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 .
Drawings
The drawings are objected to because Figs. 1-22 fail to comply with 37 CFR 1.84 (l) & (m). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-3, 7, 9-10 and 21-25 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 1 discloses in lines 19-20 that “the first front wheel, the first rear wheel, and the second rear wheel engage a support surface and the second front wheel is spaced apart from the support surface” which is unclear since it is unknown under what circumstances this arrangement is achieved since the first and second wheel supports are disclosed as being movable between different positions and as such the scope of the claim is unascertainable. For the purposes of examination, the claim will be interpreted as: wherein when the first wheel support is in the second position and the second wheel support is in the third position the first front wheel, the first rear wheel and the second rear wheel engage a support surface and the second front wheel is spaced apart from the support surface.
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 1-3, 7, 9-11, 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12011673. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent discloses a toy vehicle and method of moving the toy vehicle having a body with a drive system a first wheel support movable between first and second positions and having a first front wheel and a first rear wheel wherein the first wheel support and the first rear wheel are rotatable about a first pivot point and a second wheel support movable between third and fourth positions and having a second front wheel and a second rear wheel wherein the second wheel support and the second rear wheel are rotatable about a second pivot point and the first position of the first wheel support extends along the body with the first front and first rear wheels adjacent the body and the second position of the first wheel support has the first rear wheel adjacent the body and the first front wheel in a lowered position spaced apart from the body such that with the first wheel support in the first position and the second rear support in the third position the second front wheel is spaced apart from a support surface on which the toy vehicle can be driven.
Claims 21-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12011673 in view of Lee (2001/0044255). The patent discloses the basic inventive concept as outlined above with the exception of the drive system including first front and rear axles, second front and rear axles first and second motors, first and second gears and first and second gear sets. Lee discloses a toy vehicle (Figs. 1 & 6) having pivotal first and second wheel supports that are independently drivable wherein the first wheel support (27) includes a first front (32) and a first rear (30) wheel and the second wheel support (26) includes a second front (38) and a second rear (40) wherein the first wheel support includes a first rear axle (82) for the first rear wheel and a first front axle (82) for the first front wheel and the second wheel support includes a second rear axle (82) for the second rear wheel and a second front axle for the second front wheel (Fig. 4). The first wheel support includes a first motor (42), a first gear (60) and a first gear set operatively connected between the first front and first rear axles such that the first motor drives the first gear and rotates the rear axle which also drives the first set of gears to rotate the front axle and the second wheel support includes a second motor (46), a second gear (60) and a second gear set operatively connected between the second front and second rear axles such that the second motor drives the second gear and rotates the rear axle which also drives the second set of gears to rotate the second front axle (Fig. 4). It would have been obvious to one of ordinary skill in the art to modify the patent to include the motors, axles, gears and gear sets as taught by Lee for the predictable result of configuring the wheel supports with components to drive the wheels to allow the toy vehicle to be moved and steered over a surface in an interesting manner.
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.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711