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 .
Examiner’s note
Examiner notes that applicant’s grandparent case, 17/142414, was appealed, and upheld by Patent Trial and Appeal Board on 1/3/2023. 112b rejections of claims 1-15, and the art rejection of claims 9-20, were affirmed. The affirmation included a concurrence stating “I would have reached and affirmed the art rejections of claims 1-15, despite their inclusion of problematic subjective phrases” in the first paragraph. Examiner made suggestions for definite claims in parent case 18/107065, which applicant has chosen to ignore. Therefore, the examiner again applies the indefiniteness rejections and assumptions which are repeated in the instant case, as well as any new indefiniteness rejections, as well as the art for claims 1-15. Examiner has made a suggestion for a definite claim 1 in the conclusion section. The suggested definite claim IS NOT ALLOWABLE over the cited prior art, but would reduce indefiniteness issues.
Specification
The disclosure is objected to because of the following informalities: Claimed subject matter regarding “lucky orientation”, “trademark” on a UN member currency, and “obscuring” is not disclosed in the specification.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Charm including penny coated in gold.
Appropriate correction is required.
Claim Objections
Claim 9 is objected to because of the following informalities: Examiner notes that claim 9 is not a full sentence, as it does not have a verb. Appropriate correction is required.
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 1-21 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 claim 1, please see below parts A and B.
A: Applicant claims “representing a lucky tangible means effective for providing a sense of magic, good will and/or promise”. Examiner notes that none of the terms “lucky”, “sense of magic”, “good will” or “promise” have a structural scope regarding the physical item claimed. Examiner notes that a “lucky” penny and a standard penny do not alter in structure, but merely alter in the user’s feelings about the item. Examiner notes that there is no “lucky tangible means effective for providing”, and applicant does not disclose one. Examiner assumes that the coin already claimed “represents a lucky tangible means effective for providing”. Examiner notes that this phrase is applicant’s attempt to attach, or attaches, superstition to a structure that is already known in the art. Examiner notes that superstition has no utility, and is user dependent. Examiner notes that applicant has asserted no structural limitation associated with these terms, and no scope in intended use. Applicant is merely claiming that the user must have a particular feeling about the article, which is user dependent, and does not have any structural limitation, or utility.
B (also in claims 16 and 17): applicant claims “wherein the coin is held by a holder in a lucky orientation and/or manner”. Examiner notes that this positively includes the holder from parent claim 14. However, “lucky orientation” is not disclosed in the specification, and the “and/or manner” does not further limit the structure. It seems that applicant requires that the coin is claimed positively within a holder, and is presented within the holder with its face side to an observer. Applicant claims “wherein the coin is held by a holder in a lucky orientation and/or manner”. Examiner notes that “lucky pennies” are typically found pennies, preferably with “heads up”, since “heads of a penny became associated with good”, according to the Northeast Regional Library in 2018, which has been superstition for much longer than 2018. Therefore, examiner notes that the desire to display a coin’s “head” side is an old and well known “lucky orientation”. Examiner notes that this assumption is matched by applicant’s claim 7.
C: “visually alters in an aesthetically pleasing manner”. Examiner notes that “aesthetically pleasing” is subjective, and the specification does not indicate what the “manner” is that is considered to be “aesthetically pleasing”. The term “aesthetically pleasing” 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.
D: “in at least in a hypoallergenic manner is achieved, optionally with help from the material coating of the coin”. The record is not clear what this means. Applicant claims the manner of holding the coin is “in a hypoallergenic manner”; the record does not disclose how the holder interacts with the coin “in a hypoallergenic manner”. The claim indicates that the “hypoallergenic manner” may be achieved by the “material” being hypoallergenic, but applicant states that “optionally with help from the material coating”. Therefore, the record is not clear if the material is required to be made of a hypoallergenic material, if the holder must be made of a hypoallergenic material, or if there is a “hypoallergenic manner” not otherwise disclosed by applicant.
Regarding claim 7: applicant claims “lucky orientation emphasizes a heads-up orientation”. This claim does not further define the lucky orientation, as it only “emphasizes”. Examiner assumes that applicant intends to further limit the “lucky orientation”, which is equivalent to displaying the heads side of the coin.
Regarding claim 9: applicant merely states “bejeweled”. Examiner notes that this is not a full sentence, as it does not have a verb. Examiner assumes applicant means that the token has accessory jewels.
Regarding claim 12: applicant claims “a trademark associated with a tails face”. Examiner notes that since claim 1 requires the coin “embodies the legal tender currency of a member nation of the United Nation”, applicant does not explain which “legal tender currency” includes a trademark. Examiner merely assumes that the “legal tender currency” therefore has a tails face.
Regarding claim 16, applicant claims “the charm appeals to at least one numismatist”. The record is not clear what orientation is that which is “appealing” to a numismatist. Examiner again assumes that applicant intends to claim “heads up” orientation.
Regarding claim 19, applicant claims “being stunningly beautiful upon initial inspection due to proper lighting”. The record is not clear how something can be “stunningly beautiful”, as this is again, a relative term of degree and is indefinite. Further, applicant seems to be claiming the lighting arrangement of the environment of the coin/token, and does not further limit the coin/token. Applicant positively claims “iridescent coating, due to an arrangement of crystals in an ordered array and/or due to general fabulousness and luckiness as determined by sight”. Examiner notes that all of these requirements (iridescent coating, arrangement of crystals, general fabulousness) are all optional with each other, based on the and/or statement (the broadest reasonable interpretation is the OR requirement). Further, “iridescent coating” is not definite, as applicant does not disclose the use of two coatings (material of claim 17 AND iridescent coating), nor does applicant claim the material of claim 17 is iridescent. Additionally, there is no way to indicate, measure, compare, “general fabulousness and luckiness”. Examiner again notes that this is a subjective term of degree of “how attractive” the item is.
Regarding claim 21, applicant claims “electronic form of the charm or item”. The record is not clear what “electronic form” is, nor how it can “carry substantial electronic and optionally legal permanence”. The record is not clear how this can be performed, and the record does not make it clear to one of ordinary skill in the art at the time of the invention on what will or will not infringe on these terms. Applicant discloses “electronic” may relate to “structures e.g. semiconductor microstructures” and that the device may be an NFT [29]. Examiner notes that an NFT is not a patentable subject matter under 35 USC 101. Further, the term “optionally legal permanence” is not understood. Examiner notes that gold plating does rub off, even if it takes years; the length of time it takes for gold plating to rub off depends on the usage of the device and the thickness of the gold plating.
For purposes of examination, examiner assumes that adding this token to a watch, or the addition of an RFID chip for tracking purposes, meets claim 20. Examiner rejects claim 21 twice.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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) 1-3, 7-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over page 4 of “Coin.thefuntimesguide.com”, herein after referred to as “gold pennies”, further in view of 509889 Gaynor figure 2, in further view of “It’s lucky penny day” article.
Regarding claim 1, Gold Pennies discloses a lucky token, comprising:
a coin (“gold pennies are real coins”) that embodies legal tender currency (it is a legal tender) of a member nation of the United Nations (the United States), the coin having a native color (as when created by the US Mint), wherein the coin is coated (“plated”) with a material (gold) that visually alters in an aesthetically pleasing manner the native color of the coin (gold is not the color of the originally minted coin), thereby representing a lucky tangible means effective for providing a sense of magic, luxury and/or promise.
Gold Pennies does not disclose the use of a holder, or the orientation of the coin within the holder.
Gaynor discloses a coin holder (page 1, line 56), which holds a coin in a lucky orientation/manner (not obscuring the heads/tails designs) such that the luckiness in at least in a hypoallergenic manner is achieved (Gaynor holds the coin in the identical manner shown by applicant). Gaynor discloses having a setting 28 that holds the “gem, pebble, or quartz” (page 2, line 5). Gaynor allows both sides of the coin to be visible.
It would have been obvious to one of ordinary skill in the art at the time of the invention to insert the “gold penny” in the coin holder of Gaynor, in order to wear the coin as “personal ornaments, such as watch chain charms, pendants, or the like” (page 1, line 10 of Gaynor).
“It’s lucky penny day” discloses “heads of a penny became associated with good”, and shows a penny mounted to a holder with its head out.
It would have been obvious to one of ordinary skill in the art before the effective filing date to wear the Gold Penny in the holder of Gaynor, with its face out, as is old and well known to be lucky, as taught in “lucky penny day”. Examiner notes that since the orientation of the Gold Penny in the holder is reversible, the choice to wear it with the heads out is an aesthetic, just as much as a superstitious, choice.
Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art.
Regarding “lucky”, examiner notes that this is not a structural feature, but only the user’s interaction with the device.
Regarding “token”, examiner considers this the title of the device later claimed; examiner contends that by meeting the structure claimed, that the term “token” is met.
Regarding “tangible”, examiner notes that the coin itself is tangible.
Regarding “means effective for providing a sense of magic, goodwill, and/or promise”, examiner contends that the use of gold plating presents “good will”, since gold represents wealth, which is considered “good will”.
Regarding “lucky orientation and/or manner”, examiner notes that claim 7 indicates that only the heads side of the currency is “lucky”. Examiner notes that the prior art also teaches that this is an old and well known concept. The term “and/or manner” does not further limit the structure of the device claimed.
Regarding “hypoallergenic manner”, Gaynor discloses an identical manner as that disclosed by applicant, and therefore is considered to meet the claim language.
Regarding claim 2, “gold pennies” as modified discloses the token of claim 1, wherein the coin is a penny (it is a penny).
Regarding claim 3, “gold pennies” as modified discloses the token of claim 1, wherein the member nation is the United States of America (created by the US Mint).
Regarding claim 7, as best understood, the “lucky orientation” as taught in “It’s lucky penny day” is the heads up orientation, and is old and well known to wear a pendant penny with its face out, as previously shown in “its lucky penny day”.
Regarding claim 8, “gold pennies” as modified discloses the token of claim 1, wherein the material is gold (in Gold Pennies).
Regarding claim 9, “gold pennies” as modified discloses the token of claim 1, but does not disclose the gold penny is “bejeweled”. Examiner assumes that this is the application of a gemstone type article to the coin.
Gaynor discloses a coin holder (page 1, line 56) having a setting 28 that holds the “gem, pebble, or quartz” (page 2, line 5).
It would have been obvious to one of ordinary skill in the art at the time of the invention to insert the “gold penny” in the coin holder of Gaynor, in order to wear the coin as “personal ornaments, such as watch chain charms, pendants, or the like” (page 1, line 10 of Gaynor).
Regarding claim 10, “gold pennies” as modified discloses the token of claim 9, including one or more (one gem in figure 2, but “any desired number” in page 1, line 103 of Gaynor) crystals.
Regarding claim 11, “gold pennies” as modified discloses the token of claim 10, wherein a plurality of crystals is included (“any desired number”).
Regarding claim 12, “gold pennies” as modified discloses the token of claim 9, having first and second faces, bejeweled on neither face (the gem is located on the holder, and not on the face of the coin).
Regarding claim 13, “gold pennies” as modified discloses the token of claim 9, bejeweled about an edge thereof (as shown in Gaynor figure 2).
Regarding claim 14, “gold pennies” as modified discloses the token of claim 1, wherein the coin (Gold Penny) is immobilized to the holder (inserted into Gaynor, and screwed closed as in figure 1), and the holder obscures more of a tails face than the heads face of the coin (since the device of claim 1 is “held…in a lucky orientation” with the head out as old and well known shown by “Its lucky penny day”, this requires only the heads side to be shown, therefore the tails side is obscured).
Regarding claim 15, “gold pennies” as modified discloses the token of claim 14, wherein the holder is bejeweled (figure 2 of Gaynor).
Regarding claim 16, “gold pennies” discloses a lucky token, comprising: a coin that represents legal tender currency of a member nation of the United Nations (the coin of “gold pennies” is legal currency), but does not disclose a holder, or the particular orientation of the coin.
Gaynor discloses a coin holder (page 1, line 56) made of metal (page 2 line 11) having a color, and having a setting 28 that holds the “gem, pebble, or quartz” (page 2, line 5), the coin holder holding a coin (figure 4).
It would have been obvious to one of ordinary skill in the art at the time of the invention to insert the “gold penny” in the coin holder of Gaynor, in order to wear the coin as “personal ornaments, such as watch chain charms, pendants, or the like” (page 1, line 10 of Gaynor). Examiner notes that by inserting a piece of metal within metal, these are “rendered electrically conductive”. The insertion of the “gold penny” within the Gaynor holder renders the penny “immobilized”. Examiner notes that the gold of the penny renders it a different color than the penny, and that the unknown metal of the Gaynor has a different color than the gold required by “gold pennies”.
“It’s lucky penny day” discloses “heads of a penny became associated with good”, and shows a penny mounted to a holder with its head out. This orientation is considered to “appeal to at least one numismatist”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to wear the Gold Penny in the holder of Gaynor, with its face out, as is old and well known to be lucky, as taught in “lucky penny day”. Examiner notes that since the orientation of the Gold Penny in the holder is reversible, the choice to wear it with the heads out is an aesthetic, just as much as a superstitious, choice.
Regarding claim 17, “gold pennies” discloses lucky jewelry or a collector item, comprising:
a coin that represents legal tender currency of a member nation of the United Nations (legal tender of the United States), the coin having a native color (as is it produced by the US Mint), wherein the coin is coated with a material (coated with gold) that visually alters the native color of the coin.
“Gold pennies” does not disclose the use of a holder that is bejeweled, or that the coin is mounted in a way that is in a “lucky orientation” that “obscures more of a back side face than the front side face of the coin”.
Gaynor discloses a coin holder (page 1, line 56) made of metal (page 2 line 11) having a color, and having a setting 28 that holds the “gem, pebble, or quartz” (page 2, line 5).
It would have been obvious to one of ordinary skill in the art at the time of the invention to insert the “gold penny” in the coin holder of Gaynor, in order to wear the coin as “personal ornaments, such as watch chain charms, pendants, or the like” (page 1, line 10 of Gaynor). The insertion of the “gold penny” within the Gaynor holder renders the penny “immobilized”.
“It’s lucky penny day” discloses “heads of a penny became associated with good”, and shows a penny mounted to a holder with its head out.
It would have been obvious to one of ordinary skill in the art before the effective filing date to wear the Gold Penny in the holder of Gaynor, with its face out, as is old and well known to be lucky, as taught in “lucky penny day”. Examiner notes that since the orientation of the Gold Penny in the holder is reversible, the choice to wear it with the heads out is an aesthetic, just as much as a superstitious, choice.
Regarding claim 18, “gold pennies” as modified discloses the jewelry or collector item of claim 17, in the form of a token (coin shaped token).
Regarding claim 19, “gold pennies” as modified discloses the jewelry or collector item of claim 18, being stunningly beautiful upon initial inspection due to general fabulousness. Examiner notes that this is a relative term and is not defined. Examiner notes that the use of gold is generally considered “stunningly beautiful”.
Regarding claim 20, “gold pennies” as modified discloses the jewelry or collector item of claim 18, wherein the coin has a minting date “on or after 2023”. Examiner notes that this limits the years of the “coin that embodies legal tender currency” to be “minted”. Examiner notes that this does further limit the device, however, it does not affect the use of the prior art. A user may make a “gold penny” as is old and well known, using any penny of any mint date or location.
Regarding claim 21, as best understood, the charm of claim 18 may be applied to an electronic device such as a watch.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over “gold pennies” in view of Gaynor, in view of “It’s lucky penny day” as applied to claim 1 above, and further in view of the US Mint.
Regarding claims 4-6, these claims refer to the “native color” of the original material of the uncoated coin. Examiner notes that the material of a penny is dictated by the US Mint, which has changed several times since the first issuance in 1793. Originally copper, then copper and nickel in 1857, steel in 1943, and currently zinc plated with copper. Therefore, the material of the original penny is an obvious choice of material dictated by the US Mint. Note that 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 engineering design choice. See MPEP 2144.07. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144.06(I).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over “gold pennies” as applied to claim 18 above, and further in view of 8769986 DiPietro.
Regarding claim 21, “gold pennies” placed in the holder of Gaynor discloses the device of claim 18, but does not include an electronic structure, for example an RFID chip.
DiPietro discloses “RFID chip 15a is embedded in the charm” (column 3 line 43).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include an RFID chip on a charm as taught by DiPietro to a charm such as “gold pennies” in a holder of Gaynor, as this adding an RFID chip to include “readable code” to allow a smart phone “ reading the code and associating the code with a particular business” (column 5 line 44).
Conclusion
Examiner notes that the following claim would reduce indefiniteness issues, BUT WOULD NOT BE ALLOWABLE over the cited prior art:
A lucky token, comprising:
a penny having a head surface, a tail surface, and an edge, the penny is coated with a material that is a different color than copper; and
a holder, configured to engage the edge of the penny, the holder comprises accessory jewels along a circumference; and
wherein when the penny is inserted into the holder, the holder presents the heads surface of the penny.
Examiner hopes the applicant will accept at least some of these suggests to reduce indefiniteness issues in the future.
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EMILY M MORGAN/ Primary Examiner, Art Unit 3677
Prosecution Insights