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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-20, filed 10/27/2023, are pending and are currently being examined.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the audio means operated by mechanical means (claim 17, [0033]) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “mechanical means to separate a device which displays the image” in claim 10, “gear means” in claim 11, “support means for enabling the toy apparatus to be held” in claim 13, “securing means for securing the toy apparatus to a structure” in claim 14, and “audio means operated via mechanical means” in claim 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The “mechanical means to separate a device which displays the image” disclosed as a link including gearing means, a gear train, or differential wheel ([0093], Fig. 16, [0025]), a cog and/or differential wheels ([0102], Fig. 24).
The “gear means” disclosed as a gear wheel or similar means, gear train, gear wheels and/or cog wheels and/or pinions and/or belts ([0026]).
The “support means for enabling the toy apparatus to be held” disclosed as a rod ([0028]).
The “securing means for securing the toy apparatus to a structure” disclosed as a suction cap 32 ([0082], [0029], [0073]).
The “audio means operated via mechanical means” is not specifically disclosed as specific means ([0033]).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 1, “Toy apparatus for providing an optical illusion, which toy apparatus comprises:” should more clearly read “A toy apparatus for providing an optical illusion comprising:”. Appropriate correction is required.
Claims 2-20 are objected to because of the following informalities: the claims should begin with “The toy…”. Appropriate correction is required.
Claims 9-10 are objected to because of the following informalities: in line 1, “according to according to” appears to be a typographical error. Appropriate correction is required.
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 1-20 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “the production” in line 9 and “the viewer’s persistence of vision” in line 10. There is insufficient antecedent basis for these limitations in the claim.
Regarding claims 1-3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 recites the limitation “the plurality of separate images” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation “the ground” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Therefore, claims 4-8, 10-12, and 14-20 are rejected as they depend from a rejected claim.
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 1-9, 13-16, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bunting US Pat. No. 2,154,031.
Bunting teaches:
In Reference to Claim 1
Toy apparatus for providing an optical illusion (optical illusion toy, Fig. 1-7), which toy apparatus comprises:
(i) rotor which rotates about an axis (rotor 12 rotates about axis 14);
(ii) at least one blade formation for being engaged by a substance such as to cause the rotor to rotate (rotor having blades 17 extending therefrom that are each moved by an air substance provided by the user); and
(iii) at least one image which rotates consequent upon rotation of the rotor (images 19 rotate with their respective rotor blade 17 to cause a moving image/optical illusion), and wherein:
(iv) the rotation of the at least one image causes the production of the optical illusion due to the viewer’s persistence of vision (the user causes rotation of the rotor, blades, and images to produce a moving image illusion in view of the user, Fig. 1-3, Col. 1 lines 4-13).
In Reference to Claim 2
Toy apparatus according to claim 1 in which the substance is a gas, or a liquid, or a solid or a semi-solid, and in which the at least one blade formation is for being engaged by the gas or the liquid or the solid or the semi-solid such as to cause the rotor to rotate (user provided air (gas) is provided by the user through pipe 21 to cause the rotor, blades, and images to move/rotate, Fig. 1-3, Col. 2 line 25 – Col. 3 line 34).
In Reference to Claim 3
Toy apparatus according to claim 1 in which the at least one blade formation comprises a substance-engagement portion or is a flat panel such as to cause the rotor to rotate (each blade 17 is shaped as a flat panel which rotates when engaged by provided air/gas from the user through the pipe, Fig. 1-3, Col. 2 line 25 – Col. 3 line 34).
In Reference to Claim 4
Toy apparatus according to claim 1 in which the at least one blade formation extends from the rotor (each blade 17 extends radially from the rotor 12, Fig. 1-7).
In Reference to Claim 5
Toy apparatus according to claim 1 in which there is a plurality of the blade formations (plurality of blade formations 17 (four blades) are shown, Fig. 1-7).
In Reference to Claim 6
Toy apparatus according to claim 1 in which the at least one image is part of the at least one blade formation or separate from the at least one blade formation (images 19 are formed as part of the blades 17, Fig. 1-3, Col. 2 line 25 – Col. 3 line 34).
In Reference to Claim 7
Toy apparatus according to claim 1 in which the at least one image faces in any direction of the axis about which the rotor rotates (the images 19 rotate fully about the rotor axis, and therefore faces any or every direction around the rotor during use).
In Reference to Claim 8
Toy apparatus according to according to claim 1 in which the at least one blade formation and rotor and the at least one image rotate in the same or alternative directions to each other (each image 19 is on the same position on their respective blade, and therefore each image rotates in the same direction during use).
In Reference to Claim 9
Toy apparatus according to according to claim 1 in which there is a plurality of the images and in which the plurality of separate images rotate in the same or different directions to each other (each image 19 is on the same position on their respective blade, forming a plurality of images that rotate in the same direction to create the optical illusion/moving image during use).
In Reference to Claim 13
Toy apparatus according to claim 1 in which the toy apparatus includes support means for enabling the toy apparatus to be held in a person’s hand and/or to be placed in the ground (the rotatable illusion toy (rotor, blades, and images) are secured to a wire frame structure 10 which also securely positions the air providing means/pipe 21 in optimal positions for use, the frame is capable of being securely placed on the ground or held in a user’s hand as desired, Fig. 1).
In Reference to Claim 14
Toy apparatus according to claim 1 which comprises securing means for securing the toy apparatus to a structure (the rotatable illusion toy (rotor, blades, and images) are secured to a wire frame structure 10 which also securely positions the air providing means/pipe 21 in optimal positions for use, Fig. 1).
In Reference to Claim 15
Toy apparatus according to claim 1 in which the toy apparatus forms part of another toy or item (the rotatable portions of the toy further includes wire frame 10 which may broadly be considered another toy or item or may be placed or combined with another toy or item, the frame also holds the air introducing member/pipe which may be considered another toy or item, Fig. 1-7).
In Reference to Claim 16
Toy apparatus according to claim 1 which includes one or multiple rotors (one rotor 12).
In Reference to Claim 18
Toy apparatus according to claim 1 in which the toy apparatus includes viewing apertures or excludes viewing apertures and in which these constructions facilitate the optical illusion (the optical illusion is viewed above the frame 16 without a specific viewing aperture, Fig. 1).
In Reference to Claim 20
Toy apparatus according to claim 1 in which toy apparatus includes joint formation for dynamically positioning the blade formation in an optimum position in relation to the substance (the frame 10 provides an optimum position of the device relative to the substance provided by frame held pipe 21, Fig. 1, 7).
Alternatively and/or additionally, Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schultz US Pat. No. 1,595,881.
Bunting teaches:
In Reference to Claim 1
Toy apparatus for providing an optical illusion (optical illusion toy, Fig. 1-4), which toy apparatus comprises:
(i) rotor which rotates about an axis (rotor 21 rotates about axis 20);
(ii) at least one blade formation for being engaged by a substance such as to cause the rotor to rotate (rotor having blades 23 extending therefrom that are each moved by an air substance provided by the user); and
(iii) at least one image which rotates consequent upon rotation of the rotor (images 24 rotate with their respective rotor blade 23 to cause a moving image/optical illusion), and wherein:
(iv) the rotation of the at least one image causes the production of the optical illusion due to the viewer’s persistence of vision (the user causes rotation of the rotor, blades, and images to produce a moving image illusion in view of the user, Fig. 1-3, page 1, lines 1-20).
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.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Bunting as applied to claim 1 above, and further in view of Kennedy US Pat. No. 1,525,746.
In Reference to Claims 10-12
Bunting teaches:
Toy apparatus according to claim 1 as rejected above.
Bunting fails to teach:
The rotor linked by a mechanical means to a separate device which displays the image, the toy including gear means, and at least one differential wheel.
Further, Kennedy teaches:
A similar toy apparatus for producing an optical illusion (Fig. 6), further comprising a display means separate from the rotor (movable display 68), and a rotor (78) rotatable about an axis (79) and having blades rotating thereabout (80), the rotor driven by a series of gears and rods including a differential wheel (gear of a different size) (series of rods and gears 70/73/74/85/76/74 are driven relative one another to provide motion to different parts of the device from a singular source as is common and known in the art, Fig. 6).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Bunting to have further included a separate display device and operated by commonly known drive means, such as gears and differential wheels in order to allow the rotatable portions to be more efficiently rotated by the user as is known and common in the art as taught by Kennedy (page 1 lines 9-16, page 2 line 115 – page 3 line 45). Further, it has been held that forming the display as a separate member (viewing screen or the like) is known in the art and 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).
Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Bunting as applied to claim 1 above, and further in view of Walker et al. US Pat. No. 6,802,755.
In Reference to Claim 17
Bunting teaches:
Toy apparatus according to claim 1 as rejected above.
Bunting fails to teach:
Audio means operated via mechanical means.
Further, Walker teaches:
A similar toy apparatus for producing an optical illusion, further comprising means for producing a flicker-effect over the image to facilitate the optical illusion (strobed LED lights 315-317/515 emit light onto the image to produce a flicker/strobe effect on the image to facilitate the optical illusion, Abstract, Fig. 1-5, Col. 2 lines 14-41), and audio means operated by mechanical means (manually actuated button/controls 10/15 control the stimulating means of the device, including vibration, lighting (Col. 5 line 44 – Col. 6 line 43), and sound means, Col. 6 line 42 – Col. 6 line 43).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Bunting to have further included additional entertainment stimuli, such as audio means, to make the device more engaging and aesthetically interesting as is known in the art and as taught by Walker (Col. 1 lines 9-14, Col. 2 lines 14-41, Col. 6 line 42 – Col. 6 line 43).
In Reference to Claim 19
Bunting teaches:
Toy apparatus according to claim 1 as rejected above.
Bunting fails to teach:
Secondary blade formations in order to produce a flicker-effect over the at least one image to facilitate the optical illusion.
Further, Walker teaches:
A similar toy apparatus for producing an optical illusion, further comprising means for producing a flicker-effect over the image to facilitate the optical illusion (strobed LED lights 315-317/515 emit light onto the image to produce a flicker/strobe effect on the image to facilitate the optical illusion, Abstract, Fig. 1-5, Col. 2 lines 14-41).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Bunting to have further included secondary special effects on the blades/images, such as strobe lighting to produce a flicker effect in order to increase the visual illusion effects and make the device more engaging and aesthetically interesting as is known in the art and as taught by Walker (Col. 1 lines 9-14, Col. 2 lines 14-41).
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, Kelly (10,330,084), Hancock (12,337,256, 11,465,065), Long (5,905,564), Hammarstrom (1,918,747), Tebeau (1,903,272), Baldwin (1,899,788), and Killman (1,573,968) disclose similar optical illusion toys.
Conclusion
If the applicant or applicant’s representation has any questions or concerns regarding this office action or the application they are welcome to contact the examiner at the phone number listed below and schedule and interview to discuss the outstanding issues and possible amendments to expedite prosecution of this application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R NICONOVICH whose telephone number is (571)270-7419. The examiner can normally be reached Mon - Fri 8-6 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711