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 .
Claim Objections
Claims 1, 5, and 10 are objected to because of the following informalities:
Claim 1, line 7, change “dried” to --solid--;
Claim 5, line 1, change “a” to --the--; and
Claim 10, line 1, before “ashes” insert --the-- and before “cremated” insert --the--.
Appropriate correction is required.
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, 2, 3, 4, 5, 6, 7, 8, 9, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 1, 2, 3, 4, 5, 6, 7, and 1, respectively of U.S. Patent No. 12,220,360. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the instant application and claim 1 of the related patent each recite: A method of producing a solid cremation stone, comprising: collecting ashes from cremated animal remains; mixing the ashes with water and at least one binder in a predetermined ratio to produce a mixture; pouring the mixture into a mould; drying the mixture while in the mould to produce the solid stone; and sanding the dried stone to smooth a surface of the stone.
Dependent claims 2, 3, and 10 of the instant application also read on independent claim 1 of the related patent.
Dependent claims 4-9 of the instant application are identical to dependent claims 2-7, respectively, of the related patent.
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, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zimmerman et al. (US#2009/0077779) in view of Storts (US#2020/0383861).
Regarding claims 1 and 6, Zimmerman discloses in [0015] a method of producing a solid cremation stone (concrete product), comprising: providing ashes from cremated animal ([0002] human (loved one) or pet) remains; mixing the ashes with water and at least one binder (cement) in a predetermined ratio to produce a mixture; pouring the mixture into a mould; and drying the mixture (allowing curing) while in the mould to produce the solid stone.
Regarding claim 1, Zimmerman fails to disclose sanding the dried stone to smooth a surface of the stone. However, as evidenced by Storts, such a method step is known in the analogous art, see Fig. 4 and [0044], wherein step 470 comprises sanding the cremated remains product 100 after drying (step 450) for smoothing a surface thereof. Therefore, as evidenced by Storts, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zimmerman by including the method step of sanding the dried stone to smooth a surface of the stone. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of the method step of sanding the dried stone to smooth a surface of the stone would enhance the aesthetic appearance of the stone.
Regarding claim 2, Zimmerman discloses vibrating the mould to minimize bubbles ([0023], lines 7-10 vibrating the mold to compact the mixture, i.e. minimize bubbles).
Regarding claim 4, Zimmerman discloses coating the stone with a sealer and inherently allowing drying of the sealer thereafter ([0014], lines 20-23) and applying at least one coat of lacquer ([0014], lines 18-20, colorant applied to the surface).
Regarding claims 7 and 9, Zimmerman discloses wherein the binder is a biopolymer, namely white Portland cement ([0036], lines 19-25).
Regarding claim 8, Zimmerman discloses the biopolymer binder being white Portland cement as opposed to calcium or sodium alginate. However, the specific biopolymer binder material is not critical to the applicant’s invention. Page 4, lines 19-21, of the specification of the instant application concedes, “Exemplary biopolymers may include one or more of calcium or sodium alginate; sorel cement ("magnesia" or magnesium oxide); silica; pozzolanic or white Portland cement.” Where the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement, the particular arrangement is deemed to have been a design consideration within the skill of the art. In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975). It would have been an obvious design consideration to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zimmerman by utilizing calcium or sodium alginate as the biopolymer binder for the inherent material property advantages thereof as the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable Zimmerman et al. (US#2009/0077779), in view of Storts (US#2020/0383861), and further in view of Vogel et al. (US#7266866).
Regarding claim 5, Zimmerman fails to disclose laser etching a surface of the solid stone. However, as evidenced by Vogel, such a method step is known in the analogous art, see col. 3, lines 59-60, and memorial product comprising the step of laser etching (engraving) a surface for aesthetic purposes. Therefore, as evidenced by Vogel, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to modify Zimmerman by including the method step of laser etching a surface of the solid stone. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of this method step would enhance the aesthetic finish of the stone.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable Zimmerman et al. (US#2009/0077779), in view of Storts (US#2020/0383861), and further in view of Yardley (US#2002/0025392).
Regarding claim 10, Zimmerman fails to disclose grinding the ashes before mixing the ashes with water. However, as evidenced by Yardley, such a method step is known in the analogous art, see [0008], lines 1-3, and memorial product comprising an initial grinding step for ashes to produce a uniform powder for better mixing. Therefore, as evidenced by Yardley, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zimmerman by including the method step of grinding the ashes before mixing the ashes with water. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of the method step of grinding the ashes before mixing the ashes with water help to produce a uniform powder for better mixing.
Allowable Subject Matter
Upon filing of an approved terminal disclaimer overcoming the above double patenting rejection, claim 3 would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 3, the prior art of record fails to disclose or suggest the method as claimed in detail, specifically creating and applying a slurry to fill surface deviations on the stone after the mixture is dried.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM L MILLER whose telephone number is (571)272-7068. The examiner can normally be reached 9:30 - 6:00 PM.
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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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WILLIAM L. MILLER
Primary Examiner
Art Unit 3677
/WILLIAM L MILLER/Primary Examiner, Art Unit 3677