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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 11 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 3. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 11, applicant claims “a trim”. Examiner notes that “trim” is disclosed as part 13, which is shown only in figure 4. “Edge” is disclosed as part 34, which is only shown in figure 2. Part 34 in figure 2, and part 13 in figure 4, seem to be identical in scope. The record is not clear as to the difference between “trim” and “edge”.
Should applicant intend that “trim” is an empty space between the adhesive area and the edge as shown in figure 2, examiner notes that there is no “trim” on the upper surface, since the upper surface is devoid of adhesive. Further, applicant should see cited reference Swaim figure 4. Should applicant assert that “trim” means a rounded edge, applicant discloses only one rounded edge. Applicant does not disclose two rounded edges (one for the external surface, and one for the internal surface) in any figure.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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.
Claim(s) 1-9, 11-14 is/are rejected under 35 U.S.C. 102a1 as being anticipated by 2010/0229356 LaRocque.
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Regarding claim 1, LaRocque discloses a necklace (necklace 904, figure 9a) anchor (figure 4) comprising: a base 102; an attachment bar 104; a trim (see 112b above, indicated in annotated figure 4); and an adhesive layer (“adhesive underside of the base 102” [0043]).
Regarding claim 2, LaRocque discloses the necklace anchor as claimed in claim 1, comprising: the base having an external surface (annotated, with the attachment bar 104); and the base having an internal surface (the “adhesive underside” [0043]).
Regarding claim 3, LaRocque discloses the necklace anchor as claimed in claim 2 comprising: the internal surface having an outer edge (oval circumference); and the external surface having an outer edge (oval circumference).
Regarding claim 4, LaRocque discloses the necklace anchor as claimed in claim 2 comprising the trim (same as edge) being perimetrically positioned around the outer edge of the external surface; and the trim being perimetrically positioned the outer edge of the internal surface (edge and trim are integral, and all edges/trim of LaRocque are ovular).
Regarding claim 5, LaRocque discloses the necklace anchor as claimed in claim 2 comprising: the trim being positioned between the external surface and the internal surface the external surface (in the same location as disclosed).
Regarding claim 6, LaRocque discloses the necklace anchor as claimed in claim 2, comprising: the attachment bar 104 being centrally positioned on the external surface (as shown in figure 4).
Regarding claim 7, LaRocque discloses the necklace anchor as claimed in claim 2 comprising: the adhesive layer [0043] being coated on the internal surface of the base 102 (as discussed in [0043]).
Regarding claim 8, LaRocque discloses the necklace anchor as claimed in claim 1, comprising: the attachment bar 104 having a first end a second end (as shown in annotated figure 4); and the external surface having an upper half a lower half (halves split as indicated by the paper backing 400).
Regarding claim 9, LaRocque discloses the necklace anchor as claimed in claim 8, comprising: the first end being attached to the upper half of the external surface (because the split of the paper backing is between the ends, as shown in figure 4); and the second end being attached to the lower half of the external surface.
Regarding claim 11, Please see claim 3.
Regarding claim 12, please see claims 4 and 5.
Regarding claim 13, please see claims 6 and 7.
Regarding claim 14, please see claims 8 and 9.
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) 10 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over LaRocque as applied to claims 1-9, 11-14 above, and further in view of 1528882 Kennerly.
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Regarding claim 10, LaRocque discloses the necklace anchor as claimed in claim 8 comprising: the attachment bar attached at both ends to the base. LaRocque does not include the decorative securement washer between each end and the base.
Kennerly discloses an “anchor” (figure 3) having a base a, adhesive b, an attachment bar c, and a securement washer between the fastener c and the base a, as annotated in figure 3.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include an extra layer between the attachment bar and the base, as is old and well known taught by Kennerly, to the known anchor with a fastener and a base as taught by LaRocque, as this does not affect the form, function, or use of the base of LaRocque, the attachment bar of LaRocque, or the anchor of LaRocque. Examiner contends that the application of a single, or plural, washers, is for strictly aesthetic purposes, and has no function. Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I). Examiner contends that these (having or not having washers) 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 15, please see claims 10 and 11.
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