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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, drawn to an apparatus, classified in A63h33/02.
II. Claims 6-7, drawn to a method, classified in A63B 19/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product as claimed can be used in a materially different process of using that product, for example as for use as jewelry, exercise or as a hula hoop.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
There are significant search areas that would need to be covered that would result in serious search burden including different classification, subclassification and keyword searching
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Michael Tait on 2/27 a provisional election was made without traverse to prosecute the invention of I, spinner toy, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-7 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 (i.e., changing from AIA to pre-AIA ) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3509660 to Seymour in view of US 6059632 to Sassak.
In re claim 1, Seymour teaches a spinner toy comprising: a hollow primary hoop 10 having a closed configuration (Fig. 3, 5, 2) wherein the closed configuration defines a primary hoop central aperture having a first diameter (Fig. 3, 5); and one or more motion devices 16 each of the one or more motion devices having a motion device central aperture (Fig. 2) and a second diameter less than the first diameter and operable to allow the motion device to travel along the primary hoop (Fig. 3, 5).
Seymour teaches the spinner toy except for the hollow primary hoop 10 having an open configuration.
Sassak teaches a spinner toy comprising a hollow primary hoop having an open configuration and a closed configuration (Fig. 1-3 via free ends #24 and coupling mechanism 26).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have provided the spinner toy as taught by Seymour with the open configuration capable as taught by Sassak in order to allow for the primary hoop to be opened to accommodate different motion devices or to allow for decorative additives to the primary hoop with a reasonable expectation of success.
In re claim 2, the modified reference teaches the spinner toy of claim 1 and Sassak teaches further comprising a friction fit roll closure 26 operable to fit within the hollow primary tube 18 at a first end 24 and a second end 24 operable to secure the hollow primary hoop in a closed configuration.
In re claim 3, the modified reference teaches the spinner toy of claim 1 and Sassak further teaches comprising a flexible rod 26 sized to fit within an interior of the hollow primary hoop (Fig. 1, 3-6).
In re claim 4, the modified reference teaches the limitations of claim the spinner toy of claim 1 and Sassak further teaches comprising an outer shrink tubing 12.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have provided the spinner toy hollow primary tube as taught by Seymour with the outer shrink tubing as taught by Sassak in order to provide a decorative and durable outer layer to protect the hollow tube during play, with a reasonable expectation of success.
In re claim 5, the modified reference teaches the spinner toy of claim 1 and Sassak further teaches comprising an outer grip layer 12 (Col 3 Ln 15-34 “grippable” material).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have provided the spinner toy hollow primary tube as taught by Seymour with the outer outer grip layer as taught by Sassak in order to provide a grippable, decorative, and durable outer layer to protect the hollow tube during play and to help the user engage the toy, with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA DANIEL HUSON whose telephone number is (571)270-5301. The examiner can normally be reached Monday-Friday 7-330.
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, Joseph Thomas can be reached at (571) 272-8004. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D HUSON/Supervisory Patent Examiner, Art Unit 3642