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 2 is objected to because of the following informalities: In line 4 the phrase “cone or more” should be replaced with “one or more” for clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim requires the use of “butterfly joints” but the specification and figures as originally filed while using the phrase “butterfly joints” fails to provide any structure to disclose what a butterfly joint is required to include and as such fails to describe what is intended by this feature in a manner to allow one skilled in the art to recognize what is claimed. See MPEP 2163.03(V).
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 4 and 8 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4, the phrase "tube-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 8 discloses that the action figure torso includes a pair of butterfly joints but it is unknown what structural features a “butterfly joint” is required to have in the context of a toy torso and as such the scope of the claim is unascertainable. For the purposes of examination, the claim will be interpreted as requiring joint structures for receiving an extremity of the action figure.
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) 1, 5-9, 11-12 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashina (4125961), Terzian (4120117) and Volynsky (7537507). Yamashina discloses an action figure and method of forming the action figure by having a torso formed from a front half member (16) simulating a stomach portion of the torso and a back half member (17) simulating a back portion of the torso and a head member formed with a rotatable member (141) positioned within the front and back half members with a first rod (143) extending from a first side of the rotatable member and a second rod (143) extending from a second side of the rotatable member to allow rotation of the rotatable member within the torso halves (Figs. 1-3). The front half member has a plurality of projecting rods (23) configured such that respective end portions of the rods engage within respective hollow sections (176) of the back half member to connect the half members together (Fig. 3). A pair of joints on opposite sides of the torso are configured to receive arm extremities of the action figure (Figs. 2 & 3). The rotatable member further includes a neck piece (14’) extending from an outer edge thereof that is configured to receive a head portion (14) thereon (Fig. 2). Yamashina discloses the basic inventive concept with the exception of the rotatable member being a cylindrical disk and having a sleeve configured to move with and cover the cylindrical disk. Terzian discloses an action figure having a torso configured to receive a rotatable cylindrically shaped portion (92,94) of a head member, wherein the rotatable cylindrical shaped portion has first and second opposed sides from which respective first and second rods extend and an outer edge to which a head portion is attached (Figs. 5, 6 & 9). Since both Yamashina and Terzian disclose action figures with rotatable head members connected to a torso, it would have been obvious to one of ordinary skill in the art to shape the rotatable member of Yamashina as a cylinder as taught by Terzian for the predictable result of shaping the component for enabling rotation in a known manner. In regard to the rotatable member including a cylindrical disk, the examiner notes that changes in shape have been held to be an obvious matter of design choice unless a new or unexpected result is produced. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Volynsky discloses that components of action figures which can include head, neck and torso portions (column 5 lines 24-38) can include a sleeve thereover formed from polyvinyl chloride with a Shore hardness of 50-80 which includes 75 (column 3 lines 37-48). It would have been obvious to one of ordinary skill in the art from the teaching of Volynsky to include a sleeve on the head member of Yamashina and Terzian for the predictable result of configuring the head member to have a simulated flesh covering for simulating a character with enhanced realism.
Claim(s) 2, 4 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashina, Terzian and Volynsky as applied above and further in view of Sapkus (4135327). Yamashina, Terzian and Volynsky disclose the basic inventive concept with the exception of the rods being circular rods and the hollow sections being hollow tube sections configure to extend between an inside of the first half to an inside of the second half. Sapkus discloses an action figure with a torso configured with circular rods extending from a back half portion of the torso and a plurality of hollow tubes extending from a front half portion of the torso wherein the hollow tubes are configured to receive an end portion of a respective rod such that the rods and hollow sections extend between inside surfaces of the front and back half members (Fig. 8). It would have been obvious to one of ordinary skill in the art from the teaching of Sapkus to modify the rod and hollow sections of Yamashina, Terzian and Volynsky to include circular rod and hollow tubes that extend between inner surfaces of front and back half members for the predictable result of configuring the components in a known manner for allowing connection of the torso halves in a secure manner.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashina, Terzian, Volynsky and Sapkus as applied for claim 2 above. The references disclose the basic inventive concept with the exception of including 8-14 rods and 8-14 hollow sections. It would have been obvious to one of ordinary skill in the art to configure the front and back torso halves with 8-14 rods and 8-14 hollow sections, since such a modification would have involved a mere duplication of parts and a duplication of parts has been held to be obvious unless a new or unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashina, Terzian and Volynsky as applied for claim 9 above. The references disclose the basic inventive concept with the exception of the cylindrical disk having an outer edge with a width of 10-20mm and the first and second sides having a diameter of 25-75mm. The examiner notes that it has been held that when the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashina, Terzian, Volynsky and Sapkus as applied for claim 2 above. The references disclose the basic inventive concept, with the exception of the rods being on the front half member and the hollow sections being on the back half member or a combination of rods and hollow sections being on both half members. It would have been obvious to one of ordinary skill in the art to configure the rods and hollow sections to be on particular ones of the halves or on both halves since such a modification would have involved a mere rearrangement of parts and a rearrangement of parts has been held to be an obvious matter of design choice. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA HYLINSKI whose telephone number is (571)272-2684. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711