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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-8, filed 6/18/2024, are pending and are currently being examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/18/2024 was filed before the mailing date of the first office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the display board on the first surface and translucent bodies composed of cylindrical pins insertable and removable from the holes in the display board (claim 8, [0084]) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 Objections
Claim 6 is objected to because of the following informalities: in line 3, “the the” should likely read “the”. 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.
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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “the rest plate” in line 14-15. There is insufficient antecedent basis for this limitation in the claim. It is likely that this should read “the reset plate”.
Claim 5 recites the limitation “the main surface remains parallel while being moved”. It is unclear what the main surface is remaining parallel to. It is assumed that it could more clearly read that the main surface remains parallel to at least one of (if not all of) the first and second surfaces of the front surface plate and the third and fourth surfaces of the light shielding plate.
Claim 8 recites the limitation “the holes in the display board” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-4 and 6-7 are therefore rejected as they depend from a rejected claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Katsumata US Pat. No. 4,541,812.
In Reference to Claim 1
Katsumata teaches:
A light display toy (light display toy 10, Fig. 1-6) comprising:
a light source being configured to emit light (light 12 emits light);
a front surface plate having first and second surfaces (upper plate 28 having top and bottom surfaces), and having a first group of holes being arranged in parallel at prescribed intervals (a first group of parallel holes 30 extend through the plate 28, Fig. 1-6, Col. 4 lines 38-65);
a light shielding plate being configured to prevent the light from the light source, the light shielding plate having notches that are openable and closable, the notches being formed corresponding to the first group of holes, the light shielding plate having a third surface and a fourth surface being opposite to the third surface, the third surface facing the second surface (opaque diaphragm 38 having openable and closable crossed slits 40 are placed on lower plate 42 is aligned with the upper plate 28 and openings 30 placed above the lower plate, Fig. 1-6 (Fig. 5 shows the closed light blocking position and Fig. 6 shows the open light passing position), Col. 4 line 64 – Col. 6 line 56);
translucent bodies being configured between the front surface plate and the light shielding plate (movable translucent bodies/spheres 46 are positioned between the first plate 28 and the light shielding plate 38/42 to allow light to selectively be blocked and pass through the openings, Fig. 5-6, Col. 3 lines 53-58, Col. 6 lines 1-27); and
a reset plate including projections corresponding to the notches and having a fifth surface facing the fourth surface (reset wheels 54 with fingers 56 form a fifth surface facing the fourth/bottom surface of the shielding plate),
when the notches are open by moving the translucent bodies towards the rest plate, the light leaking from the notches (bodies 46 are moved downward towards the reset means/plate 54/56 to allow light to pass through the notches, Fig. 5),
when the notches are closed by the projections moving the translucent bodies towards the light shielding plate, the light being prevented from leaking (the notches 40 are closed when the projections 56 of the reset means/plate 54 move the bodies 46 upwards, Fig. 6, Col. 6 line 28 – Col. 7 line 12).
Though Katsumata teaches the reset means being a different shape than a “plate”, the claim doesn’t specifically recite that the reset means is a specific shape other than calling it a “plate” which is the equivalent language of “means” or “device” and therefore essentially any shaped reset means having a surface facing the light shielding plate would appear to broadly teach a “reset plate” as presented as the resetting means of the prior art achieves the same result as the claimed device. Further, it would have been obvious to one having ordinary skill in the art to have formed the resetting means in another shape, such as a flat planar plate, as it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). In this case, the shape of the resetting means of the prior art performs the same function as the claimed resetting plate and therefore the shape of the resetting plate/means is a matter of obvious design choice to one of ordinary skill in the art.
In Reference to Claim 6
Katsumata teaches:
The light display toy according to claim 1, wherein the translucent bodies are spherical beads having diameters larger than diameters of the the first group of holes (spherical bodies 46 have diameters which are larger than the diameter of the top aperture area of the holes 30 (at lip 48) to hold the spherical bodies therein during use, Fig. 5-6).
In Reference to Claim 7
Katsumata teaches:
The light display toy according to claim 6, further comprising a holding plate being configured between the light shielding body and the reset plate having a second group of holes having diameters smaller than the diameters of the beads (plate 42 has a second group of matching holes 44 which have diameters smaller than the spherical bodies 46 to hold the bodies within the openings between the plates 28/42 above the reset plate/means 54/56, Fig. 5-6).
In Reference to Claim 8
Katsumata teaches:
The light display toy according to claim 1, further comprising a display board being configured on the first surface, wherein the translucent bodies are composed of cylindrical pins that are insertable and removable from the holes in the display board (the top surface of board 28 forms a display board on the first/top surface where cylindrical pins 32 from a user operated tool (when touching the spherical translucent bodies may be considered “composed of”) are inserted into the holes 30 (and removable therefrom) in the display board to activate the light through the inserted openings, Fig. 1, Col. 4 lines 39-63, Col. 5 lines 8-34, Col. 7 lines 13-43).
Allowable Subject Matter
Claims 2-5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: in addition to the other claim limitations, the specific limitations of the reset plate has a sixth surface opposite to the fifth surface, the reset plate is a transparent plate made of plastic, the reset plate includes a light diffusion unit being configured on the fifth surface to diffuse the light from the light source and allows the light to enter an interior of the reset plate are not anticipated by or found obvious by the cited prior art.
Brief Discussion of Other Prior Art References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the references cited page for publications that are noted for containing similar subject matter as the applicant. For example, Maxim (7,214,118, 6,800,012, 6,032,393), Hirayama (6,244,872), Fukumura (JP 2004008392), Jones (5,391,105), Pfaender (5,121,926), Katsumata (JP S58105399), Matsuda (4,040,193), Lebensfeld (3,568,357), and Rivkin (1,720,441) teach similar changeable light displays.
Conclusion
If the applicant or applicant’s representation has any questions or concerns regarding this office action or the application they are welcome to contact the examiner at the phone number listed below and schedule and interview to discuss the outstanding issues and possible amendments to expedite prosecution of this application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R NICONOVICH whose telephone number is (571)270-7419. The examiner can normally be reached Mon - Fri 8-6 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711