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 .
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 21-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,697,561 B2; claims 1-16 of U.S. Patent No. 12,734,461 B2; claims 1-20 of U.S. Patent No. 12,734,460 B2; claims 1-20 of U.S. Patent No. 11,850,533 B1; claims 1-30 of U.S. Patent No. 11,969,667 B1; claims 1-30 of U.S. Patent No. 11,992,786; and claims 1-30 of U.S. Patent No. 12,172,100 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the cited patents would read on / anticipate the claims of the present application.
Claims 21-38 are also provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10-17, and 20 of copending Application No. 19/365,161 and claims 1-32 of application no. 18/461,896. (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference applications would read on / anticipate the claims of the present application.
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.
Claims 21-38 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (US PGPub. No. 2006/0154214 A1) in view of Eisenhut et al. (US Patent No. 8,465,337 B2).
In Reference to Claim 21-24 and 28-31
Miller teaches (Claim 21) A kit for creating a miniature replica of an item, the kit comprising: a base object forming at least a portion of the miniature replica (item 201, fig. 2), the base object comprising a first material and having a surface shape defining one or more resin application regions (item 201, fig. 2, entire interior and exterior); [clay] configured to be applied to the base object (item 209, fig. 2); and one or more ingredient objects configured to be at least partially embedded in the [clay] (items 211 / 711, and other additional components, see paragraph 0037); wherein the [clay] has one or more material properties including at least one of translucency, opacity, viscosity or density (these are inherent properties of all materials); wherein the base object has one or more material properties including at least one of translucency, opacity or the surface shape of the one or more resin application regions (again, these are inherent material properties); and wherein the one or more material properties of the resin and the base object are selected to have complementary properties relative to each other, wherein the complementary properties provide that: the [clay] is retained on or within the one or more [] application regions prior to curing; and upon curing, the [clay] non-removably adheres to the base object while maintaining a predetermined spatial distribution of the one or more ingredient objects within the resin (paragraph 0008 and 0050).
(Claim 22) wherein the one or more resin application regions comprise a concave region of the base object (fig’s 2 and 3, items 305);
(Claim 23) wherein the one or more resin application regions are defined by a raised boundary on the surface of the base object (fig’s 2 and 3, rims of eye sockets; alternatively rim of jaw 311);
(Claim 24) wherein the viscosity of the [clay] is selected to prevent flow of the [clay] outside the one or more resin application regions prior to curing (paragraph 0008).
(Claim 28) wherein a surface of the one or more [clay] application regions of the base object comprises a material configured to bond with the [clay] when the [clay] is cured (paragraphs 0008 and 0050);
(Claim 29) wherein the density of the [clay] relative to the one or more ingredient objects is selected to control a vertical position of the one or more ingredient objects within the [clay] (paragraph 0008);
(Claim 30) wherein at least one of the ingredient objects is configured to remain suspended within the [clay] during curing (paragraph 0050).
(Claim 31) wherein at least one of the ingredient objects is configured to sink toward the base object prior to curing (paragraphs 0030 and 0039, eyeballs are sunk into sockets).
Miller fails to teach a resin and resin container.
Eisenhut teaches a resin container storing a curable resin (item 22, 24 / 42, 26 fig’s 1-8 and column 3 lines 48-53).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the molding kit of Miller with the feature of a curable resin as taught by the molding kit of Eisenhut for the purpose of allowing the finished mold to be cured without the need for heat, and more quickly and easily than conventional clay as taught by Eisenhut (column 2 lines 22-30 and 34-44), making the device easier to use, safter, more versatile, and more attractive to users.
In Reference to Claims 25-27
The modified device of Miller teaches all of claim 1 as discussed above.
Miller fails to teach the features of claims 25-27.
Eisenhut teaches (Claim 25) wherein [a] resin is configured to cure upon exposure to ultraviolet light (column 4 lines 6-9);
(Claim 26) wherein [a] base object is at least partially transmissive to ultraviolet light (items 20 and/or 60, fig’s 1-8, column 3 line 64, and column 5 lines 2-5);
(Claim 27) wherein the translucency of [a] base object and the opacity of [a] resin are selected allowing ultraviolet light penetrating the resin to cure the resin throughout a thickness of the resin (column 3 line 64, column 5 lines 2-5, column 4 lines 4-67).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the molding kit of Miller with the feature of an ultraviolet curable resin and light transmissive base object as taught by the molding kit of Eisenhut for the purpose of allowing the finished mold to be cured without the need for heat, and more quickly and easily than conventional clay as taught by Eisenhut (column 2 lines 22-30 and 34-44), making the device easier to use, safter, more versatile, and more attractive to users. The examiner further notes that when using a light curable resin as taught by Eisenhut, containers / substrates / base objects used with the resin are disclosed by Eisenhut to be transmissive to light in order to allow the resin to be cured through these other objects (column 3 line 64 and column 5 lines 2-5), therefore, when using a light curable resin instead of the conventional clay of Miller, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the non-clay portions of Miller light transmissible, in order to allow curing light to adequately reach all of the resin areas.
In Reference to Claims 32-34
The modified device of Miller teaches all of claim 21 as discussed above.
Miller fails to teach the features of claims 32-34.
Eisenhut teaches (Claim 32) further comprising a container configured to house the components of the kit (item 10, fig. 9);
(Claim 33) wherein at least a portion of [a] container is configured to transmit ultraviolet light to facilitate curing of [] resin while [a] object is positioned within the container (item 20, column 5 lines 2-5);
(Claim 34) wherein [a] container is configured to define a boundary that cooperates with [an] object to retain the resin within the one or more resin application regions during curing (boundary of item 20, fig’s 1-3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the molding kit of Miller with the feature of a container for housing components of the kit as taught by the molding kit of Eisenhut for the purpose of allowing the components of the kit to be provided for sale, shipping, or storage more conveniently, making the kit more attractive to the users. The examiner further notes that Miller is disclosed to be provided as a complete package (paragraph 0060), therefore, it would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the kit elements in a physical container.
The examiner further notes that when using a light curable resin as taught by Eisenhut, containers / substrates / base objects used with the resin are disclosed by Eisenhut to be transmissive to light in order to allow the resin to be cured through these other objects (column 3 line 66 and column 5 lines 2-5), therefore, when using a light curable resin instead of the conventional clay of Miller, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the non-clay portions of Miller light transmissible, in order to allow curing light to adequately reach all of the resin areas.
In Reference to Claims 35-36
The modified kit of Miller teaches all of claim 21 as discussed above.
Miller further teaches (Claim 35) wherein the base object comprises a miniature replica of a [decorative] component (fig’s 2-6).
The modified kit of Miller further teaches (Claim 36) wherein the resin container comprises a miniature replica of a container associated with [a] food or beverage component (Eisenhut, items 22 and 42, both containers could be considered replicas of food containers, this is extremely broad).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the miniature replica items and containers in the form of food or beverage items simply as a matter of design choice, since, it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Since there is no mechanical function to the aesthetics of the base object or container, merely claiming that these are food or beverage items is a matter of design choice, and is not a patentable advance.
In Reference to Claim 37
Miller teaches (Claim 37) A kit for creating a miniature replica of an item, the kit comprising: a base object forming at least a portion of the miniature replica (item 201, fig. 2), the base object comprising a first material and having a surface defining one or more resin application regions (item 201, fig. 2, entire interior and exterior), wherein the one or more resin application regions comprise a concave region or are defined by a raised boundary on the surface of the base object (fig’s 2 and 3, eye sockets; alternatively rim of jaw 311); [clay] configured to be applied to the base object (item 209, fig. 2); and one or more ingredient objects configured to be at least partially embedded in the [clay] (items 211 / 711, and other additional components, see paragraph 0037); wherein the [clay] has a viscosity selected based on the one or more resin application regions wherein the [clay] is retained within or confined to the one or more resin application regions prior to curing and does not flow outside the one or more resin application regions prior to curing (paragraphs 0008 and 0050); and wherein the [clay] is configured to cure to non-removably adhere to the base object and to affix the one or more ingredient objects at least partially within the [clay] (paragraphs 0008 and 0050).
Miller fails to teach a resin and resin container.
Eisenhut teaches a resin container storing a curable resin (item 22, 24 / 42, 26 fig’s 1-8 and column 3 lines 48-53)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the molding kit of Miller with the feature of a curable resin as taught by the molding kit of Eisenhut for the purpose of allowing the finished mold to be cured without the need for heat, and more quickly and easily than conventional clay as taught by Eisenhut (column 2 lines 22-30 and 34-44), making the device easier to use, safter, more versatile, and more attractive to users.
In Reference to Claim 38
Miller teaches (Claim 38) A kit for creating a miniature replica of an item, the kit comprising: a base object forming at least a portion of the miniature replica (item 201, fig. 2), the base object comprising a first material []; [clay] configured to be applied to the base object (item 209, fig. 2), the [clay] being configured to cure []; and one or more ingredient objects configured to be at least partially embedded in the [clay] (items 211 / 711, and other additional components, see paragraph 0037); [] and wherein the resin has a density selected relative to the one or more ingredient objects to control a vertical position of the one or more ingredient objects within the resin during curing (paragraphs 0008 and 0050).
Miller fails to teach using a ultraviolet curable resin with a light transmissive base.
Eisenhut teaches a base being at least partially transmissive to ultraviolet light (items 20 / 60, fig’s 1-8); a resin container storing a curable resin (items 22 / 24 / 42 / 26, fig’s 1-8); curing upon exposure to ultraviolet light (column 4 lines 6-9); wherein the resin has at least one of opacity or translucency selected relative to the transmissivity of the base object configured to permit ultraviolet light to penetrate the resin and cure the resin throughout a thickness of the resin (column 3 line 64, column 5 lines 2-5, column 4 lines 6-67).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the molding kit of Miller with the feature of an ultraviolet curable resin and light transmissive base object as taught by the molding kit of Eisenhut for the purpose of allowing the finished mold to be cured without the need for heat, and more quickly and easily than conventional clay as taught by Eisenhut (column 2 lines 22-30 and 34-44), making the device easier to use, safter, more versatile, and more attractive to users. The examiner further notes that when using a light curable resin as taught by Eisenhut, containers / substrates / base objects used with the resin are disclosed by Eisenhut to be transmissive to light in order to allow the resin to be cured through these other objects (column 3 line 66 and column 5 lines 2-5), therefore, when using a light curable resin instead of the conventional clay of Miller, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the non-clay portions of Miller light transmissible, in order to allow curing light to adequately reach all of the resin areas.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
