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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim discloses having a rectangular shaped axle bearing portion with a bottom and side surfaces and the axle having two annular ribs provided on an inner side of the axle bearing portion and two annular ribs provided to fit within the axle bearing portion for contacting the bottom and side surfaces but the specification and claims as originally filed require having a pair of axle bearing portions, wherein respective ones of each pair of ribs are situated with regard to respective ones of the pairs of the axle bearing portions not that both pairs are situated with regard to a single bearing portion as claimed and as such fails to provide the necessary support to show possession of the invention.
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 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 that the axle has a plurality of annular ribs corresponding to the axle bearing portion but then goes on to disclose a “first annular rib” provided at a center of the axle making it unclear how it pertains to the axle bearing portion. The claim also discloses “first two annular ribs” but a “first annular rib” was already disclosed making it unclear how the two different first ribs are intended to relate to one another. The first ribs are also disclosed as being on “an inner side of the axle bearing portion” which is incomplete since it is unknown how an “inner side” of the bearing portion is being interpreted especially since “second two annular ribs” are then disclosed as contacting the bottom and side surface of the axle bearing portion and as such it is unknown how the inner side and being positioned in the bearing portion are intended to be distinguished from one another. For the purposes of examination, the claim will be interpreted as the axle bearing portion formed in a rectangular shape having an outer facing lateral side and an inner facing lateral side when viewed perpendicular to an axial direction of the axle and an open side when viewed along the axial direction of the axle and the axle comprising a plurality of annular ribs wherein a first annular rib of the plurality of annular ribs is positioned at a center of the axle, a pair of second annular ribs of the plurality of ribs are positioned such that one of the pair of second annular ribs faces the inner facing lateral side of the axle bearing portion and a pair of third annular ribs of the plurality of ribs are positioned such that at least one of the pair of third annular ribs is positioned to fit within the axle bearing portion to contact the bottom and side surfaces of the axle bearing portion.
Claim Rejections - 35 USC § 103
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 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herdklotz (2775847) and Howe (3613291). Herdklotz discloses a traveling toy (column 1 line 14-17) having an axle (11) and an axle bearing portion (8) configured to receive the axle which is formed to have a rectangular shape with an outer lateral facing side and an inner lateral facing side when viewed perpendicular to an axial direction of the axle (Fig. 1) and an open side (10) defining a bottom surface with two side surfaces (9) extending perpendicularly therefrom when viewed along an axial direction of the axle (Fig. 2). Herdklotz discloses the basic inventive concept except for the configuration of the axle. Howe discloses an axle (10) with a groove (11) extending along the axial direction of the axle (Figs. 10 & 11) that can be configured to include a plurality of annular ribs (25) along the axial direction of the axle (Fig. 24) for aiding in the positioning and retaining of the axle (Fig.14, column 5 line 72 – column 6 line 11). It would have been obvious to one of ordinary skill in the art from the teaching of Howe to form the axle of Herdklotz with a groove and a plurality of annular ribs for the predictable result of increasing the functionality and utility of the axle by enhancing the positioning and retention of the axle with other components. Regarding the axle having a central rib and two pairs of additional ribs positioned for placement in and around the axle bearing portion, the examiner notes that such modifications would have involved a mere duplication and rearrangement of parts which have been held to be obvious absent persuasive evidence that the configuration is significant. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) and In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herdklotz and Howe as applied above and further in view of Girz (3005285). Herdklotz and Howe disclose the basic inventive concept, except for the side surfaces of the axle bearing portion including a cantilevered side plate extending therefrom. Girz discloses an axle bearing with an open side to define a bottom with two sides (Fig. 3) wherein the two sides have respective cantilevered side plates (10, 10’) extending therefrom. It would have been obvious to one of ordinary skill in the art to modify the side surfaces of Herdklotz to include cantilevered side plates for the predictable result of shaping the axle bearing portion in a known manner for retaining the axle in a secure manner.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 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.
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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.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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