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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show actuating means (28) mentioned in paragraph 25 of the current application. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 9 is objected to because of the following informalities: line 2 of the claim, one of “the the” should be deleted. Also similarly in claim 15, line 2, one of “walls walls” should be deleted.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 1 recites “actuating means for automatically moving ..” which invoke 112(f) paragraph. Similarly in claim 11. Note that actuating means is described in the spec. Paragraph 25 as element (2*0 which was not found in the drawing and therefore, examiner couldn’t ascertain the structure of the limitation.
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 11-15 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.
Claims 11-15 supposedly directed to “a method”. Method claims usually include steps that construct the claim. However, the claims do not include any steps. It is simply restating the structure of the apparatus of claims 1-10 and therefore the claims are indefinite.
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.
Claim(s) 1-3 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hammann (DE 202013005698) in view of Weinreich (US patent No. 5,041,044).
As to claim 1, Hammann teaches an actuated hidden compartment apparatus supporting an illusion (abstract), comprising: a
housing that includes a removable base (bottom part of the box fig. 3), a plurality of side walls (walls of the box), a holder slide cover (top of the box), and an attachable cover (300), a holder slide member slidably coupled to the bottom of the holder slide cover (the horizontal member with the 2 webs on the bottom);
Hammann does not teach +having an actuation means for automatically moving the holder slide member between a first and a second position within the housing.
Weinreich teaches allowing an object or a figure to be made disappear and simultaneously reappear in a remote second unit from which it may be removed (abstract). Weinreich teaches the idea of having an actuating means (motor 64) to allow the figure 26 to move between first location and second location (col. Lines 15-20 and lines 34-45).
Therefore, It would have been obvious to one of ordinary skill in the art before the effective filling date to include the teaching of Weinreich to automatically moving the item from one location to another location to be incorporated into Hammann to allow “the automation” of the illusion rather doing it manually as in Hamman’s device.
As to claim 2, Weinreich teaches that the hidden compartment apparatus of claim 1, where the holder slide member is configured to receive a plurality of inserts capable of holding objects, the inserts being received within integral transport slider pockets (fig.2 and fig. 9). Motivation the same as in claim 1.
As to claim 3, Weinreich teaches the hidden compartment apparatus of claim 2, where a stationary opening in the holder slide cover reveals a first insert at the first position of the holder slide member and a second insert at the second position of the holder slide member, wherein the actuating means positions the holder slide member below the stationary opening in the holder slide cover to reveal only one insert at any given time (figure 2 and figure 6).
As to claim 7, Weinreich teaches the hidden compartment apparatus of claim 1, where the actuating means is a motor driver assembly (64) driven by a direct current motor controlled by a computer control unit (col 4, lines 64-68). Note that the motor is direct current because the device is battery driven.
As to claim 8, Weinreich teaches the hidden compartment apparatus of claim 7, wherein the computer control unit includes user operated controls such as buttons (78), switches (62) , and displays as well as integrated timers (fig. 6) and light emitting diodes to allow user control over the operation of the actuating means and the position of the holder slide member (Col. 6, lines 12-27).
As to claim 9, the hidden compartment apparatus of claim 1, wherein the actuating means and a power source is housed within a central cavity formed by the .
Claim(s) 4-6, 10 and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hammann and Weinreich as applied to claims 1-3 an7-9 above, and further in view of Vaughn (US 2022/0409350).
As to claim 4, Hammann and Weinreich teaches all the limitation of claim 4 except having the inserts are made of foam or felt.
Vaughn teaches a disappearing tooth and object container device (abstract and fig. 1). Vaughn teaches that the inserts are made from felt or foam (paragraph 41).
Therefore, It would have been obvious to one of ordinary skill in the at before the effective filling date to use felt or foam as suggested by Vaughn so that the device can be more durable and easy to conceal.
As to claims 5-6, Hammann and Weinreich teaches all the limitation of claims 5-6 except the attachable cover is hingably attached to the housing and the attachable cover is a lid or door which is secured to a first side of the housing by a plurality of hinge members and to a second side of the housing by one or more magnets and is capable of moving between an open position and a closed position, wherein the attachable cover covers the holder slide cover when in the closed position.
Vaughn teaches that the cove 203 is attached to the housing in one side by hinges (fig. 9) and the other side via magnets (par. 8 and par. 34).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filling date of the invention to include Vaughn’s teaching using hinges and magnets to connect the attachable cover to the housing. This will create an easy and secure way to connect the cover.
As to claim 10, Hammann and Weinreich teach all the limitation of claim 10 except that the central cavity is accessible through the removable base, wherein the base is attached to the housing by a plurality of fastening means.
Vaughn teaches having the bottom part (205) (removable base) is removable (figures 4-5).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to include the teaching of Vaughn having a removable base. This will increase the versatilities and the accessibility of the device.
As to claims 11-15, method of claims 11-15 is substantially similar to the limitations of claims 4-6 and 10 above and will be rejected as in the rejection of claims 4-6 and 10above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cruz (Us patent 5,522,507) teaches a kit for enacting the tooth fairy fable with all the items in the container.
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/AMR A AWAD/Supervisory Patent Examiner, Art Unit 2621