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 .
Claim Objections
Claim 1 is objected to because of the following informalities: In line 21 after “wireless” the word “tag” should be included for clarity. Appropriate correction is required.
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.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "the function construction element" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, the claim will be interpreted as depending from claim 2 which discloses this feature.
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.
Claim(s) 10-12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zilber (2010/0001923) and Ellis (2006/0172787). Zilber discloses a toy construction system having a plurality of interactive construction elements (12) each having a control circuit (24) and a wireless communications interface (30) for communicating with one or more of the other interactive construction elements (paragraph 32) in the form of a plurality of function construction elements with function elements (16) that perform a user-perceivable output function controlled by the control circuit (paragraphs 25 & 50) and at least one input construction element having an input device (32) operable to receive an input and transmit a control signal broadcast message responsive to the input and with a group identifier to a subset of the function construction elements that are also configured to transmit a control signal broadcast message having a group identifier to the other function elements to set the identifier for the construction elements to control the construction elements to only interact with elements assigned to the same group and further be able to distinguish the type of message and process the message accordingly (Fig. 2, paragraphs 32-35 & 43-47). The wireless communications interface (30) is configured for short range or near-field communicating such as by radiofrequency communication (paragraph 24) with the other construction elements and can take the form of a transceiver adapted to receive control signals from other adjacent but unattached construction elements to further control the output control function (paragraphs 24, 32 & 45-51). Zilber discloses the basic inventive concept with the exception of the construction elements including coupling members for releasably interconnecting the construction elements to form construction models. Ellis discloses interactive construction elements (Fig. 1A) configured with top, bottom and front side surfaces wherein the top and bottom surfaces include coupling members (140) for releasably coupling a plurality of elements together (Fig. 2). It would have been obvious to one of ordinary skill in the art to modify Zilber to include the coupling members for the predictable result of providing enhanced utility and functionality by enabling the elements to be connected to create interesting and versatile structures. It is further noted that changes in configuration have been held to be an obvious matter of design choice absent persuasive evidence that the claimed configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zilber and Ellis as applied above and further in view of Karunaratne (2013/0217295). Zilber and Ellis disclose the basic inventive concept, with the exception of the received input being a broadcast message with a group identifier. Karunaratne discloses a toy construction system with elements that can receive an input in the form of a broadcast message that includes a group identifier and process the received message accordingly (Fig. 33, paragraph 123). It would have been obvious to one of ordinary skill in the art from the teaching of Karunaratne to have the received input include a broadcast message for the predictable result of providing enhanced functionality and utility by enabling inputs from additional sources other than a user.
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 1-4, 6-12 and 14-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12005372 in view of Zilber. The patent discloses a toy construction system with a plurality of toy construction elements for constructing an interactive toy construction modules each having coupling members configured for releasably interconnecting the construction elements to form a toy construction module, a control circuit, a transceiver in communication with the control circuit and operable for radiofrequency communication between construction elements responsive to control signals from the construction elements, a tag configured for wireless data communication with the interactive toy construction elements, wherein the control circuit controls an operation of the elements responsive to the control signal and the data from the tag. The construction elements can include function construction elements that perform a user-perceptible output function, input construction elements with an input device operable to receive an input. The patent discloses the basic inventive concept with the exception of the data of the wireless tag being a group identifier and the construction elements being assigned to a group based on the received group identifier such that the control circuit responsive to the group identifier from the wireless tag controls the interactive toy construction element to interact only with interactive construction elements assigned to the same group. Zilber discloses construction elements (12) each having a control circuit (24) and a wireless communications interface (30) for communicating with one or more of the other interactive construction elements (paragraph 32) in the form of a plurality of function construction elements with function elements (16) that perform a user-perceivable output function controlled by the control circuit (paragraphs 25 & 50) and at least one input construction element having an input device (32) operable to receive an input and transmit a control signal broadcast message responsive to the input and with a group identifier to a subset of the function construction elements that are also configured to transmit a control signal broadcast message having a group identifier to the other function elements to set or assign the identifier for the construction elements to control the construction elements to only interact with elements assigned to the same group and further be able to distinguish the type of message and process the message accordingly (Fig. 2, paragraphs 32-35 & 43-47). The wireless communications interface (30) is configured for short range or near-field communicating such as by radiofrequency communication (paragraph 24) with the other construction elements and can take the form of a transceiver adapted to receive control signals from other adjacent but unattached construction elements to further control the output control function (paragraphs 24, 32 & 45-51). It would have been obvious to one of ordinary skill in the art to have interactive construction elements and a tag configured to transmit and receive group identifiers to limit interaction between construction elements assigned to the same group for the predictable result of providing enhanced functionality and utility by creating sets of blocks that interact in more dynamic ways.
Claims 5 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12005372 in view of Zilber as above and further in view of Karunaratne. The references disclose the basic inventive concept with the exception of a received input to the input construction element being a broadcast message. Karunaratne discloses a toy construction system with elements that can receive an input in the form of a broadcast message that includes a group identifier and process the received message accordingly (Fig. 33, paragraph 123). It would have been obvious to one of ordinary skill in the art from the teaching of Karunaratne to have the received input include a broadcast message for the predictable result of providing enhanced functionality and utility by enabling inputs from additional sources other than a user.
Conclusion
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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