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 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 41-42, 44 and 54 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 41, 44 and 54 disclose a display support with one or more magnets configured to magnetically interact with the magnets of the puzzle toy and further having an opening configured to receive at least some of the tetrahedral bodies with claim 42 further disclosing the support having a base or a hanger, respectively. However, the specification and drawings as originally filed disclose three distinct embodiments for the display support in the form of a base with magnets, a box with an opening and a hanger, wherein the base does not include the hanger or an opening, both the box and hanger do not include magnets and the hanger is configured to engage a connector or string that could be attached to the puzzle toy but does not receive the tetrahedral bodies themselves. The claims have integrated the three distinct supports into a singular support that is not supported by the specification and drawings as originally filed since broadly disclosing the display support “can have any suitable design” or that for just the art toys (10) and toy members (12) “one or more features of any one embodiment can be combined with one or more features of one or more other embodiments” does not provide an adequate showing of possession of the specific limitations for the display support as now claimed.
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) 40, 43, 46-47, 50-53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano (GB2107200A) and Pfeffer (DE4200184A1). Asano discloses a toy assembly with a geometric art toy (abstract) having twelve toy members formed as tetrahedrons with first, second, third and fourth faces and six edges (Fig. 8) wherein each toy member is movably coupled to two other toy members by respective flexible hinged connections at respective first and second edges of the connected toy members (15) to connect the twelve toy members into a continuous loop (Fig. 9) such that each member is movable about the hinged connections to form a first cubic parallelepiped configuration (Fig. 1), a second configuration where each tetrahedral body contacts only one other tetrahedral body (Fig. 11), a third configuration (Fig. 12), a fourth configuration (Fig. 13), a fifth configuration (Fig. 14), a sixth configuration (Fig. 15) and a seventh configuration (Fig. 16). The flexible hinges are formed from a flexible adhesive (page 2 lines 77-82). Asano discloses the basic inventive concept, with the exception of each of the toy members having between one and three magnets coupled to each of the different faces of the four faces so as to include three magnets for each of the tetrahedral bodies for stabilizing the puzzle in each of the seven configurations. Pfeffer discloses a geometric toy with a plurality of hinged together tetrahedral bodies (Fig. 5), wherein each of four different faces has one magnet (M) to provide three magnets for each tetrahedral body to allow contacted faces of the blocks to be magnetically coupled and provide magnetic stabilization to configurations formed by the block members (description paragraphs 12-14, 18-19, 54). It would have been obvious to one of ordinary skill in the art from the teaching of Pfeffer to include magnets adjacent the faces of each of the tetrahedron shaped toy members of Asano for the predictable result of configuring the toy to be maintained in desired configurations until acted upon by a user thereby providing stable constructions with enhanced utility and functionality.
Claim(s) 41-42, 44 and 54 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano and Pfeffer as applied above and further in view of Moodie (6626303). Moodie discloses a display support (Fig. 3) in the form of a base (12b) with a plurality of support magnets (25a-b) configured to engage magnets (24a-b) of articles for display purposes (Fig. 3, column 4 lines 15-32), wherein the base includes a frame (114) to create an opening for receiving the articles that is configured for affixing to a surface with a hanger component (Fig. 7, column 7 line 61 – column 8 line 10). Although Moodie does not specifically disclose displaying a geometric art toy, it does teach displaying articles having magnets and as such, it would have been obvious to one of ordinary skill in the art from the teaching of Moodie to include a display support with the toy assembly of Asano and Pfeffer, for the predictable result of providing enhanced utility by including with the toy a surface that allows storage and display of the puzzle toy in an interesting and versatile manner.
Claim(s) 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano and Pfeffer as applied for claim 40 above and further in view of Zimmerman (2570625). Asano and Pfeffer disclose the basic inventive concept with the exception of each magnet coupled to an outer surface of the tetrahedral bodies. Zimmerman discloses a magnetic toy having toy bodies where magnets are coupled to the outer surfaces of the toy bodies (Figs. 5 & 6). It would have been obvious to one of ordinary skill in the art to modify Asano and Pfeffer to attach the magnets to outer surfaces of the bodies as taught by Zimmerman for the predictable result of positioning the magnets to enable interaction with other magnets in a known manner. Furthermore, a mere rearrangement of parts has been held to be an obvious modification. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claim 48 is rejected under 35 U.S.C. 103 as being unpatentable over Asano and Pfeffer as applied for claim 40 above. Asano and Pfeffer disclose the basic inventive concept with the exception of the six edges being configured such that first and second edges each have a length of one unit, a third edge has a length of √2 units and fourth, fifth and sixth edges all have a length of √3/2 units. It would have been obvious to one of ordinary skill in the art to configure the tetrahedron members of the references with the above dimensions since changes in size and shape have been held to be an obvious matter of design choice absent persuasive evidence that a claimed configuration is significant. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano and Pfeffer as applied for claim 40 above. Asano and Pfeffer disclose the basic inventive concept with the exception of the toy assembly including four geometric art toys. It would have been obvious to one of ordinary skill in the art to have the toy assembly include four geometric art toys since such a modification would have involved a mere duplication of parts which has been held to be an obvious modification unless a new or unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Response to Arguments
Applicant’s arguments with respect to claim(s) 40-54 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.
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