330).
Regarding claim 4, Wittig does not explicitly teach wherein the second UV film has a different composition than the first UV film.
However, Yamazaki discloses wherein the second UV film has a different composition than the first UV film (Yamazaki [0019], “the invention provides writing paper including a first coating layer formed by applying a first coating material to one side or each side of paper, and a second coating layer formed by applying a second coating material to the first coating layer, the first coating material and the second coating material being UV-curable, and the second coating layer having a thickness larger than that of the first coating layer.”; also Yamazaki [0065], “The second coating material is not particularly limited insofar as the second coating material is UV-curable, exhibits excellent adhesion to the first coating layer, and can be quickly dried. For example, a UV-curable clear coat varnish or the like may be used as the second coating material.”; also Yamazaki [0021], “It is preferable that the second coating material have a viscosity lower than that of the first coating material.”).
Yamazaki is analogous to Wittig, as both are drawn to the art of paper manufacturing. It would be obvious to try by one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method as taught by Wittig, to include wherein the second UV film has a different composition than the first UV film, as taught by Yamazaki, in order to provide writing paper that exhibits an excellent writing capability and erasability when using a whiteboard marker, and is not easily damaged (Yamazaki [0017]). Doing so is a predictable solution that one of ordinary skill in the art could have pursued with a reasonable expectation of success.
Regarding claim 5, Wittig does not explicitly teach wherein the second UV film has a matte finish.
However, Yamazaki discloses wherein the second UV film has a different composition than the first UV film (Yamazaki [0019], “the invention provides writing paper including a first coating layer formed by applying a first coating material to one side or each side of paper, and a second coating layer formed by applying a second coating material to the first coating layer, the first coating material and the second coating material being UV-curable, and the second coating layer having a thickness larger than that of the first coating layer.”; also Yamazaki [0065], “The second coating material is not particularly limited insofar as the second coating material is UV-curable, exhibits excellent adhesion to the first coating layer, and can be quickly dried. For example, a UV-curable clear coat varnish or the like may be used as the second coating material.”; also Yamazaki [0021], “It is preferable that the second coating material have a viscosity lower than that of the first coating material.”).
Yamazaki is analogous to Wittig, as both are drawn to the art of paper manufacturing. It would be obvious to try by one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method as taught by Wittig, to include wherein the second UV film has a different composition than the first UV film, as taught by Yamazaki, in order to provide writing paper that exhibits an excellent writing capability and erasability when using a whiteboard marker, and is not easily damaged (Yamazaki [0017]). Doing so is a predictable solution that one of ordinary skill in the art could have pursued with a reasonable expectation of success.
While Wittig in view of Yamazaki does not explicitly teach that the second UV film has a matte finish, Wittig in view of Yamazaki does show that it would have been obvious to one having ordinary skill in the art to provide two layers of UV coatings with different compositions. The Applicant’s use of a matte finish for the second UV film is an obvious design choice. Applicant has not disclosed that a matte finish to this layer solves any stated problem or is for any particular purpose; selection of a matte finish is not elaborated upon by the instant disclosure, and selection of a matte finish for the second UV film appears to be an arbitrary choice. There are a very limited number of coating finishes to choose from—namely matte, eggshell, satin, glossy—and one having ordinary skill in the art may have chosen the optimal finish without undue experimentation. According to Applicant’s disclosure, it appears that any type of finish used for the second UV film layer of Wittig in view of Yamazaki or the Applicant would perform equally well. Therefore, it would have been prima facie obvious to modify Wittig in view of Yamazaki to obtain the method as specified in claim 5, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Wittig in view of Yamazaki.
Regarding claim 7, Wittig in view of Yamazaki does not explicitly teach wherein one of the planar surface, the first UV film, the second UV film, and the water-based film includes printed matter selected from the group consisting of: grids, lines, polar plots, music staff, guitar tablature and bass tablature.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to select printed matter from the group consisting of grids, lines, polar plots, music staff, guitar tablature and bass tablature, since it would only depend on the intended use of the system and the desired information to be printed. Further, it has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack 217 USPQ 401, (CAFC 1983) and In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862. The content of the printed matter used does not alter or provide a functional relationship with the substrate. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter (e.g., grids, lines, polar plots, music staff, guitar tablature, or bass tablature) and the substrate (e.g., a planar surface) which is required for patentability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Athorn-Telep et al. (US 2004/0018345) Dry-erase ink marking media
Korane et al. (US 2004/0077497) Dry erase surface
Goscha (US 2009/0148603) Ambient cure water-based coatings for writable-erasable surfaces
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/STEPHEN ALVESTEFFER/Examiner, Art Unit 3715
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