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 .
Status of Claims
Claims 1-20, filed 2/28/2024, are pending and are currently being examined.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 3/4/2025 and 7/3/2025 were filed before the mailing date of the first office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The abstract of the disclosure is objected to because it contains implied language (ex. “The present disclosure…”). Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Double Patenting
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.
Claims 1-3, 5-8, 10, and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-9, 11-14, and 16-22 of U.S. Patent No. 12,458,900. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the presented claims. The differences in the claims are shown below. The patented claims are not identical to the presented claims, however they anticipate the presented claims or are very marginally different and obvious variations of the presented claims as annotated below.
Claim 1 of the present application
A toy system having an internal space for housing a toy, comprising:
a bottle having a front portion forming a chamber, the chamber being configured to be filled with a liquid; and
a barrel rotatably disposed in the bottle so as to rotate from a first position to a second position, the barrel being sized and shaped to at least partially surround the toy in the internal space,
wherein when the barrel is in the first position the internal space is not visible from outside the bottle, and wherein when the barrel is in the second position the internal space is visible from outside the bottle.
Claim 1 of the issued patent
A toy system having an internal space for housing a toy, comprising:
a bottle; and
a barrel rotatably disposed in the bottle so as to rotate from a first position to a second position,
wherein when the barrel is in the first position the internal space is not visible from outside the bottle, and wherein when the barrel is in the second position the internal space is visible from outside the bottle.
Claim 3 of the issued patent
The toy system of Claim 1, further comprising the toy disposed in the internal space, the toy being accessible when the barrel is removed from the bottle (anticipates the barrel holding the toy in a space therein).
Claim 4 of the issued patent
The toy system of Claim 1, wherein a wall of the barrel and a wall of the bottle form an inter-wall space configured to hold a liquid (anticipates the liquid filling capability of the bottle).
Claim 2 of the present application
The toy system of Claim 1, further comprising a handle configured to allow a user to rotate the barrel.
Claim 2 of the issued patent
The toy system of Claim 1, further comprising a handle configured to allow a user to rotate the barrel (identical language).
Claim 3 of the present application
The toy system of Claim 1, further comprising the toy disposed in the internal space, the toy being accessible when the barrel is removed from the bottle.
Claim 3 of the issued patent
The toy system of Claim 1, further comprising the toy disposed in the internal space, the toy being accessible when the barrel is removed from the bottle (identical language).
Claim 5 of the present application
The toy system of Claim 1, further comprising a capsule containing an ingredient configured to mix with the liquid.
Claim 5 of the issued patent
The toy system of Claim 4, further comprising a capsule containing an ingredient configured to mix with the liquid (identical language).
Claim 6 of the present application
The toy system of Claim 5, wherein the capsule is disposed in the bottle and above the barrel.
Claim 6 of the issued patent
The toy system of Claim 5, wherein the capsule is disposed in the bottle and above the barrel (identical language).
Claim 7 of the present application
The toy system of Claim 5, wherein the ingredient is configured to change a transparency of the liquid.
Claim 8 of the issued patent
The toy system of Claim 5, wherein the ingredient is configured to change a transparency of the liquid (identical language).
Claim 8 of the present application
The toy system of Claim 5, wherein the ingredient is configured to create fizz in the liquid.
Claim 9 of the issued patent
The toy system of Claim 5, wherein the ingredient is configured to create fizz in the liquid (identical language).
Claim 10 of the present application
A toy system having an internal space for housing a toy, comprising:
a bottle having a front portion forming a chamber, the chamber being configured to be filled with a liquid; and
a barrel disposed in the bottle and having an opaque portion and a window, the barrel being rotatable relative to the bottle from a first position to a second position,
wherein the opaque portion of the barrel overlaps the chamber of the bottle when the barrel is in the first position so that a view of the toy in the internal space from outside the bottle is obfuscated, and wherein the window of the barrel overlaps the chamber of the bottle when the barrel is in the second position so that the toy is visible from outside the bottle.
Claim 11 of the issued patent
A toy system having an internal space for housing a toy, comprising:
a bottle having an opaque portion and a transparent/translucent portion; and
a barrel disposed in the bottle, the barrel being rotatable relative to the bottle from a first position to a second position, the barrel having an opaque portion and a transparent/translucent portion (equivalent to the window),
wherein the opaque portion of the barrel overlaps the transparent/translucent portion (equivalent to the chamber) of the bottle when the barrel is in the first position so that a view of the toy in the internal space from outside the bottle is obfuscated, and wherein the transparent/translucent portion (equivalent to window) of the barrel overlaps the transparent/translucent portion of the bottle when the barrel is in the second position so that the toy is visible from outside the bottle (same structural relationship, but uses transparent/translucent portion language instead of window).
Claim 12 of the issued patent
The toy system of Claim 11, wherein a wall of the barrel and a wall of the bottle form an inter-wall space configured to hold a liquid (anticipates the liquid capable bottle limitation of the barrel of claim 10).
Claim 12 of the present application
The toy system of Claim 10, further comprising a capsule containing an ingredient configured to mix with the liquid.
Claim 13 of the issued patent
The toy system of Claim 12, further comprising a capsule containing an ingredient configured to mix with the liquid (identical language).
Claim 13 of the present application
The toy system of Claim 12, wherein the ingredient is configured to change a transparency of the liquid.
Claim 14 of the issued patent
The toy system of Claim 13, wherein the ingredient is configured to change a transparency of the liquid (identical language).
Claim 14 of the present application
A toy system comprising:
a barrel having an internal space configured to hold a toy;
a bottle having an outer circumference forming an enclosure to house at least a portion of the barrel therein, a portion of the outer circumference comprising a chamber configured to hold a liquid, the chamber having an inner wall and an outer wall offset from the inner wall; and
a handle configured to rotate the barrel between at least a first position and a second position relative to the bottle.
Claim 16 of the issued patent
A toy system comprising:
a barrel having an inner wall forming an internal space configured to hold a toy;
a bottle having an outer wall (outer circumference) forming an enclosure to house at least a portion of the barrel therein, wherein the outer wall and the inner wall are spaced apart forming an inter-wall space configured to hold a liquid (structural equivalent to the chamber of the present application), at least a portion of the inner wall of the barrel and at least a portion of the outer wall of the bottle contacting the liquid; and
a handle configured to rotate the barrel between at least a first position and a second position relative to the bottle.
Claim 15 of the present application
The toy system of Claim 14, further comprising a capsule configured to hold an ingredient, wherein actuation of a button releases the ingredient into the chamber.
Claim 17 of the issued patent
The toy system of Claim 16, further comprising a capsule configured to hold an ingredient, wherein actuation of the handle releases the ingredient into the inter-wall space (structurally equivalent means to release the same ingredient into the same chamber/inner space of the toy housing).
Claim 16 of the present application
The toys system of Claim 15, wherein the ingredient is a clarifying agent configured to change a transparency of the liquid.
Claim 18 of the issued patent
The toys system of Claim 17, wherein the ingredient is a clarifying agent configured to change a transparency of the liquid (identical language).
Claim 17 of the present application
The toys system of Claim 15, wherein the ingredient is configured to create fizz in the liquid.
Claim 19 of the issued patent
The toys system of Claim 17, wherein the ingredient is configured to create fizz in the liquid (identical language).
Claim 18 of the present application
The toy system of Claim 15, wherein the inner wall and the outer wall are transparent, and wherein a remainder of the outer circumference of the bottle is opaque.
Claim 20 of the issued patent
The toy system of Claim 16, wherein a first portion of the inner wall and a first portion of the outer wall are opaque, and wherein a second portion of the inner wall and a second portion of the outer wall are transparent or translucent (different wording, but this defines the same resulting structure).
Claim 19 of the present application
The toy system of Claim 18, wherein the barrel comprises an opaque portion and a window portion, and wherein the opaque portion of the barrel overlaps with the inner wall and the outer wall when the barrel is in the first position, and wherein the window portion of the barrel overlaps with the inner wall and the outer wall when the barrel is in the second position.
Claim 21 of the issued patent
The toy system of Claim 20, wherein the first portion of the inner wall overlaps the second portion of the outer wall when the barrel is in the first position, and wherein the first portion of the inner wall overlaps the first portion of the outer wall when the barrel is in the second position (the viewing area/window operates in the same structural manner).
Claim 20 of the present application
The toy system of Claim 14, wherein the liquid is initially opaque.
Claim 22 of the issued patent
The toy system of Claim 16, wherein the liquid is opaque (anticipates “initially opaque”).
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 1-13 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 pre-AIA the applicant regards as the invention.
In Claim 1, the “internal space” is defined as in the toy system for housing a toy in the preamble, but in lines 5-7, the internal space is described relative to the barrel. Also, the chamber is formed in the bottle. It is unclear as to what exactly the internal space is defined as relative to the parts of the toy system. It appears that the chamber of the bottle should define the internal space, and the barrel is movable within the internal space, however it is unclear exactly what defines the internal space as presented.
In Claim 10, the “internal space” is defined as in the toy system for housing a toy in the preamble, but in lines 7-8, the internal space is described relative to the barrel. Also, the chamber is formed in the bottle. It is unclear as to what exactly the internal space is defined as relative to the parts of the toy system. It appears that the chamber of the bottle should define the internal space, and the barrel is movable within the internal space, however it is unclear exactly what defines the internal space as presented.
Therefore claims 2-9 and 11-13 are rejected as they depend on rejected claims.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bandai JP 7397579 in view of Reiner et al. US Pat. No. 4,026,066.
In Reference to Claim 1
Bandai teaches:
A toy system having an internal space for housing a toy (revealable toy 13 housed within internal space 11a of the toy system, Fig. 1-16), comprising:
a bottle (10) having a front portion forming a chamber (11A), the chamber being configured to be filled with a liquid (liquid DW, Fig. 1-2, 7-8); and
a barrel rotatably disposed in the bottle so as to rotate from a first position to a second position, the barrel being sized and shaped to at least partially surround the toy in the internal space (barrel 11 sized and shaped to surround toy 13 in the internal space 11a, and having a rotatable lid/operating section 15 of the bottle at one end and is secured on/about pedestal 14/16 at the other end, Fig. 1, 11),
wherein when the barrel is in the first position the internal space is not visible from outside the bottle (with no liquid in the bottle and the bottle in a first configuration, the toy 13 is concealed in the soluble information section 12 with the toy hidden below solubility portion 17 in section 11d, Fig. 1c, 7-9), and wherein when the barrel is in the second position the internal space is visible from outside the bottle (when section 12/17 is dissolved, the interior of the transparent container 11a is now visible to see the toy 13 in the chamber 11a, Fig. 10-16, wherein portions of the bottle are rotatable relative the barrel between first and second positions (ex. Fig. 1, 10-12, threaded portion 11f rotates the barrel 11 relative the top 15)).
Bandai fails to teach:
The barrel being specifically held within and rotatable within the bottle such that the visible and non-visible positions are defined as different rotational positions of the barrel within the bottle.
Further, Reiner teaches:
A toy system having an internal space for housing a toy (revealable toy 16 housed within internal space of the toy system, Fig. 1-17), comprising:
a bottle (18/20) having a front portion forming a chamber (14); and
a barrel rotatably disposed in the bottle so as to rotate from a first position to a second position, the barrel being sized and shaped to at least partially surround the toy in the internal space (barrel 12 sized and shaped to surround toy 16 in the internal space 14, and having a rotatable handle/knob 22 at one end and is rotatably secured within the bottle 18/20, Fig. 1, 11),
wherein when the barrel is in the first position the internal space is not visible from outside the bottle (in a first position, the toy 16 is hidden from view by the toy being rotated away from the viewing chamber, ex. Fig. 10), and wherein when the barrel is in the second position the internal space is visible from outside the bottle (the toy may be rotated in the barrel to a viewing position from outside the housing, ex. Fig. 1, 9, etc., Col. 4 line 12 – Col. 5 line 15).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Bandai to have formed the barrel to be held within and rotatable within the bottle such that the visible and non-visible positions are defined as different rotational positions of the barrel within the bottle as this type of rotational disguise means is known and used in the art to allow an internally held toy to be moved selectively within and out of view of the user creating an illusion for the view as taught by Reiner (Col. 1 lines 6-9, 47-64, Col. 4 line 12 – Col. 5 line 15).
In Reference to Claim 2
Bandai as modified by Reiner teaches:
The toy system of Claim 1, further comprising a handle configured to allow a user to rotate the barrel (Bandai: lid 15 has operating handle portions 15b to allow for rotation of the lid, Fig. 5, 8-10, Reiner: handle/knob 22 allows the user to rotate the barrel within the bottle).
In Reference to Claim 3
Bandai as modified by Reiner teaches:
The toy system of Claim 1, further comprising the toy disposed in the internal space, the toy being accessible when the barrel is removed from the bottle (toy 13 is removable from the internal space 11a when the barrel is separated from other parts of the toy, Fig. 7, 11-12, Reiner: Fig. 1 shows the toy being accessible/removable from the opening the housing, or by a door 20e, Fig. 10, wherein the parts are removable, ex. Fig. 2)).
In Reference to Claim 4
Bandai as modified by Reiner teaches:
The toy system of Claim 1, wherein the chamber comprises two concentric walls, and wherein the two concentric walls extend for less than 360 degrees about a circumference of the bottle (Bandai: the chamber 11 includes two concentric walls/protrusions 11e which extend less than 360 degrees, Fig. 2, Reiner: rotatable barrel 12 is concentrically held within bottle 18/20, wherein the barrel 12 and housing 18/20 have open sides that would extend less than 360 degrees about the circumference, Fig. 1-2, 10).
In Reference to Claim 5
Bandai as modified by Reiner teaches:
The toy system of Claim 1, further comprising a capsule containing an ingredient configured to mix with the liquid (Bandai: information part/capsule 12 contains an ingredient that melts when in contact with liquid DW and solubility promoting portion 17 (both of which are broadly capsules), which contains a dye and produces gas when mixed with the liquid (portion 12 formed of water soluble paper/ink and 17 formed of carbonates (ex. sodium carbonate, sodium bicarbonate, and sodium sesquicarbonate with organic acids such as citric acid, succinic acid, fumaric acid, malic acid, maleic acid, tartaric acid, and lactic acid. can be mentioned. The blending ratio of carbonate and organic acids can be changed as appropriate depending on the gas generation time, that is, the time required for the information portion 12 to dissolve and the user's viewing time. Further, when dissolving the information part 12 and coloring the liquid DW, a colorant such as food coloring that is harmless to the human body may be added to the material.)), that both mix with the liquid DW, Fig. 9-10, description of Fig. 10 in the translation under “example of how to use ornamental toys” and right above “example of assembly ornamental toys”).
In Reference to Claim 6
Bandai as modified by Reiner teaches:
The toy system of Claim 5, wherein the capsule is disposed in the bottle and in or below the general viewing area of the barrel (Bandai: the capsule(s) 12/17 are positioned in parts of the bottle, but generally within the barrel, Fig. 1c, 7-10).
Though Banzai generally teaches the capsule being disposed in the bottle and in the barrel, it would have been obvious to one having ordinary skill in the art to have rearranged the capsule within the toy to have been above the bottle in order to allow the capsule to be introduced later into the barrel as desired by the user and as it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70).
In Reference to Claim 7
Bandai as modified by Reiner teaches:
The toy system of Claim 5, wherein the ingredient is configured to change a transparency of the liquid (Bandai: the liquid DW is tap water (generally clear) and the capsules 12/17 include dye and bubbles when mixed that inherently changes the transparency/appearance of the liquid within the chamber, Fig. 9-10, as described above).
In Reference to Claim 8
Bandai as modified by Reiner teaches:
The toy system of Claim 5, wherein the ingredient is configured to create fizz in the liquid (Bandai: the liquid DW is tap water (generally clear) and the capsules 12/17 include dye and bubbles (fizz) when mixed that inherently changes the transparency/appearance of the liquid within the chamber, Fig. 9-10, as described above).
In Reference to Claim 9
Bandai as modified by Reiner teaches:
The toy system of Claim 5, further comprising a lid having a button, wherein activation of the button is configured to release the ingredient into the liquid (Reiner: top/lid has buttons 24/26 to allow selective movement or activation of the device, wherein Bandai shows the capsule(s) 12/17 are positioned in parts of the bottle, but generally within the barrel, Fig. 1c, 7-10).
Though Banzai generally teaches the capsule being disposed in the bottle and in the barrel, it would have been obvious to one having ordinary skill in the art to have rearranged the capsule within the toy to have been above the bottle and activated via a button in the top/lid of the device as is known and taught by Reiner in order to allow the capsule to be selectively introduced into the barrel as desired by the user and as it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70).
In Reference to Claim 10
Bandai teaches:
A toy system having an internal space for housing a toy (revealable toy 13 housed within internal space 11a of the toy system, Fig. 1-16), comprising:
a bottle (10) having a front portion forming a chamber, the chamber (11a) being configured to be filled with a liquid (liquid DW, Fig. 1-2, 7-8); and
a barrel disposed in the bottle and having an opaque portion and a window, the barrel being rotatable relative to the bottle from a first position to a second position (barrel 11 sized and shaped to surround toy 13 in the internal space 11a being generally transparent forming a window in a central section and hidden portions that are held within opaque portions of the bottle, including a rotatable lid/operating section 15 of the bottle at one end and is secured on/about pedestal 14/16 at the other end, Fig. 1, 11),
wherein the opaque portion of the barrel overlaps the chamber of the bottle when the barrel is in the first position so that a view of the toy in the internal space from outside the bottle is obfuscated (with no liquid in the bottle and the bottle in a first configuration, the toy 13 is concealed in the soluble information section 12 with the toy hidden below solubility portion 17 in section 11d, Fig. 1c, 7-9), and wherein the window of the barrel overlaps the chamber of the bottle when the barrel is in the second position so that the toy is visible from outside the bottle (when section 12/17 is dissolved, the interior of the transparent container 11a is now visible to see the toy 13 in the chamber 11a, Fig. 10-16, wherein portions of the bottle are rotatable relative the barrel between first and second positions (ex. Fig. 1, 10-12, threaded portion 11f rotates the barrel 11 relative the top 15)).
Bandai fails to teach:
The barrel being specifically held within and rotatable within the bottle such that the visible and non-visible positions are defined as different rotational positions of the barrel within the bottle.
Further, Reiner teaches:
A toy system having an internal space for housing a toy (revealable toy 16 housed within internal space of the toy system, Fig. 1-17), comprising:
a bottle (18/20) having a front portion forming a chamber (14), the chamber being capable of at least partially holding a liquid (the chamber 14 is capable of holding at least a minimal amount of liquid therein (front corner, with walls covering the front entrance, etc., Fig. 1-2, 7-10)); and
a barrel disposed in the bottle and having an opaque portion and a window, the barrel being rotatable relative to the bottle from a first position to a second position (barrel 12 sized and shaped to surround toy 16 in the internal space 14 being opaque and having an open side forming a window, so that a toy placed therein can be seen on one side, but hidden from the other side, and having a rotatable handle/knob 22 at one end and is rotatably secured within the bottle 18/20, Fig. 1, 11),
wherein the opaque portion of the barrel overlaps the chamber of the bottle when the barrel is in the first position so that a view of the toy in the internal space from outside the bottle is obfuscated (in a first position, the toy 16 is hidden from view by the toy being rotated away from the viewing chamber, ex. Fig. 10), and wherein the window of the barrel overlaps the chamber of the bottle when the barrel is in the second position so that the toy is visible from outside the bottle (the toy may be rotated in the barrel to a viewing position from outside the housing, ex. Fig. 1, 9, etc., Col. 4 line 12 – Col. 5 line 15).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Bandai to have formed the barrel to be held within and rotatable within the bottle such that the visible and non-visible positions are defined as different rotational positions of the barrel within the bottle as this type of rotational disguise means is known and used in the art to allow an internally held toy to be moved selectively within and out of view of the user creating an illusion for the view as taught by Reiner (Col. 1 lines 6-9, 47-64, Col. 4 line 12 – Col. 5 line 15).
In Reference to Claim 11
Bandai as modified by Reiner teaches:
The toy system of Claim 10, wherein the chamber comprises two concentric walls, and wherein the two concentric walls extend for less than 360 degrees about a circumference of the bottle (Bandai: the chamber 11 includes two concentric walls/protrusions 11e which extend less than 360 degrees, Fig. 2, Reiner: rotatable barrel 12 is concentrically held within bottle 18/20, wherein the barrel 12 and housing 18/20 have open sides that would extend less than 360 degrees about the circumference, Fig. 1-2, 10).
In Reference to Claim 12
Bandai as modified by Reiner teaches:
The toy system of Claim 10, further comprising a capsule containing an ingredient configured to mix with the liquid (Bandai: information part/capsule 12 contains an ingredient that melts when in contact with liquid DW and solubility promoting portion 17 (both of which are broadly capsules), which contains a dye and produces gas when mixed with the liquid (portion 12 formed of water soluble paper/ink and 17 formed of carbonates (ex. sodium carbonate, sodium bicarbonate, and sodium sesquicarbonate with organic acids such as citric acid, succinic acid, fumaric acid, malic acid, maleic acid, tartaric acid, and lactic acid. can be mentioned. The blending ratio of carbonate and organic acids can be changed as appropriate depending on the gas generation time, that is, the time required for the information portion 12 to dissolve and the user's viewing time. Further, when dissolving the information part 12 and coloring the liquid DW, a colorant such as food coloring that is harmless to the human body may be added to the material.)), that both mix with the liquid DW, Fig. 9-10, description of Fig. 10 in the translation under “example of how to use ornamental toys” and right above “example of assembly ornamental toys”).
In Reference to Claim 13
Bandai as modified by Reiner teaches:
The toy system of Claim 12, wherein the ingredient is configured to change a transparency of the liquid (Bandai: the liquid DW is tap water (generally clear) and the capsules 12/17 include dye and bubbles when mixed that inherently changes the transparency/appearance of the liquid within the chamber, Fig. 9-10, as described above).
In Reference to Claim 14
Bandai teaches:
A toy system (revealable toy 13 housed within internal space 11a of the toy system, Fig. 1-16) comprising:
a barrel having an internal space configured to hold a toy (barrel 11 sized and shaped to surround toy 13 in the internal space 11a, and having a rotatable lid/operating section 15 of the bottle at one end and is secured on/about pedestal 14/16 at the other end, Fig. 1, 11);
a bottle (10) having an outer circumference forming an enclosure to house at least a portion of the barrel therein (11A), a portion of the outer circumference comprising a chamber configured to hold a liquid (liquid DW, Fig. 1-2, 7-8), the chamber having an inner wall and an outer wall offset from the inner wall (the chamber 11a has an inner wall that contains the liquid and toy therein, and an outer wall that engages the bottle lid and pedestal opposite the inner wall); and
a handle configured to rotate the barrel between at least a first position and a second position relative to the bottle (lid 15 has operating handle portions 15b to allow for rotation of the lid, Fig. 5, 8-10).
Bandai fails to teach:
The barrel being specifically held within and rotatable within the bottle such that visible and non-visible positions are defined as different rotational positions of the barrel within the bottle.
Further, Reiner teaches:
A toy system (revealable toy 16 housed within internal space of the toy system, Fig. 1-17) comprising:
a barrel having an internal space configured to hold a toy (barrel 12 sized and shaped to surround toy 16 in the internal space 14, and having a rotatable handle/knob 22 at one end and is rotatably secured within the bottle 18/20, Fig. 1, 11);
a bottle (18/20) having an outer circumference forming an enclosure to house at least a portion of the barrel therein (internal chamber 14 within the circumference of the bottle that houses the barrel and toy therein), a portion of the outer circumference comprising a chamber capable of holding a liquid (the chamber 14 is capable of holding at least a minimal amount of liquid therein (front corner, with walls covering the front entrance, etc., Fig. 1-2, 7-10)), the chamber having an inner wall and an outer wall offset from the inner wall (the chamber 14 is formed by an outer wall formed by the housing 18/20 and an inner wall formed by the rotatable barrel 12 therein, there being space between 12 and 18/20 to allow for relative rotation of the barrel within the bottle); and
a handle configured to rotate the barrel between at least a first position and a second position relative to the bottle (handle/knob 22 allows the barrel 12 to rotate between different positions within the bottle/housing 18/20, Fig. 1-17, Col. 4 line 12 – Col. 5 line 15).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Bandai to have formed the barrel to be held within and rotatable within the bottle such that the visible and non-visible positions are defined as different rotational positions of the barrel within the bottle as this type of rotational disguise means is known and used in the art to allow an internally held toy to be moved selectively within and out of view of the user creating an illusion for the view as taught by Reiner (Col. 1 lines 6-9, 47-64, Col. 4 line 12 – Col. 5 line 15).
In Reference to Claim 15
Bandai as modified by Reiner teaches:
The toy system of Claim 14, further comprising a capsule configured to hold an ingredient (Bandai: information part/capsule 12 contains an ingredient that melts when in contact with liquid DW and solubility promoting portion 17 (both of which are broadly capsules), which contains a dye and produces gas when mixed with the liquid (portion 12 formed of water soluble paper/ink and 17 formed of carbonates (ex. sodium carbonate, sodium bicarbonate, and sodium sesquicarbonate with organic acids such as citric acid, succinic acid, fumaric acid, malic acid, maleic acid, tartaric acid, and lactic acid. can be mentioned. The blending ratio of carbonate and organic acids can be changed as appropriate depending on the gas generation time, that is, the time required for the information portion 12 to dissolve and the user's viewing time. Further, when dissolving the information part 12 and coloring the liquid DW, a colorant such as food coloring that is harmless to the human body may be added to the material.)), that both mix with the liquid DW, Fig. 9-10, description of Fig. 10 in the translation under “example of how to use ornamental toys” and right above “example of assembly ornamental toys”), wherein actuation of a button releases the ingredient into the chamber (Reiner: top/lid has buttons 24/26 to allow selective movement or activation of the device, wherein Bandai shows the capsule(s) 12/17 are positioned in parts of the bottle, but generally within the barrel, Fig. 1c, 7-10).
Though Banzai generally teaches the capsule being disposed in the bottle and in the barrel, it would have been obvious to one having ordinary skill in the art to have rearranged the capsule within the toy to have been above the bottle and activated via a button in the top/lid of the device as is known and taught by Reiner in order to allow the capsule to be selectively introduced into the barrel as desired by the user and as it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70).
In Reference to Claim 16
Bandai as modified by Reiner teaches:
The toys system of Claim 15, wherein the ingredient is a clarifying agent configured to change a transparency of the liquid (Bandai: the liquid DW is tap water (generally clear) and the capsules 12/17 include dye and bubbles when mixed that inherently changes the transparency/appearance of the liquid within the chamber, Fig. 9-10, as described above).
In Reference to Claim 17
Bandai as modified by Reiner teaches:
The toys system of Claim 15, wherein the ingredient is configured to create fizz in the liquid (Bandai: the liquid DW is tap water (generally clear) and the capsules 12/17 include dye and bubbles (fizz) when mixed that inherently changes the transparency/appearance of the liquid within the chamber, Fig. 9-10, as described above).
In Reference to Claim 18
Bandai as modified by Reiner teaches:
The toy system of Claim 15, wherein the inner wall and the outer wall are transparent, and wherein a remainder of the outer circumference of the bottle is opaque (the lid and pedestal of Bandai are opaque with the central chamber walls being transparent, and the housing 18/20 and barrel 12 of Reiner are opaque with open/transparent sections).
In Reference to Claim 19
Bandai as modified by Reiner teaches:
The toy system of Claim 18, wherein the barrel comprises an opaque portion and a window portion, and wherein the opaque portion of the barrel overlaps with the inner wall and the outer wall when the barrel is in the first position, and wherein the window portion of the barrel overlaps with the inner wall and the outer wall when the barrel is in the second position (the housing 18/20 and barrel 12 of Reiner are opaque with open/transparent sections to allow for the selective hiding and showing of the toy within the barrel and bottle portions).
In Reference to Claim 20
Bandai as modified by Reiner teaches:
The toy system of Claim 14, wherein the liquid is initially opaque (Bandai: the liquid DW may include colorant (last paragraph above “examples of assembling ornamental toys”), and the information portion 12 is opaque and remains such when the liquid is immediately introduced the liquid mixture (DW + information portion 12) which would at least temporarily be initially opaque (which would then begin dissolving after the mixture is made)).
Brief Discussion of Other Prior Art References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the references cited page for publications that are noted for containing similar subject matter as the applicant. For example, Tankle (12,458,900), Martin (12,383,840), Lindberg (12,090,418), Del Giudice (11,786,834), O’Brien (11,607,621), Lui (10,046,883), Kaplan (5,261,848), Taylor (3,488,880), Wilson (2,648,157), Kremer (2,580,305), and Walls (2,441,607) teach similar toy systems.
Conclusion
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711
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