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 .
Status of Claims
In an amendment filed 1/5/2026 with an RCE, Applicant amended claims 1-2, 4, and added new claims 11-12. This amendment is acknowledged. Claims 1-12 are pending and are currently being examined.
Claim Rejections - 35 USC § 102
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 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 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 1-2, 5, and 7-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peake US Pat. No. 1,853,833.
Peake teaches:
In Reference to Claim 1
A toy wheel assembly (a pair of wheel assemblies are formed by two pairs of wheels 20/21 integrally formed with axles 18/19 extending between respective pairs of wheels, Fig. 1-5), comprises:
a first wheel having a first surface and a second surface (the first/front wheel assembly has a first (left) front wheel 20 having a first outer surface and a second inner surface);
a second wheel having a third surface and a fourth surface (the first wheel assembly has a second (right) front wheel having a third inner surface and a fourth outer surface, Fig. 1-4); and
a cylindrical shaft having a first edge and a second edge (the first/front wheel assembly has a first axle/shaft 18 integrally connected to the front left and right wheels), wherein the first wheel is connected to the second wheel by the cylindrical shaft, wherein the cylindrical shaft is perpendicularly mounted to a center of the second surface of the first wheel by the first edge, and the cylindrical shaft is perpendicularly mounted to a center of the third surface of the second wheel by the second edge, wherein the cylindrical shaft is directly affixed to the first wheel and the second wheel to form and maintain a predetermined gap between the second surface and the third surface (the first axle shaft 18 extends between the inner surfaces of the first and second wheels at the center of each wheel and extends perpendicularly therefrom to form the connected front wheel assembly having a predetermined/fixed gap/width between the first and second wheel inner surfaces), wherein a width of the predetermined gap is larger than a width of the first wheel and a width of the second wheel by at least a first predetermined value (the axle is fixed to the wheels at a fixed predetermined width as they are formed integrally, page 1 lines 53-59, Fig. 1-4), and wherein the first wheel and the second wheel rotate around a joint axis in unison (the axle 18 is fixed to the wheels so that they rotate together within the seat of the toy part as they are formed integrally, page 1 lines 53-59, page 2, line 8-15, Fig. 1-4),
wherein the toy wheel assembly is fully assembled and defines the predetermined gap prior to engagement with a toy part (the axle 18 is integrally formed to the wheels 20 before assembly and inserted into the toy part (the toy part (part of the toy) for this interpretation of the prior art is defined by the connected body halves 11/12 and integral grooves formed therein for receiving the front and rear wheel assemblies therein) for rotation therein, page 1 lines 53-59, page 2, line 8-15, Fig. 1-4),
wherein the toy wheel assembly is configured to receive the toy part having at least one open-ended groove that opens downward toward a bottom of the toy part (the toy part is defined by the connected body halves 11/12 (not every part of the toy vehicle (the toy part (part of the toy) for this interpretation of the claims and prior art is the toy vehicle housing halves and integral grooves formed therein and excluding the spring retainer 28/35 as this is an additional part of the toy and not “the toy part” (which is interpreted as part of the toy)), just the connected housing 11/12 and integral parts thereof), which include open ended grooves between 14/14’, 15/15’ that open downward toward a bottom of the toy part to receive the first front wheel assembly therein, Fig. 1-4),
wherein the toy part is configured to be placed on the cylindrical shaft such that the open-ended groove rests on the cylindrical shaft (the toy part 11/12 rests on the front wheel assembly 18/20 as the axles shaft 18 sits within the open-ended groove, Fig. 1-3),
wherein the toy part is maintained on the cylindrical shaft only by gravity (the toy part 11/12 rests on the front wheel assembly 18/20 only using gravity as the axles shaft 18 sits within the open-ended groove and does not contact the secondary retaining member 28/35 during use (further this retaining member is separate from the “toy part” which is only considered the housing of the vehicle as interpreted above), Fig. 1-3), and
wherein the cylindrical shaft is not inserted into an enclosed opening of the toy part (the groove formed in 14/14’ and 15/15’ is open at the bottom end to allow removal of the wheel assembly as needed (the retaining member 28/35 is again not considered “the toy part” as defined and interpreted above)).
In Reference to Claim 2
The toy wheel assembly of claim 1, wherein the width of the predetermined gap, formed and maintained by the cylindrical shaft directly affixed to the first wheel and the second wheel, is adapted to accept a toy part having at least one groove by a first groove of the at least one groove, so that the cylindrical shaft of the toy wheel assembly rotates freely within the open-ended groove of the at least one groove of the toy part (the axle 18 is integrally formed/directly fixed to the wheels 20 before assembly and inserted into the at least one groove formed by 14/14’/15/15’ as discussed above in the toy part (the toy part is defined by the connected body halves 11/12) for free rotation of the wheels and axle in the groove in the toy part, page 1 lines 53-59, page 2, line 8-15, Fig. 1-4).
In Reference to Claim 5
The toy wheel assembly of claim 2, wherein the predetermined gap is larger than a width of a side of the toy part that includes the first groove of the at least one groove of the toy part by a second predetermined value (the gap between the inner surfaces of the wheels 20 is slightly larger than the toy body 11/12 with the axle receiving groove therein by a second value to allow the wheels to rotate without contacting the side of the housing, Fig. 1-4).
In Reference to Claim 7
The toy wheel assembly of claim 5, wherein the first predetermined value and the second predetermined value are different (as best understood, the first predetermined value = the gap distance between the inner surfaces of the wheels – the wheel width. The second predetermined value = the gap distance between the inner sides of the wheels – the toy body width. Based on Fig. 2/4, the first predetermined value would be larger and different than the second predetermined value).
In Reference to Claim 8
The toy wheel assembly of claim 2, wherein the at least one groove of the toy part has a depth deeper than a radius of the cylindrical shaft (the open-ended groove formed between 14/14’, 15/15’ that open downward toward a bottom of the toy part is deeper than a radius of the axle (larger than the diameter of the axle as shown in Fig. 1) to fully receive the first front wheel assembly therein, Fig. 1-4).
In Reference to Claim 9
The toy wheel assembly of claim 2, wherein the at least one groove of the toy part has at least one opening at a side of the toy part (the groove is open at each side of the toy part side surfaces 11/12 to allow the axle to extend fully through each side, Fig. 1-4).
In Reference to Claim 10
The toy wheel assembly of claim 2, wherein the toy part does not establish a permanent connection with the toy wheel assembly (the toy part 11/12 is not permanently connected to the wheel assembly as the wheel assembly may be removed from the grooves in the bottom of the toy part (further, the flexible retaining members which are not part of the toy part as interpreted do not provide a permanent connection as the axles may simply be pulled back against them and out of the bottom of the toy part)).
In Reference to Claim 11
The toy wheel assembly of claim 1, wherein there is no permanent connection between the toy wheel assembly and the toy part (the toy part 11/12 is not permanently connected to the wheel assembly as the wheel assembly may be removed from the grooves in the bottom of the toy part (further, the flexible retaining members which are not part of the toy part as interpreted do not provide a permanent connection as the axles may simply be pulled back against them and out of the bottom of the toy part)).
In Reference to Claim 12
The toy wheel assembly of claim 1, wherein an outer cylindrical surface of the cylindrical shaft is only partially surrounded by the open-ended groove (the open-ended groove formed between 14/14’, 15/15’ that open downward toward a bottom of the toy part only partially surrounds the cylindrical surface of axle 18 as it is open on the bottom end, Fig. 1-4).
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 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.
Claim(s) 3-4 and 6 rejected under 35 U.S.C. 103 as being unpatentable over Peake as applied to claim 1/5 above, and further in view of Manning US Pat. No. 3,835,583.
In Reference to Claim 3-4
Peake teaches:
The toy wheel assembly of claim 1, wherein the cylindrical shaft is mounted to the center of the second surface and the center of the third surface (the axle shaft 18 is integrally mounted to the center of the inner surfaces of the wheels 20, Fig. 1-4).
Peake fails to teach:
Wherein the cylindrical shaft is mounted to the center of the second surface and the center of the third surface by at least one of: gluing and screwing or wherein at least one of the centers of the second surface and the center of the third surface includes a socket, wherein the socket is adapted to receive an edge of the cylindrical shaft by insertion.
Manning teaches:
A similar toy wheel assembly, wherein the cylindrical shaft is mounted to the center of the second surface and the center of the third surface by at least one of: gluing and screwing (axle shaft 26 is mounted into the center of the inner surfaces of the wheels 13/14 via to the hub 22/28 and may include adhesive to secure the hub 22/28 in the wheels, Fig. 1-2, Col. 3 lines 60-66, Col. 3 lines 27-45), and wherein at least one of the center of the second surface and the center of the third surface includes a socket, wherein the socket is adapted to receive an edge of the cylindrical shaft by insertion (each end of the shaft 26 is received in hub/socket 22/28 in the center of the inner surface of each wheel 13/14, Fig. 2, Col. 3 lines 60-66, Col. 3 lines 27-45).
It would have been obvious to one having ordinary skill in the art to have modified the wheel assembly of Peake to have connected the axle shaft to the wheels via sockets receiving ends of the axle therein and by other known fastening means, such as gluing or screwing, as these are known and commonly known fastening means in the art as taught by Manning (Col. 3 lines 60-66, Col. 3 lines 27-45). Further, it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art (Nerwin v. Erlichman, 168 USPQ 177, 179) and it has been held that integral is sufficiently broad to embrace constructions united by such means as fastening and welding (In re Hotte (CCPA) 177 USPQ 326).
In Reference to Claim 6
Peake teaches:
The toy wheel assembly of claim 5, wherein the first predetermined value and the second predetermined value are identical (as best understood, the first predetermined value = the gap distance between the inner surfaces of the wheels – the wheel width. The second predetermined value = the gap distance between the inner sides of the wheels – the toy body width. Based on Fig. 2/4, the first predetermined value would be larger than the second predetermined value).
Further, Manning teaches:
A similar toy wheel assembly (as previously described) wherein the first predetermined value and the second predetermined value are identical (as best understood, the first predetermined value = the gap distance between the inner surfaces of the wheels – the wheel width. The second predetermined value = the gap distance between the inner sides of the wheels – the toy body width. Based on Fig. 2, the first predetermined value would be larger than the second predetermined value).
Though Peake appears to show these two arbitrary measurements being different, Peake shows that the wheels and toy body can vary in shape and further Manning teaches that wheels and toy bodies may vary in shape and size and therefore one having ordinary skill in the art would understand it to be an obvious modification to change the relative sizes and shapes of the wheels, axle, and toy parts as desired to vary the aesthetics of the toy vehicle as taught by Manning (Col. 3 lines 3-26, Col. 5 lines 25-38, Fig. 5-6 appears to show that the first and second predetermined values would be identical or similar). Further, it would have been obvious to one having ordinary skill in the art to have modified the shape and size of the toy body, wheels, and gaps as these are all matters of obvious design choice and only aesthetically change the look of the toy, and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In 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)).
Response to Arguments
Applicant’s arguments, see pages 5-10, filed 1/5/2026, with respect to the rejection(s) of claim 1 under 102 (Manning) have been fully considered and are generally persuasive, however some of the argued features are not necessarily structurally required as described below. The previously applied the rejections have been withdrawn as there appears to be more relevant prior art that applies to the amended claims. A new ground(s) of rejection is made in view of Peake. However, it is noted and explained further below, the toy part as argued is not necessarily positively structurally required by the claims as presented and therefore Manning could still be potentially used in a rejection of the claims, however newly referenced prior art appears to better teach the amended claim limitations and therefore the newly presented rejections are made above to more clearly address the intended invention.
Further, in response to applicant's argument that the prior art fails to teach the specific groove arrangement of a toy part, 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. Independent claim 1 only requires that the toy wheel assembly is “configured to” interact with the toy part in the claimed manner, and therefore the claim does not actually require that toy part having the intended use features. The claim is directed towards “A toy wheel assembly” and not an assembled toy vehicle having the claimed vehicle (toy part) and wheel assembly and as claimed would only require potential use with a part of a toy (ex. part of a toy vehicle housing). If the applicant wants the claims to be interpreted as requiring the specific toy vehicle housing structure used with the wheel assembly, it should be positively recited and not recited as “configured to”, “adapted to”, or similar wording which is merely an intended use of the wheel assembly and does not require the actual structure of the toy part, only that it is capable of being used with the toy part in the claimed manner.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., specific features of the toy part) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As discussed above, the claims present the definition of the toy part as the wheel assembly being “configured to” or “adapted to” interact with a toy part (which may be considered part of a toy as interpreted and explained in the rejection above), which does not actually require the recited structure. This intended use or functional language only requires that the wheel assembly is capable of use with the toy part as defined, which the prior art would clearly be capable of use with the presented toy part as essentially the only structure recited is the two wheels and shaft assembled together as defined which is taught by the prior art as described in the rejection above. The rejection above does address where the toy part shows the claimed structural features, however as recited in the claims, this does not have to necessarily be taught by the prior art to teach the presented claim. The prior art just has to show the claimed wheel assembly structure capable of being used with the claimed toy part in the manner described, which the wheel assembly of the prior art is capable of performing with the presented toy part.
Brief Discussion of Other Prior Art References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the references cited page for publications that are noted for containing similar subject matter as the applicant. For example, Maxam (3,321,863), Carter (3,473,259), Nielsen (3,711,989), D’Andrade (4,601,519), Becker (4,597,743), Becker (4,850,924), Alskog (4,861,311), Kennedy (2011/0014850), and Kwan (11,701,597) teach similar toy vehicle wheel assemblies. Further, Kelderhouse (2007/0238390) teaches grooves with an open end in the bottom of the toy part and passages with openings at sides of the toy part are both known and commonly used interchangeable arrangements to secure a wheel assembly to a toy body part (Fig. 1-2, [0041]-[0043]).
Conclusion
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711