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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 11 discloses the limitation of “a recess is formed on an outer surface side of the wall portion” but the specification and figures as originally filed fail to provide support for this feature since the outer surface side of the wall portion as shown in Fig. 3 does not show recesses and instead shows projecting portions with the recesses created from an inner surface of the wall as in Fig. 2, furthermore the vertical rib and recess are disclosed in paragraph 13 as being on the same inner surface side. For the purposes of examination, the claim will be interpreted as a recess and a vertical rib being formed on the same inner surface side of the wall portion.
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 11-19 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 11 discloses in lines 3-4 that the first surface includes a plurality of penetration holes on which fusible toy beads are placed but then in lines 11-12 discloses that the first surface includes a placement part on which the fusible toy beads are placed which makes the scope of the claim unclear since a relationship between the penetration holes and placement part has not been established to understand how two different elements are achieving the same function as claimed. For the purposes of examination the claim will be interpreted as the placement part having the plurality of penetration holes. The claim further discloses in lines 15-17 that a recess is formed on an ”outer surface side of the wall portion” but then discloses that a vertical rib is formed “on an inner surface side of the wall portion on which the recess is formed” which makes the scope of the claim unclear since the recess is attributed as being located on both outer and inner surface sides and as such the scope of the claim is unascertainable.
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) 11-15, 17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poulus (2017/0087480), Sunago (JP2015181915A) and Vanicek (EP1275923A2). Poulus discloses a fusible toy bead creating apparatus (paragraphs 122-152, Figs. 29 & 33) having a tray (301) with a table (310) rotatably attached to the tray (Figs. 29, 31 & 39) by a hinge (308) and a receiver (315) with a receiving surface configured to receive fusible toy beads moved for drying (paragraph 152). The table further includes a first upper surface and a second opposite lower surface configured to allow fusible toy beads to be placed on the first surface when the table is in a first position with the second surface of the table facing the tray (Figs. 29 & 33) and the table is reversible to place the table in a second position where the first surface faces the receiving surface (Fig. 39). The table has a central placement part on the first surface for receiving the toy beads that is recessed to define a wall portion on an outer periphery of the placement part, a vertical rib is formed by a pair of recesses (379B) on an inner surface of the wall portion (Fig. 31). Poulus discloses the basic inventive concept with the exception of the table having a plurality of penetration holes on which the beads are placed and the receiving surface having a plurality of protrusions. Sunago discloses a table (21) with opposing first and second surfaces (Fig. 7) and penetration holes (31) penetrating through both surfaces on which fusible beads can be placed (abstract, Fig. 5), wherein the plurality of penetration holes are arranged in the table such that adjacent rows and columns are offset (Fig. 6). The first surface includes connecting grooves or gaps (35) formed in edges (33) of the penetration holes for connecting adjacent penetration holes (Fig. 8). Since Poulus and Sunago both disclose surfaces for receiving fusible beads, it would have been obvious to one of ordinary skill in the art to modify the table of Poulus to have penetration holes configured as taught by Sunago as opposed to the protrusions for the predictable result of enabling more versatility in the shape and placement of the beads to create desired designs in a manner that further provides enhanced utility and function. In regard to the grooves being located on both the first and second surfaces, the examiner notes that a mere duplication of parts has been held to have no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Vanicek discloses a receiving surface for drying (abstract, description paragraph 1) configured with a plurality of protrusions (12) formed as substantially circular flat shapes for supporting an object to be dried thereon and wherein the protrusions are arranged so that adjacent rows and columns of the protrusions are offset (Fig. 1). Since both Poulus and Vanicek disclose receiving surfaces that can be used for drying, it would have been obvious to one of ordinary skill in the art to modify the receiving surface of Poulus and Sunago to include protrusions as taught by Vanicek for the predictable result of enabling greater ventilation around the object to be dried which helps improve drying of the object.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poulus, Sunago and Vanicek as applied for claim 11 above and further in view of Zander (3274727). Poulus, Sunago and Vanicek disclose the basic inventive concept with the exception of an inner diameter of the penetration holes reducing from the first surface toward the second surface. Zander discloses a table (1) with opposing first and second surfaces and penetration holes (3) penetrating through both surfaces for receiving thereon decorative elements and wherein the holes are configured with a tapered shape so as to provide a larger opening on the first surface than the second surface (Fig. 4c). It would have been obvious to one of ordinary skill in the art from the teaching of Zander to taper an inner diameter of the penetration holes of Poulus, Sunago and Vanicek for the predictable result of shaping the holes for positioning a decorative object. Furthermore, changes in shape have been held to be obvious absent persuasive evidence that the claimed configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poulus, Sunago and Vanicek as applied for claim 11 above and further in view of Bizzotto (2013/0236679). Poulus, Sunago and Vanicek disclose the basic inventive concept with the exception of including recess holes adjacent the penetration holes along an axial direction thereof. Bizzotto discloses a surface for receiving shaped pieces (Fig. 6) having through holes (3) combined with axial recess holes (5, 6). It would have been obvious to one of ordinary skill in the art to include recess holes as taught by Bizzotto to the table of Poulus, Sunago and Vanicek for the predictable result of shaping a hole for enabling pieces to be retained on a surface. Furthermore, changes in shape have been held to be obvious absent persuasive evidence that the claimed configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 11-15 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10478740 in view of Poulus, Sunago and Vanicek. The patent discloses the basic inventive concept of a fusible toy bead creating apparatus having a table with first and second surfaces with penetration holes having axial recess holes and each of the sides includes connecting grooves connecting adjacent penetration holes, a receiver and a tray rotatably connected to the table with the exception of the table having a placement part with a wall portion formed on an outer periphery of the placement part with a recess and a vertical rib, a receiver having a plurality of protrusions and the penetration holes arranged such that adjacent rows and columns of holes are offset. Poulus discloses a fusible toy bead creating apparatus (paragraphs 122-152, Figs. 29 & 33) having a tray (301) with a table (310) rotatably attached to the tray (Figs. 29, 31 & 39) by a hinge (308) and a receiver (315) with a receiving surface configured to receive fusible toy beads moved for drying (paragraph 152). The table further includes a first upper surface and a second opposite lower surface configured to allow fusible toy beads to be placed on the first surface when the table is in a first position with the second surface of the table facing the tray (Figs. 29 & 33) and the table is reversible to place the table in a second position where the first surface faces the receiving surface (Fig. 39). The table has a central placement part on the first surface for receiving the toy beads that is recessed to define a wall portion on an outer periphery of the placement part, a vertical rib is formed by a pair of recesses (379B) on an inner surface of the wall portion (Fig. 31). It would have been obvious to one of ordinary skill in the art to configure the table with a placement part surrounding wall portion with a recess and a vertical rib as taught by Poulus since such modifications would have involved a mere change in shape which has been held to be an obvious modification. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966. Sunago discloses a table (21) with opposing first and second surfaces (Fig. 7) and penetration holes (31) penetrating through both surfaces on which fusible beads can be placed (abstract, Fig. 5), wherein the plurality of penetration holes are arranged in the table such that adjacent rows and columns are offset (Fig. 6). It would have been obvious to one of ordinary skill in the art to position the penetration holes as taught by Sunago for the predictable result of enabling more versatility in the shape and placement of the beads to create desired designs in a manner that further provides enhanced utility and function. Vanicek discloses a receiving surface for drying (abstract, description paragraph 1) configured with a plurality of protrusions (12) formed as substantially circular flat shapes for supporting an object to be dried thereon and wherein the protrusions are arranged so that adjacent rows and columns of the protrusions are offset (Fig. 1). It would have been obvious to one of ordinary skill in the art to modify the receiving surface to include protrusions as taught by Vanicek for the predictable result of enabling greater ventilation around the object to be dried which helps improve drying of the object.
Claims 11-12, 14 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11117066 and further in view of Poulus and Sunago. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent discloses the basic inventive concept of a fusible toy bead creating apparatus having a table with first and second surfaces with penetration holes having axial recess holes and each of the sides includes connecting grooves connecting adjacent penetration holes, a receiver with a plurality of substantially circular flat shaped protrusions and a tray. The patent discloses the basic inventive concept with the exception of the configuration of the table and the configuration of the offset positioning of the plurality of penetration holes and protrusions. Poulus discloses a fusible toy bead creating apparatus (paragraphs 122-152, Figs. 29 & 33) having a tray (301) with a table (310) rotatably attached to the tray (Figs. 29, 31 & 39) by a hinge (308) and a receiver (315) with a receiving surface configured to receive fusible toy beads moved for drying (paragraph 152). The table further includes a first upper surface and a second opposite lower surface configured to allow fusible toy beads to be placed on the first surface when the table is in a first position with the second surface of the table facing the tray (Figs. 29 & 33) and the table is reversible to place the table in a second position where the first surface faces the receiving surface (Fig. 39). The table has a central placement part on the first surface for receiving the toy beads that is recessed to define a wall portion on an outer periphery of the placement part, a vertical rib is formed by a pair of recesses (379B) on an inner surface of the wall portion (Fig. 31). It would have been obvious to one of ordinary skill in the art to configure the table with a placement part surrounding wall portion with a recess and a vertical rib as taught by Poulus since such modifications would have involved a mere change in shape which has been held to be an obvious modification. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966. Sunago discloses a table (21) with opposing first and second surfaces (Fig. 7) and penetration holes (31) penetrating through both surfaces on which fusible beads can be placed (abstract, Fig. 5), wherein the plurality of penetration holes are arranged in the table such that adjacent rows and columns are offset (Fig. 6). It would have been obvious to one of ordinary skill in the art to position the penetration holes as taught by Sunago for the predictable result of enabling more versatility in the shape and placement of the beads to create desired designs in a manner that further provides enhanced utility and function.
Claims 11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11117066 and further in view of Poulus, Sunago and Vanicek. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent discloses the basic inventive concept of a fusible toy bead creating apparatus having a table with first and second surfaces with penetration holes having axial recess holes and each of the sides includes connecting grooves connecting adjacent penetration holes, a receiver with a plurality of substantially circular flat shaped protrusions and a tray. The patent discloses the basic inventive concept with the exception of the configuration of the table and the configuration of the offset positioning of the plurality of penetration holes and protrusions. Poulus discloses a fusible toy bead creating apparatus (paragraphs 122-152, Figs. 29 & 33) having a tray (301) with a table (310) rotatably attached to the tray (Figs. 29, 31 & 39) by a hinge (308) and a receiver (315) with a receiving surface configured to receive fusible toy beads moved for drying (paragraph 152). The table further includes a first upper surface and a second opposite lower surface configured to allow fusible toy beads to be placed on the first surface when the table is in a first position with the second surface of the table facing the tray (Figs. 29 & 33) and the table is reversible to place the table in a second position where the first surface faces the receiving surface (Fig. 39). The table has a central placement part on the first surface for receiving the toy beads that is recessed to define a wall portion on an outer periphery of the placement part, a vertical rib is formed by a pair of recesses (379B) on an inner surface of the wall portion (Fig. 31). It would have been obvious to one of ordinary skill in the art to configure the table with a placement part surrounding wall portion with a recess and a vertical rib as taught by Poulus since such modifications would have involved a mere change in shape which has been held to be an obvious modification. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966. Sunago discloses a table (21) with opposing first and second surfaces (Fig. 7) and penetration holes (31) penetrating through both surfaces on which fusible beads can be placed (abstract, Fig. 5), wherein the plurality of penetration holes are arranged in the table such that adjacent rows and columns are offset (Fig. 6). It would have been obvious to one of ordinary skill in the art to position the penetration holes as taught by Sunago for the predictable result of enabling more versatility in the shape and placement of the beads to create desired designs in a manner that further provides enhanced utility and function. Vanicek discloses a receiving surface for drying (abstract, description paragraph 1) configured with a plurality of protrusions (12) formed as substantially circular flat shapes for supporting an object to be dried thereon and wherein the protrusions are arranged so that adjacent rows and columns of the protrusions are offset (Fig. 1). It would have been obvious to one of ordinary skill in the art to modify the receiving surface to include protrusions as taught by Vanicek for the predictable result of enabling greater ventilation around the object to be dried which helps improve drying of the object.
Claims 11 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11117066 and further in view of Poulus, Sunago and Zander. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent discloses the basic inventive concept of a fusible toy bead creating apparatus having a table with first and second surfaces with penetration holes having axial recess holes and each of the sides includes connecting grooves connecting adjacent penetration holes, a receiver with a plurality of substantially circular flat shaped protrusions and a tray. The patent discloses the basic inventive concept with the exception of the configuration of the table and the configuration of the offset positioning of the plurality of penetration holes and the tapering of the penetration holes. Poulus discloses a fusible toy bead creating apparatus (paragraphs 122-152, Figs. 29 & 33) having a tray (301) with a table (310) rotatably attached to the tray (Figs. 29, 31 & 39) by a hinge (308) and a receiver (315) with a receiving surface configured to receive fusible toy beads moved for drying (paragraph 152). The table further includes a first upper surface and a second opposite lower surface configured to allow fusible toy beads to be placed on the first surface when the table is in a first position with the second surface of the table facing the tray (Figs. 29 & 33) and the table is reversible to place the table in a second position where the first surface faces the receiving surface (Fig. 39). The table has a central placement part on the first surface for receiving the toy beads that is recessed to define a wall portion on an outer periphery of the placement part, a vertical rib is formed by a pair of recesses (379B) on an inner surface of the wall portion (Fig. 31). It would have been obvious to one of ordinary skill in the art to configure the table with a placement part surrounding wall portion with a recess and a vertical rib as taught by Poulus since such modifications would have involved a mere change in shape which has been held to be an obvious modification. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966. Sunago discloses a table (21) with opposing first and second surfaces (Fig. 7) and penetration holes (31) penetrating through both surfaces on which fusible beads can be placed (abstract, Fig. 5), wherein the plurality of penetration holes are arranged in the table such that adjacent rows and columns are offset (Fig. 6). It would have been obvious to one of ordinary skill in the art to position the penetration holes as taught by Sunago for the predictable result of enabling more versatility in the shape and placement of the beads to create desired designs in a manner that further provides enhanced utility and function. Zander discloses a table (1) with opposing first and second surfaces and penetration holes (3) penetrating through both surfaces for receiving thereon decorative elements and wherein the holes are configured with a tapered shape so as to provide a larger opening on the first surface than the second surface (Fig. 4c). It would have been obvious to one of ordinary skill in the art from the teaching of Zander to taper an inner diameter of the penetration holes for the predictable result of shaping the holes for positioning a decorative object. Furthermore, changes in shape have been held to be obvious absent persuasive evidence that the claimed configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Response to Arguments
Applicant’s arguments with respect to claim(s) 11-19 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 ALYSSA HYLINSKI whose telephone number is (571)272-2684. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711