DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 13/362855, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed application fails to provide support for the limitation of “a length of the handle is at least 47% a width of the solid circular disk body” since the prior-filed application only discloses a single dimension of 4.35 inches for the handle length and a single dimension of 9.25 inches for the width of the disk body and as such only supports a single percentage relationship between the two and not a range as provided by the “at least 47%” recitation. Accordingly, claims 1-6, are not entitled to the benefit of the prior application.
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 7-11 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 7 discloses that “a thickness between the outside surface and the inside surface of the handle increases where the integral handle mates with the lower surface of the solid circular disk body” which is incomplete since the claim does not disclose relative to what the thickness is being compared in order to determine an increase and as such the scope of the claim is unascertainable. The claim also discloses that “a portion of the integral handle has a thickness between the outside surface and the inside surface bigger than the rest of the handle” which is unclear since it is unknown relative to what dimensions on the handle the thickness is being compared or how this limitation distinguishes from the preceding limitation requiring an increased thickness at the proximal end and as such the scope of the claim is unascertainable. For the purposes of examination, the claim will be interpreted as a thickness between the outside surface and the inside surface of the handle where the integral handle mates with the lower surface of the solid circular disk body is greater than a thickness between the outside surface and the inside surface of an intermediate portion of the handle and a bottom portion of the handle having a thickness between the outside surface and the inside surface greater than a thickness between the outside surface and the inside surface of the intermediate portion of the handle.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1, 4, 5 and 12 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Friedman (GB1369311A) and Knox Jr. (3082572). Friedman discloses a flying disk toy (Fig. 2) having a solid circular disk body (11) since the protrusions (16) can be omitted (page 2 lines 40-41) with an upper surface (12), a lower surface (13) and a downwardly extending perimeter rim (14). An integral handle (15) extends downwardly from a center of the disk body having a proximal end integrally coupled to the lower surface of the disk body (page 2 lines 9-26, lines 48-49 & lines 66-73). The length of the handle is about 50% of a width of the solid circular disk body (Fig. 2). The integral handle includes a smooth outside surface and an inside surface for defining a hollow cavity within the handle (Fig. 2, page 2 line 23), wherein a thickness between the outside surface and the inside surface at a bottom or distal end of the handle is greater than a thickness between the inside and outside surfaces of an intermediate or midsection portion of the handle (Fig. 2). Friedman discloses the basic inventive concept with the exception of a width of the bottom or distal end of the handle being greater than a width of the handle at the proximal end. Knox Jr. discloses a flying disk toy (Figs. 1 & 2) having a disk (12) with a handle (11) extending downwardly therefrom that is configured with a proximal end (18) coupled to the disk and a distal end (20), wherein a width of the distal end is greater than a width of the proximal end (Figs. 2-3, column 2 lines 30-39 & column 3 lines 20-25). Since both Friedman and Knox Jr. relate to disk toys with handles, it would have been obvious to one of ordinary skill in the art to configure the distal end of the handle of Friedman to be wider than the proximal end as taught by Knox Jr. for the predictable result of shaping the handle so as to be easily grasped by a user (column 3 lines 20-25). Furthermore, the examiner notes that changes in shape have been held to be obvious modifications. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim 2-3 and 6 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Friedman and Knox Jr. as applied for claim 1 above and further in view of Glenn (DE4400191A1). Friedman and Knox Jr. disclose the basic inventive concept, with the exception of having battery powered light and sound producing mechanisms installed in the handle cavity. Glenn discloses a flying disk toy having a central hollow downward protrusion in which a light and sound mechanism is installed that is powered by a battery (Fig. 2, description paragraphs 6-12). It would have been obvious to one of ordinary skill in the art to include a light and sound mechanism powered by a battery within the central cavity of the handle of Friedman and Knox Jr. for the predictable result of providing enhanced play value and utility by enabling the toy to be used in low light situations.
Claims 7 and 10 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Friedman and Callahan (3814431). Friedman discloses a flying disk toy (Fig. 2) having a solid circular disk body (11) since the protrusions (16) can be omitted (page 2 lines 40-41) with an upper surface (12), a lower surface (13) and a downwardly extending perimeter rim (14). An integral handle (15) extends downwardly from a center of the disk body having a proximal end integrally coupled to the lower surface of the disk body (page 2 lines 9-26, lines 48-49 & lines 66-73). The length of the handle is about 50% of a width of the solid circular disk body (Fig. 2). The integral handle includes a smooth outside surface and an inside surface for defining a hollow cavity within the handle (Fig. 2, page 2 line 23), wherein a thickness between the outside surface and the inside surface at a bottom or distal end of the handle is greater than a thickness between the inside and outside surfaces of an intermediate or midsection portion of the handle (Fig. 2). Friedman discloses the basic inventive concept with the exception of a thickness of the handle between the inside and outside surfaces where the handle mates with the disk body being greater than a thickness between the inside and outside surfaces of the handle at an intermediate portion of the handle. Callahan discloses a flying toy (Fig. 1) having a hollow handle (15) extending downward from a body of the toy wherein a thickness between outside and inside surfaces of the handle where the handle mates with the body (18) is greater than a thickness between the outside and inside surfaces of the handle at an intermediate portion of the handle (Fig. 3, column 2 lines 23-29). Since Friedman and Callahan both disclose flying toys with handles, it would have been obvious to one of ordinary skill in the art to configure the thickness of the handle of Friedman where it is joined with the body to be greater than a thickness of the handle at an intermediate portion as taught by Callahan for the predictable result of providing increased rigidity and structural integrity. Furthermore, the examiner notes that changes in shape have been held to be obvious modifications. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claims 8-9 and 11 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Friedman and Callahan as applied for claim 7 above and further in view of Glenn. Friedman and Callahan disclose the basic inventive concept, with the exception of having battery powered light and sound producing mechanisms installed in the handle cavity. Glenn discloses a flying disk toy having a central hollow downward protrusion in which a light and sound mechanism is installed that is powered by a battery (Fig. 2, description paragraphs 6-12). It would have been obvious to one of ordinary skill in the art to include a light and sound mechanism powered by a battery within the central cavity of the handle of Friedman and Callahan for the predictable result of providing enhanced play value and utility by enabling the toy to be used in low light situations.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11813545 in view of Friedman. The patent discloses a disk toy having a solid circular disk body with an upper surface, lower surface and downwardly extending perimeter rim, an integral hollow handle extending downwardly from a center of the disk body with inside and outside surfaces defining a cavity with sound and light mechanisms installed therein, wherein a width of the handle at the proximal end is smaller than a width at a distal end and a thickness of the handle between the outside and inside surfaces of the distal end is larger than adjacent the proximal end but does not disclose that the handle is at least 47% of a width of the disk body and a thickness at the distal end between inside and outside surfaces is greater than a thickness between the inside and outside surfaces of an intermediate portion of the handle. Friedman discloses a flying disk toy (Fig. 2) having a solid circular disk body with an integral handle (15) extends downwardly from a center of the disk body having a proximal end integrally coupled to the lower surface of the disk body (page 2 lines 9-26, lines 48-49 & lines 66-73). The length of the handle is about 50% of a width of the solid circular disk body (Fig. 2). The integral handle includes a smooth outside surface and an inside surface for defining a hollow cavity within the handle (Fig. 2, page 2 line 23), wherein a thickness between the outside surface and the inside surface at a bottom or distal end of the handle is greater than a thickness between the inside and outside surfaces of an intermediate or midsection portion of the handle (Fig. 2). It would have been obvious to one of ordinary skill in the art to configure the handle to be at least 47% of a width and to have the thickness at the distal end greater than a midsection of the handle for the predictable results of configuring the handle to provide enhanced flight characteristics (page 1 lines 18-50).
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11813545 in view of Friedman and Glenn. The patent discloses a disk toy having a solid circular disk body with an upper surface, lower surface and downwardly extending perimeter rim, an integral hollow handle extending downwardly from a center of the disk body with inside and outside surfaces defining a cavity with sound and light mechanisms installed therein, wherein a width of the handle at the proximal end is smaller than a width at a distal end but does not disclose that the handle is at least 47% of a width of the disk body, a thickness at the distal end between inside and outside surfaces is greater than a thickness between the inside and outside surfaces of an intermediate portion of the handle and the handle includes a battery. Friedman discloses a flying disk toy (Fig. 2) having a solid circular disk body with an integral handle (15) extends downwardly from a center of the disk body having a proximal end integrally coupled to the lower surface of the disk body (page 2 lines 9-26, lines 48-49 & lines 66-73). The length of the handle is about 50% of a width of the solid circular disk body (Fig. 2). The integral handle includes a smooth outside surface and an inside surface for defining a hollow cavity within the handle (Fig. 2, page 2 line 23), wherein a thickness between the outside surface and the inside surface at a bottom or distal end of the handle is greater than a thickness between the inside and outside surfaces of an intermediate or midsection portion of the handle (Fig. 2). It would have been obvious to one of ordinary skill in the art to configure the handle to be at least 47% of a width and to have the thickness at the distal end greater than a midsection of the handle for the predictable results of configuring the handle to provide enhanced flight characteristics (page 1 lines 18-50). Glenn discloses a flying disk toy having a central hollow downward protrusion in which a light and sound mechanism is installed that is powered by a battery (Fig. 2, description paragraphs 6-12). It would have been obvious to one of ordinary skill in the art to include a battery within the handle for powering the light and sound mechanism.
Claims 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11813545 in view of Callahan and Friedman. The patent discloses a disk toy having a solid circular disk body with an upper surface, lower surface and downwardly extending perimeter rim, an integral hollow handle extending downwardly from a center of the disk body with inside and outside surfaces defining a cavity with sound and light mechanisms installed therein, wherein a width of the handle at the proximal end is smaller than a width at a distal end and a thickness of the handle between the outside and inside surfaces of the distal end is larger than adjacent the proximal end but does not disclose that the thickness between the outside and inside surface of the handle increases where the handle mates with the lower surface and a thickness at the distal end between inside and outside surfaces is greater than a thickness between the inside and outside surfaces of an intermediate portion of the handle. Callahan discloses a flying toy (Fig. 1) having a hollow handle (15) extending downward from a body of the toy wherein a thickness between outside and inside surfaces of the handle where the handle mates with the body (18) is greater than a thickness between the outside and inside surfaces of the handle at an intermediate portion of the handle (Fig. 3, column 2 lines 23-29). It would have been obvious to one of ordinary skill in the art to configure the thickness of the handle where it is joined with the body to be greater than a thickness of the handle at an intermediate portion as taught by Callahan for the predictable result of providing increased rigidity and structural integrity. Friedman discloses a flying disk toy (Fig. 2) having a solid circular disk body with an integral handle (15) extends downwardly from a center of the disk body having a proximal end integrally coupled to the lower surface of the disk body (page 2 lines 9-26, lines 48-49 & lines 66-73). The integral handle includes a smooth outside surface and an inside surface for defining a hollow cavity within the handle (Fig. 2, page 2 line 23), wherein a thickness between the outside surface and the inside surface at a bottom or distal end of the handle is greater than a thickness between the inside and outside surfaces of an intermediate or midsection portion of the handle (Fig. 2). It would have been obvious to one of ordinary skill in the art to configure the handle to have the thickness at the distal end greater than a midsection of the handle for the predictable results of configuring the handle to provide enhanced flight characteristics (page 1 lines 18-50).
Claim 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11813545 in view of Callahan, Friedman and Glenn. The patent discloses a disk toy having a solid circular disk body with an upper surface, lower surface and downwardly extending perimeter rim, an integral hollow handle extending downwardly from a center of the disk body with inside and outside surfaces defining a cavity with sound and light mechanisms installed therein, wherein a width of the handle at the proximal end is smaller than a width at a distal end and a thickness of the handle between the outside and inside surfaces of the distal end is larger than adjacent the proximal end but does not disclose that the thickness between the outside and inside surface of the handle increases where the handle mates with the lower surface, a thickness at the distal end between inside and outside surfaces is greater than a thickness between the inside and outside surfaces of an intermediate portion of the handle and a battery is included in the handle. Callahan discloses a flying toy (Fig. 1) having a hollow handle (15) extending downward from a body of the toy wherein a thickness between outside and inside surfaces of the handle where the handle mates with the body (18) is greater than a thickness between the outside and inside surfaces of the handle at an intermediate portion of the handle (Fig. 3, column 2 lines 23-29). It would have been obvious to one of ordinary skill in the art to configure the thickness of the handle where it is joined with the body to be greater than a thickness of the handle at an intermediate portion as taught by Callahan for the predictable result of providing increased rigidity and structural integrity. Friedman discloses a flying disk toy (Fig. 2) having a solid circular disk body with an integral handle (15) extends downwardly from a center of the disk body having a proximal end integrally coupled to the lower surface of the disk body (page 2 lines 9-26, lines 48-49 & lines 66-73). The integral handle includes a smooth outside surface and an inside surface for defining a hollow cavity within the handle (Fig. 2, page 2 line 23), wherein a thickness between the outside surface and the inside surface at a bottom or distal end of the handle is greater than a thickness between the inside and outside surfaces of an intermediate or midsection portion of the handle (Fig. 2). It would have been obvious to one of ordinary skill in the art to configure the handle to have the thickness at the distal end greater than a midsection of the handle for the predictable results of configuring the handle to provide enhanced flight characteristics (page 1 lines 18-50). Glenn discloses a flying disk toy having a central hollow downward protrusion in which a light and sound mechanism is installed that is powered by a battery (Fig. 2, description paragraphs 6-12). It would have been obvious to one of ordinary skill in the art to include a battery within the handle for powering the light and sound mechanism.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11813545. Although the claims at issue are not identical, they are not patentably distinct from each other because The patent discloses a disk toy having a solid circular disk body with an upper surface, lower surface and downwardly extending perimeter rim, an integral hollow handle extending downwardly from a center of the disk body and wherein a width of the handle at the proximal end is smaller than a width at a distal end.
Conclusion
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711