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 .
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, 4, 5, 6, 7, 8, 9, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 2, 1, 5, 5, 6, 5, 7, and 8, respectively, of U.S. Patent No. 12475815.
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the claimed limitations of the present application are recited in copending U.S. Patent No. 12475815.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1, 2, 5 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20120263895 to Jeter, Jr. et al. (Jeter).
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, 4, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 20120263895 to Jeter, Jr. et al. (Jeter) in view of US 3380176 to Kling et al. (Kling).
Regarding claim 1, Jeter teaches an interchangeable accessory comprising: a marker plate (disc-like decorative element 50) comprising a metal and having a first side and a second side with at least one message (emblem 18) on at least one of the first side or the second side (¶0023 and 0031); a marker housing (20) that is attachable to a container, the marker housing (20) comprising a base (planar surface 56) and a marker receiving station (cavity 54; ¶0024); and a housing magnet (magnet 80) in the base (56) of the marker housing (20); and the marker plate (50) being removably insertable into the marker receiving station (54) of the marker housing (20) and held therein by the housing magnet (80) within the perimeter walls (cavity wall 58).
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Jeter teaches the marker plate (50) comprises a protrusion (embossed emblem 18; ¶0041) on the first side to identify the first side from the second side of the marker plate (50).
Jeter does not teaches the marker plate comprises a protrusion on the first side and a formation of the protrusion on one side of the marker plate forming an indentation.
Kling teaches an educational and game device (10) comprising base structure board 10 with a plurality of framed recesses 16, 17, 18 and 19 having a plurality of protuberances/pins (34) and a stack 25 of three loose panels 27-29 or 126, wherein each panel is adapted to be removable/magnetically secured within a recess. Each panel 126 may be in the form of a relatively thin sheet of molded plastic with a cavity (indentations) 135 on the rear side and a complementary projection (not labeled) on the front side (column 6, line 8-22).
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It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct embossed emblem on the marker plate (disc-like decorative element 50) taught by Jeter with protrusions on the front side and indentations on the rear side as taught by Kling with a reasonable expectation of success to provide a means to nest a plurality (stack) of panels together and/or secure the panel with in the recess for receptive inter-fitting and permit readily aligned stacking of similarly coded cards (panels) of different groups.
Regarding claim 4, Jeter does not teach the housing magnet having a magnetic field strength of between about 120 milli Tesla (mT) to about 140 mT.
Since the applicant does not disclose that the housing magnet having a magnetic field strength of between about 120 milli Tesla (mT) to about 140 mT solves any stated problem or is for any particular purpose, it appears that constructing the magnetic field strength of any suitable strength would perform equally well to retain the marker plate within the marker housing. It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct magnet of the interchangeable accessory (marker device) taught by Jeter of a suitable strength with a reasonable expectation of success to provide means to retain the marker plate (disc-like decorative element) within the marker housing, since it has been held that where the general conditions of a claim are disclosed in the prior, discovering the optimum or workable ranges involve only routine skill in the art. In re Aller, 105 USPQ 223.
Regarding claim 5, Jeter teaches the marker housing (20) comprises perimeter walls (58) extending upward from the base (56) to form the marker receiving station (58), the perimeter walls (58) have a height that is about equal to or greater than a thickness of the marker plate (50; ¶0035 and figure 9D).
Regarding claim 6, Jeter teaches the base (56) of the marker housing (20) comprises a first side (top side) and a second side (bottom side) with the perimeter walls (58) extending from the first side of the base (56).
Claims 7-9, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jeter, Jr. et al. (Jeter) of US 3380176 to Kling et al. (Kling). and Wu, U.S. Patent 10009589.
Regarding claim 7, Jeter teaches an interchangeable accessory comprising: a marker plate (disc-like decorative element 50) comprising a metal and having a first side and a second side with at least one message (emblem 18) on at least one of the first side or the second side (¶0023 and 0031); a marker housing (20) that is attachable to a container, the marker housing (20) comprising a base (planar surface 56) and a marker receiving station (cavity 54; ¶0024); and a housing magnet (magnet 80) in the base (56) of the marker housing (20); and the marker plate (50) being removably insertable into the marker receiving station (54) of the marker housing (20) and held therein by the housing magnet (80) within the perimeter walls (cavity wall 58).
Jeter does not teach a removal tool comprising a handle portion and a puller magnet, the puller magnet having a magnetic field strength that is greater than the magnetic field strength of the housing magnet. Jeter does not teaches the marker plate comprises a protrusion on the first side and a formation of the protrusion on one side of the marker plate forming an indentation.
Kling teaches an educational and game device (10) comprising base structure board 10 with a plurality of framed recesses 16, 17, 18 and 19 having a plurality of protuberances/pins (34) and a stack 25 of loose panels 27-29 or 126, wherein each panel is adapted to be removable/magnetically secured within a recess. Each panel 126 maybe in the form of a relatively thin sheet of molded plastic with a cavity (indentations) 135 on the rear side and a complementary projection (not labeled) on the front side (column 6, line 8-22).
Wu teaches a small spacing pre-maintenance LED display screen comprising a box 10, a plurality of LED modules 20 and display screen connecting units 30. Wherein, the box 10 is provided with a front face 11, a back face 12 and a side face 13 connected between the front face 11 and the back face 12 in a surrounding manner. The box 10 is provided with plurality of box magnetic elements 51. Each LED module 20 is provided with module magnetic elements 52 on the back. The plurality of LED modules 20 are magnetized on the front face 11 of the box by the box magnetic elements 51 and module magnetic elements 52 corresponding to each other. Each LED modules 20 is provided with detachment magnetic elements 53 corresponding to magnetic detachment assistors 54 producing magnetic suction to the elements 53. Worker uses the magnetic detachment assistors 54 by hand to get close to the corresponding LED modules 20, then, the LED modules 20 and the assistors 54 are connected together by the magnetic suction acted on the detachment magnetic elements by the assistors 54. At the same time, the worker applies an outward pull force on the magnetic detachment assistors 54, and this force can overcome the magnetic suction acted on the module magnetic unit 52 by the box magnetic unit 51, furthermore, the connecting between the magnetic units 51 and 52 is broken, so the LED modules 20 can be removed from the box 10, and convenient for the subsequent replacement, check and maintenance.
It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct the marker plate (disc-like decorative element 50) taught by Jeter with protrusions on the front side and indentations on the rear side as taught by Kling with a reasonable expectation of success to provide a means to nest a plurality (stack) of panels together and/or secure the panel with in the recess for receptive inter-fitting and permit readily aligned stacking of similarly coded cards (panels) of different groups and/or to indicate the front and rear surfaces of the plate.
It would have been obvious to one having ordinary skill in the art before the effective filing remove the disc-like decorative element 50 from the housing 20 of the interchangeable accessory taught by Jeter with the magnetic detachment assistors taught by Wu to provide a means to detach or remove the nameplate from the base.
Regarding claim 8, Jeter does not teach housing magnet having a magnetic field strength of between about 120 milli Tesla (mT) to about 140 mT.
Since the applicant does not disclose that housing magnet having a magnetic field strength of between about 120 milli Tesla (mT) to about 140 mT solves any stated problem or is for any particular purpose, it appears that constructing the magnetic field strength of any suitable strength would perform equally well to retain the marker plate within the marker housing. It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct the magnet of the interchangeable accessory (marker device) taught by Jeter of a suitable strength with a reasonable expectation of success to provide means to retain the marker plate (disc-like decorative element) within the marker housing, since it has been held that where the general conditions of a claim are disclosed in the prior, discovering the optimum or workable ranges involve only routine skill in the art. In re Aller, 105 USPQ 223.
Regarding claim 9, Jeter teaches the marker housing (20) comprises perimeter walls (58) extending upward from the base (56) to form the marker receiving station (58), the perimeter walls (58) have a height that is about equal to or greater than a thickness of the marker plate (50; ¶0035 and figure 9D).
Regarding claim 11, Jeter teaches the housing magnet (80) is secured to the base (56) of the marker housing (20) and the first side (top side) of the marker housing comprises an indentation (see annotated figure below) that is shaped to receive a housing magnet (80) therein for holding the marker plate (50) within the marker receiving station (cavity 54) of the marker housing (20) with the indentation in the first side of the marker housing comprising a depth that corresponds to a thickness of the housing magnet.
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Regarding claim 12, Jeter teaches the housing magnet (80) resides within the base on the marker housing (20) with an axis of the housing magnet (80) extending about perpendicular to the base (56) and the housing magnet (80) is axially magnetized along the axis.
Claims 13, 15, 16, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 9990867 to Shiao in view of US 3380176 to Kling et al. (Kling) and Wu, U.S. Patent 10009589.
Regarding claim 13, Shiao teaches nameplate assembly (marker device) for a bag comprising; one or more container walls forming a cavity of the container (bag 91, figures 3-5) into which items can be placed; and a marker device for displaying personalized information on the container, the marker device comprising: a metal marker plate comprising a first side and a second side with at least one message on at least one of the first side or the second side (nameplate 20, column 2, lines 49-53); a marker housing (base 10) that is attachable to a container (bag 91), the marker housing (10) comprising a base (bottom surface of recess 14) and a marker receiving station (recess 14); and a housing magnet (magnetic connecting units 30; column 2, lines 49-53) positioned relative to the base (bottom surface of recess 14) of the marker housing (10) to hold the marker plate (20) in the marker receiving station (recess 14).
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Shiao does not teach a removal tool comprising a handle portion and a puller magnet, the puller magnet having a magnetic field strength that is greater than the magnetic field strength of the housing magnet. Shiao does not teaches the marker plate comprises a protrusion on the first side and a formation of the protrusion on one side of the marker plate forming an indentation.
Kling teaches an educational and game device (10) comprising base structure board 10 with a plurality of framed recesses 16, 17, 18 and 19 having a plurality of protuberances/pins (34) and a stack 25 of loose panels 27-29 or 126, wherein each panel is adapted to be removable/magnetically secured within a recess. Each panel 126 may be in the form of a relatively thin sheet of molded plastic with a cavity (indentations) 135 on the rear side and a complementary projection (not labeled) on the front side (column 6, line 8-22).
Wu teaches a small spacing pre-maintenance LED display screen comprising a box 10, a plurality of LED modules 20 and display screen connecting units 30. Wherein, the box 10 is provided with a front face 11, a back face 12 and a side face 13 connected between the front face 11 and the back face 12 in a surrounding manner. The box 10 is provided with plurality of box magnetic elements 51. Each LED module 20 is provided with module magnetic elements 52 on the back. The plurality of LED modules 20 are magnetized on the front face 11 of the box by the box magnetic elements 51 and module magnetic elements 52 corresponding to each other. Each LED modules 20 is provided with detachment magnetic elements 53 corresponding to magnetic detachment assistors 54 producing magnetic suction to the elements 53. Worker uses the magnetic detachment assistors 54 by hand to get close to the corresponding LED modules 20, then, the LED modules 20 and the assistors 54 are connected together by the magnetic suction acted on the detachment magnetic elements by the assistors 54. At the same time, the worker applies an outward pull force on the magnetic detachment assistors 54, and this force can overcome the magnetic suction acted on the module magnetic unit 52 by the box magnetic unit 51, furthermore, the connecting between the magnetic units 51 and 52 is broken, so the LED modules 20 can be removed from the box 10, and convenient for the subsequent replacement, check and maintenance.
It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct embossed emblem on the marker plate (nameplate) taught by Shiao with protrusions on the front side and indentations on the rear side as taught by Kling with a reasonable expectation of success to provide a means to nest a plurality (stack) of panels together and/or secure the panel with in the recess for receptive inter-fitting and permit readily aligned stacking of similarly coded cards (panels) of different groups and/or to indicate the front and rear surfaces of the plate.
It would have been obvious to one having ordinary skill in the art before the effective filing remove the nameplate 20 from the base 10 of the assembly taught by Shiao with the magnetic detachment assistors taught by Wu to provide a means to detach or remove the nameplate from the base.
Regarding claim 15, Shiao does not teach the housing magnet having a magnetic field strength of between about 120 milli Tesla (mT) to about 140 mT.
Since the applicant does not disclose that housing magnet having a magnetic field strength of between about 120 milli Tesla (mT) to about 140 mT solves any stated problem or is for any particular purpose, it appears that constructing the magnetic field strength of any suitable strength would perform equally well to retain the marker plate within the marker housing.
It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct magnet of the nameplate assembly (marker device) taught by Shiao of a suitable strength with a reasonable expectation of success to provide means to retain the marker plate (nameplate 20) within the marker housing, since it has been held that where the general conditions of a claim are disclosed in the prior, discovering the optimum or workable ranges involve only routine skill in the art. In re Aller, 105 USPQ 223.
Regarding claim 16, Shiao teaches the marker plate (nameplate 20) has a thickness and the marker housing (base 10) comprises perimeter walls (see outer surface 11) extending upward from the base (bottom surface of recess 14) to form the marker receiving station (recess 14), the perimeter walls (11) of the marker housing (10) have a height that is about equal to or greater than the thickness of the marker plate (20, figure 3).
Regarding claim 18, Shiao teaches the housing magnet (30) is secured to the base (bottom surface of recess 14) of the marker housing (10) and the first side of the marker housing comprises an indentation (recess 15) that is shaped to receive the housing magnet therein (figure 3) for holding the marker plate (20) within the marker receiving station (recess 14) of the marker housing (10) with the indentation in the first side of the marker housing comprising a depth that corresponds to a thickness of the housing magnet.
Regarding claim 19, Shiao teaches the housing magnet (30) resides within the base (bottom surface of recess 14) on the marker housing (10) with an axis of the housing magnet (30) extending about perpendicular to the base and the housing magnet is axially magnetized along the axis.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over US 9990867 to Shiao in view of US 3380176 to Kling et al. (Kling) and Wu, U.S. Patent 10009589 as applied to claim 13 above and in further view of US 20130087424 to Pratt.
Regarding claim 14, Shiao teaches the marker housing (base 10) is secured to at least one layer of the one or more layers (outer surface 92 of the wall of the bag 91). Shiao also teaches the bag can be “traveling bags, golf bags or other kinds of sport bags”. Shiao teaches does not teach the container being a softwalled travel bag comprising one or more fabric layers.
Pratt teaches a foldable easy-access bag (container) comprises a soft-sided (softwalled) bag (10) and the one or walls (12) of the bag comprise one or more fabric layers (¶0031).
It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct walls of the bag taught by Shiao of fabric material as taught by Pratt with a reasonable expectation of success to provide a light weight bag.
Response to Arguments
Applicant’s arguments with respect to claims 1, 4-9, 11-16, 18 and 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 CASSANDRA DAVIS whose telephone number is (571)272-6642. The examiner can normally be reached Monday-Friday 8:00 AM-4:30 PM.
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/CASSANDRA DAVIS/ Primary Examiner, Art Unit 3631
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