CTNF 18/538,287 CTNF 85766 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 3-8 of U.S. Patent No. 11,883,758 B1 . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3-8 of the ‘758 patent can be used to read on / anticipate the claims of the present application . Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 10, 14, and 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. Claims 10, 14, and 17 appear to recite moving the handle in a direction towards the loaded position, shown in applicant’s fig. 18. However, this position is away from the track, not toward the track. Therefore, it is unclear why applicant has recited that this motion is “toward the track.” This is confusing. Presumably the intent was to recite that the handle is rotated downward away from the vehicle and toward a plane that is parallel or continuous with the track, or similar. Appropriate correction / clarification of these recitations is required. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15 AIA Claim s 1-4, 6, 8, and 9 are rejected under 35 U.S.C. 102( a)(1)/(a)(2 ) as being anticipated by Bashaw et al. (US Patent No. 9,682,327 B2) . In Reference to Claims 1-4, 6, 8, and 9 Bashaw teaches (Claim 1) A toy playset, comprising: a toy vehicle (fig. 3); a track comprising a channel configured to receive the toy vehicle (molded in flat track portion of item 102, fig. 4); and a launcher arm configured to move between a loaded configuration and a rest configuration (items 108 and 110, fig. 4, and column 4 lines 42-57; also see column 3 lines 36-47), wherein the launcher arm comprises an extension configured to extend into the channel in the rest configuration (item 110, fig. 4) such that the extension extends between the track and a chassis of the toy vehicle positioned in the channel in the rest configuration of the launcher arm (item 110, fig. 4, column 3 lines 59 – column 4 line 2, one side of item 110 at 112 engages the track and the other side of item 110 at 114/115 engages a toy vehicle, note that recitations of “rest” and “loaded” configurations do not impart any structure, the device of Bashaw has several positions which could be considered “rest” and “loaded” positions, since the arm 110 naturally biases side 112 downward and side 114 upward, this could be considered a “rest” position); (Claim 2) wherein the channel comprises a recess, and the extension is configured to extend into the recess in the rest configuration of the launcher arm (recess where item 112 is located, fig. 4, not separately labeled); (Claim 3) wherein the toy vehicle is configured to be positioned in the channel and outside of the recess (fig’s 3 and 4, column 3 lines 51 – 55, positioned on upper surface of base); (Claim 4) wherein the toy vehicle is configured to be positioned in the channel over the recess such that the extension, in the rest configuration of the launcher arm, is configured to engage the toy vehicle positioned in the channel (fig’s 3 and 4, column 3 lines 36-47 and column 3 line 59 – column 4 line 2); (Claim 6) wherein the extension of the launcher arm comprises: a first segment configured to extend along a length the track in the rest configuration of the launcher arm (items 114/115, fig. 4); and a second segment configured to extend from the first segment towards the track in the rest configuration of the launcher arm (item 112, fig. 4); (Claim 8) wherein the toy vehicle comprises wheels configured to engage the channel (fig’s 3 and 4); (Claim 9) wherein the wheels of the toy vehicle straddle the extension in the rest configuration of the launcher arm (fig’s 3 and 4, column 3 lines 36-47 and column 3 line 59 – column 4 line 2) . 07-15 AIA Claim s 11-15 are rejected under 35 U.S.C. 102( a)(1)/(a)(2 ) as being anticipated by Holt (US Patent No. 2,803,922) . In Reference to Claims 11-15 Holt teaches (Claim 11) A toy launcher, comprising: a shaft configured to couple to a track of a toy playset (item 29, fig’s 1-5, coupled to track 1 via various components), wherein the track is configured to receive a toy vehicle (item 6 and item 1, fig. 2); a first segment extending from the shaft (item 27, fig’s 1-5); and a second segment extending from the first segment (items 23 and 24, fig’s 1-5), wherein the toy launcher is configured to rotate between a loaded configuration and a rest configuration (fig. 2, phantom position is loaded, non-phantom position is rest), the first segment is configured to extend along a length of the track and the second segment is configured to extend towards the track in the rest configuration of the toy launcher (item 27 extends forward and items 23/24 extend downward toward track 1), and the first segment is configured to extend away from the track and the second segment is configured to extend towards the toy vehicle positioned in the track in the loaded configuration of the toy launcher (phantom position fig. 2, item 27 extends upward away from the track and items 23 / 24 extend toward the vehicle); (Claim 12) comprising a handle extending from the shaft, wherein the handle is configured to rotate towards extension planar to the track to transition the toy launcher to the loaded configuration (item 21, fig’s 1-5, phantom in fig. 2); (Claim 13) comprising a handle extending from the shaft, wherein the handle is configured to rotate towards extension transverse to the track to transition the toy launcher to the rest configuration (item 21, fig’s 1-5, non-phantom position in fig. 2); (Claim 14) comprising a handle extending from the shaft, wherein the handle is configured to rotate toward the track to move away from the toy vehicle positioned in the track and transition the toy launcher to the loaded configuration (item 21, fig’s 1-5, phantom position); (Claim 15) wherein the first segment, in the rest configuration of the toy launcher, is configured to extend along a length of the track and engage the toy vehicle positioned in the track (fig. 2, item 27 engages item 16 in rest position and extends along the track) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim 5, 7, and 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bashaw in view of Holt. In Reference to Claims 5, 7, and 10 Bashaw teaches all of claims 1-4 as discussed above. Bashaw further teaches (Claim 5) [a vehicle is configured to] be positioned over the recess in the loaded configuration of the launcher arm (fig’s 3 and 4, column 3 lines 51 – 55, positioned on upper surface of base). Bashaw fails to teach the remaining features of claims 5, 7, and 10. Holt teaches (Claim 5) wherein [an] extension is positioned external to [a] recess in [a] loaded configuration of the launcher arm (item 27 of item 14 in phantom position of fig. 2), and the toy vehicle is configured to abut a wall of [a] track (fig. 2, item 9); (Claim 7) wherein the launcher arm comprises a shaft coupled to the track, and the shaft is configured to rotate relative to the track to move the launcher arm between the loaded configuration and the rest configuration (item 19, fig’s 1-4); (Claim 10) wherein the launcher arm comprises a handle configured to rotate towards the track to transition the launcher arm towards the loaded configuration, and the handle is configured to rotate away from the track to transition the launcher arm towards the rest configuration (item 21, fig’s 1-4). 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 toy car launcher of Bashaw with the feature of a rotating handle loading device and abutting wall as taught by the toy car launcher of Holt for the purpose of using a more simple and reliable launch mechanism, providing more consistent results, making the device more attractive to the users. Further, the examiner notes that it has been held that selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Since both pivoting and linear actuators are suitable means for launching toy cars as evidenced by Holt (fig. 2 and fig. 7), merely selecting a pivoting type actuator instead of a linear type actuator is an obvious matter of engineering design choice, would be a matter of substituting one known element for another, and is not a patentable advance . 07-21-aia AIA Claim s 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Holt in view of Bashaw et al . In Reference to Claims 16-20 Holt teaches (Claim 16) A toy playset, comprising: a track comprising a channel configured to receive a toy vehicle (item 1 fig’s 1-5, configured to receive item 6); and a launcher arm configured to rotate between a loaded configuration and a rest configuration (item 14, fig’s 1-5), wherein the launcher arm comprises: an extension configured to extend [to an opening] in the rest configuration of the launcher arm to engage the toy vehicle positioned in [the opening] (item 27, fig’s 1-5, through item 15); and a handle configured to rotate towards extension planar to the track along the [track] to transition the launcher arm towards the loaded configuration (item 21, in phantom position of fig. 2), and the handle is configured to rotate towards extension transverse to the track along the [track] to transition the launcher arm to the rest configuration (item 21, in non-phantom position of fig. 2); (Claim 17) wherein rotation of the handle towards extension planar to the track moves the handle towards the track, and rotation of the handle towards extension transverse to the track moves the handle away from the track (fig. 2, phantom and non-phantom positions); (Claim 18) wherein the launcher arm comprises a shaft coupled to the track (item 19, fig’s 1-5), the shaft is configured to rotate relative to the track to rotate the launcher arm between the loaded configuration and the rest configuration, and each of the extension and the handle is connected to the shaft (phantom and non-phantom positions shown in fig. 2). Holt fails to teach the feature of the extension extending into a channel in the track of claim 16 and the features of claims 19-20. Bashaw teaches (Claim 16) [an] extension configured to extend into a channel in [a] track (item 110, fig’s 2 and 4); (Claim 19) wherein the extension is configured to extend between the channel and a chassis of the toy vehicle positioned in the channel in the rest configuration of the launcher arm (fig’s 2 and 4, column 3 lines 42 - column 4 line 2); (Claim 20) wherein the extension is configured to contact the chassis of the toy vehicle between wheels of the toy vehicle (column 3 line 42 – column 4 line 2). 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 toy car launching system of Holt with the feature of an extension configured to extend into a channel as taught by the toy car launching system of Bashaw for the purpose of locating a launching extension in a position to engage the bumper or axle of a car as taught by Bashaw (column 3 lines 41-51), eliminating the need for a specialized car, allowing the device to be used to launch a wider variety of toy vehicles, making the device more versatile and more attractive to the users . Conclusion 07-96 AIA 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOSEPH B BALDORI/Primary Examiner, Art Unit 3711 Application/Control Number: 18/538,287 Page 2 Art Unit: 3711 Application/Control Number: 18/538,287 Page 3 Art Unit: 3711 Application/Control Number: 18/538,287 Page 4 Art Unit: 3711 Application/Control Number: 18/538,287 Page 6 Art Unit: 3711 Application/Control Number: 18/538,287 Page 7 Art Unit: 3711 Application/Control Number: 18/538,287 Page 8 Art Unit: 3711 Application/Control Number: 18/538,287 Page 9 Art Unit: 3711