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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 23 February 2026 has been entered.
Response to Amendment
Claims 7-26 are pending. Claims 18-26 are newly added. Claims 1-6 were previously canceled. Applicant's amendments to the Claims have overcome each and every rejection previously set forth in the Non-Final Office Action dated 19 May 2025.
Election/Restrictions
Newly submitted claims 18-21 and 23 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: these claims recite limitations to features of nonelected Species. Specifically, claims 18-19 and 23 recite elements of the species of Figures 4A-4E, which is directed to a display having a “Bazooka”, and claims 20-21 recite elements of the species of figure 4J, which is directed to a display having a gyroscope. Claim 7 was previously added and recites limitations to the species of figure 4F, which is directed to a display having wheeled support legs, and was previously examined.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 18-21 and 23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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: “stability mechanism…adapted to emit an underwater water stream into the reservoir” in claim 7.
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. Such corresponding structure(s) is/are: no structure appears to be described.
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 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 7-17, 22, and 24-26 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.
Claim 7 now recites the limitation “at least one stability mechanism…adapted to emit an underwater water stream” in addition to the limitation “at least one wheel configured to engage the reservoir floor”. The as-filed disclosure does not appear to describe a display having both of these elements in a single embodiment; therefore, the claim is rejected for having new matter.
Claims 8-17, 22, and 24-26 are rejected for depending from, and incorporating the new matter of, claim 7.
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 7-17, 22, and 24-26 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.
Regarding claim 7, the claim limitation “stability mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The as-filed disclosure describes “reaction plates or keels” (par. 11) and a “gyroscope mechanism” (par. 83) for providing stability to the vehicle; however, neither of these structures is also capable of emitting an underwater water stream into the reservoir. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 8-17, 22, and 24-26 are rejected for depending from indefinite claim 7.
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 (i.e., changing from AIA to pre-AIA ) 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 7-10, 12, 14-15, 22, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Fuller (US 2014/0312139) in view of Gere et al. (US 5,562,066).
Regarding claim 7, Fuller discloses a display comprising a reservoir (par. 29; fig. 1) including a reservoir floor (60) and including water having a top water surface (par. 29): at least one vehicle (20) including at least one wheel configured to engage the reservoir floor (par. 30); at least one water delivery device (22) configured with the at least one vehicle (fig. 1) and adapted to emit at least one water stream above the top water surface (par. 32); and a controller that controls movement of the at least one vehicle along the reservoir floor (par. 62). Fuller does not disclose at least one stability mechanism that is configured with the at least one vehicle and that is adapted to emit an underwater water stream into the reservoir.
Gere teaches a display (10) comprising a reservoir (col. 1, ln. 15 – “marine operation”) including a reservoir floor (col. 5, ln. 42-44 – dock surface/rock/obstacle) and including water having a top water surface (20): at least one vehicle (10) including at least one wheel (22/24) configured to engage the reservoir floor (col. 5, ln. 42-44); at least one stability mechanism (54) that is configured with the at least one vehicle (fig. 5) and that is adapted to emit an underwater water stream into the reservoir (col. 15, ln. 5-16); and a controller (220) that controls movement of the at least one vehicle along the reservoir floor (col. 16, ln. 10-23).
It would have been obvious for one having ordinary skill in the art to have modified the display of Fuller to further comprise at least one stability mechanism that is configured with the at least one vehicle and that is adapted to emit an underwater water stream into the reservoir, as taught by Gere, since this was known to provide a means for freely moving the display around the reservoir.
Regarding claim 8, Fuller in view of Gere discloses the display described regarding claim 7, and further wherein the at least one water delivery device is movable with respect to the at least one vehicle (par. 43 – via the rotating mount 28).
Regarding claim 9, Fuller in view of Gere discloses the display described regarding claim 8, and further wherein the controller controls movement of the at least one water delivery device with respect to the at least one vehicle (par. 62).
Regarding claim 10, Fuller in view of Gere discloses the display described regarding claim 9, and further wherein the controller synchronizes the movement of the at least one vehicle along the reservoir floor with the movement of the at least one water delivery device with respect to the at least one vehicle (par. 59 – “choreographed”; par. 62).
Regarding claim 12, Fuller in view of Gere discloses the display described regarding claim 7, and further wherein the controller includes a remote control device (par. 62).
Regarding claim 14, Fuller in view of Gere discloses the display described regarding claim 7, and further including two or more vehicles, each of the two or more vehicles including a corresponding at least one water delivery device (figs. 7A-E), and the controller controls movement of each of the two or more vehicles along the reservoir floor (par. 39, 40) and each of the corresponding at least one water delivery devices independently (par. 59).
Regarding claim 15, Fuller in view of Gere discloses the display described regarding claim 14, and further wherein the controller synchronizes the movement of each of the two or more vehicles along the reservoir floor with the movement of the corresponding at least one water delivery devices (par. 46 – “the position of the water shooter 20 may be moved along track”).
Regarding claim 22, Fuller in view of Gere discloses the display described regarding claim 7, and Gere further teaches wherein the stability provided by the at least one stability mechanism maintains a position and/or direction of the at least one water stream (col. 12, ln. 30-41).
Regarding claim 24, Fuller in view of Gere discloses the display described regarding claim 7, and further wherein the at least one water delivery device is positionable above the top water surface (par. 36 – “protrude above the upper floor 40”) and below the top water surface (par. 36 – “below the upper floor”).
Regarding claim 25, Fuller in view of Gere discloses the display described regarding claim 7, and Gere further teaches wherein the controller (220) is located on the at least one vehicle (col. 14, ln. 40-45). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the display of Fully such that the controller is located on the at least one vehicle, as taught by Gere, since this would further configure the display to operate independently and away from any centralized computer or controller, which would increase the portability of the display.
Regarding claim 26, Fuller in view of Gere discloses the display described regarding claim 7, and further comprising a control station separate from the at least one vehicle and configured to remotely control the at least one vehicle and/or the at least one water delivery device (par. 62).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Fuller in view of Gere, and further in view of Carlson (US 5,884,213).
Regarding claim 11, Fuller in view of Gere discloses the display described regarding claim 7, and further comprising a guidance system (30) configured to determine a location of the at least one vehicle within the reservoir (par. 30). Fuller does not disclose that the guidance system includes a GPS receiver.
Carlson teaches a display comprising a reservoir including a reservoir floor and including water having a top water surface (col. 1, ln. 14-16): at least one vehicle (100); a controller (200) that controls movement of the at least one vehicle (col. 4, ln. 40-48); and a guidance system (216) including a GPS receiver and configured to determine a location of the at least one vehicle within the reservoir (col. 6, ln. 1-3).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the guidance system of Fuller to further include a GPS receiver, as taught by Carlson, since this was a known type of receiver to determining a position.
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Fuller in view of Gere, and further in view of Fuller (US 2014/0312137, hereinafter Fuller ‘137).
Regarding claim 13, Fuller in view of Gere discloses the display described regarding claim 7, but not further wherein the remote control device controls the movement of the at least one vehicle along the reservoir floor wirelessly.
Fuller ‘137 teaches a vehicle with a water delivery device (200), wherein the movement of the vehicle is controlled wirelessly (par. 53).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the display of Fuller in view of Gere such that the remote control device controls the movement of the at least one vehicle along the reservoir floor wirelessly, as taught by Fuller ‘137, since this would allow the vehicle to move unhindered without being tethered by a wire.
Regarding claim 16, Fuller in view of Gere discloses the display described regarding claim 7, but not further comprising a lighting system.
Fuller ‘137 teaches the vehicle described regarding claim 13 and further comprising a lighting system (par. 56).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the display of Fuller in view of Gere to further include a lighting system, as taught by Fuller ‘137, since this would further enhance its aesthetic and entertainment effect.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Fuller in view of Gere, and further in view of Coffey (US 7,927,175).
Regarding claim 17, Fuller in view of Gere discloses the display described regarding claim 7, but not further comprising at least one docking station adapted to receive and provide power to the at least one vehicle, wherein the controller is adapted to guide the at least one vehicle to the at least one docking station.
Coffee teaches at least one vehicle (10); at least one water delivery device (11) configured with the at least one vehicle (fig. 1) and adapted to emit at least one water stream above the top water surface (col. 3, ln. 37-38); and comprising at least one docking station (82) adapted to receive and provide power to the at least one vehicle (col. 6, ln. 22-25).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the display of Fuller to further include at least one docking station adapted to receive and provide power to the at least one vehicle, as taught by Fuller, since this was known to provide a means for recharging and storing the vehicle when it is not in use. Further, upon making this modification to Fuller in view of Gere, the controller of Fuller is adapted to guide the at least one vehicle to the at least one docking station (Fuller, par. 62 – “the position of the water shooter 20 on the track 60 and other settings be controlled remotely by a computer or other controller. The controller may run software programs that allow fully automate the various settings described above to achieve a desired water display.”)
Response to Arguments
Applicant’s arguments with respect to claim(s) 7 have been considered but are 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's arguments with respect to claim 17 have been fully considered but they are not persuasive. In response to applicant's argument that Coffee is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Coffee is analogous since it is in the field of the inventor’s endeavor, that is, the field of water displays. Coffee, like the instant invention, is directed to an apparatus for use in a reservoir of water for an entertaining effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CODY J LIEUWEN whose telephone number is (571)272-4477. The examiner can normally be reached Monday - Thursday 8-5, Friday varies.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur Hall can be reached at (571) 270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CODY J LIEUWEN/Primary Examiner, Art Unit 3752
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