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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,691,088 and claims 1-19 of U.S. Patent No. 12,070,699. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘088 and ‘699 patents would read on / anticipate claims 1-14 of the present application, but for the feature of rearranging or duplications some of the air blowers / expandable portions.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have rearranged or duplicated the expandable portions and blowers simply as a matter of engineering design choice, since, it has been held that duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). And, that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Simply claiming more or less blowers / expandable portions at various different locations around the inflatable doll would not produce any new or unexpected results, would simply be locating these items at suitable locations to provide motion to parts of the doll that are desirable to the users, and is an obvious matter of design choice and not a patentable distinction.
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 11-20 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.
Claim 11 recites that “the body comprises a secondary portion.” Likewise, claim 13 recites “a plurality of secondary portions.” Claim 11 also recites “two second expandable members” and claim 13 recites “two third expandable members.” However, claims 11 and 13 depend from claim 1 and no “primary portion” and no “first expandable member” or other portions to the body or expandable members have previously been claimed in these claim strings. Therefore, it is unclear why the term “secondary portion,” “second” and “third” expandable members is used, and, whether or not these claims were intended to depend from claim 9 or not. Further, claim 15 similarly recites “one fourth expandable member,” however, claim 15 also depends from claim 1 which did not claim a first through third expandable member, making the recitation of a “fourth” member in this claim string confusing. Appropriate correction / clarification is required.
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, 5, 6, and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama (US Patent No. 6,447,361 B1) in view of Hsu (US PGPub. No. 2007/0022642 A1).
In Reference to Claim 1, 5, 6, 8, 9, and 11
Akiyama teaches (Claim 1) An inflatable doll, comprising: a body (item 2, fig. 1), having a first air inlet (inlet from item 3 to body, fig. 1); and a plurality of expandable members, received in the body and connected with the body (items 42, fig’s 1, 3, 7, and 9), each expandable member defines a second air inlet (inlet of items 42, fig’s 1, 3, 7, and 9); and an air blower assembly, comprising: a first air blower, arranged adjacent to the first air inlet (item 3, fig. 1), the first air blower is configured to introduce air into the body to inflate the body [] (fig. 1 and column 4 lines 40-42); and a [] second air blower (item 4, fig. 1), [] and communicated with second air inlets (fig’s 1, 3, 7, and 9), [the] second air blower is configured to direct air out of one corresponding expandable member, so that the expandable members are deformed to move the body (column 5 lines 1-17);
(Claim 6) wherein each second air blower comprises: a housing (item 43, fig’s 3-5); an air inlet portion, connected with the housing [] (item 431p, fig’s 3-5); and an air outlet portion, connected with the housing and arranged outside the expandable member (431q, fig’s 3-5);
(Claim 8) wherein each of the expandable members comprises a substantially triangular prism shape (fig’s 3 and 7), a substantially hexahedral shape, or an irregular shape; or each of the expandable members comprises a top surface, a bottom surface and a side surface, the second air inlet is defined in the top surface, the bottom surface or the side surface; or at least one surface of each of the expandable members is arc-shaped, and the arc-shaped surface is connected with the body (note the rest of these features are claimed in the alternative and are not required by the claim);
(Claim 9) wherein the body comprises a primary portion (item 2, torso up to shoulders, fig. 1), the expandable members comprises at least two first expandable members (left and right items 42 in fig. 1), the at least two first expandable members are received in the primary portion and arranged adjacent to each other at a same height (fig. 1, items 42 are at the same height and adjacent each other);
(Claim 11) wherein the body comprises a secondary portion (item 2, torso up to shoulders, fig. 1), the expandable members comprises at least two second expandable members (left and right items 42 in fig. 1), the at least two second expandable members are received in the secondary portion and arranged adjacent to each other at a same height (fig. 1, items 42 are at the same height and adjacent each other; further note that claim 9 and claim 11 independently depend from claim 1, therefore, a portion of the torso can read on alternately the “primary portion” or the “secondary portion” and the expandable members can be considered “first expandable members” or “second expandable members”).
Akiyama fails to teach the feature of the first blower inflating the expandable members and a plurality of second air blowers received in the body of claim 1 and the feature of claim 5.
Hsu teaches (Claim 1) a first blower inflates both a body and expandable member (paragraph 0014, fig. 1, item 20 inflates body 10 and arm 12), a second air blower received in the body (item 22, fig. 1);
(Claim 5) wherein [a] second air blower is at least partially received in one corresponding second air inlet (fig. 1, item 22, in inlet to item 12).
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 inflatable motion device of Akiyama with the feature of having the first blower inflate all internal sections of the device, and, locating the second air blower in the body as taught by the inflatable motion device of Hsu for the purpose of providing a more consolidated device that is more attractive to users as taught by Hsu (paragraph 0015), making the device more aesthetically pleasing and attractive to the users.
Further, the examiner notes that it has been held that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). And, that duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Since the device would operate the same way (to inflate all interior regions of the body as well as to systematically inflate and deflate the expandable members, intermittently activating a portion of the device) regardless of if the blowers are located externally or internally to the device, merely claiming internal blowers connected with or internal to expandable members as opposed to external blowers connected to internal expandable members would be an obvious matter of engineering design choice, and is not a patentable distinction.
Further still, since Akiyama teaches multiple expandable members at various joints throughout the body for motion (items 42, fig’s 1, 9, 10), simply claiming multiple blowers to correspond to each of these expandable members instead of providing a single blower that is selectively routed to each of the expandable members would produce the same outcome, therefore, simply claiming additional blowers corresponding to each expandable member is an obvious matter of engineering design choice, and is not a patentable distinction.
In Reference to Claims 10, 12, and 14
The modified device of Akiyama teaches all of claims 1 and 9 as discussed above.
Akiyama further teaches (Claims 10 / 12 / 14) wherein each of the second air blower [] comprises an air outlet portion (431q, fig’s 3-5), [].
Akiyama also teaches (Claims 10 / 12 / 14) air outlet portions of [expandable members] faces towards a same direction or different directions (fig. 1, air flow directions are symmetrical from items 42, and they face different directions).
Akiyama fails to teach the air blowers with air outlets that are within the expandable members.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have rearranged or integrated the air blowers with outlets into the expandable members simply as a matter of engineering design choice, since, it has been held that duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). That rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). And, that making components of a device integral or separately connected components is an obvious matter of engineering design choice. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Since the device would operate the same way (to inflate all interior regions of the body as well as to systematically inflate and deflate the expandable members, intermittently activating a portion of the device) regardless of if the blowers are located externally or internally to the device, merely claiming internal blowers connected with or internal to expandable members as opposed to external blowers connected to internal expandable members would be an obvious matter of engineering design choice, and is not a patentable distinction.
Further still, since Akiyama teaches multiple expandable members at various joints throughout the body for motion (items 42, fig’s 1, 9, 10), simply claiming multiple blowers to correspond to each of these expandable members instead of providing a single blower that is selectively routed to each of the expandable members would produce the same outcome, therefore, simply claiming additional blowers corresponding to each expandable member is an obvious matter of engineering design choice, and is not a patentable distinction.
In Reference to Claim 13
Akiyama teaches all of claim 1 as discussed above.
Akiyama further teaches (Claim 13) wherein the body comprises a plurality of secondary portions (e.g. torso, arms and head, fig. 1), each of the secondary portions comprises a first secondary portion (left arm) and a second secondary portion (torso) adjacent to the first secondary portion, the expandable members comprises at least two third expandable members (items 42, fig. 1), the at least two third expandable members [] and arranged at a same height (fig. 1, items 42 are at the same height; further note that claims 9, 11, and 13 all independently depend from claim 1, therefore, the same elements in a reference can read on alternately the “primary portion” or “secondary portions” and the expandable members can be considered “first,” “second,” or “third” expandable members).
Akiyama fails to teach the location / arrangement of the expandable members of claim 13.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have rearranged or duplicated the expandable portions into various portions of the device simply as a matter of engineering design choice, since, it has been held that duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). And, that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Simply claiming more or less expandable portions at various different locations around the inflatable doll would not produce any new or unexpected results, would simply be locating these items at suitable locations to provide motion to parts of the doll that are desirable to the users, and is an obvious matter of design choice and not a patentable distinction.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Akiyama in view of Hsu, and further in view of de Grasse et al. (US Patent No. 10,713,981 B2).
In Reference to Claim 7
The modified device of Akiyama teaches all of claims 1 and 5 as discussed above.
Akiyama fails to teach the connecting member of claim 7.
de Grasse teaches (Claim 7) a connecting member, the connecting member is configured to connect [a] air blower with an edge of [an] air inlet (items 14 / 15 / 16, fig. 6 and zip ties, column 2 lines 37-40).
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 air inflatable device of Akiyama with the feature of a connecting member as taught by the air inflatable device of de Grasse for the purpose of more securely affixing components of the blowers to the inflatable device as taught by de Grasse (column 2 lines 37-40), making the device more reliable, and more attractive to the users.
Allowable Subject Matter
Claims 2-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 15-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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.
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, Eugene Kim can be reached at 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 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.
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711