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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,637,793. 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).
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 3-10 and 15-16 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 3 and 6, the applicant recites, “the cutting data is output to the cutting mechanism in response to a second instruction to output the cutting data”. Firstly, is “a second instruction” referring to the “second instruction” as introduced within line 11 of claim 1? If so, “a second instruction” should be “the second instruction” or “said second instruction”. If not, the use of identical terminology is confusing and renders the claim language unclear. Secondly, within base claim 1, the applicant recites that the embroidery data is output based on “a second instruction” and the cutting data is output based on “a third instruction”. Therefore, how can the cutting data be output to the cutting mechanism based on a second instruction (claims 3 and 6) when it is already being output to the cutting mechanism based on a third instruction (claim 1)?
Regarding claims 4 and 5, the applicant recites, “the embroidery data is output to the sewing mechanism in response to a third instruction to output the embroidery data”. Firstly, is “a third instruction” referring to the “third instruction” as introduced within line 13 of claim 1? If so, “a third instruction” should be “the third instruction” or “said third instruction”. If not, the use of identical terminology is confusing and renders the claim language unclear. Secondly, within base claim 1, the applicant recites that the embroidery data is output based on “a second instruction” and the cutting data is output based on “a third instruction”. Therefore, how can the embroidery data be output to the sewing mechanism based on a third instruction (claims 4 and 5) when it is already being output to the sewing mechanism based on a second instruction (claim 1)?
Note that claims 7-10 and 15-16 each depend from either claim 3 or claim 4 and are therefore also rejected under 35 U.S.C. 112(b) as being dependent from a rejected base claim. Additionally, note that each of claims 7-10 and 15-16 recite that either the cutting data is output to the cutting mechanism based on the second instruction or that the embroidery data is output to the sewing mechanism based on the third instruction which is opposite of what is claimed within base claim 1. Accordingly, these recitations are indefinite for the same reasons as addressed previously.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-4, 6, 13 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over NIIMI et al. (US 2005/0182508 A1) in view of MORI (US 5,791,270) and BAILIE (US 2016/0031108 A1).
NIIMI discloses a data processing method comprising selecting a work as a selected work (note that work can be retrieved/selected from an external storage or input/selected from a scanner 25; para 0117) (S201 of figure 4); determining print data and embroidery (sewing) data to be used for creating the selected work (S202 of figure 4) (S214 and S216 of figure 6); and outputting the print data to the printer (inkjet printer) from a computer (1) in response to receiving a first instruction (“embroidery data start code” and/or command from printer) and outputting the embroidery data to the sewing machine from the computer (1) in response to receiving a second instruction (“print data start code” and/or command from embroidery machine) (S203-S205 of figure 4) (para 0176-0188). Even though the applicant is not currently claiming a specific ordering of outputting data within claim 1, note that NIIMI discloses both embroidery before printing and printing before embroidery (para 0194-0197) (Figures 18A-18C) and therefore, NIIMI discloses both the outputting of print data prior to the outputting of embroidery data and the outputting of embroidery data prior to the outputting of print data.
However, NIIMI fails to disclose the work being selected from the displaying of sample images of works to be created. As is old and known in the art, MORI discloses a user selecting a work from the displaying of sample images of works to be created, in order to allow a user to visualize and thus create a desired final product (Figures 5-7). 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 step of selecting/retrieving a work from an external storage of NIIMI wherein the work is selected from among a plurality of works displayed as sample images, in light of the things of MORI and common knowledge in the art, in order allow a user to visualize and thus create a desired final product.
NIIMI further fails to disclose determining cut data and outputting the cut data to a cutting machine. BAILIE discloses a data processing method wherein cutting data (107) is determined/produced from sewing data (106) and outputted to a cutting machine (cutter 109) from a computer (103) in order to create an applique (Figures 1-3). 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 NIIMI with a cutting machine wherein cutting data is determined/produced from sewing data and outputted to the cutting machine from a computer in order to create an applique. Based on the combination of NIIMI, MORI and BAILIE, note that the outputting of the cutting data of BAILIE would inherently be after the outputting of both the embroidery data of NIIMI and the print data of NIIMI since the embroidery data of NIIMI does not related to an applique and would not include sewing data for attaching an applique to a work piece. Additionally, since the combination of NIIMI, MORI and BAILIE teaches the creation of print data, embroidery data and cutting data from any selected work/image, the “works” displayed as sample images can be considered “works to be created by the printer, the cutting machine and the sewing machine” as claimed.
Allowable Subject Matter
Claims 11, 12 and 14 would be allowable if the nonstatutory double patenting rejection is overcome.
Additionally, claims 2, 5, 7-10 and 15-16 would be allowable if the nonstatutory double patenting rejection is overcome, as set forth in this Office action, and rewritten to include all of the limitations of the base claim and any intervening claims.
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 KATO et al. (US 2006/0137583 A1) discloses a device/method for both printing and embroidering on a medium which involves determining print data and embroidery data.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
NED
/NATHAN E DURHAM/Primary Examiner, Art Unit 3732
