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 .
Drawings
The drawings are objected to because they have a line and shading quality that is too dark distinguish between different features and too dark to be reproduced. Refer to 37 CFR 1.84(I). See Figures 1-3. 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
Claims 9, 16, and 20 are objected to because of the following informalities:
Regarding claim 9, line 2, “tubular element” should be changed to a tubular element.
Regarding clam 16, line 2, “tubular element” should be changed to a tubular element.
Regarding claim 20, lines 6-7, “spherical body” should be changed to spherical bodies.
Regarding claim 20, line 7, the redundant “such that” should be deleted.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means,” such that they are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Such claim limitation(s) is/are: coupling means of a/the first type in claims 2-3 and 6, and coupling means of a/the second type in claims 2-3 and 6. Claims 4 and 7 recite sufficient structure for the coupling means of the first type and the coupling means of the second type such that the terms are not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 6-7 and 9 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 6 recites the limitation "coupling means of the first type" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is suggested to change this limitation to coupling means of a first type to remedy this rejection.
Claim 6 recites the limitation "coupling means of the second type" in line 4-5. There is insufficient antecedent basis for this limitation in the claim. It is suggested to change this limitation to coupling means of a second type to remedy this rejection.
Claim 9 recites the limitation "the spacer element" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to change the claim’s dependency from claim 6 to claim 8 to remedy this rejection.
Claim Rejections - 35 USC § 102
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.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mak (US 2019/0015757 A1).
Regarding claim 20, Mak discloses a modular toy (Figure 4) comprising: a cart [10] (see Figures 4-5; wherein metal spheres [140, 150, 160] protrude from main body [100] such that the device is capable of rolling as a “cart”) having: a cart body [120, 130] configured for receiving a toy figurine (e.g., see top spinning toy [10] in Figure 4 situated on cart body [120, 130] of the spinning toy [10] below it)), the cart body [120, 130] extending along a cart body plane; and three sphere connectors (paragraph 0033: “three blade parts of the main body 100”) extending radially from the cart body [120, 130], each sphere connector (paragraph 0033: “three blade parts of the main body 100”) configured for releasably attaching (paragraph 0034: “after the assembling piece 101 is separated from the main body of the ty 10, the weight module may be replaced”) a rotatable spherical body [140, 150, 160], the spherical body [140, 150, 160] arranged in the sphere connectors (paragraph 0033: “three blade parts of the main body 100”) such that such that a center of the spherical bodies [140, 150, 160] are aligned in the cart body plane (paragraphs 0030-0038 and Figures 1-5).
Allowable Subject Matter
Claims 1-5, 8, and 10-19 are allowed.
Claims 6-7 and 9 would be allowable if rewritten or amended, as suggested by the examiner in paragraphs 9-11 above, to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 1, the combination including the toy figurine being non-rotationally attached to the cart body in the invention as claimed is neither disclosed nor rendered obvious by the prior art. Regarding claim 13, the combination including the toy figurine not being able to rotate when attached in the invention as claimed is neither disclosed nor rendered obvious by the prior art. The closest prior art is Mak as outlined in paragraph 20 above. Mak discloses one spinning toy [10] being stacked on top of another (paragraph 0036 and Figures 4-5). However, the top spinning toy is able to rotate via bearing [110] when the two spinning toys [10] are attached (paragraphs 0031, 0038, and Figure 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Winnemore (US 2,049,097), Legrand (US 2009/0152858 A1), Zhang (US 2018/0015950 A1), Zbikowski et al. (US 3,750,329), and Wang (CN 115957522 B) which all disclose similar toys with spherical rollers/wheels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
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.
/AUDREY B. WALTER/Primary Examiner, Art Unit 3711
Prosecution Insights