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 .
Detailed Action
Claims 1-12 are currently pending. Claims 1-11 remain rejected despite Applicant’s arguments filed 10/23/2025. Claim 12 is newly rejected. Amendment necessitated new grounds of rejection presented within this Office action. Claim objections remain after Applicant’s amendment. Claims contain outstanding double patenting rejections. Response to Applicant arguments can be found at the end of this Office action. This Office action is final.
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 1-7 and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 12 of copending Application No. 19/175,322 in view of Moffit (US 1679911 A). The cited claims fully encompass the subject matter of the instant claim except for the first and second threaded male members each extending (longitudinally from the body/laterally) in opposing directions relative to each other.
However, Moffit teaches first and second male members extending (longitudinally from the body/laterally) in opposing directions relative to each other. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the toy track assembly of the cited application with the male members extending from the track connector in directions opposing from each other to provide a more adaptable arrangement of track pieces for different desired heights and a stable supported track with a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12, line 3-4: “a first male member and a second male member,” should be “a first threaded male member and a second threaded male member” as later recited within the claim.
Appropriate correction is required.
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.
Claims 1, 5-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lemelson (US 3451161 A) in view of Moffit (US 1679911 A).
Regarding claim 1: Lemelson teaches a toy track assembly (Fig.8), comprising: a first and second support column (60S; Fig.8 apparent from Fig.8 only one half shown; also see Fig.9 two support columns on either side supporting track), the first and second support columns each comprising at least one first opening (hole in top of 60S; Fig.8); a track connector (60; Fig.8), wherein the track connector comprises a main body and a first threaded male member and a second threaded male member (60F; Fig.8 one half of track shown), wherein the first threaded male member is received within the first opening of the first support column and the second threaded male member is received within the first opening of the second support column, such that the track connector is disposed between the first and second support columns (apparent from Figs.8 and 9); and a first and second fastener (nut shown at bottom of 60F; Fig.8), wherein, via a threaded engagement, the first fastener is coupled to the first threaded male member and the second fastener is coupled to the second threaded male member, thereby securing the track connector to the first and second support columns (Figs.8 and 9). Lemelson does not teach wherein the first and second threaded male members each extend longitudinally from the main body in opposing directions relative to each other.
However, Moffit teaches wherein first and second male members each extend longitudinally from the main body in opposing directions relative to each other (Fig.14). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the toy track assembly of Lemelson with the opposing extension of male members as in Moffit to provide a connection of the track that is easier to adjust in height as desired by the user with a reasonable expectation of success.
Regarding claim 5: Lemelson teaches a toy track assembly (Fig.8) with first and second support columns (60S; Fig.8 apparent from Fig.8 only one half shown also see Fig.9) with an opening configured to receive the first or second threaded male members of the track connector (60F; Fig.8). Lemelson further teaches the use of a second opening (72H; Fig.9) within first and second support columns (72,72’; Fig.9). It would be obvious to one of ordinary skill in the art to use additional openings to allow for track height adaptations for user preference with a reasonable expectation of success.
Regarding claim 6: Lemelson teaches a toy track assembly (Fig.8) with first and second support columns (60S; Fig.8 apparent from Fig.8 only one half shown also see Fig.9) with an opening configured to receive the first or second threaded male members of the track connector (60F; Fig.8). Lemelson further teaches the use of a third opening (top 72H; Fig.9) within first and second support columns (72,72’; Fig.9). It would be obvious to one of ordinary skill in the art to use additional openings to allow for track height adaptations for user preference with a reasonable expectation of success.
Regarding claim 7: Lemelson further teaches wherein the third opening is above the second opening and the second opening is above the first opening (various 72H openings; Fig.9). It would be obvious to one of ordinary skill in the art to use additional openings to allow for track height adaptations for user preference with a reasonable expectation of success.
Regarding claim 8: Lemelson further teaches a toy track assembly (Fig.8), further comprising a bridge support accessory (21; Fig.9' and Col.18, lines 60-66), wherein the bridge support accessory comprises a first and second opening (holes 20''H; Fig.9' and Col.18, lines 42-45 "border portions" 20''D being on either side as apparent within Fig.9').
Regarding claim 9: Lemelson further teaches wherein the first opening of the bridge support accessory receives the first threaded male member of the track connector and the second opening of the bridge support accessory receives the second threaded male member of the track connector (Col.18, lines 42-45).
Regarding claim 11: Lemelson teaches a toy track assembly (Fig.8), comprising: a first and second riser (6S; Fig.8 apparent from Fig.8 only one half shown and see Fig.9), the first and second risers each comprising at least one first opening (hole in top of 60S; Fig.8); a track securement member (60; Fig.8), wherein the track securement member comprises a first threaded male member and a second threaded male member (60F; Fig.8 one half of track shown and see Fig.9), wherein the first threaded male member is received within the first opening of the first riser and the second threaded male member is received within the first opening of the second riser (apparent from Figs.8 and 9); and a first and second fastener (nut shown at bottom of 60F; Fig.8), wherein the first fastener is secured to the first threaded male member and the second fastener is coupled to the second threaded male member, thereby securing the track securement member to the first and second risers (Figs.8 and 9). Lemelson does not teach wherein the first and second threaded male members each extend laterally in opposing directions relative to each other.
However, Moffit teaches wherein first and second male members each extend laterally in opposing directions relative to each other (Fig.14). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the toy track assembly of Lemelson with the opposing extension of male members as in Moffit to provide a connection of the track that is easier to adjust in height as desired by the user with a reasonable expectation of success.
Regarding claim 12: Lemelson teaches a toy track assembly (Fig.8), comprising: a first and second riser (6S; Fig.8 apparent from Fig.8 only one half shown and see Fig.9), the first and second risers each comprising at least one first opening (hole in top of 60S; Fig.8); a track connector (60; Fig.8), wherein the track connector comprises a first threaded male member and a second threaded male member (60F; Fig.8 one half of track shown and see Fig.9), wherein the first threaded male member is received within the first opening of the first riser and the second threaded male member is received within the first opening of the second riser (apparent from Figs.8 and 9); and a first and second fastener (nut shown at bottom of 60F; Fig.8), wherein the first fastener is secured to the first threaded male member and the second fastener is coupled to the second threaded male member, thereby securing the track connector to the first and second risers (Figs.8 and 9). Lemelson does not teach wherein the first and second threaded male members each extend laterally in opposing directions relative to each other.
However, Moffit teaches wherein first and second male members each extend laterally in opposing directions relative to each other (Fig.14). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the toy track assembly of Lemelson with the opposing extension of male members as in Moffit to provide a connection of the track that is easier to adjust in height as desired by the user with a reasonable expectation of success.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lemelson in view of Moffit and Juliano et al. (US 20160236109 A1).
Regarding claim 2: Lemelson teaches a toy track assembly (Fig.8), with a track connector (60; Fig.8). Lemelson does not teach wherein the track connector further comprises a receiving member and a protruding member, wherein the receiving member of the track connector is configured to couple to a protruding member of a first toy track and the protruding member is configured to couple to a receiving member of a second toy track.
However, Juliano teaches wherein a track connector (10; Fig.7) further comprises a receiving member (180; Fig.7) and a protruding member (170; Fig.7), wherein the receiving member of the track connector is configured to couple to a protruding member of a first toy track (Para.[0032], lines 9-13) and the protruding member is configured to couple to a receiving member of a second toy track (Para.[0032], lines 1-5). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the toy track assembly of Lemelson with a track connector such as within Juliano to provide sectional track adaptability for user preference with a reasonable expectation of success.
Regarding claim 3: Lemelson teaches a toy track assembly (Fig.8), with a track connector (60; Fig.8). Lemelson does not teach the track connector further comprising an extended flat region adjacent to the male member of the track connector.
However, Juliano teaches a track connector further comprising an extended flat region adjacent to the male member of the track connector (179; Fig.7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the toy track assembly of Lemelson with a track connector such as within Juliano to provide stable sectional track adaptability for user preference with a reasonable expectation of success.
Regarding claim 4: Lemelson teaches a toy track assembly (Fig.8), with a track connector (60; Fig.8). Lemelson does not teach wherein the male member of the track connector comprises a distal end and the extended flat region comprises a distal end, and wherein the distal end of the extended flat region is below the distal end of the male member of the track connector.
However, Juliano teaches wherein the male member of the track connector (170; Fig.7) comprises a distal end (178; Fig.7) and the extended flat region comprises a distal end (end of 179; Fig.7), and wherein the distal end of the extended flat region is below the distal end of the male member of the track connector (Fig.7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the toy track assembly of Lemelson with a track connector such as within Juliano to provide stable sectional track adaptability for user preference with a reasonable expectation of success.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lemelson in view of Moffit and Bonanno (US 2676425 A).
Regarding claim 10: Lemelson teaches a toy track assembly (Fig.8) with first or second threaded male members (60F; Fig.8) of the track connector (60; Fig.8). Lemelson does not teach a pivoting gate accessory, wherein the pivoting gate accessory further comprises an extended region having an opening.
However, Bonanno teaches a pivoting gate accessory (Fig.1), wherein the pivoting gate accessory further comprises an extended region (side extension of 10; Fig.7) having an opening (mounting hole shown at side of 10; Fig.7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the toy track assembly to include a pivoting gate accessory to provide additional user accessories to be mounted in a stable condition with a reasonable expectation of success.
Response to Arguments
In response to Applicant’s argument that the double patenting rejection presented within Non-Final rejection filed 07/23/2025 does not require a response, due to amendment, claims are now provisionally rejected on the ground of nonstatutory double patenting over copending Application No. 19/175,322; therefore, the current double patenting rejection will be maintained until overcome by a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. See MPEP 804(I)(B)(1)(b)(ii).
In response to Applicant’s argument that Lemelson fails to teach a second support column as well as a second threaded male member. Examiner submits the above obviousness rejection and notes that Lemelson also teaches a support column on either side of a supported track within Fig.9. Further, regarding the amended limitations including the threaded members extending in opposing direction, see corresponding obviousness rejections above in view of Moffit.
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 HEAVEN BUFFINGTON whose telephone number is (703)756-1546. The examiner can normally be reached Monday-Friday 9:00am to 5:00pm ET.
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/HEAVEN R BUFFINGTON/Examiner, Art Unit 3615
/S. Joseph Morano/Supervisory Patent Examiner, Art Unit 3615