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 .
Drawings
The drawings were received on 27 August 2026. These drawings are acceptable.
The drawings are objected to because no single reference character may be used for a given part and a modification of such part. MPEP 608.02(e). See at least 160 which has been used to designate multiple different gaskets between figures 26 and 27.
The drawings are objected to as failing to comply with 37 C.F.R. 1.84(q) because lead lines must originate in the immediate proximity of the reference character and extend to the feature. MPEP 608.02 V. See at least 124, 126, 128 of figure 4.
Specification
The disclosure is objected to because reference character “142” has been used to designate second tapered side and second tip side.
The disclosure is objected to because reference character “104” has been used to designate second or rear housing and reference character.
The disclosure is objected to because reference character “102” has been used to designate first or front housing and reference character.
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 1-13 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.
The term “short” in claim 1 is a relative term which renders the claim indefinite. The term “short” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term length has been rendered indefinite by the use of the term short.
The term “extended” in claim 1 is a relative term which renders the claim indefinite. The term “extended” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term length has been rendered indefinite by the use of the term extended.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 5-6, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (US 20230218979).
Claim 1: Lee discloses a protective apparatus 100 (holder) for a collectible item comprising: a front panel 300 (first housing section) having a base wall and an elevated edge 320 (outer wall) extending from the base wall and defining a holder perimeter; a rear panel 200 (second housing section) comprising a base wall situated within the holder perimeter; a plurality of partition walls extending between the base wall of the rear panel 200 (second housing section) and the base wall of the front panel 300 (first housing section) to define a receiver space, the partition walls located inwardly of the elevated edge 320 (outer wall); wherein a first pair of the plurality of partition walls has an extended length LE measured therebetween and a second pair of the plurality of partition walls has a short length LS measured therebetween; and wherein the extended length LE is longer than the short length LS (see annotated fig. 2A and 3A below and fig. 1A).
When a collectible item is placed within the receiver space of Lee a max shift of how far the collectible item moves within the receiver space inherently is 15-thousandths of an inch or less along the short length LS, along the extended length LE, or along both the short length LS and the extended length LE as the prior art discloses a structurally identical protective apparatus 100 to the inventions claimed holder. If there is any difference, the difference must be minor. The burden is shifted to applicants to show that a max shift of how far the collectible item moves within the receiver space cannot be 15-thousandths of an inch or less along the short length LS, along the extended length LE, or along both the short length LS and the extended length LE when a collectible item is placed within the receiver space. Otherwise a prima facie case of anticipation has been established.
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Claim 5: Lee discloses wherein the front panel 300 (first housing section) is made from polycarbonate or any material [see P. 0075] and later discloses the using either polycarbonate or thermoplastic polyurethane [see P. 0122], such that Lee discloses wherein the front panel 300 (first housing section) is made from thermoplastic polyurethane (TPE material).
Claim 6: Lee discloses wherein the rear panel 200 (second housing section) is made from polycarbonate or any material [see P. 0075] and later discloses the using either polycarbonate or thermoplastic polyurethane [see P. 0122], such that Lee discloses wherein the front panel 300 (first housing section) is made from thermoplastic polyurethane (TPE material). Additionally, Lee discloses that the supporting members of the rear panel 200 (second housing section) may be composed of thermoplastic polyurethane (TPE material) (see P. 00122).
Claim 20: Lee discloses a protective apparatus 100 (holder) for a collectible item comprising: a front panel 300 (first housing section) having a base wall and an elevated edge 320 (outer wall) extending from the base wall and defining a holder perimeter defining a rectangular shape; a rear panel 200 (second housing section) comprising a base wall situated within the holder perimeter; a plurality of partition walls extending between the base wall of the rear panel 200 (second housing section) and the base wall of the front panel 300 (first housing section) to define a receiver space, the partition walls located inwardly of the elevated edge 320 (outer wall); wherein a first pair of the plurality of partition walls has a length LE measured therebetween and a second pair of the plurality of partition walls has a length LS measured therebetween, and wherein LE is greater than LS (see annotated fig. 2A and 3A above and fig. 1A).
When a collectible item having an outer perimeter is placed within the receiver space of Lee a max shift of how far the collectible item moves within the receiver space inherently is 15-thousandths of an inch or less along the length LS, along the length LE, or along both the length LS and the length LE as the prior art discloses a structurally identical protective apparatus 100 to the inventions claimed holder. If there is any difference, the difference must be minor. The burden is shifted to applicants to show that a max shift of how far the collectible item moves within the receiver space cannot be 15-thousandths of an inch or less along the length LS, along the length LE, or along both the length LS and the length LE when a collectible item with an outer perimeter is placed within the receiver space. Otherwise a prima facie case of anticipation has been established.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20230218979) as applied to claim 1 above, and further in view of Manninen (US 12542074).
Claim 2: Lee discloses the claimed invention except for a projection on at least each of two inner corners of the first housing section.
Manninen teaches an insert 100 and cover 300 for displaying a collecting card, wherein the cover 300 has corners 330, 340, 350, & 360 with snaps 331, 341, 351, & 361 resulting in projections on the inner corners and the insert 100 has corners 130, 140, 150, & 160 with snaps 131, 141, 151, & 161 which matingly engage with snaps 331, 341, 351, & 361 and result in projections on the outer corners (see fig. 13, 15, & 16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the front panel 300 (first housing section) to have snaps 331, 341, 351, & 361 at its inner corners and the rear panel 200 (second housing section) to have snaps 131, 141, 151, & 161 at its outer corners which matingly engage with snaps 331, 341, 351, & 361, as taught by Manninen, in order to permit the front panel 300 (first housing section) and rear panel 200 (second housing section) to be positively restrained in position for laser welding and to permit removable attachment when tamper evidence is not desired.
Claim 3: The combination discloses a projection, due to the snaps 131, 141, 151, & 161, on at least each of two outer corners of the rear panel 200 (second housing section) (see fig. 13 ‘074).
Claim 4: The combination discloses wherein the at least each of two inner corners of the front panel 300 (first housing section) and the at least each of two outer corners of the rear panel 200 (second housing section) engage.
Claim 9: The combination discloses wherein the rear panel 200 (second housing section) comprises a perimeter member 220 (perimeter ledge) located adjacent an inner surface of the elevated edge 320 (outer wall) (see fig. 2A & 9).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20230218979) and Manninen (US 12542074) as applied to claim 9 above, and further in view of Barol (US 2302933).
Claim 10: The combination discloses the claimed invention except for a plurality of spaced apart ribs located between the perimeter ledge and the inner surface of the outer wall.
Barol teaches a stopper 10 having a portion 11 adapted to enter a tube 6 and having projecting ribs 12 (ribs) which contact the inner surface of the tube 6 and slightly compress (see fig. 3 and C. 2 L. 31-34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the perimeter member 220 (perimeter ledge) to have projecting ribs 12 (ribs) which slightly compress upon insertion of the rear panel 200 (second housing section) within the front panel 300 (first housing section), as taught by Barol, in order to better restrain the rear panel 200 (second housing section) and front panel 300 (first housing section) together.
Claim 11: The combination discloses wherein each projecting rib 12 (rib) of the plurality of spaced apart projecting ribs 12 (ribs) comprises a first thickness prior to locating the rear panel 200 (second housing section) within the holder perimeter and a second thickness after placement of the rear panel 200 (second housing section) within the holder perimeter, and wherein second thickness is less than the first thickness.
Claim(s) 7-8 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20230218979) further in view of Leblanc (CA 2935643).
Claim 7: Lee discloses that the front panel 300 (first housing section) and rear panel 200 (second housing section) can be made from any material (see P. 0075).
Lee does not explicitly disclose that the first housing section is made from a copolyester material.
Leblanc teaches using an amorphous copolyester of Eastman Copolyester Tritan TX1501HF and an oxygen scavenging polyester concentrate to make a thermoplastic workpiece which is heat-resistant, transparent, and has a low gas permeability (see first paragraph page 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the protective apparatus 100 (holder) and therefore the front panel 300 (first housing section) out of amorphous copolyester of Eastman Copolyester Tritan TX1501HF and an oxygen scavenging polyester concentrate, as taught by Leblanc, in order to provide good heat-resistance and low gas permeability while maintaining transparency and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 8: The combination discloses wherein the copolyester material is an Eastman TRITAN copolyester TX1501HF material.
Claim 23: Lee discloses that the front panel 300 (first housing section) and rear panel 200 (second housing section) can be made from any material (see P. 0075).
Lee does not explicitly disclose that the first and second housing sections are made from a copolyester material.
Leblanc teaches using an amorphous copolyester of Eastman Copolyester Tritan TX1501HF and an oxygen scavenging polyester concentrate to make a thermoplastic workpiece which is heat-resistant, transparent, and has a low gas permeability (see first paragraph page 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the protective apparatus 100 (holder) and therefore the front panel 300 (first housing section) and rear panel 200 (second housing section) out of amorphous copolyester of Eastman Copolyester Tritan TX1501HF and an oxygen scavenging polyester concentrate, as taught by Leblanc, in order to provide good heat-resistance and low gas permeability while maintaining transparency and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 24: The combination discloses wherein the copolyester material is an Eastman TRITAN copolyester TX1501HF material.
Claim(s) 12-13 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20230218979) further in view of Deese (US 4043477).
Claim 12: Lee discloses that the protective apparatus 100 (holder) can be used to protect coins (see P. 0002).
Lee does not disclose a gasket located in the receiver space, the gasket having an outer perimeter and an opening with an inner perimeter.
Deese teaches a display device having a base 10 with an inner short upstanding wall 14 forming an outer edge of a chamber 16, an insert 60 (gasket) made of a soft plastic which will not damage a coin and having a circular edge 66 (opening) sized to fit a coin, wherein the insert 60 (gasket) and coin are positioned in the chamber 16 (see fig. 2 and C. 4 L. 12-13 & 24-29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the protective apparatus 100 (holder) to have an insert 60 (gasket) located in the receiver space and a coin positioned within a circular edge 66 (opening) of the insert 60 (gasket), as taught by Deese, in order to protect and display a coin without damaging its rim.
Claim 13: The combination discloses a coin (collectible item) located in the circular edge 66 (opening) of the insert 60 (gasket) (see fig. 2 and C. 4 L. 12-13 & 24-29 ‘477).
Claim 21: Lee discloses that the protective apparatus 100 (holder) can be used to protect collectible cards or coins (see P. 0002).
Lee does not disclose a gasket comprising a cut-out or the gasket being located in the receiver space.
Deese teaches a display device having a base 10 with an inner short upstanding wall 14 forming an outer edge of a chamber 16, an insert 60 (gasket) made of a soft plastic which will not damage a coin and having a circular edge 66 (cut-out) sized to fit a coin, wherein the insert 60 (gasket) and coin are positioned in the chamber 16 (see fig. 2 and C. 4 L. 12-13 & 24-29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the protective apparatus 100 (holder) to have an insert 60 (gasket) located in the receiver space and having a cut-out sized to hold a collectible card, as taught by Deese, in order to protect and display a collectible card without damaging its rim.
Claim 22: The combination discloses a collectible card having an image and wherein the image is viewable through the cut-out of the insert 60 (gasket) (see fig. 2 and C. 4 L. 12-13 & 24-29 ‘477 and fig. 1C ‘979).
Examiner notes that there is no evidence of a functional relationship between the printed matter (image) and the associated substrate (collectible card).
Response to Arguments
The drawing objections in paragraphs 4, 5, and 7 of office action dated 14 July 2026 are withdrawn in light of the amended disclosure filed 27 August 2026.
The specification objections in paragraphs 9-11 and 15 of office action dated 14 July 2026 are withdrawn in light of the amended disclosure filed 27 August 2026.
The 35 U.S.C. § 112 rejections in paragraph 20 of office action dated 14 July 2026 are withdrawn in light of the amended claims filed 27 August 2026.
Applicant's arguments filed 27 August 2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that reference character 160 has been used for an insert or gasket but within the generic category for gasket 160 different features of the gasket have different reference characters and the modification of the cut-outs have different reference characters, the Examiner responds that it is clear from the original figures, their associated description, and applicant’s arguments that the gaskets shown in figures 26 and 27 are not identical. While both figures depict gaskets, they are distinct gaskets and therefore may not be identified by the same reference character. This objection can be overcome by modifying one of the figures to identify its gasket with reference character 160’ or 160a.
In response to applicant’s argument that the lead lines in the replacement drawings are proper, the Examiner responds that the lead lines associated with at least reference characters 124, 126, and 128 of figure 4 do not extend to the disclosed features.
In response to applicant’s argument that the specification provides adequate enablement for one of ordinary skill in the art to understand the terms “extended length” and “short length” as P. 0015 discloses that the “receiver space 108 is also generally rectangular in shape defined by an extended length LE measured along the long axis and a short length LS measured along the short taxis”, that one of ordinary skill in the art with a basic understanding of geometry would understand this to mean that the rectangle does not have four equal-length sides as it would be contradictory which rules out the possibility of a square and therefore the only other possibility is that one pair of opposite sides (the first pair of partition walls) has a length that is longer than the other pair of opposite sides (the second pair of partition walls), the Examiner responds that this disclosure does nothing to make either of “extended” or “short” definite. Both “extended” and “short” are relative terms. Nowhere does the original disclosure provide any direction as to the metes and bounds of either term. Is short 10 mm, 3 cm, 1 kilometer? One of ordinary skill in the art would not be reasonably apprised of the scope of the short length or the extended length. These rejections may be overcome by amendment to shorter length and longer length.
In response to applicant’s argument that the Office merely asserts that “the collectible item moves within the receiver space ‘inherently’ [by] 15-thousandths of an inch or less… If there is any difference, the difference must be minor” and that this assertion does not meet the minimum threshold of showing that the allegedly “inherent” characteristic necessarily flows from the teachings of the applied prior art which could use mylars to implement a larger tolerance, thereby reducing precision requirements and manufacturing costs and that the Lee reference does not mention restricting movement to minimize scratches and therefore as the Office fails to meet the minimum threshold as required by MPEP 2112 the assertion that Lee’s invention “inherently” teaches the same limitation as claim 1 is insufficient, the Examiner replies that the establishment of inherency does not merely assert that the claimed functionality is inherent. The Examiner compared the claimed structure to that of Lee and established that the prior art discloses a structurally identical protective apparatus 100 to the inventions claimed holder. As the prior art protective apparatus 100 is structurally identical to the inventions claimed holder, they will function identically. Therefore, the claimed functionality must be present in Lee.
In response to applicant’s argument that FIG. 7B of Lee teaches a larger max shift value than that of claim 1 as Lee caps the upper limits of the length and width of the collectible space to [(90 mm + 0.15 mm) x (64.5 mm + 0.15 mm)] where typical card sizes are 88.9 mm x 63.5 mm and therefore the max lengthwise shift value of Lee is (90 mm + 0.15 mm – 88.9 mm =) 1.25 mm or ~0.049 in. and the max widthwise shift value of Lee is (64.5 mm + 0.15 mm - 63.5 mm =) 1.15 mm or ~0.045 in. which are 3x greater, the Examiner responds that claim 1 requires the functionality of a max shift of how far some collectible item moves within the receiver space be 15-thousandths of an inch or less along the short length LS, along the extended length LE, or along both the short length LS and the extended length LE when that collectible item is placed within the receiver space. The claim does not require that this functionality must occur with a typical card and likewise does not require that this functionality must occur with a card having the specific dimensions of 88.9 mm x 63.5 mm. Applicant’s equations argue against one specific use case and cannot provide evidence that the functionality cannot occur in, does not occur in, and is not inherent to Lee. In fact, according to applicant’s equations, a collectible item having the dimension of 89.769 mm x 63.269 mm would meet the claimed functionality and supports the Office’s stance that Lee inherently meets the claimed limitation.
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 ALLAN D STEVENS whose telephone number is (571)270-7798. The examiner can normally be reached Monday-Friday 12-8 ET.
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, Orlando E. Aviles can be reached at (571)270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLAN D STEVENS/Primary Examiner, Art Unit 3736
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