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 11 is objected to because of the following informalities: In line 19 an “is” should be inserted before “positioned” for clarity. In lines 25-29 the phrase “wherein each one of the plurality of launch dies includes at least one helical thread formed along an inside surface of the hole of the one of the plurality of launch dies, the at least one helical thread corresponding to and for receiving the at least one helical thread extending from the upper portion to the lower portion of the main body of one of the plurality of spinning tops” would be clearer as “wherein the hole of each one of the plurality of launch dies includes at least one helical thread formed along an inside surface of the hole, the at least one helical thread of each launch die hole corresponding to and for receiving the at least one helical thread extending from the upper portion to the lower portion of the main body of one of the plurality of spinning tops”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: In line 2 the word “comer” should be replaced with “corner”. 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 23 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 the lower tray has an upwardly extending raised rim that “horizontally surrounds the holes defined by the upper tray” but the specification and drawings as originally filed show the upper and lower trays being in two different horizontal planes that are vertically spaced from one another and as such it is unknown how an upwardly extending or vertical rim on the lower tray is able to “horizontally surround” holes of the upper tray.
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 7-9 and 11-25 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 7 discloses in lines 17-18 that the catch ring engages “ an outer portion of a lower surface of the spinning top” but in line 3, the top is disclosed as having a lower portion, which makes it unclear if the lower surface and lower portion are actually the same part disclosed using different terminology and if not how this feature corresponds to the previously disclosed features of the spinning top in order to determine what is required by the limitation and as such the scope of the claim is unascertainable. For the purposes of examination, the claim will be interpreted as the catch ring engaging “an outer surface of the lower portion”.
The term “substantially” in claims 11, 22 and 23 is a relative term which renders the claim indefinite. The phrase “substantially flat support surface” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification and claims fail to disclose what variations in flatness of the support surface are meant to be encompassed by the term “substantially” and as such the scope of the claim is unascertainable.
Claim 14 discloses that the catch ring engages “ an outer portion of a lower surface of the spinning top” but the independent claim discloses that the top has a lower portion, which makes it unclear if the lower surface and lower portion are actually the same part disclosed using different terminology and if not how this feature corresponds to the previously disclosed features of the spinning top in order to determine what is required by the limitation and as such the scope of the claim is unascertainable. For the purposes of examination, the claim will be interpreted as the catch ring engaging “an outer surface of the lower portion”.
Claim 23 discloses that a rim of the lower tray “horizontally surrounds the holes defined by the upper tray” but the claims disclose that the upper and lower trays are vertically spaced from one another by a column so it is unclear how a vertical raised rim on the lower tray is able to “horizontally surround” the holes of the upper tray when they are positioned in different planes.
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.
Claims 16-19 are 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. Claim 16 discloses each top corresponds to one of the plurality of launch dies but these features are already disclosed by the independent claim on which this claim 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 7-9 and 11-25 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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