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 1-17 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 line 5 recites “the rotational position,” which lacks proper antecedent basis. No rotational position was previously claimed. Appropriate correction is required.
Regarding claims 2-8, 10, 12, 13, and 16, equivocal terms in these claims such as the term "may" renders these claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Providing optional claim language by using terms like “may” indicate that the subject matter after this recitation is optional, but not required by the claims, which makes the claim scope unclear. Claim 5 also recites “but not limited to,” which is similarly confusing. Claim 7 recites “and the like” which is also similarly confusing. Since many of the claims would not require any additional structure if these recitations were taken at face value, the examiner presumes, for the purposes of this action, that the elements after “may” were intended to be positively claimed. Appropriate correction is required.
Claim 5 recites “a sickle shaped.” It is unclear what this shape is intended to be, specifically. A sickle is a tool, which can be made in a variety of shapes. The commonality is presumably that they are curved, therefore, for the purposes of this action the examiner will presume this was intended to recite a curved shape. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 1-5, 8, 10, 11, 14, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Green (US Patent No. 3,457,669) in view of Lustig (US Patent No. 1,288,946), and further in view of Castro (US Patent No. 6,716,083 B1).
In Reference to Claims 1-5, 8, 15, and 17
Green teaches (Claim 1) A balloon apparatus, comprising: a [inflated] portion (item 11, fig. 1, column 2 line 31); an appurtenance [] attached to said [inflated] portion (item 12, fig. 1); at least one connector rotatably linked to said lighter-than-air portion (item 14, fig. 1, rotatably linked via item 13), [];
(Claim 2) may comprise a swivel located at a central area of said lighter-than-air portion (item 13, fig’s 1 and 4 and column 2 lines 34-40);
(Claim 3) wherein said central area may be convex or concave shaped (end of balloon where item 13 is attached is convex);
(Claim 4) wherein said appurtenance may comprise a plurality of arms connected to said lighter-than-air portion to urge rotation of said lighter-than-air portion and said plurality of arms (items 18, fig’s 1-3; column 2 line 68 – column 3 line 4);
(Claim 5) wherein said plurality of arms may be, but not limited to, a sickle shaped (fig’s 2 and 3, arms 18 are curved, therefore, broadly interpreted, can be considered sickle shaped; also note it is unclear what specific shape is attempting to be claimed here).
(Claim 8) wherein each arm of said plurality of arms may comprise a convex surface area and a concave surface area, and an increased surface area on side of each arm causes the balanced or unbalanced rotation of said lighter-than-air portion as desired (fig’s 2 and 3, column 2 lines 16-22, column 2 line 68 – column 3 line 4, propeller has both convex and concave surfaces);
(Claim 15) wherein said [inflated] portion is structured to selectively rotate in opposite directions (inherent to a propeller structure; pulling in different directions would provide opposite rotations).
(Claim 17) wherein said lighter-than-air portion is configured to capture the force of moving air (column 2 line 68 – column 3 line 4).
Green fails to teach the features of the device being lighter than air, the appurtenance being rotatably attached, and a weighted handle of claim 1.
Lustig teaches (Claim 1) a balloon being lighter than air (item A, fig. 1); an appurtenance rotatably attached to a balloon (items C, fig. 1, page 1 lines 55-68); a connector manipulating the rotational position of said appurtenance relative to said lighter-than-air portion (item D, fig. 1, page 1 lines 55-68, note that rotational position of items C would be manipulated if item D is manipulated, this is an intended use);
Castro teaches a weighted handle extended from a connector (item 10, from item 40, fig’s 4 and 5).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the rotating novelty display balloon of Green with the features of a lighter than air balloon with appurtenances that are rotatably attached as taught by the novelty display balloon of Lustig for the purpose of imparting motion to the balloon that creates a more realistic appearance of a flying craft, as taught by Lustig (page 1 lines 65-68), making the device more interesting and attractive to the users.
The examiner further notes that Castro teaches that lighter than air balloons are well-known in the art (column 1 lines 5-7). Though Green fails to specifically disclose an inflation gas, the examiner notes that it is well known to use a lighter than air gas for inflating balloons, and inflating the device of Green with such a gas would, therefore, be obvious to one of ordinary skill in the art.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the novelty display balloon of Green with the feature of a weighted handle as taught by the novelty display balloon of Castro for the purpose of preventing the lighter than air balloons from floating away as taught by Castro (column 1 lines 14-22), making the device more reliable, more convenient, and more attractive to the users.
In Reference to Claims 10-11
The modified device of Green teaches all of claim 1 as discussed above.
Green further teaches (Claim 10) wherein said appurtenance may alternatively comprise [] sickle-shaped arm[s] connected to said lighter-than-air portion (items 18, fig’s 1-3), wherein air passing over said [inflated] portion follows the contour of said sickle-shaped arm[s] exerting an increasing force on the end of said sickle-shaped arm, causing rotation of said lighter-than-air portion (column 2 line 68 – column 3 line 4);
(Claim 11) in which when said connector is positioned on opposite side of said lighter-than-air portion, rotation of said lighter-than-air portion will reverse (this is inherent to propeller blades, reversing air flow over them will reverse the rotation).
Green fails to specifically teach using a single arm as the appurtenance of claim 10.
However, Green does teach using a variety of different numbers of arms (column 2 lines 22-27), and shows embodiments with an element that could be considered a single arm (item 12, fig. 2), or one with multiple arms (item 12a, fig. 6).
It would have, therefore, been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the device of Green with a single arm simply as a matter of engineering design choice, since, it has been held that both duplication of parts has no patentable significance unless a new and unexpected result is produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); and, that matters of ornamentation which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Since any number of arms would appear to work equally well for the purposes of rotating the device, merely claiming a particular number of arms is simply a matter of ornamentation, would not produce any new or unexpected results and is, therefore, not a patentable advance.
In Reference to Claim 14
The modified device of Green teaches 1 as discussed above.
The examiner further notes that all of the features of claim 14 would be inherent to the modified balloon of Green as discussed above. Specifically, the device of Green is shown to be in a horizontal position, and can be pulled sideways. Further, when inflated with a lighter than air gas, the examiner believes that the weight of the propeller 18, would keep the device in a horizontal position, without any external forces acting upon it. If pulled straight downward from this position, the device will both become vertical and begin to spin. This meets all of the limitations in claim 14.
Additionally, claim 14 appears to mostly be an intended use. Since the device could be manipulated to be either horizontal or vertical, and can be pulled downward to initiate a spinning action, these limitations are fully capable of being performed by the device of Green and therefore are met.
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Green in view of Lustig, Castro, and further in view of Turner et al. (US Patent No. 5,573,439).
In Reference to Claim 6
The modified device of Green teaches all of claims 1 and 4 as discussed above.
Green fails to teach the feature of claim 6.
Turner teaches (Claim 6) wherein each arm of [a] plurality of arms may take the shape of an animate figure, such as an animal, person, and the like (fig’s 1-5, 7, and 8).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the novelty display balloon of Green with the feature of the shape of an animate figure as taught by the novelty display balloon of Turner for the purpose of making the balloon in the shape of an interesting character or animal as taught by Turner (column 2 lines 3-29), customizing the external design of the balloon for specific users occasions or events, making the device more attractive to a particular user.
Further, the examiner notes that it has been held that matters of ornamentation which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Since there is no mechanical function to the exterior design of the device, merely claiming the aesthetic shape of an animate figure, animal, person or other design is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 9
The modified device of Green teaches all of claims 1 and 4 as discussed above.
Green further teaches printing or other designs on the balloon (column 3 lines 4-6).
Green fails to teach the multiple images of claim 9.
Turner teaches (Claim 9) a first image on [a] first arm and a second image on [a] second arm to provide an animation to a viewer upon movement of said first and second arms (fig’s 1-5, 7, and 8, different images on lower portion and upper portions of device that provide animation when flap is lifted).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the novelty display balloon of Green with the feature of multiple images for animation as taught by the novelty display balloon of Turner for the purpose of providing more interesting and complex visual characteristics to the balloon as taught by Turner (summary), making the device more interesting and attractive to the users.
Further, the examiner notes that it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of balloon does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. first and second image indicia and the substrate e.g. balloon, which is required for patentability.
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Green in view of Lustig, Castro, and further in view of Larsen (US Patent No. 5,882,240).
In Reference to Claim 7
The modified device of Green teaches all of claims 1 and 4 as discussed above.
Green fails to teach the feature of claim 7.
Larsen teaches (Claim 7) wherein [the device] may be appended with streamers, noise makers, lights, and the like (column 3 line 1 – column 4 line 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided novelty display balloon of Green with the feature of providing streamers or other attachments to the device as taught by the novelty display balloon of Larsen for the purpose of customizing, decorating, or otherwise enhancing the appearance of the balloon, making the device more interesting and attractive to the users.
In Reference to Claim 12
The modified device of Green teaches all of claims 1 and 10 as discussed above.
Green fails to teach a streamer.
Larsen teaches (Claim 12) wherein a streamer may trail from [a balloon] (column 3 line 1 – column 4 line 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided novelty display balloon of Green with the feature of providing streamers or other attachments to the device as taught by the novelty display balloon of Larsen for the purpose of customizing, decorating, or otherwise enhancing the appearance of the balloon, making the device more interesting and attractive to the users.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Green in view of Lustig, Castro, and further in view of Hertel (US PGPub. No. 2005/0191929 A1).
In Reference to Claim 13
The modified device of Green teaches all of claims 1 and 10 as discussed above.
Green fails to teach the feature of a noise maker of claim 13.
Hertel teaches (Claim 13) wherein a noise maker, such as a tube whistle, may be positioned [on the device] (paragraph 0027).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the balloon device of Green with the feature of a noise maker as taught by the balloon device of Hertel for the purpose of adding an amusing auditory feature to the balloon, making the balloon more interesting and attractive to the users.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Green in view of Lustig, Castro, and further in view of Bergmann (US PGPub. No. 2013/0157540 A1).
In Reference to Claim 16
The modified device of Green teaches all of claim 1 as discussed above.
Green fails to teach the feature of claim 16.
Bergmann teaches (Claim 16) may comprise a weight fixed to said lighter-than-air portion for balance (e.g. items 29, fig. 8).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the balloon device of Green with the feature of weights as taught by the balloon device of Bergmann for the purpose of providing balancing ballast to the balloon, allowing a user to modify the balloon to float at a desired height or orientation as taught by Bergmann (paragraph 0013), making the balloon more reliable, easier to use and modify, and more attractive to the users.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/ Primary Examiner, Art Unit 3711