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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 21-27 and 30-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-17 of U.S. Patent No. 9,242,185 in view of Cayton (20140295728). Claims 21-28 and 30-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,967,243 in view of Cayton (2014029578). And Claims 21-23, 26-28, 30-34, and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over and claims 1-20 of U.S. Patent No. 11,386,801 in view of Cayton. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of these prior patents would read on / anticipated the claims of the present application. See double patenting rejection from previous office action. As noted by the applicant, claims 26-28 were rejected and not 36-38 as set forth in the previous office action. Regarding newly amended limitations regarding the switch and power source being located and accessible on the exterior of the body, Cayton teaches these known concepts and it would have been entirely obvious to provide the switch and power source at the exterior portion of the body for easier access to these elements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 21-24, 30, 31 are rejected under 35 U.S.C. 103 as being unpatentable over Clanton et al (Pat No. 4,422,131) in view of Cayton (20140295728).
Clanton teaches (Claim 21) A toy for interactively illuminating a surface, comprising: a body having a substantially hollow housing with an internal width, the substantially hollow housing being enclosed within a plurality of exterior surfaces (walls of item 10, enclosing hollow space 13, fig's 1-5), the substantially hollow housing able to removably encase a particular structure of a plurality of structures having different external widths (fig. 5, column 2 lines 16-18), the substantially hollow housing being accessible via an opening at a first end of the body for insertion of the particular structure of the plurality of structures (at end 12, fig's 1-5); at least one light source proximate to a second opposite end of the body (item 15, fig's 4 and 5), the at least one light source operable to illuminate the surface when the toy is positioned within a predetermined distance from the surface (this is intended use language, the device can be used to illuminate a surface, meeting this limitation); a switch operable to control an output of the at least one light source (contacts 18 and 21 of battery and bulb act as a switch); and a power source in communication with the at least one light source and the switch (item 20, fig's 4 and 5);
Claim 21 does not positively recite providing the particular structure, therefore, further details of the particular structure are not further limiting); (Claim 30) wherein the body includes a plurality of open spaced apart rings (items 30, fig's 4 and 5).
Clanton fails to teach the switch being an external additional / separate element and an external power source of claim 21.
Cayton teaches an illumination device with a separate external switch element 45 and external power source 42. Cayton also discloses that the switch button 45, 90 can be designed so that they are not covered by the neck of a balloon so that the switch can be either internal (covered by balloon) or external to the body (paragraph 46). 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 illumination device of Clanton with the feature of a separate, external switch element and external power source as taught by the illumination device of Cayton for the purpose of providing a more easily accessible and reliable on and off mechanism as taught by Cayton, making the device easier to operate, and more attractive to the users. Further, the examiner notes that it has been held that making components of a device integral or separate elements is an obvious matter of engineering design choice, see In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965); 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); and, that rearrangement of parts is not a patentable advance where the operation of the device is not modified. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Since the function of a switch is taught in Clanton (i.e. by pressing the battery until a contact on the battery touches a contact on the bulb), merely providing a separate switch mechanism or another known switch mechanism is an obvious matter of engineering design choice, and is not a patentable advance. Since the device would operate essentially the same way regardless of whether the switch is a separate element, where it is located, and what type of switch it is, this minor distinction is not a patentable advance.
(Claim 22) wherein the particular structure of the plurality of structures is at least a portion of a finger, and wherein the first end of the body is able to receive the at least a portion of the finger (fig. 5 and column 2 lines 16-18, also note this is functional / intended use language); (Claim 23) wherein the particular structure of the plurality of structures is a pen, and wherein the first end of the body is able to receive and engage with either a first end of the pen or a second opposite end of the pen (it is noted that pens exist in a variety of sizes and at least some pens are able to be received in the structure shown (fig's 4 and 5), again note this is functional / intended use language);
(Claim 24) wherein the pen includes photo- luminescent ink that is applicable from the first end of the pen to the surface, and that is visible when illuminated with light from the at least one light source (note that none of this is positively required by the claims since the pen is "the particular structure" which is only claimed in claim 21 as an element that
the device is "able to removably encase."
(Claim 31) wherein the substantially hollow housing comprises a plurality of ribs that enclose the particular structure when the particular structure is inserted into the first end of the body (items 30, fig's 4 and 5).
Claim 24-25, 32, 33, 36 are rejected under 35 U.S.C. 103 as being unpatentable over Clanton in view of Cayton and further in view of Pomranc et al (20070272757).
In Reference to Claim 24 as noted above, claim 24 simply recites additional structures of the "particular structure" which is not positively claimed in claim 21, therefore these details are not positively recited. However, in the event that applicant intended to recite "providing the particular structure / pen," an alternate rejection is set forth below: Pomranc teaches (Claim 24) wherein [a] pen includes photo- luminescent ink that is applicable from the first end of the pen to the surface, and that is visible when illuminated with light from at least one light source (item 20 / 23, fig's 4 and 5, paragraph 0025). 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 illumination device of the modified Clanton with the feature of a pen with photo-luminescent ink as taught by the illumination device of Pomranc for the purpose of providing an element which adds the feature of interaction with interesting and unusual visual effects as taught by Pomranc (paragraph 0015), making the device more versatile for a wider range of purposes, and making the device more interesting and attractive to the users. In Reference to Claim 25 The modified device of Clanton teaches all of claims 21 and 23 as discussed above.
The modified Clanton fails to teach the feature of claim 25. Pomranc teaches (Claim 25) wherein [a] pen is a component of [a] toy (item 20, fig's 4 and 5). 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 illumination device of the modified Clanton with the feature of a pen as taught by the illumination device of Pomranc for the purpose of providing further elements that allow a user to read and write with the light as taught by Pomranc (paragraphs 0015 and 0025), providing a wider range of uses, making the device of Clanton more versatile, and more interesting and attractive to the users. In Reference to Claims 32, 33, and 36 the modified Clanton teaches (Claim 32) A system for interactively illuminating a surface, comprising: a toy, comprising: a body with an anchoring portion, wherein the anchoring portion is a substantially hollow housing able to receive at least one finger of a user (walls of item 10, enclosing hollow space 13, fig's 1-5), and wherein the substantially hollow housing includes a plurality of ribs (items 30, fig's 4 and 5) that a sized to a particular finger of the at least one finger of the user (fig. 5 and column 2 lines 16-18); at least one light source operable to illuminate the surface when the toy is positioned within a predetermined distance from the surface (item 15, fig's 1-5); and a switch operable to control an output of the at least one light source (contacts 18 and 21 of battery and bulb act as a switch); (Claim 33) wherein the at least one light source includes a white or colored light source (column 2 lines 30-34). Clanton fails to teach the switch being an additional / separate element of claim 32, the surface with ink of claim 32, and the features of claims 33-36. Pomrac teaches (Claim 32) an article including the surface able to be illuminated by an output of the at least one light source of the toy, wherein the surface includes an ink that is visible when illuminated by the output of the at least one light source of the toy (item 1, fig's 1-6, paragraph 0016); (Claim 33) [], wherein the article is a book or a magazine, and wherein the ink on the surface of the book is a standard ink that is visible when illuminated by an output from the white or colored light source (paragraph 0016); (Claim 36) wherein the toy and the article are complimentary in design such that the toy enhances the article and creates an interactive experience for a user when using the toy and the article to learn to read (fig's 1-6, note this is extremely vague). 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 illumination device of Clanton with the feature of a surface with ink as taught by the illumination device of Pomranc for the purpose of providing an element which adds the feature of interaction with interesting and unusual visual effects as taught by Pomranc (paragraph 0015), making the device more versatile for a wider range of purposes, and making the device more interesting and attractive to the users.
7. Claims 26, 34, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Clanton et al. in view of Cayton, Pomranc and Oas (US PGPub. No. 2005/0201814 A1). In Reference to Claim 26 The modified device of Clanton teaches all of claim 21 as discussed above. Clanton further teaches (Claim 26) a white or colored light source for standard ink (column 2 lines 30-34). Clanton fails to teach the feature of a black light of claim 26. Oas teaches wherein at least one light source includes a black light source for photo-luminescent ink (paragraph 0012). 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 illumination device of the modified Clanton with the feature of a black light for photo-luminescent ink as taught by the illumination device of Oas for the purpose of providing an element which provides interesting and unusual visual effects as taught by Oas (paragraphs 0009 and 0012), making the device more versatile for a wider range of illumination purposes, making the device more interesting and attractive to the users. In Reference to Claims 34-35 , The modified device of Clanton teaches all of claim 32 as discussed above. The modified device of Clanton further teaches (Claim 34) wherein the at least one light source includes a [LED / UV] source (item 21, fig. 4, Pomranc), wherein the article is a book or a magazine (item 1, fig's 1-6, Pomranc), and wherein the ink on the surface of the book is a photo-luminescent ink that is visible when illuminated by an output from the [] light source (paragraphs 0016 and 0025). (Claim 35) wherein the photo-luminescent ink is applicable to the surface of the book from a pen encased by [a] toy (item 20, fig. 4, Pomranc). The modified device of Pomranc fails to teach a black light, specifically. Oas teaches at least one light source includes a black light source for photo- luminescent ink (paragraph 0012). 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 illumination device of Clanton with the feature of a black light for photo-luminescent ink as taught by the illumination device of Oas for the purpose of providing an element which provides interesting and unusual visual effects as taught by Oas (paragraphs 0009 and 0012), making the device more versatile for a wider range of illumination purposes, making the device more interesting and attractive to the users.
8. Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Clanton et al. in view of Cayton and further in view of Valenti (US Patent No. 9,148,931 B2). In Reference to Claims 27 and 28 The modified device of Clanton teaches all of claim 21 as discussed above. Clanton fails to teach the additional wiring / circuitry of claims 27 and 28. Valenti teaches (Claim 27) further comprising a circuit board with wiring that is in communication with at least one light source, [a] switch, and [a] power source (fig's 4C, and 5 items 202 / 203 / 505, and wires). (Claim 28) wherein the wiring is routed within the body around the substantially hollow housing (column 4 lines 62-65). 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 illumination device of Clanton with the feature of additional wires and a circuit board as taught by the illumination device of Valenti for the purpose of providing a wider range of light modes and operations as taught by Valenti (background and summary), making the device more complex, more versatile, and more interesting and attractive to the users.
9. Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Pomranc et al (US PGPub. No. 2007/0272757 A1) in view of Blaszczyk et al. (US PGPub. No. 2007/0093169 A1) and Cayton. In Reference to Claim 38 Pomranc teaches (Claim 38) A system for interactive learning to read, comprising: a printed article including pre-printed ink on a surface (item 1, fig's 1-6 and paragraph 0016); and a toy [], the toy comprising: a body with an anchoring portion (item 18/19, fig. 4, internal space anchoring item 20); at least one light source operable to illuminate the pre-printed ink when the toy is positioned within a predetermined distance from the surface (item 21, fig. 4); and a power source operable to provide power to the at least one light source (item 22, fig. 4), wherein a user is able to interactively learn to read from the printed article through illumination of the pre-printed ink with the at least one light source (this is an intended use which does not add structure to the claims); and a pen that is insertable within an opening in the toy (item 20 is inserted into item 18/19, fig. 4), wherein the pen includes photo- luminescent ink that is applicable to the surface by the user to further promote interactive learning to read when the user interacts with the printed article and the toy (paragraph 0025). Pomranc fails to teach the toy in a shape corresponding to content and the power source and switch being located and accessible from an exterior of the body of claim 38. Blaszczyk teaches (Claim 38) a toy in a shape corresponding to content described in [a] printed article (fig's 1-4, toy is a rabbit, content includes rabbits). Cayton teaches an illumination device with a separate external switch element 45 and external power source 42. Cayton also discloses that the switch button 45, 90 can be designed so that they are not covered by the neck of a balloon so that the switch can be either internal (covered by balloon) or external to the body (paragraph 46). 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 book amusement device of Pomranc with the feature of the toy shape corresponding to printed content as taught by the book amusement device of Blaszczyk for the purpose of providing an interesting and fanciful dimension to the device as taught by Blaszczyk (paragraphs 0009 and 0010), making the device more interesting and attractive to the users. Furthermore, it would have been obvious to one of ordinary skill in the art to provide Pomranc et al with the feature of a separate, external switch element and external power source as taught by the illumination device of Cayton for the purpose of providing a more easily accessible and reliable on and off mechanism as taught by Cayton, making the device easier to operate, and more attractive to the users.
10. Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Pomranc et al in view of Blaszczyk et al., Cayton and further in view of Oas. In Reference to Claim 39 The modified device of Pomranc teaches all of claim 38 as discussed above. Pomranc further teaches (Claim 39) wherein at least one of the standard ink and the photo-luminescent ink is the pre-printed ink on the surface of the printed article (paragraph 0016). Pomranc fails to specifically teach white or colored light and black light sources. However, the examiner notes that Pomranc teaches a light means that is a lamp or LED (paragraph 0006). Pomranc is silent as to the specifics of this lamp or LED. Oas teaches wherein the at least one light source includes a black light source for the photo-luminescent ink (paragraph 0012). Oas further teaches that combining light sources to see writing surfaces is well known (i.e. a conventional white light source). 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 illumination device of Clanton with the feature of a black light for photo-luminescent ink as taught by the illumination device of Oas for the purpose of providing an element which provides interesting and unusual visual effects as taught by Oas (paragraphs 0009 and 0012), making the device more versatile for a wider range of illumination purposes, making the device more interesting and attractive to the users. 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 a regular light source as is known in the art for the purpose of illuminating the non UV material (paragraph 0016 of Pomranc), making the device more comprehensive, and more attractive to the users.
Applicant’s arguments with respect to claim(s) above 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. As noted above, the newly applied reference Cayton teaches the switch being on the external body portion or covered (internal) so that this reference teaches the concept that it is known to have a switch located internally or externally. The examiner also notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the concept of having a switch and power source being located either internally or externally is entirely obvious and switching the location of these components would be within the realm of a POSITA.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE LEE KIM whose telephone number is (571)272-4463. The examiner can normally be reached Monday to Thursday 6am-4pm.
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/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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