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 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 1-19 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.
Claims 7-10 and 20 contain the trademark/trade name Gelbee. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a toy water gun and, accordingly, the identification/description is indefinite.
Claims 1-13 and 14-19 should also be rejected under 35 U.S.C 112(b). Claims 1 and 14 are indefinite due to the preambles, and the limitation provides a user with a non-permanent liquid solution that can be added to water guns. This implies that the claim is directed towards a solution that can be used with water guns, but then the body of the claim positively recites a toy water gun. Therefore, it’s unclear if the claim is directed toward the combination “water gun + ink” or just the sub-combination of the ink. The dependent claims (2-13) and (15-18) inherit the deficiencies of their independent claims, resulting in a 112b rejection as well.
Claim 14 is also indefinite as it recites a product and process step within the same claim. The claim recites a disappearing ink delivery system, which is the product and the disappearing ink solution is loaded into the toy water gun via funnel into the reservoir component, which is the process. See In re Katz, MPEP 2173.05(p)(II).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 are rejected under U.S.C 102 as being unpatentable over the Zap-It gun (Product site). In regards to claim 1, Zap-It teaches a disappearing ink delivery system that provides a user with a non-permanent liquid solution that can be added to water guns, the disappearing ink delivery system comprising: a toy water gun; and a disappearing ink solution; wherein the disappearing ink solution is loaded into the toy water gun; and further wherein the disappearing ink solution provides a temporary mark that will disappear shortly after contact (see product image below with all the structural limitations).
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A toy water gun using disappearing ink
In regards to claim 2, wherein the disappearing ink solution provides the temporary mark on a target is inherent to the function of a “disappearing” ink solution. A target is very broad and could be any surface that the user of the water gun is aiming at.
Regarding claim 3, wherein the toy water gun is a piston water gun, a syringe loader, a pump-action reservoir, an air-pressurized water reservoir, or a constant pressure system gun, the Zap-It gun teaches a piston water gun.
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Regarding claims 4-6 wherein the toy water gun comprises a body component, with a handle component, and a reservoir component with a removable cap for retaining the disappearing ink solution (claim 4) and wherein the toy water gun comprises a nozzle for expelling the disappearing ink solution and a trigger for controlling when the disappearing ink solution is expelled (claim 5), Zap-It gun teaches all of those structural components as labeled below:
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Additionally, for claim 6 further comprising a plurality of indicia, the Zap-It gun has the Zap-it logo on the surface of the body.
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.
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1. Claims 7-11 are rejected under U.S.C 103 as being unpatentable over Zap-It in view of GelBee's Brand Stinger Water Bead Blaster (YouTube video review, 4:53-5:53). In regards to claim 7, Zap-It teaches the toy water gun, but lacks a Gelbee toy gun. Regarding claim 7, the YouTube video review of the Gelbee stinger discloses a Gelbee toy gun. Regarding claims 8-11, the image below of the Gelbee toy gun appreciates the limitations of the claims as follows:
[AltContent: textbox (Ink balls- claim 8)]
[AltContent: textbox (Plurality of indicia- claim 11)][AltContent: textbox (Nozzle and a trigger- claim 10)]
[AltContent: textbox (Body component, a handle component, and reservoir component with a removable cap- claim 9)]
Therefore, it would have been obvious to one of ordinary skill in the art, to substitute the toy water gun of Zap-It with that of Gelbee, since it has been held that “ the substitution of one known element for another yields predictable results to one of ordinary skill in the art” (see MPEP 2143 B).
2. Claim 12 is rejected under U.S.C 103 as being unpatentable over Zap-it in view of Mullaguru (US 20130295550 A1). While Zap-it teaches a disappearing ink delivery system, it lacks a teaching of the disappearing ink solution composition made by dissolving thymolphthalein or phenolphthalein in ethyl alcohol, stirring in water and adding a sodium hydroxide solution until the disappearing ink solution turns a dark blue or red. Mullaguru teaches this as follows: In a preferred embodiment, the disappearing ink within writing implement 105 is a water-based acid-base indicator that changes from a colored to a colorless solution upon exposure to air. A suitable disappearing ink pen may be made of thymolphthalein or phenolphthalein, ethyl alcohol, sodium hydroxide, and water [0020]. Thymolphthalein, which is normally colorless, turns blue in solution with the base [0021].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Zap-It with the specific disappearing ink solution composition of Mullaguru to best ensure a visible color for the disappearing ink can be created to allow the user to visualize a hit to the target.
3. Claim 13 is rejected under U.S.C 103 as being unpatentable over Zap-it in view of Ehrlich (US 3438927 A). While Zap-it teaches a disappearing ink delivery system, it lacks a teaching of another possible disappearing ink solution composition made by mixing together in solution 95.50 percent by weight isobutyl alcohol, 1.00 percent by weight polyvinyl pyrrolidone resin (PVP), 1.75 percent by weight 2,4- dihydroxy-benzophenone and 1.75 percent by weight propyl gallate. Ehrlich teaches this as follows: Another example comprises: In solution 95.50 percent by weight isobutyl alcohol, 1.00 percent by weight polyvinyl pyrolidone resin (PVP), 1.75 percent by weight 2,4- dihydroxy-benzophenone and 1.75 percent by weight propyl gallate (col.5, lines 21-25).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Zap-it with the specific disappearing ink solution of Ehrlich to best ensure a visible color for the disappearing ink can be created to allow the user to visualize a hit to the target.
4. Claims 14 and 15 are rejected under U.S.C 103 as being unpatentable over Zap-it in view of Carty et al. (US 20130320038 A1). With regards to claim 14, Zap-it, as discussed above in regards to claims 1,4,5 satisfies the limitations of the claim (the elements are the same as aforementioned claims). However, the additional limitation wherein the disappearing ink solution is loaded into the toy water gun via funnel into the reservoir component is not taught. Carty et al. teaches this as follows: Referring lastly to both FIG. 6 and FIG. 7 another alternate embodiment of a toy water gun 50 is illustrated. In his embodiment, there are multiple access openings 52 that lead to an internal water reservoir 56. In this embodiment, a funnel structure 54 is provided between each of the access openings 52 and the internal water reservoir 56. Each of the funnel structures 54 enables water to quickly flow into the water reservoir 56 from a source outside the access openings 52 ([col. 2 paragraph [0020]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Zap-it with the funnel structure of Carty et al. in order to effectively load the ink solution into the toy water gun for most efficient use.
Regarding claim 15, Zap-it teaches a plurality of indicia (the Zap-It gun has the Zap-it logo on the surface of the body).
5. Claims 16-18 are rejected under U.S.C 103 as being unpatentable over Zap-It in view of Carty et al., further in view of Burguera et al. (US 5586501 A). The modified Zap-it teaches the disappearing ink solution from the toy water gun will begin to disappear, however it fails to teach that it will create a faint image that will completely disappear after 30 to 60 seconds, allowing the target to display a user’s shot temporarily. Burguera et al. teaches this as follows: As can be seen in FIG. 3, the temporary image 16 created by the disappearing ink system 10 is beginning to disappear and creating a faint image 16C that will completely disappear after 30 to 60 seconds (col.5 lines 17-20).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to further modify the modified Zap-it with the short length of image display time of Burguera et al. to give the user enough time to visualize a shot and resume play.
Regarding claim 17, the further modified Zap-it teaches the disappearing ink solution allows the target to be reusable. In the broadest most reasonable interpretation, the use of a “disappearing ink” is inherent to the function of being reusable on a surface, target, object etc. due to a mark not lasting.
Regarding claim 18, the further modified Zap-It teaches the disappearing ink solution is made by a mixture of 10 % Ethanol, 1% o-Cresol Phthalein, and 50 mM of aqueous NaCO3 (Still yet another object of the present invention is to provide a disappearing ink marking system wherein the disappearing ink is a mixture of 10% Ethanol, a pH indicator, and 50 mM aqueous NaCO3. Yet still another object of the present invention is to provide a disappearing ink marking system wherein the pH indicator is 1% o-Cresol Phthalein (Burguera et al., col.3, lines 51-58)).
6. Claim 19 is rejected under U.S.C 103 as being unpatentable over Zap-it in view of Carty et al., further in view of Burguera et al., and Ehrlich. While the further modified Zap-it teaches the disappearing ink solution, it lacks teaching of another ink solution composition made by mixing together in solution 95.20 percent by weight isobutyl alcohol which acts as the solvent for the ink, 1.30 percent by weight polyvinyl pyrrolidone resin (PVP), 1.75 percent by weight, 2,4-dihydroxy-benzophenone and 1.75 percent by weight propyl gallate which is an invisible or colorless reagent which reacts to form a dark gray area when an iron octoate color activator fluid is brought in contact with the colorless reagent. Ehrlich teaches this as follows: Mix together in solution 95.20 percent by weight isobutyl alcohol which acts as the solvent for the ink, 1.30 percent by weight polyvinyl pyrolidone resin (PVP), 1.75 percent by weight, 2,4-dihydroxy-benzophenone and 1.75 percent by weight propyl gallate which is an invisible or colorless reagent which reacts to form a dark gray or black area when an iron octoate color activator fluid is brought in contact with the colorless reagent (col.5, lines 12-20).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the further modified Zap-it with the specific ink composition of Ehrlich to achieve proper color-activating means in an effective and fast manner for use of the disappearing ink solution.
7. Claim 20 is rejected under U.S.C 103 as being unpatentable over Zap-It in view of Gelbee. As discussed above in regards to claim 1, the modified Zap-it with Gelbee teaches disappearing ink as ammunition in a toy water gun or Gelbee gun. The method of utilizing this system, as outlined in the four steps of the claim, are inherent to the use of the modified device of Zap-It. Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, see MPEP 2112.02 I.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to further modify the modified Zap-it toy gun with these aforementioned steps in order to establish proper usage of the device for the user.
Conclusion
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/R.S./Examiner, Art Unit 3711
/NICHOLAS J. WEISS/ Supervisory Patent Examiner, Art Unit 3711