DETAILED ACTION
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-12 of copending Application No. 19/013477. Claims 5 and 6 are rejected in view of claims 7-12 of the copending application, as applied to claim 1, and further in view of Ahroni (US Pat. No. 4,736,282). Claim 7 is rejected in view of claims 7-12 of the copending application, as applied to claim 1, and further in view of Kim (US PG Pub. No. 2008/0283717). Claim 8 is rejected in view claims 7-12 of the copending application, as applied to claim 1, and further in view of Klein (US Pat. No. 5,673,893).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 7-12 of the copending application recite a product that explicitly has or inherently possesses every feature of instant claims 1-6 and 8 with the exceptions of the copending claims not reciting that the stringers are mounted to a donut-shaped receiver attached to top of the mast, that the free ends of the legs include eyelets, wherein the stringers are mounted to the eyelets by biasing elements, or that the free ends of the legs, when unfolded, define a plane perpendicular to the mast. However, copending claim 7 does recite that the stringers extend from the top of the mast. Ahroni further teaches a donut-shaped collar including a central opening for receiving a tree trunk or other pole-shaped structure that may be incorporated as a part of an ornamental tree top that is used to support a decorative light assembly (Abstract; col. 2, ln. 46-56; col. 4, ln. 27-30; claim 3; Figs. 1-3). As shown in Figures 3 and 4 and discussed by Ahroni, a light string is mounted into the collar by passing the string into a first opening at the perimeter of the collar, bending the string within the collar, and having the string exit at a second opening in the perimeter of the collar that is spaced art from the first opening (Figs. 3, 4; col. 3, ln. 39-42). Ahroni’s collar is beneficial because it provides a simple and economical way of conveniently draping, arranging, and securing light strings on a Christmas tree or the like (col. 1, ln. 24-27; col. 3, ln. 63-66). Therefore, it would have been obvious to one of ordinary skill in the art to utilize Ahroni’s donut-shaped collar with a central opening as a receiver on the tree of the copending claims, wherein the second end of the mast inserts into the opening and wherein a light string (i.e. “stringer”) is arranged within the collar as claimed, because the collar provides a simple and economical way of conveniently draping, arranging, and securing light strings on a Christmas tree or other structure and is compatible with the product described by the copending claims.
As noted above, the patented claims also do not recite that the stringers attach to eyelets on at the free end of the legs via biasing elements. However, copending claims 7, 11, and 12 do recite that the stringers are attached to the free ends of the legs by biasing elements, which are springs. Klein also teaches a tree stand including springs and teaches attaching his springs to other portions of the structure using eyelets (col. 5, ln. 7-11). As shown in Figures 1 and 4, Klein’s eyelets (72) are involved in supporting a suspended canister (20), which supports the weight of a tree (Figs. 1, 4; col. 2, ln 10-13), thereby demonstrating that eyelets can be used to form strong, mechanically robust connections. Klein also discloses that the materials used to make his product, which includes the eyelets, are low in cost, thereby making his product economically available to the buying public (col. 2, ln. 59-65). Accordingly, it would have been obvious to one of ordinary skill in the art to use eyelets to secure the spring biasing elements to the free ends of the legs in the product of the copending application because Klein teaches that eyelets are a useful and effective means of securing springs to other structures in products, such as products in the Christmas tree art, that are low-cost and economically available to the public and demonstrates that such connections are strong and mechanically robust.
Regarding the plane defined by the legs, as instantly claimed, it is noted that Kim teaches a conical tree similar to that of the instant claims including stringers (106) extending from the top of a mast (104) both to the free ends of legs (112) (Fig. 3). Kim’s tree also includes legs (112), which include free ends, that define a plane that is perpendicular to the extension direction of the mast (104) (Fig. 3). Due to its flat base, Kim’s tree has the option of being attached to the ground by passing clips or stakes over the legs, which form the flat base (par. 34). As such, it would have been obvious to one of ordinary skill in the art to configure the legs of the product of the copending claims such that they and their free ends form a plane that is perpendicular to the mast when in an unfolded state in order to allow the legs to be clipped or staked to the ground, as taught by Kim, and because Kim demonstrates that such a base shape and relative arrangement of legs and mast are an effective and useful structure for an artificial cone tree.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24, 26, 28, 31 of copending Application No. 18/769,563 in view of Kim.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 24, 26, 28, and 31 of the copending application recite a product that explicitly has or inherently possesses every feature of instant claims 1-8 with the exception of the copending claims not reciting a plurality of second stringers extending and positioned as claimed or reciting that the free ends of the legs, when unfolded, define a plane that is perpendicular to the mast. However, Kim teaches a conical tree similar to that of the instant claims including stringers (106) extending from the top of a mast (104) both to the free ends of legs (112) and to central points on the legs, spaced inwardly of the free ends (Fig. 3). Kim’s tree also includes legs (112), which include free ends, that define a plane that is perpendicular to the extension direction of the mast (104) (Fig. 3). Kim’s tree both achieves a desired decorative effect (par. 6) and, due to its flat base, has the option of being attached to the ground by passing clips or stakes over the legs, which form the flat base (par. 34). Therefore, it would have been obvious to one of ordinary skill in the art to configure the product of the copending claims to include a plurality of second stringers positioned as claimed to achieve a desired decorative effect, as taught and demonstrated by Kim. It further would have been obvious to one of ordinary skill in the art to configure the legs of the product such that they and their free ends form a plane that is perpendicular to the mast when in an unfolded state in order to allow the legs to be clipped or staked to the ground, as taught by Kim, and because Kim demonstrates that such a base shape and relative arrangement of legs and mast are an effective and useful structure for an artificial cone tree.
Claims 1-5, 7, and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 10, 11, 15, 16, 21, and 22 of U.S. Patent No. 12,042,071 in view of Kim. Claim 6 is rejected in view of claims 1, 9, 10, 11, 15, 16, 21, and 22 of U.S. Patent No. 12,042071 and Kim, as applied to claim 1 and further in view of Ahroni.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 9-11, 15, 16, 21, and 22 of the copending application recite a product that explicitly has or inherently possesses every feature of instant claims 1-8 with the exception of the copending claims not reciting a plurality of second stringers extending and or a donut-shaped receiver positioned as claimed. However, as discussed further below, Kim teaches a conical tree similar to that of the instant claims including stringers (106) extending from the top of a mast (104) both to the free ends of legs (112) and to central points on the legs, spaced inwardly of the free ends (Fig. 3). Kim’s tree also includes legs (112), which include free ends, that define a plane that is perpendicular to the extension direction of the mast (104) (Fig. 3). Kim’s tree both achieves desired decorative effect (par. 6) and, due to its flat base, has the option of being attached to the ground by passing clips or stakes over the legs, which form the flat base (par. 34). Therefore, it would have been obvious to one of ordinary skill in the art to configure the product of the patented claims to include a plurality of second stringers positioned as claimed to achieve a desired decorative effect, as demonstrated by Kim.
With respect to claim 6, it is noted that patented claim 15 recites that the stringers are mounted to the top of the mast at a receiver. Ahroni further teaches a donut-shaped collar including a central opening for receiving a tree trunk or other pole-shaped structure that may be incorporated as a part of an ornamental tree top that is used to support a decorative light assembly (Abstract; col. 2, ln. 46-56; col. 4, ln. 27-30; claim 3; Figs. 1-3). As shown in Figures 3 and 4 and discussed by Ahroni, a light string is mounted into the collar by passing the string into a first opening at the perimeter of the collar, bending the string within the collar, and having the string exit at a second opening in the perimeter of the collar that is spaced art from the first opening (Figs. 3, 4; col. 3, ln. 39-42). Ahroni’s collar is beneficial because it provides a simple and economical way of conveniently draping, arranging, and securing light strings on a Christmas tree or the like (col. 1, ln. 24-27; col. 3, ln. 63-66). Therefore, it would have been obvious to one of ordinary skill in the art to utilize Ahroni’s donut-shaped collar with a central opening as a receiver on the tree of the patented claims, wherein the second end of the mast inserts into the opening and wherein a light string (i.e. “stringer”) is arranged within the collar as claimed, because the collar provides a simple and economical way of conveniently draping, arranging, and securing light strings on a Christmas tree or other structure and is compatible with the product described by the patented claims.
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 1, 2, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US PG Pub. No. 2008/0283717).
Regarding claims 1, 2, and 5, Kim teaches an artificial tree that is a collapsible cone tree comprising a mast (104, 104a, 104b, 104c) having a top and bottom, a base plate (158) mounted to the bottom of the mast (i.e. the base plate corresponds to the recited “base”), a plurality of legs (112), each having a first end mounted to the base plate (114) and an opposite free end, a receiver (unlabeled, flat disk) mounted to the top of the mast (104, 104a, 104b, 104c), and a plurality of first flexible stringers (outer items 106), which may have LED lights (108) mounted thereto and may be LED light strings, extending between the legs’ (112) free ends and the receiver (unlabeled, flat disk) to which the stringers are mounted (Fig. 3; par. 18-20, 23, 33). As shown in Figure 3, Kim’s tree also includes a plurality of second flexible stringers (inner items 106), which may be LED light strings, extending from each of the legs (112) at a position spaced from each leg’s free end to the receiver at the top of the mast (Fig. 3).
The teachings of Kim may be considered to differ from the current invention in that the legs in the embodiment discussed above are not explicitly taught to be pivotable, or “foldable”, as claimed. However, the artificial tree (100) depicted in Figure 3 is cone-shaped and Kim does teach an embodiment wherein the legs can fold together when not in use for convenient storage (par. 26). As shown in Figure 4 and discussed by Kim, one of such folding movements is for the legs (112) to pivot, or “fold up” toward the mast (104a) using a hinge-type connection (Fig. 4; par. 28). Accordingly, it would have been obvious to one of ordinary skill in the art to configure the legs in the embodiment discussed above to be hingedly connected to the base plate such that the legs can pivot toward the mast because Kim explicitly teaches such a structure to be appropriate for his product and in order to allow the legs and tree to be collapsed to a smaller size that is convenient for storage. As such, Kim renders obvious an artificial tree comprising a collapsible cone tree including legs that are pivotable from a closed, storage state to an open, in-use state, wherein the stringers are extended to form the tree into a cone shape.
Regarding claim 7, as noted above, it would have been obvious to configure the structure of Figure 3 to have pivotal legs that are changeable from the deployed state that is shown to a folded storage position. In the unfolded state, as shown in Figure 3, the legs (112) and their free ends define a plane, and the mast (104) is perpendicular to that plane (Fig. 3).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kim, as applied to claim 1 above, and further in view of Merrill (US Pat. No. 3,861,629).
Regarding claims 3 and 4, the teachings of Kim differ from the current invention in that the LED light strings in his product are not taught to be attached to the legs’ free ends by coil spring biasing elements that maintain the light strings in tension. However, Kim does teach that the light strings, which are flexible, can connect to the legs with connecting mechanisms and connectors other than what is exemplified (par. 23, 30). Kim also refers to his stringers as “outer supports” and teaches that his outer supports provide structural stability (par. 20, 23). Merrill further teaches tensioning flexible cords that are intended to support a tree between the trunk and legs in a device for supporting a Christmas tree using tension springs in order to effectively connect the extremities of the legs with the trunk of the tree (i.e. or “mast”) to be supported via the set of cords (col. 3, ln. 51-62). As shown in Figure 2, Merrill’s tension springs (54) are coil springs (Fig. 2). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize coil springs (i.e. “biasing elements”) to attach the supportive stringers to the legs in Kim’s tree, wherein the springs maintain the stringers in tension, because Merrill teaches tensioning supportive cords for trees and discloses that coil springs are useful in effectively connecting the cords between the shaft of a tree and legs at the base of a tree, as is done with Kim’s tree, thereby providing support to the tree.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kim, as applied to claim 5 above, and further in view of Ahroni (US Pat. No. 4,736,282).
Regarding claim 6, as discussed above, the unlabeled disk that adjoins the top ends of Kim’s mast (104) and stringers (106) corresponds to the recited “receiver”. Kim’s teachings differ from the current invention in that his receiver is not described as donut shaped or as fitting over the top of the mast as instantly claimed. However, the stringers/light strings (106) in Figure 3 do extend downwardly from the structure (i.e. the unlabeled disk) corresponding in position to a “receiver” (Fig. 3). Ahroni further teaches a donut-shaped collar including a central opening for receiving a tree trunk or other pole-shaped structure that may be incorporated as a part of an ornamental tree top that is used to support a decorative light assembly (Abstract; col. 2, ln. 46-56; col. 4, ln. 27-30; claim 3; Figs. 1-3). As shown in Figures 3 and 4 and discussed by Ahroni, a light string is mounted into the collar by passing the string into a first opening (i.e. the collar is a “receiver”) at the perimeter of the collar, bending the string within the collar, and having the string exit at a second opening in the perimeter of the collar that is spaced art along the perimeter from the first opening (i.e. “the openings are spaced about a periphery of the receiver”) (Figs. 3, 4; col. 3, ln. 39-42). Ahroni’s collar is beneficial because it provides a simple and economical way of conveniently draping, arranging, and securing light strings on a Christmas tree or the like (col. 1, ln. 24-27; col. 3, ln. 63-66). Therefore, it would have been obvious to one of ordinary skill in the art to utilize Ahroni’s donut-shaped collar with a central opening as a receiver on the tree of Kim, wherein the top end of the mast inserts into the opening of the collar and wherein a light string (i.e. “stringer”) is received by the collar as claimed, because the collar provides a simple and economical way of conveniently draping, arranging, and securing light strings on a Christmas tree or other structure, allows for a cone-shaped Christmas tree to be assembled with a single light string (if desired), as shown in Ahroni’s Fig. 2, and is compatible with the structure described by Kim.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kim and, optionally, Merrill, as applied above, and further in view of Klein (US Pat. No. 5,673,893).
Regarding claim 8, the teachings of Kim differ from the current invention in that he does not teach including eyelets on the free ends of his tree’s legs, wherein the stringers are mounted to the eyelets with biasing elements. However, as discussed above, Kim teaches that the light strings, which are flexible, can connect to the legs with connecting mechanisms and connectors other than what is exemplified and it would have been obvious in view of Merrill, who generally discusses tree stands (Abstract), to utilize coil springs in such a connection. Klein also teaches a tree stand including coil springs and teaches attaching his coil springs to other portions of the structure using eyelets (col. 5, ln. 7-11). As shown in Figures 1 and 4, Klein’s eyelets (72) are involved in supporting a suspended canister (20), which supports the weight of a tree (Figs. 1, 4; col. 2, ln 10-13), thereby demonstrating that eyelets and springs can be used to form strong, mechanically robust connections. Klein also discloses that the materials used to make his product, which includes the eyelets, are low in cost, thereby making his product economically available to the buying public (col. 2, ln. 59-65). Accordingly, it would have been obvious to one of ordinary skill in the art to use eyelets to secure the coil spring biasing elements to the free ends of the legs in the product of Kim and Merrill because Klein teaches that eyelets are a useful and effective means of securing coil springs to other structures in products, such as products in the Christmas tree art, that are low-cost and economically available to the public and demonstrates that such connections are strong and mechanically robust. It also would have been obvious to one of ordinary skill in the art to include eyelets at the free ends of the legs on Chen’s structure and to use biasing elements to secure the stringers to the eyelets on the free ends of the legs because Klein teaches using coil springs (i.e. biasing elements) and eyelets to form connections between structures in the Christmas tree art, demonstrates that such connections are strong and mechanically robust, and discloses that such components are low in cost.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights