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 without traverse of species I (figures 1(a)-7(f) and 12-13(b) and claims 23-39 and 41-43) in the reply filed on 5 June 2026 is acknowledged. Claim 40 is withdrawn from further consideration.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(m) because the shading provided by the applicant reduces the legibility of the invention. Figures 1(b), 3(a)-3(d), 5(b)-7(f) and 12-13(b) all include shading which reduce legibility of the figures.
Regarding figures 1(a), 1(c), 2, 4 and 5(a), applicant is reminded that color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The claims include many limitations not directly discussed in the specification. It appears in some instances, the words or phrases of some of the claim limitations differ from the words or phrases used in the specification. This makes it difficult to determine whether or not the claimed subject matter is provided proper antecedent basis with respect to the specification. Applicant should review the claims and make changes to either the claims or specification in order to keeps the terminology consistent between the claim language and specification. Some examples are “forward-facing side”, “forward-facing top body surface”, “top recess end”, “lower recess end” and “removal space”. This list is not exhaustive. Applicant should review the claims and amend the specification and/or claims as needed in order to correct the issue and improve clarity of the disclosure.
Claim Objections
Claims 28, 29, 32, 33 and 41 are objected to because of the following informalities:
Regarding claim 28, the applicant states “The device of claim 23, said display recess configured to receive a single collectible for display”. Applicant should amend the claim for purposes of clarity. A possible amendment could be “The device of claim 23, wherein said display recess is configured to receive a single collectible for display”.
Regarding claim 29, the applicant states “The device of claim 28, the single collectible having a first collectible end and a second collectible end”. Applicant should amend the claim for purposes of clarity. A possible amendment could be “The device of claim 28, wherein the single collectible has a first collectible end and a second collectible end”.
Regarding claim 32, the applicant states “The device of claim 28, said body being pliable material and said display recess configured to hold a single collectible by friction fit”. Applicant should amend the claim for purposes of clarity. A possible amendment could be “The device of claim 28, wherein said body is a pliable material and said display recess is configured to hold a single collectible by friction fit”.
Regarding claim 33, the applicant states “wherein the single collectible is a sports trading cards or gaming trading cards”. Applicant should amend the claim for purposes of clarity. Since “the single collectible” refers to one collectible, the phrase “a sports trading cards or gaming trading cards” should read “a sports trading card or gaming trading card” to read “wherein the single collectible is a sports trading card or gaming trading card”.
Regarding claim 41, the applicant states “the planar recess bottom substantially parallel to the planar top body surface”. Applicant should amend the claim for purposes of clarity. A possible amendment could be “the planar recess bottom being substantially parallel to the planar top body surface”.
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 41-43 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.
Claim 41 recites the limitation "the remove channel" in line 13. There is insufficient antecedent basis for this limitation in the claim. It appears “the remove channel” should be “the removal channel”.
Dependent claims not specifically mentioned are rejected as depending from rejected base claims since they inherently contain the same deficiencies therein.
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 23-35, 37-39 and 41-43 are rejected under 35 U.S.C. 103 as being unpatentable over NPL Casematix, in view of Mide et al. (US 20180085515).
Regarding claim 23, NPL Casematix teaches a collectible storage and/or display device (figure 1) comprising: a device body (figure 4) having a forward-facing side with a forward-facing top body surface (figure 3); a display recess formed in the forward-facing side of said device body (figure 3), said display recess having a top recess end and a lower recess end (figure 3).
NPL Casematix doesn’t teach a pivot point positioned at the top recess end or the lower recess end of the display recess and defining a removal space. However, Mide does teach a pivot point (figure 1 and 2, near reference 32) positioned at the top recess end or the lower recess end (figure 1, reference 18 or 10) of the display recess (figure 1) and defining a removal space (figure 2: removal space 6 in recess end 10).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of NPL Casematix to include a pivot point positioned at the top recess end or the lower recess end of the display recess and defining a removal space, as disclosed by Mide, because including the pivot point positioned at the top recess end or the lower recess end of the display recess and defining a removal space allows for easy removal of the object within the recess, as explained by Mide (paragraphs 87 and 88).
Regarding claim 24, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 23, as shown above. Furthermore, NPL Casematix teaches the display recess defining a bottom recess surface (figure 3). Furthermore, Mide teaches said removal space formed in the bottom recess surface (figure 1, as shown in the annotated figure below).
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Regarding claim 25, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 24, as shown above. Furthermore, Mide teaches the removal space (figure 1 and 2, reference 6) has a bottom space surface (figure 1, as shown in the annotated figure below), and said pivot point is formed by an edge between the bottom recess surface and the bottom space surface (figure 1, as shown in the annotated figure below).
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Regarding claim 26, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 23, as shown above. Furthermore, NPL Casematix teaches said display recess has a recess depth with respect to the forward-facing top body surface (figure 3). Furthermore, Mide teaches said display recess (figure 1, inside package 2 in cavity 6) has a recess depth with respect to the forward-facing top body surface (figure 1, as shown in the annotated figure below) and said removal space has a space depth with respect to the forward-facing top body surface (figure 1, as shown in the annotated figure below), whereby said space depth is larger than said recess depth (figure 1, as shown in the annotated figure below).
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Regarding claim 27, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 23, as shown above. Furthermore, Mide teaches said pivot point (figure 1 and 2, near reference 32) is formed adjacent the removal space (figure 1 and 2, reference 10).
Regarding claim 28, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 27, as shown above. Furthermore, NPL Casematix teaches said display recess is configured to receive a single collectible for display (figure 4: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
Regarding claim 29, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 28, as shown above. Furthermore, modified NPL Casematix teaches the single collectible (figure 1 of NPL Casematix: as stated above, the single collectible is not positively recited and therefor treated as an intended use recitation for the display device. Any claim limitation further defining the unclaimed single collectible is also treated as intended use and the prior art only needs to be capable of performing the recited function) having a first collectible end (figure 1 of NPL Casematix: intended use) and a second collectible end (figure 1 of NPL Casematix: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function), whereby when the first collectible end of the single collectible is depressed, the single collectible pivots about the pivot point to position the first collectible end into the removal space and position the second collectible end outside of the display recess for removal (figure 1 and 2 of Mide: when combining the device of NPL Casematix with the removal space and pivot point of Mide, the first collectible end of the single collectible is capable of being depressed with the single collectible pivoting about the pivot point to position the first collectible end into the removal space and position the second collectible end outside of the display recess for removal, as shown in the annotated figure 1 and 2 of Mide below. Furthermore, as stated above, this limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
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Regarding claim 30, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 29, as shown above. Furthermore, NPL Casematix teaches said display recess has a recess width (figure 4). Furthermore, Mide teaches said display recess has a recess width (figure 5, as shown in the annotated figure below), and said removal space has a space width that extends the entire recess width (figure 5, as shown in the annotated figure below).
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Regarding claim 31, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 29, as shown above. Furthermore, NPL Casematix teaches a plurality of display recesses (figure 1) arranged in one or more rows or one or more columns (figure 1), each of the plurality of display recesses configured to hold a single collectible for display (figure 1: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
Regarding claim 32, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 28, as shown above. Furthermore, NPL Casematix teaches the body being a pliable material (figure 4: the body is a dense foam which is pliable) and said display recess configured to hold a single collectible by friction fit (figure 4: The collectible is placed and held in the device via friction fit. Furthermore, this limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
Regarding claim 33, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 32, as shown above. Furthermore, NPL Casematix teaches the single collectible is a sports trading card or gaming trading card (page 4 of NPL Casematix: Furthermore, this limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
Regarding claim 34, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 32, as shown above. Furthermore, NPL Casematix teaches said display recess is configured to position the single collectible to face forward (figure 1 and 4: Furthermore, this limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
Regarding claim 35, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 23, as shown above. Furthermore, NPL Casematix teaches said display recess has a top recess surface that is parallel to the forward-facing top body surface (figure 3).
Regarding claim 37, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 23, as shown above. Furthermore, NPL Casematix teaches said display recess is configured to receive a single collectible contained in a protector case (figure 4 and page 4 of NPL Casematix: Furthermore, this limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
Regarding claim 38, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 23, as shown above. Furthermore, Mide teaches said removal space comprises a channel (figure 1, reference 10).
Regarding claim 39, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 23, as shown above. Furthermore, Mide teaches said removal space comprises an elongated channel (figure 1, reference 10).
Regarding claim 41, NPL Casematix teaches a collectible storage and/or display device (figures 1-5) comprising: a device body (figure 4) having a forward-facing side (figure 3) with a forward-facing planar top body surface (figure 3); a square or rectangular display recess (figure 3: the display recess is rectangular) formed in the forward-facing side of said device body (figure 3), said display recess having a top recess end (figure 3), a lower recess end (figure 3), and a recess width (figure 4), said display recess defining a planar recess bottom surface (figure 3) defining a recess depth (figure 3), the planar recess bottom substantially parallel to the planar top body surface (figure 3).
NPL Casematix does not explicitly teach an elongated rectangular removal channel formed at the top recess end or the lower recess end of the display recess, said elongated rectangular removal channel extending an entirety of the recess width, said removal channel further defining a channel bottom surface defining a channel depth, wherein the channel depth is greater than the recess depth to define a linear edge between the channel bottom surface and the recess bottom surface, the linear edge forming a pivot point adjacent the remove channel at the top recess end or the lower recess end. However, Mide does teach an elongated rectangular removal channel (figure 1, reference 10 and 14: Although Mide does not explicitly teach the channel being rectangular, to modify the shape of the channel with the rectangular shape as claimed would entail a mere change in shape of the channel and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A 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) formed at the top recess end (figure 1, reference 10) or the lower recess end (figure 1, reference 14) of the display recess (figure 1, reference 6), said elongated rectangular removal channel extending an entirety of the recess width (figure 5, as shown in the annotated figure below), said removal channel further defining a channel bottom surface (figure 1, as shown in the annotated figure below) defining a channel depth (figure 1, as shown in the annotated figure below), wherein the channel depth is greater than the recess depth (figure 1, as shown in the annotated figure below) to define a linear edge between the channel bottom surface and the recess bottom surface (figure 1, as shown in the annotated figure below), the linear edge forming a pivot point adjacent the removal channel at the top recess end or the lower recess end (figure 1, as shown in the annotated figure below).
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It would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of NPL Casematix to include an elongated rectangular removal channel formed at the top recess end or the lower recess end of the display recess, said elongated rectangular removal channel extending an entirety of the recess width, said removal channel further defining a channel bottom surface defining a channel depth, wherein the channel depth is greater than the recess depth to define a linear edge between the channel bottom surface and the recess bottom surface, the linear edge forming a pivot point adjacent the remove channel at the top recess end or the lower recess end, as disclosed by Mide, because including an elongated rectangular removal channel formed at the top recess end or the lower recess end of the display recess, said elongated rectangular removal channel extending an entirety of the recess width, said removal channel further defining a channel bottom surface defining a channel depth, wherein the channel depth is greater than the recess depth to define a linear edge between the channel bottom surface and the recess bottom surface, the linear edge forming a pivot point adjacent the remove channel at the top recess end or the lower recess end allows for easy removal of the object within the recess, as explained by Mide (paragraphs 87 and 88).
Regarding claim 42, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 41, as shown above. Furthermore, Mide teaches a top elongated rectangular removal channel (figure 1, reference 10) formed at the top recess end (figure 1, near reference 10) and a lower elongated rectangular removal channel (figure 1, reference 14) formed at the lower recess end (figure 1, near reference 14).
Regarding claim 43, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 42, as shown above. Furthermore, NPL Casematix teaches said display recess configured to retain by friction fit a single square or rectangular collectible (figure 4: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function) having a collectible width the same as the recess width (figure 1 and 4: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function), a collectible thickness less than the recess depth (figure 1 and 4: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function), a collectible top end aligned with the recess top end (figure 1 and 3: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function), and a collectible lower end aligned with the recess lower end (figure 1 and 3: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function). Furthermore, Mide teaches whereby when the top collectible end of the single collectible is depressed, the single collectible pivots about the pivot point to position the top collectible end into the top removal channel and position the bottom collectible end outside of the display recess for removal (figure 1 and 2, as shown in the annotated figure below: This limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function), and whereby when the lower collectible end of the single collectible is depressed, the single collectible pivots about the pivot point to position the lower collectible end into the lower removal channel and position the top collectible end outside of the display recess for removal (figure 1 and 2, as shown in the annotated figure below: By rotating the collectible 180 degrees, this limitation is met. Furthermore, this limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
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Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over NPL Casematix, in view of Mide et al. (US 20180085515), as applied to claim 23 above, and further in view of Tsai (TW M308259).
Regarding claim 36, NPL Casematix, in view of Mide, teach all of the claim limitations of claim 23, as shown above. Furthermore, NPL Casematix teaches said forward-facing top body surface facing upwards (figure 1 and 3), whereby said display recess faces the lid of the case (figure 1 and 3) and a single collectible received in said display recess faces upwards (figure 1: Furthermore, this limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
NPL Casematix, in view of Mide, do not explicitly teach a display window over said forward-facing top body surface, whereby said display recess faces said display window and a single collectible received in said display recess faces and is visible through the display window. However, Tsai does teach a display window (figure 2, reference 22) over said forward-facing top body surface (figure 1, reference 30), whereby said display recess faces said display window (figure 4, reference 30 and 22: the display recess in device 30 faces upward towards the display window 22) and a single collectible received in said display recess faces and is visible through the display window (figure 2: when combining the teachings of NPL Casematix, in view of Mide, with the display window of Tsai, the limitation is met. Furthermore, this limitation has been treated as an intended use recitation. 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. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of modified NPL Casematix is capable of performing the recited function).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of NPL Casematix, in view of Mide, to include a display window over said forward-facing top body surface, whereby said display recess faces said display window and a single collectible received in said display recess faces and is visible through the display window, as disclosed by Tsai, because including the display window allow for a user to know what kind of objects are stored within the device.
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 23, 24, 26-39 and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4 and 9 of U.S. Patent No. 12,501,976 in view of NPL Casematix.
Regarding claim 23, USP ‘976 (claim 1) teaches all of the claim limitations of claim 23 except for said display recess having a top recess end and a lower recess end. However, NPL Casematix does teach said display recess having a top recess end (figure 3) and a lower recess end (figure 3).
It would have been obvious for one of ordinary skill in the art at the time of filing to modify the device of USP ‘976 to include said display recess having a top recess end and a lower recess end, as disclosed by NPL Casematix, because including a top and lower recess end allows for distinguishing orientation of the recess.
Regarding claim 24, USP ‘976 (claim 2), in view of NPL Casematix, teach all of the claim limitations of claim 24.
Regarding claim 26, USP ‘976 (claim 2), in view of NPL Casematix, teach all of the claim limitations of claim 26.
Regarding claim 27, USP ‘976 (claim 1), in view of NPL Casematix, teach all of the claim limitations of claim 27.
Regarding claim 28, USP ‘976 (claim 1), in view of NPL Casematix, teach all of the claim limitations of claim 28.
Regarding claim 29, USP ‘976 (claim 1), in view of NPL Casematix, teach all of the claim limitations of claim 29.
Regarding claim 30, USP ‘976 (claim 2), in view of NPL Casematix, teach all of the claim limitations of claim 30.
Regarding claim 31, USP ‘976 (claim 1), in view of NPL Casematix (figure 1), teach all of the claim limitations of claim 31.
Regarding claim 32, USP ‘976 (claim 1), in view of NPL Casematix (figure 4), teach all of the claim limitations of claim 32.
Regarding claim 33, USP ‘976 (claim 4), in view of NPL Casematix, teach all of the claim limitations of claim 33.
Regarding claim 34, USP ‘976 (claim 1), in view of NPL Casematix (figure 1), teach all of the claim limitations of claim 34.
Regarding claim 35, USP ‘976 (claim 1), in view of NPL Casematix (figure 1), teach all of the claim limitations of claim 35.
Regarding claim 36, USP ‘976 (claim 1), in view of NPL Casematix, teach all of the claim limitations of claim 36.
Regarding claim 37, USP ‘976 (claim 9), in view of NPL Casematix, teach all of the claim limitations of claim 37.
Regarding claim 38, USP ‘976 (claim 1), in view of NPL Casematix, teach all of the claim limitations of claim 38.
Regarding claim 39, USP ‘976 (claim 1), in view of NPL Casematix, teach all of the claim limitations of claim 39.
Claims 25, 42 and 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4 and 9 of U.S. Patent No. 12,501,976 in view of NPL Casematix and further in view of Mide et al. (US 20180085515).
Regarding claim 25, USP ‘976 (claim 2), in view of Casematix, teach all of the claim limitations of claim 25 except for said pivot point is formed by an edge between the bottom recess surface and the bottom space surface. However, Mide does teach said pivot point is formed by an edge between the bottom recess surface and the bottom space surface (figure 1, as shown in the annotated figure below).
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It would have been obvious for one of ordinary skill in the art at the time of filing to modify the device of USP ‘976, in view of NPL Casematix to include said pivot point is formed by an edge between the bottom recess surface and the bottom space surface, as disclosed by Mide, because including said pivot point is formed by an edge between the bottom recess surface and the bottom space surface allows for the item to pivot along the edge.
Regarding claim 42, USP ‘976 (claim 2), in view of Casematix, teach all of the claim limitations of claim 42 except for a top elongated rectangular removal channel formed at the top recess end and a lower elongated rectangular removal channel formed at the lower recess end. However, Mide does teach a top elongated rectangular removal channel (figure 1, reference 10) formed at the top recess end (figure 1, near reference 10) and a lower elongated rectangular removal channel (figure 1, reference 14) formed at the lower recess end (figure 1, near reference 14).
It would have been obvious for one of ordinary skill in the art at the time of filing to modify the device of USP ‘976, in view of NPL Casematix to include a top elongated rectangular removal channel formed at the top recess end and a lower elongated rectangular removal channel formed at the lower recess end, as disclosed by Mide, because including a top elongated rectangular removal channel formed at the top recess end and a lower elongated rectangular removal channel formed at the lower recess end allows for accessing the item within the recess easily.
Regarding claim 43, USP ‘976 (claim 2), in view of NPL Casematix and Mide, teach all of the claim limitations of claim 43.
Conclusion
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/JAVIER A PAGAN/ Primary Examiner, Art Unit 3735
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