DETAILED ACTION
Summary
This Office Action is responsive to amendments filed 03/23/2026.
Claims 1, 22, 23, 28, 30, and 33 have been amended and claims has been canceled. Claims 1 and 23-34 are currently pending.
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive.
Applicant argues that neither MULLER nor HOFFMANN teach “wherein the first magnet is incorporated into a first cylinder, and the second magnet is incorporated into a second cylinder, and wherein the first magnet in the first cylinder is in register with the second magnet in the second cylinder” as recited in claim 1. As such, the rejection of claims 1, 2, 21, and 22 as being anticipated by HOFFMANN has been withdrawn. However, the examiner still maintains that MULLER discloses the assembly recited in claim 1. The examiner has interpreted “in register” to have its broadest reasonable interpretation of “in alignment”. As clarified in the rejection below, the magnetizations of two magnet bars are aligned with each other on a diagonal direction in figure 8. The rejection of claim 1 and the dependents thereof is therefore maintained.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 25 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. Claim 25 recites “the first magnet in the first cylinder is in register with the second magnet in the second cylinder” which is already recited in independent claim 1, from which claim 25 depends. 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.
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 and 22-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, and 6 of U.S. Patent No. 11,945,255 in view of MULLER, US 2017/0305184.
Regarding claims 1 and 25:
Claim 1 of patent ‘255 recites each of the limitations of the assembly recited in the instant application with the exception of the following: “wherein the first magnet in the first cylinder is in register with the second magnet in the second cylinder”.
MULLER teaches an assembly comprising a first magnet incorporated into a first cylinder and a second magnet incorporated into a second cylinder, wherein the first magnet is in register with the second magnet (i.e., the first and second magnet as denoted in figure 8 are aligned with each other on the diagonal. The magnetization direction S→N of the magnet bar is indicated by an arrow [0129]).
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One of ordinary skill in the art would have found it obvious to try different placements of the first and second magnets relative to one another, including placing the first magnet in register with the second magnet, for the purpose of generating different optical effects.
Claims 22-28 correspond to claims 2-7 of the patent respectively.
The following chart illustrates limitation correspondence between claim sets.
Instant Application
Claim 1:
An assembly, comprising:
a first magnet;
a substrate positioned above the first magnet, and having a surface for receiving a composition including a plurality of magnetizable platelets; and
a second magnet, positioned above the substrate;
wherein the first magnet is incorporated into a first cylinder, and the second magnet is incorporated into a second cylinder; and
wherein the first magnet in the first cylinder is in register with the second magnet in the second cylinder.
Patent No. 11,945,255
Claim 1:
An assembly, comprising:
a first magnet;
a substrate positioned above the first magnet, and having a surface for receiving a composition including a plurality of magnetizable platelets; and
a second magnet, positioned above the substrate;
wherein the first magnet is incorporated into a first cylinder, and the second magnet is incorporated into a second cylinder; and
wherein the second cylinder is hollow, and the second magnet is cylindrical.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 23-29, 31, 32, and 34 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by MULLER, US 2017/0305184.
Re claim 1:
MULLER discloses an assembly, comprising:
A first magnet (8, 23) [0077] [0111] [0112] [0124] [0128] [0175] [Figures 2A-2D, 6, 8-11C, 13];
A substrate (11) positioned above the first magnet, and having a surface for receiving a composition (12) including a plurality of magnetizable platelets [0077] [0078] [0124] [0128] [Figures 6, 8-11C, 13]; and
A second magnet (8, 23), positioned above the substrate [0077] [0111] [0112] [0124] [0128] [Figures 2A-2D, 6, 8-11C, 13];
wherein the first magnet is incorporated into a first cylinder, and the second magnet is incorporated into a second cylinder [0126] [Figures 6, 8-11C, 13]; and,
wherein the first magnet in the first cylinder is in register with the second magnet in the second cylinder (i.e., the first and second magnet as denoted in figure 8 are aligned with each other on the diagonal. The magnetization direction S→N of the magnet bar is indicated by an arrow [0129]).
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Re claim 23:
MULLER discloses the assembly of claim 1, wherein the first magnet is a plurality of magnets embedded into the first cylinder [0051] [0126] [Figure 7].
Re claim 24:
MULLER discloses the assembly of claim 23, wherein the second magnet is a plurality of magnets embedded into the second cylinder [0051] [0126] [Figure 7].
Re claim 26:
MULLER discloses the assembly of claim 1, further comprising a light source [0136]-[0139].
Re claim 27:
MULLER discloses the assembly of claim 26, wherein the light source is a laser or a light emitting diode [0136]-[0139].
Re claim 28:
MULLER discloses the assembly of claim 27, wherein the light emitting diode emits energy in a blue wavelength or an ultraviolet wavelength [0136]-[0139].
Re claim 29:
MULLER discloses the assembly of claim 1, further comprising a third magnet aligned with the first magnet [Figures 2A-2D, 6, 8, 10-11C, and 13].
Re claim 31:
MULLER discloses the assembly of claim 29, wherein the first magnet and the third magnet are aligned in a z direction [0111] [Figure 13].
Re claim 32:
MULLER discloses the assembly of claim 19, wherein a pole of the second magnet faces an opposite pole of the first magnet and the second magnet (i.e., in figures 6, 8, and 10-11C, the pole of the first magnet, which the examiner interprets as being the right most magnet above the substrate, faces an opposite pole of the second magnet, which the examiner interprets as being the left most magnet below the substrate. The north pole being indicated in the figures by the tip of the arrow [Figures 6, 8, 10-11C, and 13]).
Re claim 34:
MULLER discloses the assembly of claim 29, wherein the first magnet is positioned a first distance from a surface of the substrate [Figures 6, 8, 10-11C and 13].
Allowable Subject Matter
Claims 30 and 33 are allowed.
Claim 22 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Regarding independent claim 30:
The prior art of record fails to teach or fairly suggest, either singularly or in combination thereof, an assembly, comprising: a first magnet; a substrate positioned above the first magnet, and having a surface for receiving a composition including a plurality of magnetizable platelets; a second magnet, positioned above the substrate; and a third magnet aligned with the first magnet, wherein the first magnet and the third magnet are cylinders.
Regarding independent claim 33:
The prior art of record fails to teach or fairly suggest, either singularly or in combination thereof, an assembly, comprising: a first magnet; a substrate positioned above the first magnet, and having a surface for receiving a composition including a plurality of magnetizable platelets; a second magnet, positioned above the substrate; and a third magnet aligned with the first magnet, wherein the second magnet is statically positioned along a central axis, and wherein the first magnet and the third magnet revolve around the central axis.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 LAURA A GUDORF whose telephone number is (571)270-7607. If the Examiner cannot be reached by telephone, she can be reached through the following e-mail address: laura.gudorf@uspto.gov. The examiner can normally be reached on M-F 6:00-4:00 PM.
If attempts to reach the examiner by telephone and e-mail are unsuccessful, the examiner’s supervisor, Michael Lee can be reached on (571)272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A GUDORF/ Primary Examiner, Art Unit 2876
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