DETAILED ACTION
Drawings
The drawings filed 6/18/25 are accepted. However, there are other drawing objections based on the amended claims.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the [imaginary] longitudinal axis of and the top wall being perpendicular to the peripheral side wall of claims 1 and 8 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: in the event the Examiner has reached the 112(a) rejection below in error, the entirety of the amendments to claims 1 and 8 require proper antecedent basis in the specification. This includes the central longitudinal axis, the cross-sectional area, and the top end being planar with peripheral sidewall being perpendicular.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1 and 8 now claim “that a full length of the cylinder between the top end and a base of the cylinder has a constant cross-sectional area perpendicular to a central longitudinal axis of the cylinder”. Applicant specifically provides support using Fig. 3 (see Remarks, received 6/18/25). Respectfully submitted, the problem with this new language is that a central longitudinal axis is not even shown in the original drawings. Furthermore, it is unclear from Fig. 3 if the top end is truly “planar” and “perpendicular to the peripheral sidewalls” as it is a perspective view. If the Examiner has reached this rejection in error, then at least the amended language of claims 1 and 8 needs to be added to the specification for proper antecedent basis (i.e. there is a specification objection).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Altuchow (US Pat. No. 4,521,982) in view of Crawford (US Pat. No. 4,023,289) in view of Pisarevsky (US Pat. No. D806,475 S) and in further view of Holme (US Pat. No. 7,500,604 B2).
Regarding claim 1, Altuchow discloses a visual stimulation device which contains immiscible liquids and a plurality of object of varying buoyancy which float at different levels within the immiscible liquids (Fig. 3 and 4 and col. 3, lines 51-68), the device comprising: a container containing a plurality of immiscible liquids which resist forming a homogenous mixture (Fig. 3 and col. 3, lines 31-50), the container being comprised of a translucent material (col. 2, lines 50-51) wherein the plurality of immiscible liquids is configured to visually stimulate a user (Fig. 3; noting this is function language that is possible given the structure), each of the plurality of immiscible liquids having a unique color with respect to each other (col. 3, lines 6-22) wherein the plurality of immiscible liquids is configured to enhance the ornamental appearance of the cylinder (Fig. 3; noting this is function language that is possible given the structure); a plurality of objects (Fig. 4 and col. 3, lines 51 to col. 4, lines 11; noting this is a different embodiment, but under Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009); combing prior multiple embodiments disclosed within a single reference “does not require a leap of inventiveness”), each of the plurality of objects being contained within the container (Fig. 4), the plurality of objects including a plurality of sets of objects (Fig. 4 and col. 3, lines 51 to col. 4, lines 11), each of the plurality of sets of objects having a unique buoyancy with respect to each other thereby facilitating the set of objects to float at different levels in the immiscible liquids (Fig. 4 and col. 3, lines 51 to col. 4, lines 11; again, noting is obvious that Figs. 3 and 4 can be combined) wherein the plurality of sets of objects is configured to visually stimulate the user (Fig. 3; noting this is function language that is possible given the structure), each of the plurality of sets of objects having a unique color with respect to each other (Fig. 4 and col. 3, lines 51 to col. 4, lines 11). It is noted that Altuchow does not specifically disclose that the shape of the container is a cylinder and a cap being removably attachable to the cylinder for closing the cylinder. However, Crawford discloses a similar visual toy wherein the shape of the container is a cylinder with a cap being removably attachable to the cylinder for closing the cylinder (sole figure and col. 2, lines 1-2; noting “closed by means of a simple cap” makes obvious that can functionally be removable; if not see Pisarevsky as evidence). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Altuchow to use a container in the shape of a cylinder as taught by Crawford because doing so would be combining prior art elements (a container having different liquids and particles that produces a visual display and a cylindrical container with visual display and a removable cap) according to known methods (a substitution of the container housing the liquid, the container being cylindrical with a removable cap) to yield predictable results (a container having different liquids and particles that produces a visual display, the container being a cylinder with a removable cap). It is noted that the combined Altuchow and Crawford do not specifically disclose that the cylinder has an opening extending through a top end of the cylinder thereby facilitating the cylinder to be filled with the plurality of immiscible liquids, the top end being planar and the peripheral sidewall of the cylinder being perpendicular to the top end such that a full length of the cylinder between the top end and a base end of the cylinder has a constant cross-sectional area perpendicular to a central longitudinal axis of the cylinder, the cylinder having an annular ring extending upwardly from the top end, the annular ring surrounding the opening, the annular ring having an outer surface being threaded. However, Crawford makes obvious a cylindrical container and a removable cap (sole figure). In addition, Pisarevsky discloses a similarly shape cylinder, wherein the cylinder has an opening extending through a top end of the cylinder thereby facilitating the cylinder to be filled with the plurality of immiscible liquids (Fig. 6; noting the latter language is functionally possible given the structure), the top end being planar and the peripheral sidewall of the cylinder being perpendicular to the top end (Fig. 7; specifically showing perpendicular) such that a full length of the cylinder between the top end and a base end of the cylinder has a constant cross-sectional area perpendicular to a central longitudinal axis of the cylinder (Fig. 7, noting this is obvious and a central longitudinal axis of the cylinder is inherent), the cylinder having an annular ring extending upwardly from the top end, the annular ring surrounding the opening, the annular ring having an outer surface being threaded (Fig. 7 and 6; noting this is obvious). In the alternative, regarding the exact shape of the container, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s entire spec, noting applicant has no criticality for the exact shape because the above limitation is not even discussed in the specification). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Altuchow and Crawford to use a container with the above features as taught by Pisarevsky because doing so would be combining prior art elements (a cylindrical container with a removable cap, and a cylindrical container with a removable cap attached by threads) according to known methods (using the cylindrical structure with the thread in the former container) to yield predictable results (the continued ability to use cylindrical container with a simple removable cap, the cylindrical container having a top end the a ring and threads, the top end perpendicular to the peripheral sidewall). In the alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the container would not be significant: that is, the container would still house a fluid which could be accessed by a removable cap, regardless of the exact shape of the container. Finally, it is noted that the combined Altuchow, Crawford, and Pisarevsky do not specifically disclose that the particles have different shapes. However, Altuchow clearly discloses that the particles can be visually distinct from each other based on color (col. 4, lines 1-10). In addition, Holme discloses a similar liquid display wherein the particles can include different shapes (col. 4, lines 13-16; see specifically col. 4, lines 26-27 stating “Object component 220 may include a single item, or may be an assembly or collection of multiple items”; emphasis added). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Altuchow, Crawford, and Pisarevsky to make the particles have different shapes as taught by Holme because doing so would be combining prior art elements (a liquid display having particles that are visually different in color, and a liquid display that may have particles that are visually different in shape) according to known methods (using visually different shapes instead of visually different colored particles) to yield predictable results (the ability to form different layers within a liquid display that is perceivable to a user, the different layers created by visually different shapes).
Regarding claim 3, the combined Altuchow, Crawford, Pisarevsky, and Holme disclose that the cap has a well extending upwardly into a bottom end of the cap (Pisarevsky: Figs. 5 and 6; noting this would be obvious to receive the threaded portion projecting off the cylinder; noting the top two elements may collectively be considered “the cap”), the well having a bounding surface being threaded, the bounding surface threadably engaging the outer surface of the annular ring having the bottom end of the cap abutting the top end of the cylinder when the cap is tightened on the annular ring (Pisarevsky: Fig. 6; again this would be obvious, to receive the threads on the projection from cylinder, the cap would also be threaded) such that an outside surface of the cap is aligned with an outer surface of the cylinder (Pisarevsky; Fig. 4 or Crawford: sole figure).
Regarding claim 4, the combined Altuchow, Crawford, Pisarevsky, and Holme disclose that the plurality of sets of objects includes a first set of objects and a second set of objects and a third set of objects (Altuchow: Fig. 4 and col. 4, lines 1-10; noting three different sets of colored particles); each of the first set of objects has a maximum level of buoyancy such that the first set of objects floats on top of the plurality of immiscible liquids (Altuchow: Fig. 4 and col. 3, lines 51 to col. 4, line 11); each of the second set of objects has a medium level of buoyancy such that the second set of objects floats in the middle of the plurality of immiscible liquids (Altuchow: Fig. 4 and col. 3, lines 51 to col. 4, line 11); and each of the third set of objects has a minimum level of buoyancy such that the third set of objects floats on the bottom of the plurality of immiscible liquids (Altuchow: Fig. 4 and col. 3, lines 51 to col. 4, line 11).
Regarding claim 5, the combined Altuchow, Crawford, Pisarevsky, and Holme disclose that each of the first set of objects has an outer edge having a plurality of sides which intersect at a plurality of points such that each of the first set of objects has a triangular shape (Holme: col. 4, lines 12-16; noting “triangles”).
Regarding claim 6, the combined Altuchow, Crawford, Pisarevsky, and Holme disclose that each the second set of objects has an outer edge having a plurality of intersecting sides which define a plurality of radiating points such that each of the second set of objects has the shape of a star (Holme: col. 4, lines 12-16; noting “triangles”). It is noted that the combined Altuchow, Crawford, Pisarevsky, and Holme do not specifically disclose that the star is five pointed. However, regarding the exact shape of the star, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, page 5, lines 1-11; applicant giving no criticality to the exact shape of the star). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact shape of the star would not be significant: that is, the object would still be a star regardless of the number of points that it has.
Regarding claim 7, the combined Altuchow, Crawford, Pisarevsky, and Holme disclose that each of the third set of objects has an outer surface being continuously square about a center of the third set of objects such that each of the third set of objects has a cube shape (Holme: col. 4, lines 12-16; noting “cubes”). It is noted that the combined Altuchow, Crawford, Pisarevsky, and Holme do not specifically disclose that third object has a acuate shape so that is spherical. However, regarding the exact shape of the third object, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, page 5, lines 1-11; applicant giving no criticality to the exact shape of the third object). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact shape of the third object would not be significant: that is, the third object would still have a shape distinct from the other particles regardless of its exact shape.
Claim 8 is rejected consistent with the above analysis. Restated, claim 8 incorporates into a single independent claim the entirety of claims 1 and 3-7 above. As the Examiner has gone on record for all of the limitations with regards to claim 1 and 3-7, claim 8 is rejected accordingly.
Response to Arguments
Applicant's arguments filed 6/18/25 have been fully considered but they are not persuasive.
Respectfully submitted, the Examiner disagrees that no new matter has been introduced. This is addressed above.
The Examiner now brings in Pisarevsky to teach the structure as amended. However, as noted in the above rejection, what is the criticality to the cylinder having a constant cross-section, and the top end being perpendicular to the peripheral side wall? There is no criticality because the limitations are not even discussed in the specification.
The Examiner appreciates applicant’s attempt to structurally overcome the prior art. However, the Examiner does not see the patentability over the prior art when the exact claimed shape of the container has no criticality.
No other arguments are advanced.
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 MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on (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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
2/13/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711