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 .
Election/Restrictions
Applicant's election with traverse of invention I in the reply filed on 7/16/26 is acknowledged. The traversal is on the ground that there would be no serious search or examination burden because the method and kit claims do not require separate classification, separate status of the art or different field of search. This is not found persuasive because the method claims are directed to a distinct method of teaching students to jewel, whereas the product claims are directed to the kit itself. The claims therefore require separate search and examination for different subject matter.
The requirement is still deemed proper and is therefore made FINAL. Claims 19-20 have been withdrawn from further consideration.
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.
Claim 4 is 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.
Claim 4 recites the limitation "the colorless pencil". There is insufficient antecedent basis for this limitation in the claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5, 7-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Perrier (US 11,772,414) in view of Gupta (US 2005/0178693) further in view of Determan (US 2009/0229732).
Regarding claim 1, Perrier (figs. 1-2 and col. 4,lines 61-64) discloses a diamond painting kit for jeweling, the kit comprising:
a plurality of containers 42, the plurality of containers each containing a unique color of the plurality of diamond beads 40;
a drawing sheet 22;
a utensil 50; and
a double-sided mounting film 30 and
diamond beads 40.
Perrier fails to disclose:
a housing;
the double sided mounting film being optically clear.
However, Gupta teaches an art kit having:
a housing 10;
a plurality of containers 20 containing beads within the housing (fig. 4).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to provide Perrier’s diamond art kit with the organized container of Gupta, to facilitate organized storage and selection of differently colored materials used to create the art work.
Regarding the double-sided mounting film being optically clear, Determan teaches a clear double sided mounting film 12 (fig. 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the double-sided mounting film of the modified Perrier, clear, to permit the underlying image to remain visible.
Regarding claim 2, the modified Perrier further discloses the optically clear double-sided mounting film comprising an optically clear mounting adhesive (Determan abstract).
Regarding claim 3, Perrier further discloses the utensil 50 being configured to grip a single diamond bead from the plurality of diamond beads, the utensil comprising:
a shaft ;
a grip 52 surrounding the shaft; and
a tip 54 at a first end of the shaft, the tip being conical in shape with an aperture at a periphery of the tip, and the tip tapering to a vertex connected with the first end of the shaft.
Regarding claim 5, Perrier further discloses a wax shape 56, and a bead tray 46, wherein the bead tray 46 funnels toward a first end of the bead tray to a width that can accommodate no more than the combined width of two diamond beads side-by-side (fig. 1).
Regarding claim 7, Perrier further discloses the drawing sheet having a premade image 28 thereon.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have made the drawing sheet of the modified Perrier, a blank drawing sheet, for allowing artists to make their own design.
Regarding claim 8, Perrier further discloses the drawing sheet having a premade image 28 thereon.
Regarding claim 9, Perrier further discloses the drawing sheet further having pre-applied colors (i.e., the color of the sheet) to the premade image (fig. 1).
Further, it has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of information does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability.
Regarding claim 10, Perrier further discloses the drawing sheet does not include a mapped image with identifier-marked bubbles, and further does not include a legend (fig. 1).
Regarding claim 12, the modified Perrier further discloses the containers each in a parallelepiped shape (fig. 4 of Gupta). Regarding the number of containers, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Perrier (US 11,772,414) in view of Gupta (US 2005/0178693) and Determan (US 2009/0229732) as applied to claim 1 above, further in view of O’Brien (US 5,039,243).
Regarding claim 4, the modified Perrier discloses all elements of the claimed invention except for the utensil 50 being a colorless pencil comprising wax.
O’Brien teaches colorless or pigmented waxy pencil (col. 1, lines 17-19).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have made the pencil of the modified Perrier colorless, as taught by O’Brien to provide a transparent writing medium suitable for making marks that do not obscure the underlying surface.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Perrier (US 11,772,414) in view of Gupta (US 2005/0178693) and Determan (US 2009/0229732) as applied to claim 1 above, further in view of Saha (US 9,352,243).
Regarding claim 6, the modified Perrier discloses all elements of the claimed invention except for a paperclip.
However, Saha teaches an art kit including paperclips 179 (fig. 98).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have provided the kit of the modified Perrier paperclips as taught by Saha, in order to secure the multiple arts together if needed.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Perrier (US 11,772,414) in view of Gupta (US 2005/0178693) and Determan (US 2009/0229732) as applied to claim 1 above, further in view of Magnin (US 2004/0265504).
Regarding claim 11, the modified Perrier discloses all elements of the claimed invention except for a water sprayer, and a water-activated glue pre-applied to the drawing sheet.
However, Magnin teaches a paper sheet having a pre-applied water-activatable adhesive that is activated by spraying water onto the adhesive (paragraph 0056).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have used water activated adhesive on the drawing sheet of the modified Perrier, to allow selective activation of the adhesive with water and facilitate handling.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Perrier (US 11,772,414) in view of Cziraky (US 5,676,240) further in view of Determan (US 2009/0229732) and O’Brien (US 5,039,243).
Regarding claim 13, Perrier (figs. 1-2 and col. 4,lines 61-64) discloses a diamond painting kit for jeweling, the kit including:
a plurality of containers 42, the plurality of containers each containing a unique color of the plurality of diamond beads 40;
an object 22 within the package;
a pencil 50; and
a double-sided mounting film 30 and
diamond beads 40.
Perrier fails to disclose:
a package;
a housing within the package;
the double sided mounting film being optically clear; and
the pencil 50 being a colorless pencil.
However, Cziraky teaches an art kit having a package 91 and a housing 20 within the package (fig. 15).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to provide Perrier’s diamond art kit with package and housing of Cziraky, to facilitate organized storage and ensure the kit remains closed during shipping and handling as taught by Cziraky in col. 5, lines 43-46.
Regarding the double-sided mounting film being optically clear, Determan teaches a clear double sided mounting film 12 (fig. 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the double-sided mounting film of the modified Perrier, clear, to permit the underlying image to remain visible.
Further, O’Brien teaches colorless or pigmented waxy pencil (col. 1, lines 17-19).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have made the pencil of the modified Perrier colorless, as taught by O’Brien to provide a transparent writing medium suitable for making marks that do not obscure the underlying surface.
Regarding claim 14, the modified Perrier further discloses the optically clear double-sided mounting film comprises an optically clear mounting adhesive (Determan abstract).
Regarding claim 15, Perrier further discloses a wax shape 56, and a bead tray 46, wherein the bead tray 46 funnels toward a first end of the bead tray to a width that can accommodate no more than the combined width of two diamond beads side-by-side (fig. 1).
Regarding claim 16, Determan further teaches a lift-here tab 14 attached to the optically clear double sided-mounting film (fig. 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have provided the double-sided mounting film of the modified Perrier a tab, as further taught by Determan, for easy access to the film.
Regarding claim 17, Perrier further discloses the plurality of containers 42 in an at least one row (fig. 1). However, the modified Perrier fails to disclose the plurality of containers 42 comprises 4 containers each in a parallelepiped shape.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have made the containers 42 of the modified Perrier 4 with a parallelepiped shape, since change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47, and it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Perrier (US 11,772,414) in view of Cziraky (US 5,676,240), Determan (US 2009/0229732) and O’Brien (US 5,039,243) as applied to claim 13 above, further in view of Christy (US 2018/0186086).
Regarding claim 18, the modified Perrier discloses all elements of the claimed invention except for the object being glasses.
However, Christy teaches an object 118 being made of glass (paragraph 0033).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have made the object of the modified Perrier glass, to be able to make the diamond art on the glass.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE GIRMA NEWAY whose telephone number is (571)270-5275. The examiner can normally be reached Monday - Friday 9:00 AM- 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at 571-272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE G NEWAY/Examiner, Art Unit 3735
/Anthony D Stashick/Supervisory Patent Examiner, Art Unit 3735
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