DETAILED ACTION
Election/Restrictions
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/23/26, wherein the applicant elected Group I Figures 1-15E and alleged claims 1-20 encompass the claims.
The claims are 1-19.
Claim 19 is drawn to Group III: Figs. 19A-20B, and thus withdrawn.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “damper” (claim 15) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claimed “damper” does not contain any inter-structural detail with any other elements of the “lifting mechanism”, nor is it shown at all in the Drawings (see Drawing objection). It is unclear to one of ordinary skill in the art how the damper interacts with the elected lifting mechanism of Figures 1-15E, as its operation and connection to other parts is deficient in the Specification.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a suitable “lifting mechanism” (e.g. Figs. 1-15E), does not reasonably provide enablement for all possible structures which could effectuate the claimed function. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Claim language is non-enabled when it "merely described a particular end result, did not set forth any specific structure, and would encompass any and all structures for achieving that result, including those which were not what the applicant had invented." Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946); see also Ex Parte Miyazaki, BPAI 2007-3300. In the instant case, independent claims each recite a “lifting mechanism…configured to lift at least a movable section of said print support” or a “lifting mechanism for lifting at least a portion of the print support surface”. Myriad structural configurations are capable of performing the claimed lifting function. No structure is claimed other than a generic “mechanism” which encompasses any of the various structural configurations, including those not invented by the applicant.
Claim Rejections - 35 USC § 102
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.
Claims 1-2, 4-8, 11, and 15-18, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inventor (No English translation provided) (KR 20-0329359) (See NPL for English Translation).
In respect to claims 1, 7, and 8, although rejected under 35 USC 112(a) for lacking proper scope of enablement, Inventor discloses a print display system for displaying a print comprising: a print display member 60 having a print support surface (front surface) and a lifting mechanism (“pressing portion”) 62 operatively associated with the print support surface (0029; Fig. 3); wherein the lifting mechanism is configured to lift at least a movable section of said print support (opposite end corner from the lifting mechanism) to facilitate manipulation of the print 80 relative to the print display member (via a hinged connection) (0029; Fig. 4).
In respect to claims 2 and 6, Inventor further discloses an attachment mechanism (plate) 90 and accompanying non-permanent attachment magnets (92, 92a, 92b, 92c) for supporting the print 80 in a releasably secured manner (Fig. 3).
In respect to claims 4 and 5, Inventor discloses a frame member 50 configured to hold the print display system (Fig. 3), and the frame member further comprising configurations to be mounted (e.g. 56/56a) (Fig. 5).
In respect to claim 11, Inventor discloses that the lifting mechanism is an integral component of the print display member, which is elastic and thus intrinsically providing a “biasing element” (0029).
In respect to claim 15, Inventor does not disclose a “damping element” however its structure and use within the elected invention is unclear and cannot be ascertained.
In respect to claims 16-18, Inventor discloses the claimed invention for the reasons stated above. At option “at least a portion [of] the media applied to the print is ferrous” is disclosed by the cover 90 (which contains ferrous magnets). Although “the media” lacks proper antecedent basis
Claims 1, 9, 11, and 12, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang (US 2007/0137081).
In respect to claim 1, although rejected under 35 USC 112(a) for lacking proper scope of enablement, Chang discloses a print display system for displaying a print comprising: a print display member 20 having a print support surface (front surface) 42 and a lifting mechanism (“biasing element”) 82 operatively associated with the print support surface (Figs. 3 & 4); wherein the lifting mechanism is configured to lift at least a movable section 62 of said print support to facilitate manipulation of the print 100 relative to the print display member 20 (Figs 3 & 4).
In respect to claims 9 and 11, Chang discloses that the “lifting mechanism” comprises (e.g. consists of) a spring 82, which is activated by the user (0019; Figs. 3 & 4).
In respect to claim 12, Chang discloses a locking arrangement configured to retain the movable section 62 (either the space 44 or magnets 92/94) (Fig. 4).
Allowable Subject Matter
Claims 3, 10, and 13-14, may be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
It is important to note that some of the claims above contain further generic terminology such as an “actuation element” and/or “locking mechanism” which do not provide any particular structure, and such that the scope of enablement would remain. Terms such as “push-to-open actuator” and/or “push-push mechanism”, if brought into the independent claims, will have to be reevaluated to determine if the terminology provides a clear structure to one of ordinary skill, which would provide both enablement and proper scope of enablement.
Claim 3, appears to provide the clearest distinction from the prior, wherein the moveable section is a component of the top surface (and movable from). Claim 3 incorporated into claim 1, with some supporting structure for the scope of enablement claims would likely overcome the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chang (US 3,205,863), Dominguez, Jr. (US 2014/0284438), Ruffell (GB 2,349,083), Sherman et al. (US 4,385,744), Weiss (DE 2738128), and Maier-Hunke (DE 10-2008-104750), disclose similar inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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