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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-19, filed 3/27/2024, are pending and are currently being examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/27/2024 and 4/24/2025 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.
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 3-4 and 18 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.
Claim 3 recites the limitation “both sides” in line 3. There is insufficient antecedent basis for this limitation in the claim. No sides are previously defined and it is unclear what sides are being referenced as the “main body portions” has more than two sides that could be considered “both sides” (top, left, right, bottom, etc.). Claim 4 is therefore rejected as it depends from claim 3.
Claim 18 recites the limitation “the rotation surface” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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)(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.
(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, 14-17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cai US Pat. No. 9,950,266.
Cai teaches:
In Reference to Claim 1
A yo-yo (yo-yo, Fig. 1-5) comprising:
a shaft member (2);
a string member supported by the shaft member (unshown string secured to shaft 2 between the rotating potions 1, Col. 2 lines 30-32, 61-67, Col. 3 lines 53-59, Col. 5 lines 20-39);
a first rotation portion rotatable around the shaft member (rotating disc 1 and ring 7 rotate about shaft 2); and
a second rotation portion rotatable around the shaft member and rotatable relative to the corresponding first rotation portion (second rotatable portion/cap 3 is independently rotatable relative the shaft 2 and first disc 1 via bearings 4), wherein
(the second rotation portion is provided outside the first rotation portion in a direction in which the shaft member extends (caps 3 are positioned laterally outside the discs 1 along a rotational axis of the shaft where the string is placed in directions from a center of the shaft),
the second rotation portion covers a partial area of the first rotation portion (caps 3 cover the laterally out facing areas of the discs 1), and
at least a part of the partial area is visible through the second rotation portion (each cap 3 may be formed of transparent material to allow the circular plate 8 in the disc or any other part of the disc to be seen through the cap, Col. 2 lines 46-48, Col. 4 line 50-52).
In Reference to Claim 2
The yo-yo according to claim 1, wherein the first rotation portion includes: a main body portion rotatably supported by the shaft member (main disc portion 1 rotatably supported on shaft 2); and an interlocking member provided between the main body portion and the second rotation portion and interlocking with rotation of the main body portion (numerous portions are interlocked between the first disc 1 and the second discs 3, including interlocking ring 5, ring 7, design plate 8, etc. that are held and rotate with the first discs and bearing on the shaft), and at least a part of the interlocking member is visible through the second rotation portion (the second portions 3 are translucent and therefore the internal portions and first disc are visible through the second portions, Col. 2 lines 46-48, Col. 4 line 50-52).
In Reference to Claim 3
The yo-yo according to claim 2, wherein the interlocking member and the second rotation portion are provided at positions on both sides sandwiching the main body portions (the discs 3 and interlocking members are each positioned laterally outside of the first discs 1, therefore providing a sandwiching relationship with the first discs laterally inside of the second portions and any intervening interlocking portions).
In Reference to Claim 4
The yo-yo according to claim 3, wherein the interlocking member is disposed in a space surrounded by the main body portion and the second rotation portion (the intermediate/interlocking portions (numerous portions are interlocked between the first disc 1 and the second discs 3) including ex. interlocking ring 5 and ring 7, are held disposed in a space surrounded by the main disc portions 1 and the second portions 3, Fig. 1-5).
In Reference to Claim 5
The yo-yo according to claim 2, wherein the interlocking member has a thin plate-shaped rotation surface rotatable around the shaft member as a rotation axis (intermediate/interlocking portion 7 is generally a thin plate surface that rotates about the shaft 2 with the first disc 1).
In Reference to Claim 6
The yo-yo according to claim 5, wherein the rotation surface is disposed close to the second rotation portion (Fig. 1-5 shows the surface of 7 is disposed close to the second portions 3).
In Reference to Claim 7
The yo-yo according to claim 5, wherein the rotation surface is provided on an end portion in an axial direction of the shaft member, and at least a part of the rotation surface is visible through the second rotation portion (the interlocking/intermediate portions between 1 and 3 are generally positioned at the left and right ends of shaft 2, wherein the shaft is visible through the central portion of portions 3 as each portion 3 is transparent, Col. 2 lines 46-48, Col. 4 line 50-52).
In Reference to Claim 8
The yo-yo according to claim 7, wherein an outer peripheral surface of the interlocking member is visible through the second rotation portion (each cap 3 may be formed of transparent material to allow the circular plate 8 or the outer peripherical surface of 7, or any other internal part of the toy to be seen through the caps 3, Col. 2 lines 46-48, Col. 4 line 50-52).
In Reference to Claim 14
The yo-yo according to claim 1, wherein the second rotation portion is formed in a dome shape bulging to a side opposite to the first rotation portion (the second portion/disc may take different shapes as shown in Fig. 1-5, where Fig. 4 shows a centrally bulbous dome shape that extends away from the first rotating portion 1 at the center (near 11/31)).
In Reference to Claim 15
The yo-yo according to claim 1, wherein the second rotation portion is formed of a transparent member (each cap 3 may be formed of transparent material to allow the circular plate 8 in the disc or any other part of the disc to be seen through the cap, Col. 2 lines 46-48, Col. 4 line 50-52).
In Reference to Claim 16
The yo-yo according to claim 2, wherein the main body portion and the interlocking member are coupled to each other by a coupling member with a bearing sandwiched therebetween (interlocking/intermediate portions 7/8 are coupled to the main body portion 1 using a bearing 4 and a retaining ring/coupling member 5, wherein the bearing 4 is sandwiched/situated between portions 1, 7/8, and 4, Fig. 1-5).
In Reference to Claim 17
The yo-yo according to claim 16, wherein the main body portion and the second rotation portion are coupled by a coupling member (main body 1 and second portion 3 are coupled together by fitting portions 11 of the main body into 31 of 3 with a bearing therebetween, and a retaining ring/coupling member 5 holds these pieces together during use, Fig. 1-5).
In Reference to Claim 19
The yo-yo according to claim 1, wherein the second rotation portion has a recess on an end surface in the direction in which the shaft member extends (second portions/cap 3 has a recess 31 in the direction the shaft extends to accept the respective end portions of the shaft member 2/screw 6/bearing 4 therein, Fig. 1-5).
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 9-11, 13, and 18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cai as applied to claim 5 above.
In Reference to Claim 9
Cai teaches:
The yo-yo according to claim 5, wherein the interlocking member has a first display area showing first information (flat plate 8 has a display area provided with ornamental lines, patterns, or other decorative design (broadly interpreted as “information”/indicia), Col. 4 lines 42-52).
Further, though Cai teaches the indicia being ornamental lines, patterns, or user drawn, this can broadly be interpreted as “information”. Further, the specific indicia, patterns, and/or aesthetics displayed on the interlocking member are merely a matter of obvious design choice and Cai teaches that the ornamental lines, patterns, etc. may be modified as desired by the user to show different aesthetics thereon (Col. 4 lines 42-52) and it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)). In this case, the aesthetic design/pattern/indicia on the display area is merely a matter of ornamentation only and does not provide a mechanical function and the exact aesthetic design of the display area is merely a matter of obvious design choice.
In Reference to Claim 10
Cai teaches:
The yo-yo according to claim 9, wherein the first display area is configured to show visually different information between when the interlocking member is rotated and when the interlocking member is stationary (a drawn set of ornamental lines or patterns would appear as a stationary pattern at rest, and generally would provide a different appearance/effect when rotated (moving lines and patterns appear differently than stationary lines and patterns)).
In Reference to Claim 11
Cai teaches:
The yo-yo according to claim 10, wherein the first display area is provided on at least one of the rotation surface of the interlocking member and an outer peripheral surface of the interlocking member (the display area/outer peripheral surface of disc 8 of the collective interlocking/intermediate portion(s) includes a rotational surface that rotates with the shaft and first portions 1 and may be formed on an outer peripheral surface of the disc 8).
In Reference to Claim 13
Cai teaches:
The yo-yo according to claim 2, wherein the interlocking member has a visual effect different from a visual effect of the main body portion (the main body portion 1 would likely have a standard solid color/material, wherein portion 8 of the intermediate/interlocking portion may include a different visual element/aesthetic design thereon, Col. Col. 4 lines 42-52).
Further, though Cai is generally silent to the aesthetic design of the main body portion, the visual effect of the disc display portion may include indicia being ornamental lines, patterns, or user drawn, which would appear to be inherently different visually from the first main body portion. Further, the specific indicia, patterns, and/or aesthetics displayed on the interlocking member and/or main body are merely a matter of obvious design choice and Cai teaches that the ornamental lines, patterns, etc. may be modified as desired by the user to show different aesthetics thereon (Col. 4 lines 42-52) and it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)). In this case, the aesthetic design/pattern/indicia on the display area and the specific body portions are merely a matter of ornamentation only and does not provide a mechanical function and the exact aesthetic design of the display area and body portions are merely a matter of obvious design choice.
In Reference to Claim 18
Cai teaches:
The yo-yo according to claim 2, wherein the main body portion has an abutting portion abuttable against an edge of the second rotation portion, and the rotation surface of the interlocking member and the second rotation portion are separated from each other when the edge and the abutting portion abuts against each other (the interlocking portions 7/8 are separate/spaced from the second portions 3, and portion 11 of the main body forms and edge that accepts/abuts portion 31 of the second portion through bearing 4).
Further, the exact location or placement of the abutting portions of the main body and second rotating portion is merely a matter of obvious design choice to one having ordinary skill in the art. It would have been obvious to one having ordinary skill in the art to have modified the exact shape or placement of the respective abutting or interacting portions of the housing as these changes do not effect the functionality of the device and therefore this is merely a matter of design choice. It has been held that rearranging parts of a device involves only routine skill in the art (In re Japikse, 86 USPQ 70) and it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)) and it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)). In this case, the exact placement/location of the abutting or coupling portions of the housing are merely a matter of ornamentation does not provide a different mechanical function and the exact design of these respective portions are merely a matter of obvious design choice.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cai as applied to claim 9 above, and further in view of Burroughs US Pat. No. 4,555,235.
In Reference to Claim 12
Cai teaches:
The yo-yo according to claim 9, wherein the second rotation portion has a second display area showing second information different from the first information, and an area of the first display area is smaller than an area of the second display area (the second rotation portion 3 is formed of transparent material and is larger is size than the first display area of 8 which may include ornamental lines, patterns, etc., wherein the clear disc may form a display area that provides information to a user of the state of rotation of the device (a user may deduce if the inner disc portions are spinning or stationary by information provided by allowing a user to see through the second disc 3 to see the first display), and portion 7 is formed of a different material as well which would have a different visual appearance).
Further, Burroughs teaches:
A similar yo-yo having a first main body portion and a second outer portion which may include interchangeable indica/aesthetic portions on either side of the main body (inserts ex. 9/10/15/20/21 having different aesthetic designs ex. 31-39 to allow a user to change the appearance of the outer portions of the toy, Fig. 1-5, Col. 1 line 26 - Col. 2 line 10, Col. 2 line 32 – Col. 3 line 20).
Further, though Cai doesn’t specifically teach the second portion disc having a second display having indicia, ornamental lines, patterns, or user drawn, different from the first display, it would have been obvious to one having ordinary skill in the art to have allowed a user to include a second indicia/aesthetic design on the second portion in order to make the visual effect of the toy more interesting or pleasing to the user as is known and taught by Burroughs (Col. 1 line 26 - Col. 2 line 10). The specific indicia, patterns, and/or aesthetics displayed on the first and second portions are merely a matter of obvious design choice and Cai teaches that the ornamental lines, patterns, etc. may be modified as desired by the user to show different aesthetics thereon (Col. 4 lines 42-52) and it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8) and it has been held that rearranging parts of a device involves only routine skill in the art (In re Japikse, 86 USPQ 70). In this case, the aesthetic design/pattern/indicia on the display areas are merely a matter or ornamentation only and does not provide a mechanical function and the exact aesthetic design of the display areas are merely a matter of obvious design choice.
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, McCafferty (8,851,954), Lytle (8,764,509), Wu (2012/0276806), Van Dan Elzen (7,874,890), Jamison (6,196,891), Russell (3,643,373), Frangos (3,287,846), Radovan (3,256,635), and Asbury (1,793,151) teach similar yo-yo toys.
Conclusion
If the applicant or applicant’s representation has any questions or concerns regarding this office action or the application they are welcome to contact the examiner at the phone number listed below and schedule and interview to discuss the outstanding issues and possible amendments to expedite prosecution of this application.
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711