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 .
Applicant's election with traverse of Species A in the reply filed on 12/23/2024 is
acknowledged. The traversal is on the ground(s) that the different extremity attachment post and head attachment post are part of the same species and would require little extra search burden. This is not found persuasive because the different connectors have different construction and operation and require search areas outside of the toy art. It is noted that in Application 17/832504, the independent claim was allowed on first action, so the different connectors in the dependent claims did not require as intense examination.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/23/2024.
Claims 1, & 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/100508 in view of Soviknes et al 6,893,318.
Application 10/100508 includes claims for all features, except the extremities with an attachment post. An attachment post would be useful to replace and adjust the extremities. For example, Sovinkes shows that a toy may include a flexible skeleton, with posts 38, 70, which can attach extremities such as hands 68 with a gesture, or shoes 40. These attachment posts would be an obvious addition to the toy of Application 18/100508.
This is a provisional nonstatutory double patenting rejection.
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.
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, & 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wilcox 2002/0002022 in view of Soviknes et al 6,893,318.
Wilcox shows a plush toy with a body with a cover 310 of a first material (figures 9 and 10), with stuffing such as polyester 380; an opening to attach a head 12, with a cover 600 of a second material; an internal skeleton of multiple flexible pieces connected end to end; a central limb connector 260 with a neck connector, arm connector, and body connector movably connected to the skeleton pieces, and the neck connector received in a receptacle 760 in the head. The first and second materials may include fabric or plastic (paragraph 0066).
Wilcox shows a toy with extremities which include hands and feet, but it is not clear if there is an attachment post. An attachment post would be useful to replace and adjust the extremities. For example, Sovinkes shows that a toy may include a flexible skeleton, with posts 38, 70, which can attach extremities such as hands 68 with a gesture, or shoes 40. These attachment posts would be an obvious addition to the toy of Wilcox.
Claims 2 & 3 are not rejected over the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A RICCI whose telephone number is (571)272-4429. The examiner can normally be reached Mon to Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, melba Bumgarner can be reached at 571-272-4709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN A RICCI/Primary Examiner, Art Unit 3711