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 .
Status of Claims
Claims 1-18, filed 7/1/2024, are pending and are currently being examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/2/2024 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.
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 2, 6, and 11 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “insoluble” in claims 2 and 11 is used by the claim to mean “immiscible” and the term “translucent” in claim 6 is used by the claim to mean “transparent or highly translucent”. The specification describes these terms, however they appear that they should be defined as described below instead to more accurately describe the claims and invention based on the specification.
Claims 2 and 11 defines that the liquids “are insoluble in each other”, however mixed liquids aren’t generally defined as insoluble or soluble. The term “insoluble” as is generally understood, refers to solids that do not dissolve significantly in a solvent/liquid. For example, sand or chalk in water. However, the term “immiscible” as used by the cited prior art (Nalle 2,394,093) generally refers to mixed liquid systems and liquids that cannot mix in all proportions resulting in layers and not a uniform solution. For example, oil and water. In this case, the claim should likely state that the liquids are immiscible meaning that they remain separate from one another and do not form a uniform/homogenous solution as it is unclear how the liquids would be insoluble as insoluble generally refers to solids that do not dissolve in a solvent/liquid. In this case it does not appear that the liquids would be insoluble as best understood by one of ordinary skill in the art and it appears that the claim should instead define that the liquids are immiscible as the claim appears to be attempting to define that the two liquids remain separate liquids and do not become homogenous. Therefore, it is unclear if the claim should be interpreted with the plain meaning or if it should be interpreted by the limitations used.
Claim 6 defines that the disc section of the body is “translucent”, however the specification defines that the body has a disc shaped portion that is either “transparent or highly translucent”, which one of ordinary skill in the art may feel that “transparent or highly translucent” is not the same as just plainly “translucent”. It appears the claim should instead define that the disc is transparent or highly translucent as it is inconsistent with the specification as presented.
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.
Claims 1-6, 10-14, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nalle US Pat. No. 2,394,093.
Nalle teaches:
In Reference to Claim 1
A toy top device (toy spinning top, Fig. 1-7), comprising:
a body that defines an internal fluid chamber, wherein said fluid chamber is visible through at least part of said body (body 11/12 forms an internal fluid containing chamber therein, the body being entirely transparent (visible through), page 1, col. 1 line 55 – col. 2 line 7, Fig. 1, 6);
a fluid mixture held within said fluid chamber, wherein said fluid mixture contains a plurality of liquids having different densities, wherein said plurality of liquids separate into bands in said fluid chamber when said body spins (at least two different immiscible (not forming a homogeneous mixture (aka remain separate and form separate layers) when mixed) liquids 16/17 or 31/32 having different colors and densities therein, and therefore inherently remain separate (page 1, col. 2 lines 6-17) at all times (though vanes may blend the liquids into a third color, this is an additional feature that does not need to be used), wherein the liquids may have significantly different densities such that during spinning, the liquids may form different colored bands/zones and stratify during use, page 2, col. 1 lines 28-55, Fig. 1, 6 (Fig. 6 shows in phantom the layers 31/32 at high speed move to the upper portion of the housing in band shapes)).
In Reference to Claim 2
The device according to Claim 1, wherein said plurality of liquids are insoluble in each other (liquids 16/17 or 31/32 are not immiscible and remain separate/insoluble (as best understood) with one another so they always separate as shown in Fig. 1 due to their different densities, page 1, col. 2 lines 6-17, page 2, col. 1 lines 49-55, Fig. 1, 6).
In Reference to Claim 3
The device according to Claim 1, wherein each of said plurality of liquids is a different color (liquids 16/17 and 31/32 may have different colors, page 1, col. 2 lines 6-17, page 2, col. 1 lines 49-55).
In Reference to Claim 4
The device according to Claim 1, wherein said fluid mixture completely fills said fluid chamber (Fig. 1 shows the liquids 16/17 filling the entire chamber 15 of the body, page 1, col. 2 lines 18-20).
In Reference to Claim 5
The device according to Claim 1, wherein said toy top device has a weight and said fluid mixture accounts for most of said weight (weight of the liquids are significantly higher than the top body housing and therefore accounts for the most of the weight of the toy device, page 1, col. 1 lines 26-33).
In Reference to Claim 6
The device according to Claim 1, wherein said body includes a disc section that is translucent (body has an upper portion that is disc shaped 27, wherein the entire body may be entirely or partially transparent/translucent to view the inner chamber therein, page 2, col. 1 lines 55-68).
In Reference to Claim 10
A spinning device that can selectively spin about a central axis of rotation (toy spinning top rotatable about a vertical axis along spindle 23/30, Fig. 1-7), said spinning device comprising:
a body that contains a fluid chamber that is visible through at least part of said body (body 11/12 forms an internal fluid containing chamber therein, the body being entirely transparent (visible through), page 1, col. 1 line 55 – col. 2 line 7, page 2 col. 1 lines 50-68, Fig. 1);
a plurality of liquids held within said fluid chamber, wherein at least some of said plurality of liquids have different densities, and wherein at least some of said plurality of liquids migrate to different distances from said central axis of rotation as said spinning device spins, therein producing a pattern that is visible through said body (at least two different immiscible (not forming a homogeneous mixture (aka remain separate and form separate layers) when mixed) liquids 16/17 having different colors and densities therein, and therefore inherently remain separate (page 1, col. 2 lines 6-17) at all times (though vanes may blend the liquids into a third color, this is an additional feature that does not need to be used), wherein the liquids may have significantly different densities such that during spinning, the liquids may form different colored bands/zones and stratify during use, page 2, col. 1 lines 28-55, Fig. 1, 6, wherein the upper liquid 17/31 extends further from the center of rotation at rest (or slow movement) due to the shape of the body and the lower denser liquid 16/32 is closer at rest (or slow movement), but may extend further during fast rotation (shown in phantom in Fig. 6 as 32 forms the outer band and 31 forms an inner band)).
In Reference to Claim 11
The device according to Claim 10, wherein at least some of said plurality of liquids are insoluble in each other (liquids 16/17 or 31/32 are not immiscible and remain separate/insoluble (as best understood) with one another so they always separate as shown in Fig. 1 due to their different densities, page 1, col. 2 lines 6-17, page 2, col. 1 lines 49-55, Fig. 1, 6).
In Reference to Claim 12
The device according to Claim 10, wherein at least some of said plurality of liquids are different color (liquids 16/17 and 31/32 may have different colors, page 1, col. 2 lines 6-17, page 2, col. 1 lines 49-55).
In Reference to Claim 13
The device according to Claim 10, wherein said plurality of liquids completely fill said fluid chamber (Fig. 1 shows the liquids 16/17 filling the entire chamber 15 of the body, page 1, col. 2 lines 18-20).
In Reference to Claim 14
The device according to Claim 10, wherein said spinning device has a weight and said plurality of liquids account for at most of said weight (weight of the liquids are significantly higher than the top body housing and therefore accounts for the most of the weight of the toy device, page 1, col. 1 lines 26-33).
In Reference to Claim 18
The device according to Claim 10 wherein said spinning device is a toy top (toy spinning top rotatable about a vertical axis along spindle 23/30, Fig. 1-7).
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.
Claims 7-9 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Nalle as applied to claim 1/10 above, and further in view of Nathan US Pat. No. 3,392,482.
In Reference to Claim 7
Nalle teaches:
The device according to Claim 1 as rejected above.
Nalle fails to teach:
Solid elements mixed within said fluid mixture.
Further, Nathan teaches:
A toy top device (toy spinning top 10, Fig. 1-5), comprising:
a body that defines an internal fluid chamber, wherein said fluid chamber is visible through at least part of said body (body 12/14 forms an internal fluid containing chamber 20/32 therein, the body being transparent (visible through), page 1, col. 2 lines 21-29, Fig. 1-5);
a fluid mixture held within said fluid chamber, wherein said fluid mixture contains a plurality of liquids having different densities, wherein said plurality of liquids separate into bands in said fluid chamber when said body spins (at least two different immiscible (not forming a homogeneous mixture (aka remain separate and form separate layers) when mixed) liquids 44/46 having different colors and densities therein, and therefore inherently remain separate (Col. 2 line 28 – Col. 3 line 2) at all times, wherein the liquids may have significantly different densities such that during spinning, the liquids may form different colored bands/zones and stratify during use, Col. 2 line 28 – Col. 3 line 2, Fig. 3),
and solid elements mixed within said fluid mixture (solid balls 48 may be added to the liquid mixture to provide additional aesthetic and display different physics effects, Fig. 4, Col. 3 lines 3-25).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Nalle to have further included solid elements in the fluid chamber in order to create interesting aesthetic features to the toy during use and in order to display different physics effects during use as taught by Nathan (Col. 1 lines 19-21, 45-51, Col. 3 lines 3-25).
In Reference to Claim 8
Nalle as modified by Nathan teaches:
The device according to Claim 7, wherein said solid elements have at least one density that differs from said different densities of said plurality of liquids (Nathan: the solid elements 48 may have lighter and/or heavier density than the liquids used to provide different effects, Col. 3 lines 3-25).
In Reference to Claim 9
Nalle as modified by Nathan teaches:
The device according to Claim 8, wherein said solid elements form additional bands in said fluid chamber when said body spins (Nathan: the solid elements 48 may have lighter and/or heavier density than the liquids used to provide different effects as the lighter elements form an inner band and the heavier elements may form an outer band, Fig. 4, Col. 3 lines 3-25).
In Reference to Claim 15
Nalle teaches:
The device according to Claim 10 as rejected above.
Nalle fails to teach:
Solid elements mixed within said plurality of liquids/fluid mixture.
Further, Nathan teaches:
A toy top device (toy spinning top 10, Fig. 1-5), comprising:
a body that defines an internal fluid chamber, wherein said fluid chamber is visible through at least part of said body (body 12/14 forms an internal fluid containing chamber 20/32 therein, the body being transparent (visible through), page 1, col. 2 lines 21-29, Fig. 1-5);
a fluid mixture held within said fluid chamber, wherein said fluid mixture contains a plurality of liquids having different densities, wherein said plurality of liquids separate into bands in said fluid chamber when said body spins (at least two different immiscible (not forming a homogeneous mixture (aka remain separate and form separate layers) when mixed) liquids 44/46 having different colors and densities therein, and therefore inherently remain separate (Col. 2 line 28 – Col. 3 line 2) at all times, wherein the liquids may have significantly different densities such that during spinning, the liquids may form different colored bands/zones and stratify during use, Col. 2 line 28 – Col. 3 line 2, Fig. 3),
and solid elements mixed within said plurality of liquids/fluid mixture (solid balls 48 may be added to the liquid mixture to provide additional aesthetic and display different physics effects, Fig. 4, Col. 3 lines 3-25).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Nalle to have further included solid elements in the fluid chamber in order to create interesting aesthetic features to the toy during use and in order to display different physics effects during use as taught by Nathan (Col. 1 lines 19-21, 45-51, Col. 3 lines 3-25).
In Reference to Claim 16
Nalle as modified by Nathan teaches:
The device according to Claim 15, wherein said solid elements have at least one density that differs from said different densities of said plurality of liquids (Nathan: the solid elements 48 may have lighter and/or heavier density than the liquids used to provide different effects, Col. 3 lines 3-25).
In Reference to Claim 17
Nalle as modified by Nathan teaches:
The device according to Claim 16, wherein said solid elements separate and form part of said pattern when said spinning device spins (Nathan: the solid elements 48 may have lighter and/or heavier density than the liquids used to provide different effects as the lighter elements form an inner band and the heavier elements may form an outer band, Fig. 4, Col. 3 lines 3-25).
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, Nathan appears to also teaches the claimed device as discussed above. Further, Liss (10,857,473), Gunter (2013/0065478), Wu (2012/0276806), Chernick (2011/0256797), Pearce (6,905,431), Shaw (6,896,578), Lin (6,743,070), Jasperson (5,749,799), Orak (5,165,781), Landsinger (3,738,036), Abel (RE23,612), Gray (2,556,756), and Da Costa (2,115,986) teach similar rotating tops and toys having fluids therein.
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