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 .
Terminal Disclaimer
The terminal disclaimer does not comply with 37 CFR 1.321 because: The Reg. No. provided in section two is incorrect.
Claim Objections
Claim 14 is objected to because of the following informalities: In line 18 the phrase “each of the second air blowers is arranged on its respective expandable member” would be clearer as “each of the second air blowers are arranged on a respective expandable member”. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: In line 9 the phrase “each of the second air blowers is arranged on its respective second through hole” would be clearer as “each of the second air blowers is arranged on a respective second through hole”, in line 5 the phrase “its respective first air inlet portion” would be clearer as “a respective first air outlet portion” and in line 6 the phrase “its respective first air outlet portion” would be clearer as “a respective first air outlet portion”. Appropriate correction is required.
Claim 28 is objected to because of the following informalities: In line 2 the phrase “a plurality of first air inlet portion” would be clearer as “a plurality of first air inlet portions”. Appropriate correction is required.
Claim 29 is objected to because of the following informalities: In lines 3-4 the phrase “ and each of the second air outlet portions corresponds to its respective first air outlet portion” should be omitted since it is redundant. 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.
Claim 23, 32 and 33 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 23 discloses that “each of the second air outlet portions corresponds to its respective first air outlet portion” but the independent claim from which this claim depends discloses that the accessory includes at least one first air outlet portion and as such it is unknown if the claim is requiring multiple first outlet portions so each second air outlet portion corresponds to a respective first outlet portion or if all the second air outlet portions correspond to the same at least one first air outlet portion and as such the scope of the claim is unascertainable.
Claim 32 recites the limitation "each of the at least one first air outlet portion" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, the claim will be interpreted as “each one of the plurality of first air outlet portions”.
Claim 33 recites the limitation "the first air inlet portions or the first air outlet portions" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, the claim will be interpreted as depending from claim 28 which discloses these features.
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 17 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 fails to further limit the claim on which it depends since it simply reiterates limitations already found in the independent claim. 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.
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 14-15, 17, 19-32 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10-14 and 18-19 of U.S. Patent No. 12070699 and further in view of Spence (GB2492376A). The patent discloses an accessory attached to an inflatable doll having a cavity wherein the accessory includes a housing with a top cover, a plurality of first air blowers each with air inlet and outlet portions, a main controller connected to the air blowers for inflating different portions or section of the inflatable doll independently so the doll acts dynamically, a sound system arranged on the top cover with a lamp arranged on the sound system and the first air outlets surrounding the sound system and lamp, a sound collecting member, a first speech recognizing server, a chip, a second speech recognizing server and a plurality of expandable members each with respective second air blowers. The patent discloses the basic inventive concept with the exception of the inflatable doll having a through hole in a bottom for inflating the different portions of the doll, the first air blowers, first and second air outlet portions being arranged along a circumference of the top cover, the second air inlets arranged perpendicular to the second air outlets, the second air outlets being concentrically arranged fan-shaped members and the first air outlet portion having a one-fifth to four-fifths radius relative to a radius of the housing and formed as a hole having a total area of two-fifths to four-fifths of an area of an upper surface of the top cover. Spence discloses an accessory (Fig. 4) applied to a bottom of an inflatable doll (1) having a through hole (3) and a cavity defining different portions or sections of the inflatable doll such as front, back and side portions (Figs. 1 & 7). The accessory is in the form of a housing (2) having a first air inlet portion (5) on sides of the housing, an air outlet portion (14) on a top cover of the housing arranged on a circumference of the housing (Fig. 2D), a blower (12) with a casing positioned adjacent the circumference of the housing defining a second air inlet portion communicated with the first air inlet portion and a second air outlet portion communicated with the first outlet air portion, such that the second air inlet portion is perpendicular to the second air outlet portion (Fig. 2A), a lamp (15) on a top of the housing and a controller (10) for controlling the components (page 20 line 31-page 21 line 18). The air outlet of the accessory is in communication with the cavity when the inflatable doll is applied to the accessory and a radius of the first air outlet portion is less than a radius of the housing and forms a hole with an area of the hole is less than an area of an upper surface of the top cover (Figs. 2D & 7). Since Spence discloses an accessory for an inflatable doll, it would have been obvious to configure the accessory and inflatable doll to include a through hole in the bottom of the doll, air blowers with a casing wherein outlet portions are arranged along a circumference and relative dimensioning of the radius and total area of the first air outlet portions for the predictable result of using known elements configured to provide inflation effects in toy dolls and further since features such as duplication of parts, rearrangement of parts, shape and relative dimensions have all been held to be obvious modifications. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim 18 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10-14 and 18-19 of U.S. Patent No. 12070699 and further in view of Spence and Spielberger (2006/0150451). The patent and Spence disclose the basic inventive concept as outlined above with the exception of the casing having first and second detachable portions. Spielberger discloses a blower for use with an inflatable doll (Figs. 1, 3 & 4) having a first casing (84) that is integral with an air inlet (88) and an air outlet (90) that can detachably connect to a second casing (86). Since the references all disclose blowers with casings useable with inflatable dolls, it would have been obvious to one of ordinary skill in the art from the teaching of Spielberger to configure the casing to include first and second casings that can be detachably connected for the predictable result of configuring the blower casing to enable repair and as such providing enhanced utility.
Response to Arguments
Applicant’s arguments with respect to claim(s) 14-15 and 17-34 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
Prosecution Insights