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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,752,444. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘444 patent would read on / anticipate the claims of the present application.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lemkin et al. (US Patent No. 3,670,449) in view of Jazouli (US Patent No. 9,522,342).
In Reference to Claims 1-5 and 8-14
Lemkin teaches (Claim 1) A building unit of a toy building set, the building unit comprising: at least four polygonal sections (items 62-72, fig’s 5-7), each comprising a plurality of edges (edges of items 62-72); a first portion of the plurality of edges comprising a plurality of integral hinges connecting the at least four polygonal sections (items 52-60, fig’s 5, 6, and 9), the building unit configured to fold and unfold over multiple cycles at the plurality of integral hinges from a flat position into a closed position which is a polyhedron with a hollow interior (fig’s 5 and 6); and a second portion of the plurality of edges comprising integral teeth (items 80, fig’s 5-7) and recesses (items 82, fig’s 5-7), the integral teeth comprising a tip and at least one recess-adjacent surface (tip / face of items 80, and any of the adjacent surfaces, fig’s 5-7), the integral teeth of a first of the plurality of edges configured to [] fit with the recesses of a second of the plurality of edges in the closed position (column 3 lines 17-36); wherein at least one recess-adjacent surface of integral teeth is configured to deform (column 3 lines 49-55) [];
(Claim 2) wherein a tip of the integral teeth is visible on an exterior of the building unit in the closed position (fig. 6);
(Claim 3) wherein in both the flat and closed positions of the building unit, a tip of the integral teeth is configured to retain a fixed orientation relative to their polygonal section (fig’s 5 and 6);
(Claim 4) further comprising: an exterior surface visible in the closed position (fig 6) and comprising a material receptive to marking (column 3 lines 14-17; note this is extremely broad); an interior surface; and an outer edge (interior surface and outer edges, fig’s 5 and 6);
(Claim 5) wherein the marking comprises pencil, crayon, chalk, paint, or ink drawing (column 3 lines 14-17, polypropylene can be marked with any of these, again note this is extremely broad, nearly any material can be marked with these);
(Claim 8) wherein the plurality of integral hinges are configured as a groove on one surface of the building unit in the flat position (fig’s 5 and 9, column 3 lines 3-5).
(Claim 9) wherein the building unit comprises cardstock, cardboard, bagasse, wood, laminate, plastic, vellum, rubber, foam, plasticized pulp, or pulp, or any combination thereof (column 3 lines 14-17, polypropylene);
(Claim 10) wherein the integral teeth are polygonal (items 80, fig. 7, rectangular);
(Claim 11) wherein the integral teeth are rectangular (items 80, fig. 7, rectangular);
(Claim 12) wherein the integral teeth comprise one or more compressible projections (fig. 7, laterally projecting portion of item 80 is deformable / compressible; column 3 lines 49-55);
(Claim 13) wherein the building unit is manufactured using a cutting process, a molded process, or combinations thereof (column 3 lines 56-58);
(Claim 14) wherein the integral teeth are an extension of a same material as the at least four polygonal sections (fig. 5 and column 3 lines 56-58); wherein the integral teeth and at least four polygonal sections have a same thickness (fig. 7, thickness of panel and of item 80 are the same) and are configured so that the building unit in the flat position is formed from a single sheet of material (fig. 5, molded in flat panels, construction shown in fig. 5 is substantially flat, note this is broad).
Lemkin fails to teach the feature of a friction fit which holds the device closed of claim 1.
Jazouli teaches (Claim 1) [a construction element with teeth using] a friction fit (column 21 lines 20-30; interference fit is friction fit); deforming in the closed position (this is the definition of interference fit); and wherein friction between two integral teeth hold the building unit in the closed position (column 21 lines 20-30; again, this is the definition of interference fit).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the construction element of Lemkin with the feature of using a friction fit as taught by the construction element of Jazouli for the purpose of providing a structural connection that eliminates the need for flanges as taught by Jazouli (column 21 lines 20-30), making the system simpler, easier to manufacture and assemble, and more attractive to manufacturers and users.
Further, the examiner notes that it has been held that the selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Since Lemkin teaches a construction element that has folding panels and mechanisms at the edges to lock the panels together, merely claiming any known and suitable locking mechanism at the edge (friction fit, fasteners, flanges, etc.) is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claims 6 and 15
The modified device of Lemkin teaches all of claim 1 as discussed above.
Lemkin fails to specifically teach the feature of claim 6.
Jazouli teaches (Claim 6) wherein a tip of the integral teeth is wider than the recesses (column 21 lines 20-30; this is the definition of interference fit);
(Claim 15) wherein the friction is based on at least one of a decompressive force generated by the deformation (again, this is how an interference fit works).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the construction element of Lemkin with the feature of using an interference fit as taught by the construction element of Jazouli for the purpose of providing a structural connection that eliminates the need for flanges as taught by Jazouli (column 21 lines 20-30), making the system simpler, easier to manufacture and assemble, and more attractive to manufacturers and users.
Further, the examiner notes that it has been held that the selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Since Lemkin teaches a construction element that has folding panels and mechanisms at the edges to lock the panels together, merely claiming any known and suitable locking mechanism at the edge (friction fit, fasteners, flanges, etc.) is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 7
The modified device of Lemkin teaches all of claim 1 as discussed above.
Lemkin fails to teach the features of claim 7.
Jazouli teaches (Claim 7) wherein the integral teeth are rounded along two opposing sides (fig’s 2 and 14, teeth rounded on at least two sides), wherein the integral teeth are wider, at a widest point, than an interlocking portion of the recesses (column 21 lines 20-30; interference fit).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the construction element of Lemkin with the feature of using an interference fit as taught by the construction element of Jazouli for the purpose of providing a structural connection that eliminates the need for flanges as taught by Jazouli (column 21 lines 20-30), making the system simpler, easier to manufacture and assemble, and more attractive to manufacturers and users.
Further, the examiner notes that it has been held that the selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Since Lemkin teaches a construction element that has folding panels and mechanisms at the edges to lock the panels together, merely claiming any known and suitable locking mechanism at the edge (friction fit, fasteners, flanges, etc.) is an obvious matter of engineering design choice, and is not a patentable advance.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the construction element of Lemkin with the feature of teeth with rounded sides as taught by Jazouli for the purpose of allowing the finished block to include rounded corners as shown by Jazouli (fig. 14), making the device easier to handle, safer, and more attractive to the users.
Further, the examiner notes that it has been held that changes in shape are obvious matter of engineering design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since many different shapes would work equally well for the purpose of tooth type connections, merely claiming a rounded shape is an obvious matter of engineering design choice and is not a patentable advance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711