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 lines 2, 3, 4-5 and 7 omit the “being” before “configured” or “concentric” for clarity. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: In lines 1-3 and 6-8 omit the “being” before “used”, “configured” or “concentric” for clarity. Appropriate correction is required.
Applicant is advised that should claim 5 be found allowable, claim 7 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 8 is objected to because of the following informalities: In line 1 the phrase “the top toy according of claim 2” would be clearer as “the top toy according to claim 2” . 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 3 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 discloses that when the top toy stands upright and when the rotor and the acceleration rail are engaged a first length from a point defined as an intersection of a direction to which the rotating shaft extends and a floor to a top end of the step part is greater than a second length from a bottom end of the landing part to a bottom end of the ride-over part were not disclosed by the specification as originally filed since the first and second length requirements were only disclosed in the claim as originally presented and as such required a position in which the shaft abutted a floor and Figs. 5A-5C show that the top toy standing upright and the rotor and acceleration rail being engaged do not occur at the same time and that while engaged the top can take a variety of positions making it unknown which of the positions was intended to be encompassed for determining the point.
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 1-8 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.
Claim 1 recites the limitation "the floor" in line 7 and “the step side” in line 14. There is insufficient antecedent basis for these limitations in the claim. Furthermore, it is unclear how a floor corresponds with the previously disclosed field or the context in which the landing part is positioned off of a floor to achieve the desired results as claimed and as such the scope of the claim is unascertainable. For the purposes of examination, the claim will be interpreted as: A top toy set, comprising: a field including a recess having a bowl shaped floor, a step part with a top corner configured on an edge of the recess and an acceleration rail configured on the step part; and a top toy including a rotating shaft extending in an axial direction, a rotor concentric with the rotating shaft, a ride-over part configured on the rotating shaft above the rotor and a landing part on a bottom end of the rotating shaft for engaging the floor, the ride-over part including an axially symmetrical sliding contact surface, the sliding contact surface increasing in diameter upwardly in the axial direction; wherein the toy top set is configured for the top toy to travel over the field with the landing part in contact with the bowl shaped floor until the rotor engages the acceleration rail which causes the sliding contact surface to abut the top corner and slidably ride along a top side of the step part with the landing part spaced apart from the floor.
Claim 2 recites the limitation "the step side" in line 15. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 discloses a limitation relative to “a top end of the step part” but the independent claim from which this claim depends discloses that the step part has a “top side” making it unclear if these are the same elements described using different terminology or if they are different parts of the step part and as such the scope of the claim is unclear. For the purposes of examination, the claim will be interpreted as the first length being from a point to the top side of the step part.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim discloses “the top toy according to claim 1” but claim 1 is directed to top toy set and as such fails to include all the limitations of the claim on which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 2, 4 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Honda (FR2955781A1). Honda discloses a top toy that can be used with a field (Fig. 1) having a step part (7) with an acceleration rail (8) configured on the step part that can include smooth and rack surfaces (detailed description section). The top toy (Fig. 4) has a rotating shaft extending in an axial direction, a rotor for engaging the acceleration rail in the form of a roller gear (14) concentric with the rotating shaft, a ride-over part (12) configured on the rotating shaft above the rotor having an axially symmetrical sliding contact surface on the bottom thereof that increases in diameter upwardly along the axial direction and a landing part (13) on a bottom of the rotating shaft (Fig. 4). In regard to the field having a recess with a bowl shape, the step part formed on an edge of the recess and including a top corner to allow the toy top to slidably contact the top corner when the landing part is apart from the field in order for the sliding contact surface to ride on a top side of the step part, the examiner notes that these features are functional only and not actually required by the claim as the claim is directed to the top toy only and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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) 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Honda as applied for claim 4 above. Honda discloses the basic inventive concept with the exception of the roller gear being tapered to increase in diameter downwardly along an axial direction. It would have been obvious to one of ordinary skill in the art to taper the roller gear of Honda since such a modification would have involved a mere change in shape and changes in shape have been held to be obvious unless a new or unexpected result is produced. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Honda as applied above for claim 2 and further in view of KR200443220Y1. Honda discloses the basic inventive concept with the exception of the landing part being made of rubber. KR200443220Y1 discloses a toy top with a landing part (10) formed of rubber for durability and enhanced frictional contact of the top with a surface (description of embodiments paragraph 3). It would have been obvious to one of ordinary skill in the art from the teaching of KR200443220Y1 to use rubber for the landing part for the predictable result of using a material that enhances durability and frictional contact for improved performance.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 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.
Conclusion
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.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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