DETAILED ACTION
Double Patenting
Claims 1, 5, 13, 18, and 21 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, 6, and 11 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, 5, 6, 8, 11, 13, 18, and 21 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 some openings at the perimeter of the collar, bending the string within the collar, and having the string exit from other openings in the perimeter of the collar that are spaced apart around the circumference 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 the copending claims, wherein the second end of the mast inserts into the opening and wherein light strings (i.e. “stringer”) are 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.
With respect to the instant claim requirement that the stringers may be detached and rolled or folded for storage, it is noted that the flexible stringers of the copending application meet the claim requirement because they are capable being used as claimed, particularly if the correct tools are employed for the recited detachment.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5-8, 12, 13, 18, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24, 26, 28, 31, 33 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, 31, and 33 of the copending application recite a product that explicitly has or inherently possesses every feature of instant claims 1, 5-8, 12, 13, 18, and 21 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.
With respect to the instant claim requirement that the stringers may be detached and rolled or folded for storage, it is noted that the flexible stringers of the copending application meet the claim requirement because they are capable being used as claimed, particularly if the correct tools are employed for the recited detachment.
Claims 1, 5, 7-9, 12, 13, 17, 18, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11, 14-18, 21, and 22 of U.S. Patent No. 12,042,071 in view of Kim. Claims 6 and 11 are rejected in view of claims 1, 9-11, 14-18, 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, 5, 7-9, 12, 13, 17, 18, and 21 of the copending application recite a product that explicitly has, inherently possesses, or renders obvious due to overlapping numerical ranges (see MPEP 2144.05) every feature of instant claims 1, 5-9, 11-13, 17, 18, and 21 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 claims 6 and 11, 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 some openings at the perimeter of the collar, bending the string within the collar, and having the string exit at other openings spaced around the circumference of the collar (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 strings (i.e. “stringer”) are 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.
With respect to the instant claim requirement that the stringers may be detached and rolled or folded for storage, it is noted that the flexible stringers of the patent meet the claim requirement because they are capable being used as claimed, particularly if the correct tools are employed for the recited detachment.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, claim 18 recites that “the plurality of first flexible stringers includes first flexible stringers extending between each of the legs' free ends and the top of the mast” (lines 1-2) and “the plurality of second stringers includes second flexible stringers” (lines 3-4), and no other limitations. The claim appears to fail to further limit claim 1 because claim 1 already recites “a plurality of first flexible stringers extending between the legs' free ends and the top of the mast” (lines 6-7) and “a plurality of second flexible stringers extending from respective ones of the legs at a location spaced from the legs' free ends to the top of the mast” (lines 10-11). Appropriate correction is required. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 5, 7, 9, 10, 12, 13, 17-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US PG Pub. No. 2008/0283717) in view of Merrill (US Pat. No. 3,861,629).
Regarding claims 1, 5, 13, 18, 19, and 21, 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). Kim further discloses that the stringers may be made of a flexible material, such as an electrical wire with insulation (par. 23).
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. Kim further teaches that stakes or clips may be used to hold the legs to the ground (par. 34), thereby locking them in the unfolded state (i.e. the legs of Kim’s tree are lockable in the unfolded state).
The teachings of Kim further differ from the current invention in that the LED light strings in his product are not taught to be removably 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, and Merrill teaches that the tension springs may be attached to adjacent supportive legs, which may be by a hook-on arrangement (Fig. 2; col. 3, ln. 61-66). 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 attach to the legs in a hook-on arrangement, i.e. which is detachable, and maintain the stringers in tension, because Merrill teaches tensioning supportive cords for trees and discloses that hooked-on 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.
The requirement that the first and second flexible stringers can be detached rolled or folded toward the top of the mast for storage is a statement of intended use. The stringers in Kim and Merrill’s product meet this limitation because they are flexible and removably attached to the legs and, therefore, are capable of being used as claimed. Kim teaches that the outer supports, which corresponds to the recited “stringers”, can be permanently connected to the receiver at the top of the mast (par. 35). Therefore, the stringers will remain connected to the top of the mast if they are rolled or folded.
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).
Regarding claims 9 and 10, as discussed above, it would have been obvious to use spring biasing elements to tension the first and second stringers in Kim and Merrill’s product when it is in its unfolded/deployed state. Kim further teaches that stakes or clips (i.e. any one of which may be referred to as a “first locking member”, “second locking member”, “third locking member” etc.) may be used to hold the legs to the ground (par. 34). Therefore, the stake or clip “locking members” lock the legs in the unfolded state and placing the first and second stringers under tension.
Regarding claim 12, as discussed above, it would have been obvious to use spring biasing elements to tension the first and second stringers in Kim and Merrill’s product when it is in its unfolded/deployed state. As shown in Figures 1-4 and discussed by Kim, the mast (104) of Kim’s tree includes multiple telescoping sections (104a-c) and is extensible from a collapsed state to an extended state (Figs. 1-4; par. 19, 26), which also corresponds to the unfolded/deployed state of the tree, as a whole. Therefore, the first and second stringers in Kim and Merrell’s structure are tensioned when the telescopic mast is in its extended state.
Regarding claim 17, Kim’s exemplified tree with first and second stringers (inner and outer item 106) appears to have eight legs (112; note: one leg is hidden by the mast; i.e. the “number of legs is between 3 and 16”) (Fig. 3).
Claims 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim and Merrill, as applied to claim 5 above, and further in view of Ahroni (US Pat. No. 4,736,282).
Regarding claims 6 and 11, 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 and a series of openings arranged around the collar’s circumference 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 can be mounted into the collar by passing the string into some openings (i.e. the collar is a “receiver”) around the circumference of the collar and having the string exit at other openings arranged around the circumference of the collar (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 the stringers are 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, 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 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.
Claims 14-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim and Merrill, as applied above, and further in view of Leung (US PG Pub. No. 2017/0257924).
Regarding claims 14 and 20, as discussed above, Kim teaches an artificial cone tree with first and second stringers that are LED light strings. Kim further teaches that the tree may include an electrical wire and an electrical outlet connector to supply power to the lighting components of the stringers (par. 23).
The teachings of Kim differ from the current invention in that the LED light strings/stringers are not taught to include a controller for controlling the sequence, timing, or color of the lights and in that the light strings or a power supply including an AC/DC or DC/DC convertor. However, Leung teaches that lighting devices for trees that provide a changing illumination pattern provide interesting and pleasing illumination variations (par. 5). One of such devices Leung discloses includes one or more decorative LED light strings that are in communication with a controller that allows a user to select different light sequences, which may include variations in timings and colors of the lights (par. 8, 9, 29). The strings my also include a power cord to connect power from an outlet and a powder adapter (i.e. “power supply”) that includes an AC/DC convertor to provide powder to the controller (par. 31). Leung’s decorative light string assembly is advantageous because it can be installed on a tree and allows users to select and display various illumination sequences (par. 7, 27). Therefore, it would have been obvious to one of ordinary skill in the art to configure Kim and Merrell’s product such that its light strings are connected to/include a power cord, power adapter (i.e. “power supply”) having an AC/DC convertor, and controller that can be used to adjust the color, sequence, and timing of light sequences, such as that taught by Leung, in order to achieve an interesting and pleasing decorative effect by providing pleasing illumination variations that can be controlled by a user and powered by a local power source (e.g. an electrical outlet), including from an electrical outlet that supplies AC electricity.
Regarding claims 15 and 16, the teachings of Kim also differ from the current invention in that the LED strings on his product are not taught to be wired in a parallel configuration. However, Leung teaches that light strings may be wired in a parallel configuration so that missing lamps will not interrupt power to the other portions of the string (par. 30). Therefore, it would have been obvious to one of ordinary skill in the art to configure the light strings such that they are wired in a parallel configuration that so that missing lamps will not interrupt power to the other portions of the string (par. 30).
Response to Arguments
Applicant's arguments filed June 4, 2026 have been fully considered but they are not persuasive.
Applicant has argued that Terminal Disclaimers were already filed for the patent documents cited in the double patenting rejections in the previous Office Action. However, no such Terminal Disclaimers are in the file wrapper of the current application. Applicant is reminded that if multiple conflicting patents and/or pending applications are applied in nonstatutory double patenting rejections made in a single application, then prior to issuance of that application, it is necessary to disclaim the terminal part of any patent granted on the application which would extend beyond the expiration date of each one of the conflicting patents and/or applications. A single Terminal Disclaimer based on common ownership may be filed in which the term disclaimed is based on all the conflicting, commonly owned nonstatutory double patenting references. Each one of the commonly owned conflicting nonstatutory double patenting references must be included in the terminal disclaimer to avoid the problem of dual ownership of patents to patentably indistinct inventions in the event that the patent issuing from the application being examined ceases to be commonly owned with any one of the double patenting references that have issued or may issue as a patent. Therefore, a Terminal Disclaimer is required for the conflicting references even if Terminal Disclaimers disclaiming the current application have already been filed in prosecution of the conflicting references. See MPEP 804.02 (II and IV).
Applicant has argued that Kim’s “outer supports”, which he teaches provide structural stability, are in contrast to the claimed “flexible” light strings. However, as discussed above, Kim explicitly teaches that the outer supports can be flexible light strings.
Applicant has further argued that the claims, as now amended, are distinguished over Kim because Kim does not each detachable stringers or tensioned stringers that form a “continuous, spring-tensioned network” where the first and second stringers cooperate to distribute load across various attachment points when the tree is in the deployed state. However, although the stringers are claimed to be under tension and detachable, no such “continuous, spring tensioned network” is claimed. The purported cooperative load distribution is also not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, it would have been obvious to use springs with detachable hook-on connections to place the light strings in Kim’s product under tension in view of Merrill’s teachings for the reasons discussed above.
Applicant has further argued that Kim does not teach detaching the stringers from the legs and folding or rolling the stringers for storage. However, the recitations of the stringers being foldable or rollable for storage are statements of intended use. Kim’s flexible light strings meet the requirement because they are capable of being folded or rolled for storage. As noted above, it would have been obvious to configure the stringers to be connected to the legs in a detachable manner in view of Merrill’s teachings.
Applicant has further argued that Merrill does not teach a dual stringer system, detachable stringers, or folding/rolling stringers for storage. However, the claims are not based Merrill alone, but rather on applying Merrill’s teachings to Kim’s product. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). It would have been obvious to configure the stringers in Kim’s product to be connected to the legs in a detachable manner in view of Merrill’s teachings for the reasons discussed above. Kim and Merrill’s stringers meet the intended use requirements of being foldable or rollable for storage because they are capable of being used as claimed.
Applicant has also argued that incorporation of Merrill’s teachings into Kim’s product would require substantial redesign and would not be a predictable substitution. However, Applicant has presented no evidence that one of ordinary skill in the art would be incapable of combining the teachings of Merrill and Kim, particularly as the proposed combination effectively only changes how the stringers in Kim’s tree are connected to the legs from one simple mechanical connection type to another type of simple mechanical connection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights