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 of the following:
“open top and an open bottom” are not shown. Examiner contends that these create the through hole in which the finger extends through a ring.
“sealed”. Examiner assumes applicant intends to refer to seam 5.
“fits between the fingernail and the first knuckle”, which is not shown in figure 2.
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 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 1-5 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Examiner notes that claims 1 and 5 are rejected multiple times, as they are rejected as “best understood”.
Regarding claims 1 and 5;
“for displaying a user interest message”. Applicant claims the “user interest message” as the intended use in the preamble, but seems to positively claim “a user interest message placed on the tubular sleeve”. Examiner contends that since the user interest message is positively claimed, it should not also be claimed as intended use. Further, the record is not clear as to how “user interest” further modifies “message”.
“for displaying…on a finger”. Applicant claims the device is “designed of a size to fit snuggly on a single finger”, which makes this device a ring. Since applicant positively claims the size of the device to fit on a finger, it should not simultaneously be claimed as intended use.
“a device... consisting of…a tubular sleeve”, and every subsequent phrase modifies the tubular sleeve. Examiner believes that “device” and “tubular sleeve” are equivalent in scope, and further that both are colloquially called a “ring”.
“open top and an open bottom”. These are not shown in the drawings. Examiner assumes that applicant means the openings through which a finger is placed through the claimed ring.
“by stretching the sleeve and sliding it on the finger of a user”. Examiner notes that this phrase seems to be a method of applying the ring to a finger. This is a phrase that modifies the method of use of the device, and applicant is only claiming the device in claim 1. In claim 5, applicant claims a method, but this is not considered a method step, since the steps claimed are “selecting a tubular sleeve” and “placing the tubular sleeve on a single finger of a user”. This phrase in claim 5 does not further limit “placing the tubular sleeve on a single finger of a user”.
“can be placed on a finger starting with either the open top or the open bottom”. Examiner notes that this phrase seems to be a method of applying the ring to a finger. First, this is old and well known in the art, and does not further the structure of the ring claimed, and second, this is a phrase that modifies the method of use of the device, and applicant is only claiming the device in claim 1. In claim 5, applicant claims a method, but this is not considered a method step, since the steps claimed are “selecting a tubular sleeve” and “placing the tubular sleeve on a single finger of a user”. This phrase in claim 5 does not further limit “placing the tubular sleeve on a single finger of a user”.
“stretchable material”. The record is not clear how “stretchable” modifies “material”, or how it modifies “cloth”. Examiner notes that this is later “selected from the group consisting of neoprene, polychloroprene, stretchable cloth, and elastic”. However, this term “stretchable” is also applied to “cloth”. Examiner contends that “stretchable material” is met by having a material in the group provided, however, the group provided is not definite since “stretchable cloth” is not definite. If applicant refers to any cloth with elastic, this is not clear from the specification. Should applicant contends that “stretchable cloth” is cloth with elastic, then removing “stretchable cloth” and retaining “elastic” would be suitable.
“sealed to form a tube by one of sewing molding, binding, and gluing”. The record is not clear as to “sealed”, since applicant does not describe what exactly is “sealed”. Is it the open top or bottom? Or, since applicant refers to seam 5 “to form a tube by one of sewing molding, binding and gluing”, perhaps applicant means to claim that the material has a seam, which is sewn, molded, bound, or glued, together. Examiner notes that a “molded” piece of material will not have a seam. Further, the record is not clear as to what applicant refers to as “binding”. This is not a common term in the art and has not specific definition in the specification. Examiner notes that several rings known in the art using silicone are made without a seam 5 as shown by applicant, but this “sealed” does not require a seam 5. Examiner assumes that seam 5 is positively claimed with this phrase. In claim 5, since the method steps refer to “selecting” and “placing…on a…finger”, these phrases are not considered to modify the method as claimed.
Regarding claim 1, examiner assumes the following claim is definite, equivalent, and rejected below:
A ring, sized to be worn on a finger, consisting of:
a material selected from the group consisting of: neoprene, polychloroprene, and elastic;
the material having a seam connected by one of sewing, molding, binding, and gluing;
a message on the material.
Regarding claim 5, examiner assumes the following claim is definite, equivalent, and rejected below:
A method of displaying an image on a ringer, consisting of:
selecting a ring as claimed in claim 1, and placing the ring on a finger of a user.
Regarding claim 2, applicant claims “the length” while not previously claiming “a length”. Examiner notes that applicant does not show the ring “between the fingernail and the first knuckle”. Further, the diameter of the ring is what dictates where the ring fits on a finger. Examiner is unsure how claim 2 further limits the ring of claim 1.
Regarding claim 4, applicant claims “device is placed on the finger of a user”. Examiner notes that according to 35 USC 101, human body parts cannot be positively claimed. Applicant has already previously claimed “Sized to be worn on a finger”. Claim 5 further claims the device of claim 1 with the method step of putting the ring on a finger. Examiner is not sure how claim 4 further limits the structure of the ring of claim 1.
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2012/0118016 Maloney, optionally in view of 2020/0297083 Zobell.
Examiner notes that all claims are rejected as best understood. Please see equivalent claims and all 112b rejections above.
Regarding claim 1, Maloney discloses a ring (figure 6), sized to be worn on a finger (figure 1), consisting of:
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a material (“neoprene or polychlorprene synthetic rubber” [0039]) selected from the group consisting of: neoprene, polychloroprene, and elastic;
the material having a seam 4 (figure 6) connected by molding (“seams are melted together in the injection molding process” [0051])
a message (oval dome 10) on the material.
Should applicant contend that the “oval dome 10” is not consistent with “user interest message”, examiner applies the following rejection;
Maloney does not disclose the message.
Zobell discloses a ring, sized to be worn on a finger ([0103] “any finger or toe”), consisting of:
a material selected from the group consisting of: elastic (“flexible polymer” abstract, silicone [0071] and elastic [0071]);
a message on the material (letters on the exterior of the ring, and on the interior of the ring, figures 16 and 20, and cover).
It would have been obvious to one of ordinary skill in the art before the effective filing date to apply the decorative message of Zobell onto the material of Maloney, as both disclose the use of an elastic material to be worn on a finger, and the message is used for decorative purposes. Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Regarding claim 5, Maloney, or Maloney in view of Zobell, discloses a method of displaying an image on a ringer, consisting of: selecting a ring as claimed in claim 1 (disclosed above), and placing the ring on a finger of a user (figure 1 of Maloney).
Regarding claim 2, Maloney, or Maloney in view of Zobell, discloses the ring of claim 1, wherein the length (unknown, but assumed to be diameter) is such that it fits between the fingernail and the first knuckle (as best understood, this is shown in figure 2 of applicant’s disclosure; figure 1 of Maloney discloses this location on the finger).
Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art, and is described how the structure disclosed performs the claimed functions in the parentheses; therefore, all italicized language is considered and shown in the prior art. Further, examiner notes that the disclosed structure is capable of performing the intended use claimed by applicant.
Regarding claim 3, Maloney, or Maloney as modified discloses the ring of claim 1, wherein the message has multiple messages. Examiner notes that Zobell discloses the use of multiple images/letters in order to create a cohesive message with the multiple letters.
Regarding claim 4, Maloney, or Maloney as modified discloses the ring of claim 1, wherein the device is placed on a finger of the user (as shown in figure 1 of Maloney).
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zobell in view of Maloney.
Examiner notes that all claims are rejected as best understood. Please see equivalent claims and all 112b rejections above.
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Regarding claim 1, Zobell discloses a ring, sized to be worn on a finger ([0103] “any finger or toe”), consisting of: a material selected from the group consisting of: elastic (“flexible polymer” abstract, silicone [0071] and elastic [0071]); a message on the material (letters on the exterior of the ring, and on the interior of the ring, figures 16 and 20, and cover).
Zobell does not particularly disclose a seam, but does disclose that the ring is formed using “compression molding and/or injection molding” [0091].
Maloney discloses a ring (figure 6), sized to be worn on a finger (figure 1), consisting of: a material (“neoprene or polychlorprene synthetic rubber” [0039]) selected from the group consisting of: neoprene, polychloroprene, and elastic; the material having a seam 4 (figure 6) connected by molding (“seams are melted together in the injection molding process” [0051]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the injection molded elastic ring of Zobell in the manner of the injection molded elastic ring of Maloney that uses a seam, as this would produce the identical ring of Zobell as disclosed, since the ring is also made of “injection molding”. Having or not having a seam does not negate that the ring of Zobell as the remaining structure claimed by applicant. Examiner contends that (injection molding with a seam and injection molding without a seam) are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Regarding claim 5, Zobell as modified discloses the method of showing the message of Zobell on a finger by selecting the ring from claim 1, and placing that ring on a finger (abstract).
Regarding claim 2, Zobell as modified discloses the ring of claim 1, wherein the length (unknown dimension of the ring, please see 112b rejection above, assumed to be diameter), is such that it fits between the fingernail and the first knuckle (ring of Zobell is worn on a finger, in the location old and well known shown by Maloney, which seems to be equivalent to applicant’s figure 2).
Regarding claim 3, Zobell as modified discloses the ring of claim 1, wherein there is a plurality of messages (the use of multiple letters/messages are used together to show a cohesive message).
Regarding claim 4, Zobell as modified discloses the ring of claim 1, wherein the ring is placed on a finger of the user (abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571)272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY M MORGAN/Primary Examiner, Art Unit 3677