DETAILED ACTION
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the term “non-adjacent” of claim 8 needs proper antecedent basis in the specification. Also, “one or more of a speed, acceleration, duration, and an amount of spin” of claims 1 and 16 need to be added (emphasis added). The Examiner assumes that applicant has support for this “one or more” range from the inherent range teachings of par. [0030]; although support for any of the claim amendments is not explicitly argued. For claim 14, the Examiner assumes that “at least one” has support in par. [0033] disclosing “one or more”. However, applicant should amend the specification to state “at least one user-perceptible response” for proper antecedent basis. Applicant should probably also go on the record for specific support for the above ranges.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6-8 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The range “at least three” in claims 6 and 11 is a new range with no support from the specification (i.e. “at least three” is not within the written specification). In addition, the range has no upper limit so it could be argued that the claim is indefinite under 112(b) (see MPEP 2163.05(III)). The Examiner would also argue that use of an open ended claim ranges could potentially cause enablement issues as recent Federal Court decisions have stated that the specification must enable the entire claimed range. In this particular situation, the upper end is limitless.
In the previous office action, the Examiner asked applicant to correct claim 7 (see non-final, page 2). However, applicant still needs to have proper support for the language (i.e. the range) in the specification in order to make the amendment. If the Examiner has reached this rejection in error, then the language needs to be added to the specification for proper antecedent basis (i.e. there is at least a specification objection).
Claims 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The range “two or more” in claim 18 is a new range. In addition, the range has no upper limit so it could be argued that the claim is indefinite under 112(b) (see MPEP 2163.05(III)). The Examiner would also argue that use of an open ended claim ranges could potentially cause enablement issues as recent Federal Court decisions have stated that the specification must enable the entire claimed range. In this particular situation, the upper end is limitless. If the Examiner has reached this rejection in error, then the language needs to be added to the specification for proper antecedent basis (i.e. there is at least a specification objection).
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 1-8, and 10-13 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 now claims “a plurality of user input interfaces for receiving user inputs” and “wherein one or more of a speed, acceleration, duration, and an amount of spin is determined by a distance between user input interfaces selected in successive user inputs” (emphasis added). Respectfully submitted, the claim does not make any sense. A “plurality” only requires “two” to meet the limitation (see dictionary.com defining “plurality” as “a number greater than one”)(see also previous 112(b) given for claim 7 in previous non-final office action). The distance between the “two” user input interfaces would be a constant distance and would never change. As such, the claim language is indefinite. Restated, the only way to make claim 1 read as operational is to look at the figures and import into the claims that more than two user input interfaces are present, and that the user can skip at least one user input interface when activating sequential inputs to create a different distance between inputs. However, the Examiner does not import any limitations from the specification into the drawings. The Examiner alluded to this issue in the last non-final office action and with regards to claim 7 when the Examiner wrote:
The claim is indefinite because it presupposes that three user input interfaces are present. However, claims 1 and 6 only require a "plurality of user input interfaces" (i.e. two).
However, by way of amendment, this error is still present in the independent claim 1. Claim 1 also claims “one ore more”. This is an open ended range and thus indefinite under 112(b). Claim 6 claims “at least three”. This is also an open ended range and thus indefinite under 112(b). Claim 11 claims “at least three”. This is also an open ended range and thus indefinite under 112(b).
Claims 14 and 15 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 14 now claims “at least one”. This is an open ended range and thus indefinite under 112(b).
Claims 16-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 16 now claims “a plurality of user input interfaces arranged radially around a central base” and “wherein one or more of a speed, acceleration, duration, and an amount of spin is determined by a distance between user input interfaces selected in successive user inputs” (emphasis added). Respectfully submitted, the claim does not make any sense much like claim 1 above. A “plurality” only requires “two” to meet the limitation (see dictionary.com defining “plurality” as “a number greater than one”). The distance between the “two” user input interfaces would be a constant distance and would never change. As such, the claim language is indefinite. Restated, the only way to make claim 16 read as operational is to look at the figures and import into the claims that more than two user input interfaces are present, and that the user can skip at least one user input interface when activating sequential inputs to create a different distance between inputs. However, the Examiner does not import any limitations from the specification into the drawings. The Examiner alluded to this issue in the last non-final office action and with regards to claim 7 when the Examiner wrote:
The claim is indefinite because it presupposes that three user input interfaces are present. However, claims 1 and 6 only require a "plurality of user input interfaces" (i.e. two).
However, by way of amendment, this error is still present in the independent claim 16. Claim 16 now also claims “one or more”. This is an open ended range and thus indefinite under 112(b). Claim 18 claims “two ore more”. This is an open ended range and thus indefinite under 112(b).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Rehkemper et al. (herein “Rehkemper”; US Pat. No. 7,374,481 B2) in view of Yuen (US Pat. No. 6,123,600).
Regarding claim 14, Rehkemper discloses a children's entertainment device for a child (noting this is only intended use), comprising: a head button (Fig. 2, item 114 and col. 3, lines 58-61; noting the “head button” can be the “control button” to adjust volume); a first actuator for powering on and off the child's entertainment device (Fig. 2, item 114 and col. 3, lines 58-61; noting “turn on an off”); a second actuator for selecting a mode of play (Fig. 2, item 114; col. 3, noting the third button shown can “change playing levels or difficulties which reads on “mode of play”); a user input area configured to detect contact made by the child via a user input interface affixed beneath the user input area (Fig. 2, item 108 and col. 2, lines 47-52; noting the “input interface affixed beneath the user input area” is specifically item 116, a “switch”), wherein each of the plurality of push buttons is configured to generate at least one user- perceptible response to the contact (Fig. 2, item 108 and col. 2, lines 47-52 and col. 3, lines 28-44); at least one motorized wheel (col. 2, lines 63-65); and at least one auditory and at least one visual output component configured to be activated in response to contact made by the child (col. 3, lines 14-21; noting sounds and lights are activated after the user repeats back the correct pattern). It is noted that Rehkemper does not specifically disclose a plurality of operable arms extending at least partially radially from a central toy body, each of the plurality of operable arms comprising a user input, wherein each of the plurality of operable arms is configured to generate at least one user-perceptible response to the contact. However, Rehkemper discloses a toy that is intended to spin (col. 3, lines 14-27) and provides a section for user contact/input (col. 2, lines 53-59). In addition, Yuen discloses an interactive robot that is motorized to spin and includes wheels and also includes a plurality of arms extending at least partially radially from a central toy body (Fig. 1). Furthermore, regarding placing the input sensors on each of the radially extending arms so that they respond to contact and are operable, it has been held that the rearrangement of parts is not patentable unless it modifies the operation of the device. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Rehkemper to use a plurality of operable arms extending at least partially radially from a central toy body as taught by Yuen because doing so would be combining prior art elements (an interactive spinning toy having user inputs and an interactive spinning toy in the form of an octopus having radially extending arms) according to known methods (using the outer toy shape in the form of an octopus with radially extending arms) to obtain predictable results (the continued ability to use an interactive spinning toy with inputs, the toy having the form of an octopus with radially extending arms). In addition, it would have been obvious to a person of ordinary skill in the art the time of filing that placing the sensors on each of the radially extending arms so that the arms are configured to operably generate the input would not modify the operation of the device: that is, the push button input devices would continue to respond to the user regardless of their exact location).
Regarding claim 15, it is noted that the combined Rehkemper and Yuen do not specifically disclose that the entertainment device comprises at least four unique modes of play. However, Rehkemper would appear to make obvious that there at least two difficulty levels (col. 3, lines 58-61). In addition, a POSA would understand that creating four unique skill levels would be a mere duplication of levels and consistent with Rehkemper allowing for different levels to be used based on player skill and age. In the alternative, the “at least four unique levels” do not add any structure to the claim, and applicant does not require the toy be to “programmed” or “configured to” provide these “at least four unique modes of play”. As such, the limitation is not given patentable weight.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are generally 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.
Applicant should always provide support from the specification and/or drawings for any and all claim amendments. No specific support has been given. The lack of specific support makes it difficult to determine if applicant has support for phrases like “at least three” in claims 6 and 11 and “two or more” in claim 18. Respectfully submitted, these are ranges that applicant is adding and they need to have support within the specification.
Turning to the rejection on the merits, Yuen is the only reference reused by the Examiner in the rejection of claims 14 and 15. Applicant does argue that the arms in Yuen are not “operable”. Respectfully submitted, a simple relocation of parts to the arms would make them “operable” (i.e. “allowed to be used”) because the user could touch the switch located on the arm. Along those lines, Rehkemper teaches a spinning device. Yuen teachings a spinning device. The use of the outer octopus figure to replace the body of Rehkemper would be obvious as detailed above. In addition, placing the push buttons on the arms of the octopus would not modify the operation of the device: that is the user would still have to press the switches in the correct order regardless of their exact location. Applicant’s argument that “A person having ordinary skill in the art would not simply rearrange the sensors of Bucci to arrive at the claimed children's toy” is conclusionary in nature without any supporting arguments or facts.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Stanczak whose telephone number is (571)270-7831. The examiner can normally be reached on M-F; 8:30 to 3:30 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (571)270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
2/23/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711