DETAILED ACTION
Election/Restrictions
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/17/23. The election is considered “without traverse” because applicant did not “distinctly and specifically point out supposed errors in the election of species requirement”.
Specification
The spec amendment received 2/28/22 is entered as being directed toward formal matters regarding typographical errors.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Osborne (US Pat. No. 9,211,757 B2) in view of Niznansky (US Pat. No. 1,655,330) and in further view of Lederer (US Pat. No. 3,509,734).
Regarding claim 1, Osborne discloses a writing instrument fidget assembly (abstract; noting this is intended use) comprising: a base configured to be mounted between fingers of a user (col. 6, lines 54-56; noting between “the knuckles”), wherein the base includes a securing element and a bearing coupled to the base (Fig. 9 and col. 8, lines 64-67; noting the securing element is item 20 in Fig. 14); a hub coupled to the bearing (Fig. 9; noting the shaft is the “hub”, also Fig. 1, item 20); and an attachment device configured to attach to a writing instrument (Fig. 1, item 40), wherein the attachment device comprises a body member with a curved surface configured to receive the writing instrument and an opposing side to the curved surface (Fig. 2, items 20 and 22 collectively; noting an opposing side is inherent). It is noted that Osborne does not specifically disclose that the based is configured to be mounted to a finger. However, Niznansky discloses a similar writing instrument attached to a base wherein the based is configured to be attached to a finger (Fig. 1). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Osborne to make the based configured to be mounted to a finger as taught by Niznansky because doing so would be applying a known technique (the base attaching to a finger via a ring securing element) to a known product (a writing instrument spinner designed to be held between fingers) ready for improvement to yield predictable results (modifying the writing instrument spinner to be designed to be held by just one finger using a securing element in the form of a ring). Finally, it is noted that the combined Osborne and Niznansky do not specifically disclose that the hub has a first magnet, and the body has a second magnet. However, Osborne clearly discloses that the gripping member may be “selectively decoupled” from the base (col. 7, lines 19-33). In addition, Lederer disclose a ring wherein a member may be selectively decoupled from the base utilizing a first and second magnet (Fig. 4 and col. 3, line 72 to col. 4, line 5). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Osborne and Niznansky to use a first and second magnet as taught by Lederer because doing so would be use of a known technique (using a first and second magnet to selectively decouple a ring member to a base) to improve a similar product (an instrument spinner that can be decoupled to a ring base) in the same way (using a first and second magnet to selectively decouple the gripper of an writing instrument spinner to a ring base).
Regarding claim 2, the combined Osborne, Niznansky, and Lederer disclose that the attachment device comprises an elastomeric element to couple and secure the writing instrument to the attachment device (Osborne: col. 7, lines 34-65; noting that is “elastomeric” in the fact that it can be a “spring clip” which “expands” and retracts to accommodate the writing element to provide “friction fit”; i.e. it has elastic properties). In the alternative, regarding the exact material used, it has been held that the selection of a known material based on its suitability for its intended use is obvious. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(see applicant’s spec, par. [0023]; applicant giving no criticality to the exact material used). Thus, it would have been obvious at the time of filing that the exact material used to grip the writing instrument could be selected based on its ability to grip the writing instrument with a friction fit.
Regarding claim 3, the combined Osborne, Niznansky, and Lederer disclose that the hub is rotatable with respect to the base (Osborne: Fig. 9 and col. 8, line 64 to col. 9, line 9; noting this is obvious).
Regarding claim 4, the combined Osborne, Niznansky, and Lederer disclose that the first magnet is configured to releasably couple to the second magnet (Lederer: col. 4, lines 18-26).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
6/23/23
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711