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 .
Claim Objections
Claims 2-8 and 12-17 are objected to because of the following informalities: The claims do not include the required status identifiers. Appropriate correction is required.
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 and 10-17 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 17 respectively, disclose the limitations of “attachment of the head to the body completes an electrical interface that initiates a predefined light and sound profile associated with the identity of the attached head” and “the programmable controller is configured to execute a distinct light and sound profile in response to a head-body connection event, and wherein each detachable head includes an identifier recognized by the controller to select a corresponding output sequence”. While the specification as originally filed broadly discloses that a CPU can be programmable by a user or venue to control lights, sounds, a digital display and vibration it does not disclose that each head has an identifier for completing an electrical interface for implementing predefined light, sound or other control profiles based on an identity of the attached head as recognized by the CPU.
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.
Claim 17 is 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 17 recites the limitation "the programmable controller" in line 2 and “the controller” in line 5. There is insufficient antecedent basis for these limitations in the claim. For the purposes of examination, the claim will be interpreted as referencing the CPU.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claims fail to further limit the subject matter of the claims on which they depend since they all simply reiterate limitations disclosed in the independent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-8, 10-13 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hunn (2001/0034177), Chan (2002/0086612) and Nocon (2022/0100280). Hunn discloses a noise-making device for use at sporting events having a body (60) with a fillable volume for receiving noise making items (30) that produce sound when a user shakes the noise making device (abstract) as well as detachable and interchangeable heads (50) that can represent a sport identity that are attachable by a universal interface (110) to the body (Figs. 1-6, paragraphs 19, 22 and 28). The noise-making device can further include an electronic noisemaking device with batteries that can be activated to produce sound in response to activation of the electronic device in response to motion of the device (paragraph 21). Hunn discloses the basic inventive concept with the exception of the device further having integral light elements, a vibration element, a digital display and a CPU programmable by a user or a venue and wherein the head includes an electrical interface with an identifier for initiating a predefined and distinct output profile sequence associated with the identity of the attached head as recognized by the CPU when the attachment of the head closes a circuit. Chan discloses an electronic noise-making device with a body (1) and a plurality of interchangeable heads (3) each having an identity, wherein the heads are configured for detachably connecting to the body using a universal interface (Figs. 3A-C). The attachment of a particular one of the heads to the body completes an electrical interface (Fig. 3A) and closes a circuit (Fig. 6) for initiating a predefined audible or visual output sequence which includes sound (13) or lights (17) integral with the body based on the identity of the attached head due to a distinct identifier (7) on each of the respective heads that is configured to be recognized by a controller (abstract, paragraphs 29-32,34, 40). It would have been obvious to one of ordinary skill in the art to modify the electronic noise-making device of Hunn as taught by Chan to enable the activation of distinct electrical outputs based on a particular identity of a plurality of interchangeable heads for the predictable result of providing enhanced functionality and versatility by enabling a wider variety of dynamic effects to be created in response to different components being connected to the body. Nocon discloses an amusement device having a body configured for use at a variety of entertainment venues (paragraphs 63, 78, 80) to create a variety of effects in response to motion that includes a central processing unit (130) programmable by a user (paragraphs 95-98) that can activate sound (138), lights (120), a digital display (101) or a vibration unit (152) included with the device (Fig. 1, paragraphs 12-15 & 69-71). It would have been obvious to one of ordinary skill in the art from the teaching of Nocon to modify Hunn and Chan to further include a programmable processing unit for activating light elements, sound elements, a digital display and a vibration element for the predictable results of providing enhanced functionality by enabling a wider variety of effects which creates a more dynamic display with increased personalization.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hunn, Chan and Nocon as applied above for claim 1 and further in view of Periman (7361074). Hunn, Chan and Nocon disclose the basic inventive concept with the exception of having a self-charging means for powering the device. Periman discloses a noise making device configured with a self-charging means for powering the device (abstract). It would have been obvious to one of ordinary skill in the art from the teaching of Periman to modify Hunn, Chan and Nocon to include a self-charging means for powering the device for the predictable result of making the device more versatile and reliable since no batteries would be required to power the device.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 and 10-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In regard to the argument that the Hunn reference is the current inventors own work and as such is commonly owned, the examiner notes that the prior art Hunn reference with a publication date in 2001 occurs more than one year before the effective filing date of the claimed invention and as such is prior art under 102(a)(1) and is not subject to common ownership exceptions.
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.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711