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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-6 of U.S. Patent No. 12,448,711 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all elements of the application claims are to be found in the patent claims. The only difference between the claims lies in the fact that the claims of the patent are more specific than the claims of the current application. Thus, the invention of the patent claims is in effect a "species" of the "generic" invention of the application claims. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed Cir. 1993).
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 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by YAMANASHI et al. (US 2014/0000498 A1).
Regarding claim 1, YAMANASHI discloses a sewing machine (1) comprises: a bed (11); a presser foot (30); a projector (40); and a controller (60) configured to cause the projector (40) to project a grid pattern (401, 402; 411, 412) (note the four quadrant areas as defined by the plus element 402, 412 and the rectangular element 401, 411 thus defining “a grid pattern”, given its broadest reasonable interpretation) towards the bed (11), and so that a portion of the grid pattern is functionally capable of being projected (as noted by the positioning of grid pattern in relation to needle drop position) onto the presser foot (30) dependent on the presser foot position (Figures 2, 7 and 12). As claimed, note that the controller causes the projector to perform the projection process, but the controller is not positioning the presser foot to allow the projected image to be located at least partially thereon.
Regarding claim 5, YAMANASHI discloses a feed dog configured to feed a workpiece placed on the bed (11) in a feed direction (para 0023).
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) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over YAMANASHI et al. (US 2014/0000498 A1) in view of IHIRA et al. (US 2015/0259841 A1) and in further view of TOKURA (US 8,700,200 B2).
Regarding claims 2 and 3, YAMANASHI discloses a sewing machine comprising a projector that projects an image towards a bed of the sewing machine as discussed above. The projection image of YAMANASHI includes a rectangular marker (401; 411) that described a sewing area of an embroidery pattern and a plus sign marker (402; 412) that describes a center point and direction of the embroidery pattern (Fig. 12). However, YAMANASHI fails to disclose the projection image including a stitch pattern. IHIRA discloses a projection image including a rectangular marker (Kb; Kc) (defines sewing area), scale lines (Mb; Mc) and a stitch pattern (J) in order for a user to better visualize the stitch pattern, including the positioning thereof, on the final product to avoid errors and material waste (Figures 14B and 15B). Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have replaced the projection image of YAMANASHI with the projection image as taught by IHIRA, in order for a user to better visualize the stitch pattern, including the positioning thereof, on the final product to avoid errors and material waste. Additionally, IHIRA and therefore, YAMANASHI in view of IHIRA fail to disclose the projection image including a grid pattern. TOKURA discloses the use of a grid pattern (300) in order for a user to better visualize scale and rotation angle of an embroidery/stitch pattern on a final product (Fig. 10 and 12-15). Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have replaced the projected scale lines of YAMANASHI in view of IHIRA with a grid pattern, in light of the teachings of TOKURA, in order to better visualize both scale and rotation angle of the embroidery/stitch pattern.
Regarding claim 4, note that TOKURA further discloses a setting marker which is a plurality of markers combined (grid pattern 300 and 350), wherein TOKURA teaches setting only a portion (an individual marker) of the setting marker with a color based on the color of the workpiece, thus disclosing the markers being two separate colors (col. 22, line 57 - col. 23, line 18). One with ordinary skill in the art understands that the use of two different colors for the two markers is beneficial in being able to visually separate the markers from one another. Therefore, it would be considered obvious to a person with ordinary skill in the art at the time the invention was made to have provided the projected grid pattern and the projected stitch pattern of YAMANASHI in view of IHIRA and in further view of TOKURA with different colors, in light of the teachings of TOKURA and common knowledge in the art, in order to visually separate one from the other.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over YAMANASHI et al. (US 2014/0000498 A1).
Regarding claim 6, YAMANASHI discloses a sewing machine control method comprising projecting, by a projector (40) of a sewing machine (1), a grid pattern (401, 402; 411, 412) (note the four quadrant areas as defined by the plus element 402, 412 and the rectangular element 401, 411 thus defining “a grid pattern”, given its broadest reasonable interpretation) towards a bed (11) of the sewing machine (1) so that a portion of the grid pattern is functionally capable of being projected onto a presser foot (30) of the sewing machine (1) as discussed above. However, YAMANASHI fails to definitively disclose a method step wherein a portion of the grid pattern is being projected onto the presser foot. However, since a needle hole of a presser foot indicates a sewing start position, 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 presser foot of the sewing machine of YAMANASHI at the low position when a portion of the grid pattern is being projected towards the bed resulting in a portion of the grid pattern being projected on the presser foot, in order to allow a user to confirm proper alignment between the sewing machine and the grid pattern.
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 NAKASHIMA (US 5,072,680) discloses a sewing machine that projects a stitch pattern towards a bed of the sewing machine wherein the sewing machine further includes a presser foot (col. 3) that is fully capable of having at least a portion of the stitch pattern projected thereon (Figures 6-9).
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.
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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