DETAILED ACTION
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 9-19 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Independent claim 9 recites “wherein the inflatable member is removably attached to the base”, however, does not provide any specific structure which would enable the inflatable member to be removably detached.
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 9-19 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.
Independent claim 9 recites “wherein the inflatable member is removably attached to the base”, however, does not provide any specific structure which would enable the inflatable member to be removably detached (see rejection above). As such, no structure is explicitly or implicitly inferred from this functionality, absent any Figure or description in the Specification, thus, the structure which provides this functionality is indefinite and unclear.
Claim Rejections - 35 USC § 102
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)(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 1-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Garratt (US 2023/0330548).
In respect to claim 1, Garratt discloses an automatic inflatable lawn decoration device comprising: an inflatable member 400; a base 200 comprised of a pump (fan) 270, a battery 274, and an anchoring structure 250 (0026; 0030; Fig. 1); and a sensor (receiver for remote) 320 (0031).
In respect to the amended subject matter, Garratt discloses that the inflatable member may include more than one inflatable (e.g. two separate legs) (Fig. 2). Garratt further disclose “legs” which “provide stability to the base” which one ordinary skill in the art readily ascertains to mean they are staked into the ground in a “lawn decoration”. Regardless, the legs are structurally indistinct from “stakes”, and “ground penetrating” is an intended use of the stake “leg”.
In respect to claims 2-5, Garratt discloses the base comprising a lid 222, connected via hinges, the lid 222 having a locking member 226 for securing it to the base (0027; Fig. 4).
In respect to claim 6, Garratt discloses the base and inflatable member having a common theme, Christmas, with the base appearing as a present and the inflatable appearing as Santa (0025; Figs 1 & 4).
In respect to claims 7 and 8, Garratt discloses that the sensor controls the pump (fan) inflation/deflation (0031). The sensor may be sensitive to RFID, a form of light.
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.
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 9-12, 14-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Garratt (US 2023/0330548) in view of Machala (US 7,216,446).
Garratt substantially discloses the claimed invention for the reasons stated above and further discloses a solar panel 600 on the base 200 which may be a photovoltaic cell, which supplies power to the battery (0030). Garratt further discloses that the deflation/inflation of the pump (fan) may be controlled via a button 290 on remote 300 (0031).
Garratt does not explicitly disclose the indefinite recitation that the “inflatable member is removably attached to the base”, however, Machala teaches a similar automatic inflatable lawn decoration device wherein the inflatable member comprises detachable fasteners (making it removably attached) (Col. 3, 33-41). It would have been obvious to one ordinary skill in the art at the time of the effective filing date of the present application to provide the inflatable member in Garratt with means to removably attach to the base in view of Machala to allow the inflatable members to be interchangeable, allow for different inflatable members to be displayed (Col. 3, 33-41).
Claims 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Garratt (US 2023/0330548) and Machala (US 7,216,446), as applied to claim 9, above, and further in view of Newton et al. (US 2019/0318673).
Garratt and Machala substantially teach the claimed invention but do not teach that the pump (fan) can be programmed to inflate or deflate during specific period of time, however, Newton et al. a similar inflatable lawn decoration and further teaches providing a means to inflate/deflate at particular times of day (0064-0065). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to provide the remote which controls the pump (fan) taught in Garratt and Machala with a timer in view of Newton et al. to allow a user to automatically set inflation/deflation.
In respect to the amended subject matter, Newton further teaches programming the photocell to detect a threshold level of light to determine day/night as indicated above (0068).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Garratt (US 2023/0330548) and Machala (US 7,216,446), as applied to claim 9, above, and further in view of Hunter et al. (US 2020/0316487).
Garratt and Machala substantially teach the claimed invention but do not disclose that the solar panel may be provided on the inflatable member, however, Hunter et al. teach a similar inflatable device which may have a similar battery connected to the solar panel (0136), and further that the solar panel may be provided on the inflatable member (0066). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to substitute the solar panel in the base taught in Garratt and Machala with a solar panel integral with the inflatable member in view of Hunter et al. The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Hunter et al. teach that providing the solar panel directly on the inflatable member provides a similar good result and providing this in lieu of the base solar panel Garratt and Machala would not provide an unexpected result nor would it change any other aspect or operation of the invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Garratt (US 2023/0330548) and Machala (US 7,216,446), as applied to claim 9, above, and further in view of Ji (US 2022/0199584).
Garratt and Machala substantially teach the claimed invention but do not teach the material of the inflatable member, particularly that it is waterproof, however, Ji teaches a similar inflatable lawn decoration and further teaches that the inflatable member is made from a waterproof material (0033). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to provide the inflatable member taught in Garratt and Machala as a waterproof material in view of Ji for the purposes of protecting the material from water damage (the motivation being inherent in the term “waterproof material”)
Response to Arguments
In respect to claims 1-8, applicant's arguments filed 01/14/26 have been fully considered but they are not persuasive. Garratt discloses both new recitations for the reasons detailed above.
In respect to claims 9-20, Machala is provided as a teaching for means to removably attach the inflatable member, as detailed above.
Claims 9-19, are newly rejected under 35 USC 112(a) and 112(b).
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 KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637