Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: This claim recites "through interference-fitted cylindrical connection.” Which does not seem to be grammatically correct. In some instances, this should be “through an interference-fitted cylindrical connection,” and in other instances it should be “through interference-fitted cylindrical connections.” Appropriate correction is required.
Claims 3-19 are objected to because of the following informalities: These claims recite "The method of claim x” while the independent claim and the dependent "method" claims all refer to an apparatus. For the purposes of this action examiner assumes since an apparatus is claimed, the term "method" is simply a typo. Appropriate correction is required.
Claim 5 recites “as in the body,” but appears it should be “as the body,” or similar. Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities: The specification lacks reference numbers corresponding to elements of the claimed device.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, each claimed element must be shown / labeled with a corresponding reference number or the feature(s) canceled from the claim(s). No new matter should be entered. None of the claimed elements have a corresponding part number in the specification and drawings. Appropriate correction is required.
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.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,022,832, claims 1-8 of U.S. Patent No. 10,913,006, claims 1-13 of U.S. Patent No. 11,602,698, and claims 1-18 of U.S. Patent No. 12,134,044. Although the claims at issue are not identical, they are not patentably distinct from each other because these claims of the prior patents would read on / anticipate at least claims 1-3 of the present application. Further, claims of the prior patents generally directed to a hand holding a sports implement and having other accessories useable with the figure would make obvious claims 4-19, as these elements are simply design elements. See below for obviousness rational. Also see In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.
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 2-3 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.
It is exceedingly unclear what is attempting to be claimed in claim 2. Without part numbers in the drawings and specification, it is unclear which components of the arm are the “cylindrical region,” “lower arm region” “bore extending into the lower arm region” etc. The claim is also unclear on its face. For instance, it is unclear why there is a “bore extending into the lower arm region” and a “bore extending into the upper arm region.” It would seem only one of these has a bore and the other extends into the bore to make a connection. It is unclear how connecting parts of the forearm “creates the appearance of an elbow.” Applicant’s fig. 3 shows what appears to be a formed elbow, therefore, connecting the elements of the forearm do not make this elbow, it seems to exist in a middle element of the forearm. Reference to axes and what element is “parallel” to other elements is also unclear, as none of the three axes in fig. 3 are parallel. Appropriate correction is required.
Claim 3 recites “the torso component includes an angled position to the axis of rotation of the head.” It is unclear what this is intended to mean. Is the torso intended to have an angle? If so, which portion of the torso? Is this simply intended to recite that the head may rotate to various angles? Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1 and 3 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goldfarb et al. (US Patent No. 3,946,517) in view of Jheow (US Patent No. 6,692,332 B2).
In Reference to Claims 1 and 3
Goldfarb teaches (Claim 1) A toy sports figure comprising: a head component (item 46, fig. 1); a torso component connectable through [a] fitted cylindrical connection to the head component (item 10, connected to head via item 42, fig. 1); two upper arm components connectable through [a] fitted cylindrical connection to opposite sides of the torso component (items 122 / 122’, fig’s 1 and 7); two forearm components, each connectable through []fitted cylindrical connection to one of the upper arm components (items 132 / 132’, fig’s 1 and 7); two hand components, each connectable through [a] fitted cylindrical connection to one of the forearm components (items 144 / 144’, fig’s 1 and 7); a hip component connectable through [a] fitted cylindrical connection to the torso component opposite from the head component (items 88, fig’s 1, 6, and 10), two leg components, each connectable to the hip component such that one leg is connected as a right leg and one leg is connected as a left leg (items 90 / 90’, fig’s 1 and 6); and two foot components, each connectable to one of the leg components (items 108 / 108’, fig’s 1 and 6) and each foot component having at least one bore for connection to tabs on building blocks (fig. 6; note this is functional language, item 112 forms a cavity / bore which could be used for connection to a tab); wherein pivoting motion may occur at the head and torso, upper arm and torso, [] leg and hip;
(Claim 3) wherein the torso component includes an angled position to the axis of rotation of the head (unclear what is attempting to be claimed, however, parts of the torso are angled with respect to the head axis; i.e. top and bottom surfaces, and head is also positionable at different rotational angles; column 5 lines 5-16).
Goldfarb fails to teach the interference fit and additional pivoting joints of claim 1.
Jheow teaches (Claim 1) interference fitted connections (column 10 lines 34-52); and pivoting motion may occur at the forearm and upper arm (between items 400 and 300, fig. 1), hand and forearm (between items 500 and 400, fig. 1), and foot and leg connections (between items 900 and 800, fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the articulatable doll device of Goldfarb with the feature of interference connections and additional pivot connections as taught by the doll device of Jheow for the purpose of allowing the doll to be reliably positioned in a wider range of positions as taught by Jheow (Background and Summary, and column 10 lines 50-52), making the doll more versatile, more reliable, and more attractive to the users.
Claims 4-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goldfarb et al, in view of Jheow, and further in view of Isaacson et al. (US Patent No. 3,862,513).
In Reference to Claims 4-12
The modified device of Goldfarb teaches all of claims 1 and 3 as discussed above. Goldfarb fails to teach the features of claims 4-12.
Isaacson teaches (Claim 4) wherein each foot component is designed to appear as a [sports shoe] (fig’s 1a, 1c, 1d).
(Claim 5) wherein the torso component further comprises an upper chest component and a lower torso component shaped to appear as in the body of a cheerleader (e.g. fig’s 1c and 2; note this is extremely broad);
(Claim 6) further comprising a baseball bat accessory connectable to both hands such that the bat is held in a traditional batting grip with hands together (fig. 1a, item 164);
(Claim 7) further comprising a [ball] accessory connectable to [a] hand (fig. 1b, item 174);
(Claim 8) wherein the [ball] accessory is shaped like a [ball] with a [] handle cut into one side matching the shape of one of the hands for gripping (holes in ball 174, fig. 1b);
(Claim 9) further comprising a[n] accessory (items 164, 196, 212, 214, etc.);
(Claim 10) wherein the [] accessory has a cylindrical handle cut into a connection end, the cutout matching the shape of one of the hands for gripping (handles of items 164, 196, 212).
(Claim 11) further comprising a [ball] accessory (fig. 1b, item 174);
(Claim 12) wherein the [ball] accessory is shaped like a [ball] with a [] handle cut into one side matching the shape of one of the hands for gripping (holes in ball 174, fig. 1b);
Other components of Isaacson teach the handle being (claims 8 and 12) cylindrical (items 164, 196, 212).
It would have been obvious to one having ordinary skill in the art to have provided the articulating toy doll of Goldfarb with the feature of the sport accessories with handles connectable to the doll as taught by Isaacson for the purpose of allowing the doll to realistically perform and represent many human sport functions as taught by Isaacson (column 1 lines 18-23), making the doll more versatile, increasing the play value of the doll, making the doll more interesting and attractive to the users.
It would have further been obvious to one having ordinary skill in the art to have made the doll accessories appear to be hockey skates, a baseball, a football, a glove or other sport items simply as a matter of design choice, since Isaacson teaches allowing the doll to be used for multiple different sports, and since it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Since all the mechanical items claimed are taught (i.e. sports shoes, hands which grip, accessories / balls to be gripped), simply claiming specific types of sport items which do not have any mechanical function is a matter of ornamentation, and, is not a patentable distinction.
Claims 13, 16, 17, and 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goldfarb et al, in view of Jheow, and further in view of Bettendorf et al. (US Patent No. 6,663,462).
In Reference to Claim 13
The modified device of Goldfarb teaches all of claim 1 as discussed above.
Goldfarb fails to teach the feature of claim 13.
Bettendorf teaches (Claim 13) wherein each upper arm component includes an integrated shoulder pad (item 34, fig. 1; column 2 lines 17-22).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the doll device of Goldfarb with the feature of shoulder pad components as taught by the doll device of Bettendorf for the purpose of allowing the doll to further simulate a more particular sports player as taught by Bettendorf (column 2 lines 17-22), making the doll more versatile, more customizable, and more attractive to the users.
It would have further been obvious to one having ordinary skill in the art to have made the doll accessories appear to be shoulder pads or other sport items simply as a matter of design choice, since it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Simply claiming specific types of sport items which do not have any mechanical function is a matter of ornamentation, and, is not a patentable distinction.
In Reference to Claims 16, 17, and 19
The modified device of Goldfarb teaches all of claim 1 as discussed above.
Goldfarb fails to teach the features of claims 16, 17, and 19.
Bettendorf teaches (Claim 16) components are marked as part of a serialized set (column 3 lines 47-53);
(Claim 17) each serialized set corresponds to a specific individual sports figure (column 3 lines 47-53);
(Claim 19) including lettering (column 3 lines 47-53).
It would have been obvious to one having ordinary skill in the art to have provided the doll of Jheow with the feature of specific sports indicia as taught by the doll of Bettendorf for the purpose of creating a more customizable device, making the device more attractive to the users.
Further, examiner notes that it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. In re Gulack 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of doll does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. serial number / sports lettering indicia and the substrate e.g. the doll / plate, which is required for patentability.
Claims 14-15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goldfarb in view of Jheow, and further in view of Kobayashi (US Patent No. 3,785,648).
In Reference to Claims 14-15
The modified device of Goldfarb teaches all of claim 1 as discussed above.
Goldfarb fails to teach the features of claims 14 and 15.
Kobayashi teaches (claim 14) a magnetic component insertable into a bore of a foot component (item 34, fig. 5);
wherein the magnetic component includes a cavity for easy removal from the foot component (item 35, fig. 5).
It would have been obvious to one having ordinary skill in the art to have provided the articulating toy figure of Goldfarb with the feature of a magnet as taught by the articulating toy figure of Kobayashi for the purpose of affecting the control and movement of the figure as taught by Kobayashi (background), allowing for more versatile play with the toy figure, making the device more interesting and attractive to the users.
Claim 18 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goldfarb et al, in view of Jheow, Bettendorf et al., and further in view of Hesse (US Patent No. 5,628,669).
In Reference to Claim 18
The modified device of Goldfarb teaches all of claims 1, 16, and 17 as discussed above.
Goldfarb fails to teach the feature of claim 18.
Hesse teaches (Claim 18) further comprising a display plate connectable to [] foot components (column 8 lines 19-25).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy figure device of Goldfarb with the feature of a display plate connectable to a foot as taught by the toy figure device of Hesse for the purpose of allowing the user to secure the figure in a particular location as taught by Hesse (column 8 lines 19-25), increasing the play value and versatility of the toy doll, making the doll more interesting and attractive to the users.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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