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 .
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.
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Claims 21-31 and 34-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,957,992 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the ‘992 patent would read on / anticipate the cited claims of the present application.
Further, claims 32 and 33 would be unpatentable over the ‘922 reference in view of Kilroy (US Patent No. 4,349,983). As discussed in further detail below, Kilroy teaches the handle features claimed (item 48, item 60 along with other opening in item 14 that receive handle 48, fig’s 1-6, column 2 lines 55-67). 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 modular toy track device of the ‘992 patent with the feature of a handle with a mating opening as taught by the modular toy track device of Kilroy for the purpose of providing a convenient grip portion to carry the device when in the folded position as taught by Kilroy (column 2 lines 55-67), making the device easier to use, more convenient, and more attractive to the users.
Claim Rejections - 35 USC § 102
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 36, 37, and 40 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Nuttall et al. (US Patent No. 7,628,674 B2).
In Reference to Claim 36, 37, and 40
(Claim 36) A toy vehicle carrier, comprising: a head configured to receive a toy vehicle (item 30, fig’s 1-3); a main body coupled to the head and comprising an interior configured to store the toy vehicle (item 12, fig’s 1-3, configured to contain / store item 28, fig. 3, walls and floor form an “interior”); and a base coupled to the main body (items 14 and 20, fig’s 1-3), wherein the main body is configured to rotate away from the base to lift the head relative to the base, and the main body is configured to rotate toward the base to lower the head relative to the base (fig’s 2 and 3);
(Claim 37) wherein the interior of the main body is configured to receive the toy vehicle from the head (fig. 3 and column 3 lines 36-40);
(Claim 40) wherein the base comprises an outlet configured to expel the toy vehicle from the interior of the main body, and the main body comprises a cover configured to move between a first position that covers the outlet and a second position that exposes the outlet (opening in item 20, fig. 9, not separately labeled, covered by item 16, fig. 1; also note there is no “extension” claimed in this claim string, and it is noted that item 16 could be interpreted to read on either a cover or an extension).
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 21-28 are rejected under 35 U.S.C. 103 as being unpatentable over Nuttall et al. (US Patent No. 7,628,674 B2) in view of Kim (US Patent No. 7,927,174).
In Reference to Claims 21-28
Nuttall teaches (Claim 21) A toy vehicle carrier, comprising: a main body comprising an interior configured to store a toy vehicle (item 12, fig’s 1-3, configured to contain / store item 28, fig. 3, walls and floor form an “interior”); a head coupled to the main body (item 30, fig’s 1-3), wherein the head is configured to receive the toy vehicle (fig. 3, column 3 lines 36-40); a base coupled to the main body (items 14 and 20, fig’s 1-3); [], wherein the main body is configured to pivot relative to the base to lift the [body / head] away from the surface (fig. 3);
(Claim 24) comprising an extension coupled to the main body, wherein the extension is configured to rotate relative to the main body to transition between a first position in which the extension extends along the main body toward the head and a second position in which the extension extends away from the head (item 16, fig’s 1 and 2);
(Claim 25) wherein the head is coupled to the main body at a first end of the main body (left end in fig’s 2 and 3), and a second end, opposite the first end, of the main body includes an outlet configured to expel the toy vehicle from the interior of the main body (right end of item 12, fig’s 2 and 3);
(Claim 26) wherein the base is coupled to the main body at the second end of the main body (connection between item 12 and 14, fig’s 2 and 3);
(Claim 27) wherein the head comprises a passageway extending to the interior to direct the toy vehicle from the head toward the outlet of the main body (fig. 3 and column 3 lines 36-40).
Nuttall fails to teach the feature of wheels on the device of claims 21-23 and 28.
Kim teaches (Claim 21) and a wheel coupled to [a] main body and configured to rotate to facilitate movement of [a] main body along a surface (an item 45, fig’s 1 and 2B), [also configured to pivot relative to a base] (fig. 3A);
(Claim 22) comprising an additional wheel coupled to the base and configured to rotate to facilitate movement of the main body along the surface (item 230, fig’s 1 and 2B).
(Claim 23) wherein the wheel engages the surface in a first configuration of the toy vehicle carrier, the main body is configured to pivot relative to the base to lift the wheel away from the surface to transition the toy vehicle carrier to a second configuration in which the wheel is disengaged from the surface (item 45, fig’s 1 and 3A, column 3 lines 61-67), and the additional wheel is engaged with the surface in the first configuration and in the second configuration of the toy vehicle carrier (fig’s 1 and 3A, item 230 is engaged with the surface in both configurations);
(Claim 28) comprising an arm coupled to the main body and extending toward [a] head, wherein the wheel is coupled to the arm (item 35 / 40, fig’s 1, 2B, and 3A).
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 transforming toy of Nuttall with the feature of wheels attached to parts of the device which selectively engage a surface as taught by the transforming toy of Kim for the purpose of allowing the device to have a wider variety of interesting motion and movements as taught by Kim (column 1 lines 17-22 and column 3 lines 50-67), making the toy more versatile, increasing the play value of the toy, making the toy more interesting and attractive to the users.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Nuttall et al. in view of Kim, and further in view of Filoseta et al. (US PGPub. No. 2006/0079150 A1).
In Reference to Claim 29
The modified device of Nuttall teaches all of claim 21 as discussed above.
Nuttall fails to teach the feature of claim 29.
Filoseta teaches (Claim 29) wherein [a] head comprises a roller configured to engage [a] toy vehicle and rotate to capture the toy vehicle upon the head receiving the toy vehicle (items 1402 / 1412, fig. 14A, also see items 1502 / 1512, fig. 15; paragraphs 0226 and 0232).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy vehicle carrier and track device of Nuttall with the feature of a roller as taught by the toy vehicle carrier and track device of Filoseta for the purpose of allowing the device to automatically collect or release toy vehicles as desired, increasing play and excitement for users of a vehicle track set as taught by Filoseta (paragraph 0218), making the device easier to use, and more interesting and attractive to the users.
Claim 30, 31, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Nuttall et al. in view of Choi (US Patent No. 10,561,957).
In Reference to Claims 30, 31, and 35
Nuttall teaches (Claim 30) A toy vehicle carrier, comprising: a main body comprising an interior configured to store a toy vehicle, wherein the main body comprises a first track along which the toy vehicle may travel (item 12, fig’s 1-3, configured to contain / store item 28, fig. 3, walls and floor form an “interior” and comprise a track); a base coupled to the main body (items 14 and 20, fig’s 1-3), wherein the main body is configured to pivot relative to the base to extend away from a surface on which the base is positioned (fig. 3); and an extension coupled to the [base] and configured to rotate relative to the main body, wherein the extension comprises a second track along which the toy vehicle may travel, the extension is configured to extend along the main body in a first configuration of the toy vehicle carrier, and the extension is configured to extend away from the main body in a second configuration of the toy vehicle to align the first track of the main body with the second track of the extension (item 16, fig’s 1 and 2);
(Claim 31) wherein an end of the main body includes an outlet configured to expel the toy vehicle from the interior (right end of item 12, fig’s 2 and 3), and the extension is coupled to the [base] at the end (fig’s 1 and 2).
Claim 35) wherein the second track forms an exit at a tip of the extension to eject the toy vehicle from the toy vehicle carrier (fig’s 8-10).
Nuttall fails to teach the extension being coupled to the main body.
Choi teaches an extension coupled to a main body (item 103, fig. 6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy track vehicle handing device of Nuttall with the feature of an extension coupled to a main body as taught by the toy track vehicle handing device of Choi for the purpose of creating a more compact device when folded, that can act as a transforming toy with more uses when folded as taught by Choi (column 1 lines 17-26), making the toy more versatile, providing a wider range of play features, making the device more attractive to the users.
Further, the examiner notes that it has been held that rearrangement of parts has no patentable significance where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Since locating a folding track extension portion on any other track portion of the device would not modify the operation of the device, but would simply rearrange the track pathway, merely claiming any desirable location for an extension is an obvious matter of engineering design choice, and is not a patentable advance.
Claims 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Nuttall et al. in view of Choi, and further in view of Kilroy et al. (US Patent No. 4,349,983).
In Reference to Claims 32-33
The modified device of Nuttall teaches all of claim 30 as discussed above.
Nuttall fails to teach the features of claims 32 and 33.
Kilroy teaches (Claim 32) a handle coupled [a] the main body [at / adjacent a] first track (item 48, fig’s 1-6);
(Claim 33) wherein [an] extension comprises an opening configured to receive the handle (item 60 along with other opening in item 14 that receive handle 48, fig’s 1-6, column 2 lines 55-67).
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 modular toy track device of Nuttall with the feature of a handle with a mating opening as taught by the modular toy track device of Kilroy for the purpose of providing a convenient grip portion to carry the device when in the folded position as taught by Kilroy (column 2 lines 55-67), making the device easier to use, more convenient, and more attractive to the users.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Nuttall et al. in view Choi, and further in view of Hippely et al. (US Patent No. 8,668,081 B2).
In Reference to Claim 34
The modified device of Nuttall teaches all of claim 30 as discussed above.
Nuttall fails to teach the feature of claim 34.
Hippely teaches (Claim 34) wherein [a] first track comprises a first lane along which the toy vehicle may travel and a second lane along which an additional toy vehicle may travel (fig. 6, tracks of item 20).
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 modular toy vehicle track system of Nuttall with the feature of an additional lane as taught by the modular toy vehicle track system of Hippely for the purpose of allowing a user to race toy vehicles against each other on the track as taught by Hippely (column 1 lines 40-55), allowing for more versatile use of the device, making the device more interesting and attractive to the users.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Nuttall et al. in in view of Hippely et al. (US Patent No. 8,668,081 B2).
In Reference to Claim 38
Nuttall teaches all of claim 36 as discussed above.
Nuttall fails to teach the feature of claim 38.
Hippely teaches (Claim 38) wherein [a] main body comprises a receptacle that is separate from [an] interior and configured to store [a] toy vehicle (items 36, fig’s 4-6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy vehicle track system of Nuttall with the feature of a separate receptacle for storing toy vehicles as taught by the toy vehicle track system of Hippely for the purpose of providing an additional area to the device to store vehicles intended for use on the track portion of the device as taught by Hippely (column 1 lines 40-45), making the device more complete, more useful, more versatile, and more interesting and attractive to the users.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Nuttall et al. in view of Choi (US Patent No. 10,561,957 B2).
In Reference to Claim 39
Nuttall teaches all of claim 36 as discussed above.
Nuttall fails to teach the feature of claim 39.
Choi teaches (Claim 39) comprising an arm coupled to [a] main body and extending toward [a] head, wherein the arm is configured to rotate relative to the main body (item 160 / 162, fig’s 8, 11, and 12).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy vehicle track system of Nuttall with the feature of an arm as taught by the toy vehicle track system of Choi for the purpose of adding further articulating fanciful features to the device as shown by Choi (fig’s 6, 11, and 12), making the device more lifelike, and more interesting and attractive to the users.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711