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 Group I (claims 1-14) in the reply filed on 2/27/2026 is acknowledged. Note that claims 15-20 have been cancelled and claims 21-26 have been added. Therefore, claims 1-14 and 21-26 are currently pending.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a second tuft sequence extending along a third longitudinal axis that is at an oblique (acute; claims 5 and 25) angle with respect to the first longitudinal axis” (claim 3 and similarly, claims 10 and 23) and the third plurality of alternating discontinuities (claims 4 and 24) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 6-8, 11-14, 21 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 10, 12 and 14-16 of U.S. Patent No. 12,139,833. Although the claims at issue are not identical, they are not patentably distinct from each other. The only differences between the application claims and the patent claims are that the patent claims are much more specific. Accordingly, the patent claims are in essence a “species” of the generic invention of the application claims. It has been held that the generic invention is “anticipated” by the “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Additionally, claims 1, 6, 8, 11-14, 21 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7 and 19 of copending Application No. 19/045915 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The only differences between the application claims and the copending application claims are that the copending application claims are much more specific. Accordingly, the copending application claims are in essence a “species” of the generic invention of the application claims. It has been held that the generic invention is “anticipated” by the “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
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 12-14 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 claims 12-14, the applicant is reciting functional language directed at arranging the tufted article with other adjacent tufted articles to form a surface covering. Even though the use of functional language is allowed within a structural claim, the applicant is trying to define the “the color pattern” and the structure of “a continuous pattern” based on the combination of tufted articles. This renders the claims indefinite because the applicant is claiming a single tufted pattern, not a combination of tufted patterns.
Any remaining claims are also rejected under 35 U.S.C. 112(b) as being dependent form a rejected base claim.
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.
Claim(s) 1-2, 6, 8-9, 11-14, 21-22 and 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BEARDEN (US 2012/0222606 A1).
Regarding claims 1-2, 8, 11 and 21-22, BEARDEN discloses a tufted article for a portion of a field (Background and Summary sections) (para 0026 and 0028; “football field”) (note that one of the main differences between BEARDEN and the prior art discussed in the BACKGROUND section thereof is that BEARDEN allows the creation of much bigger pieces of the athletic field at a time which aids in better alignment of the tufted athletic field designs/logos when the pieces, including side edges thereof, are attached together), produced by a tufting machine, the tufted article having a length (length of backing including tufting thereon; para 0031) along a first longitudinal axis and a width (width of backing including tufting thereon; para 0027) along a second longitudinal axis that is perpendicular to the first longitudinal axis, wherein the first longitudinal axis and the second longitudinal axis are perpendicular to a vertical axis (direction of tufts), the tufted article comprising: a backing (4) having a continuous structure (Fig. 1); and a plurality of regions, wherein each region comprises a plurality of tufts (cut pile tufts) extending through at least a portion of the backing (4) along the vertical axis, and wherein the plurality of regions form a color pattern (representing grass of a sports field), wherein a first subset of regions (41) and a second subset of regions (42) of the plurality of regions form a plurality of alternating discontinuities in the color pattern (different colors) along at least both the first longitudinal axis and the second longitudinal axis (Figures 4-9).
Regarding claims 6 and 26, BEARDEN discloses wherein the color pattern formed by the plurality of regions comprise a graphical pattern (para 0026, Background section and Summary section).
Regarding claim 9, BEARDEN discloses each region (41, 42; could be further defined by passes) of the plurality of regions comprise the plurality of tufts having a same or substantially same color (light-colored yarn, dark-colored yam) (Figures 4-9) (para 0036-0037).
Regarding claims 12-14, BEARDEN discloses all the structure of the tufted article as claimed and is therefore considered fully capable of providing the function as recited within applicant’s claims 12-14. Regardless, note that the tufted article of BEARDEN is one of many sections of an athletic field in order to create an overall continuous graphic design when attached together (note Background and Summary sections).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over BEARDEN (US 2012/0222606 A1).
BEARDEN discloses a surface covering including a plurality of tufted articles wherein the tufted articles are arranged to define at least a portion of a football field having graphics, as defined by different colored tufts, as discussed above. However, besides logos, BEARDEN is silent regarding what the graphics represent. It is considered old and known in the art for football fields to have graphics in the form of shapes including a combination of lines, markers and symbols to aid in properly playing the game of football. Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have provided the graphics of BEARDEN with graphics in the form of shapes including a combination of lines, markers and symbols because such is considered old and known in the art in order to aid in properly playing the game of football.
Claim(s) 3-5, 10 and 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over BEARDEN (US 2012/0222606 A1) in view of WEINER et al. (US 2014/0272260 A1).
BEARDEN discloses a tufted article for a portion of a field as discussed above. Note that BEARDEN discloses the plurality of regions comprising a first tuft sequence (rows of 41, 42) extending along the first longitudinal axis (Figures 4-9). However, BEARDEN fails to disclose the plurality of regions comprising a second tuft sequence extending along a third longitudinal axis that is at an acute angle with respect to the first longitudinal axis. WEINER discloses a tufted article (100) with a plurality of regions comprising a first tuft sequence (primary tuft pattern 102) extending along the first longitudinal axis, and a second tuft sequence (diagonal tuft pattern 135) extending along a third longitudinal axis that is at an acute angle with respect to the first longitudinal axis in order to create a more intricate pattern as desired by a user while adding strength to the tufted article (Fig. 7). Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have provided the plurality of regions of the tufted article of BEARDEN with a second tuft sequence extending along a third longitudinal axis that is at an acute angle with respect to the first longitudinal axis, in light of the teachings of WEINER, in order to create a more intricate pattern as desired by a user while adding strength to the tufted article. Note that the first subset of regions and the second subset of regions of the plurality of regions of BEARDEN in view of WEINER would comprise a third plurality of alternating discontinuities in the color pattern along the third longitudinal axis based on the color pattern of the field as disclosed by BEARDEN and since WEINER discloses the secondary/diagonal pattern(s) (i.e. second tuft sequence) being of varying tuft levels and varying colors (para 0038).
Conclusion
The prior art made of record, as cited on attached PTO-892, and not relied upon is considered pertinent to applicant's disclosure. Note that US 2010/0196652 discloses a tufting system wherein a first tuft sequence is executed along a first longitudinal axis (by 52) and a second tuft sequence is executed along a third longitudinal axis (by 56) that is at an oblique (and acute) angle with respect to the first longitudinal axis (Fig. 12).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN E DURHAM whose telephone number is (571)272-8642. The examiner can normally be reached 8:00 am - 4:00 pm, Monday - Friday.
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, Alissa J Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NED
/NATHAN E DURHAM/Primary Examiner, Art Unit 3732
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