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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/13/26 has been entered.
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 1-5 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 1 discloses having “a rotating body provided on an opposite side of the second rotating shaft with respect to the first rotating shaft” which is unclearly worded since it is unknown if that means that the rotating body and the first shaft are positioned on opposite sides of the second rotating shaft or if it means that the rotating body and the second shaft are positioned on opposite sides of the first shaft. For the purposes of examination, the claim will be interpreted as the rotating body of the first rotating member and a position of the second rotating shaft being positioned on opposite sides of the first rotating shaft.
Claim Rejections - 35 USC § 103
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Croggon (2365522), Perkitny (5181877) and Samo (3590521). Coggon discloses a model toy (Figs. 4 & 8) having a main body cover portion (15) with first and second contact points formed by respective sidewalls of a recess (23), a first rotating member (14) supported in the main body portion and rotatable about an axis of a first rotating shaft (18) and a second rotating member (41) in the form of an extension portion is supported in the first rotating member and rotatable around an axis of a second rotating shaft (42). The first and second rotating shafts are positioned so as to be offset from one another and with axial directions positioned parallel to each other (Figs. 4 & 8). A position of a center of gravity (22) of the first rotating member and a position where the second rotating member engages the first rotating member are positioned on opposite sides of the first rotating shaft such that the first rotating member can rotate around the axis of the first rotating shaft between a first state and a second state (Fig. 8). The extension portion is configured to extend in a direction perpendicular to the axial direction of the second rotating shaft to extend out from the main body cover portion while the first rotating member is covered by the main body portion (Fig. 8). The toy is capable of being positioned with the right side surface placed on the ground surface such that the extension portion extends laterally from the main body portion and in this position, the first state would position the center of gravity below the second rotating shaft with the first contact portion contacting a lower side of the first rotating member and the second state would position the center of gravity above the second rotating shaft with the second contact portion contacting an upper side of the first rotating member (Fig. 8). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Croggon discloses the basic inventive concept with the exception of the second rotating shaft disposed within the first rotating member and the first rotating member having a rotating body wherein the rotating body and second rotating shaft are disposed on opposite sides of the first rotating shaft and the rotating body includes a backwardly projecting rotating protrusion portion behind the center of gravity. Perkitny discloses a toy with a main body cover portion (15) that covers a first rotating member (30) that is rotatable about a first rotating shaft (45) and a second rotating extension member (20) that is rotatable about a second rotating shaft (38) positioned within the first rotating member such that the first and second rotating shafts are positioned so as to be offset from one another and with axial directions positioned parallel to each other (Fig. 2) and wherein the second rotating extension member is exposed through the main body cover portion (Figs. 1 & 3). Since both Croggon and Perkitny disclose toys with second rotating members movable in response to rotation of first rotating members, it would have been obvious to one of ordinary skill in the art to modify the location of the rotating shaft of the second rotating member of Croggon to the first rotating member as taught by Perkitny for the predictable result of positioning the second rotating shaft for imparting motion to the second rotating member responsive to the rotation of the first rotating member in a known manner. Furthermore, a mere rearrangement of parts has been held to be obvious absent a new or unexpected result being produced. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Samo discloses a toy having a rotatable member (Fig. 6) positioned within a main body cover portion (H) wherein the rotatable member includes a rotating body (32) on a rear portion of the rotatable member adjacent a center of gravity (34) and a rearward protrusion portion (38) positioned behind the center of gravity for contacting contact portions (40) of the main body (Fig. 4). Since the references all disclose toys with rotation members positioned in main body cover portions, it would have been obvious to one of ordinary skill in the art to shape the rotating member of Croggon and Perkitny to include a rotating body with a rearwardly extending protrusion portion behind the center of gravity as taught by Samo since such a modification would have involved a mere change in the shape of the rotating member and changes in shape have been held to be an obvious modification. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Croggon, Perkitny and Samo. The references disclose the basic inventive concept with the exception of the extension portion imitating a part of toilet paper and the cover portion imitating a toilet paper holder. The examiner notes that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention over the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA HYLINSKI whose telephone number is (571)272-2684. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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