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 .
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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 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.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-20 of U.S. Patent No. 12,134,045. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims disclose a toy figure including a base, one or more bodies extending from the base, and a plurality of articulated segments configured to rotate relative to the base to transition between first and second configurations, wherein the articulated segments and the base cooperatively form an enclosure that encloses a body in one configuration and exposes the body in the other configuration. The patented claims further disclose progressively more specific articulated segment coupling arrangements, multiple bodies extending from opposite sides of the base, additional articulated segments, opposite-direction extension of segments, and corresponding enclosure relationships. The differences between the pending claims and the patented claims merely constitute obvious variations of the same inventive concept and would have been obvious to one or ordinary skill in the art. The pending claims are not patentably distinct from the patented claims.
Regarding claims 21-22 , are rejected over claim 1 of patent (‘045), that teaches a base, a body, a plurality of segments as recited. The additional recitation of particular segment relationships merely constitutes an obvious implementation of the articulated segment arrangement.
Regarding claims 23-24, they are rejected over (‘045) claims 1, 3 and 11. The pending limitations merely define obvious refinements of the enclosure configuration already claimed.
Regarding claims 25 and 28 are rejected overclaims 5, 14 and 15 of patent (‘045). The additional coupling relationships recited in the pending claims represent obvious variations of the patented articulated linkage.
Regarding claims 26-27 are rejected over claims 10,12 and 16 of patent (‘045). Patent claim 16 teaches first and second bodies extending from opposite surfaces of the base, while patent claims 10 and 12 teach additional body arrangements. The pending claims merely recite obvious variations of the same multiple body toy figure architecture.
Regarding claims 29-33 are rejected over claims 9 and 18-20 of patent (‘045). The additional segment arrangements recited in the pending claims constitute obvious modifications of the patented articulated structure.
Regarding claims 34-35 are rejected over claims 18-20 of patent (‘045). The claimed transverse orientation of the additional segment merely defines an obvious positional relationship of the articulated segment during transformation.
Regarding claims 36-40 are rejected over claims 16 and further in view of claims 18-20 of patent (‘045). Patent claim 16 teaches a toy figure including a base, first and second bodies extending from opposite surfaces of the base, and articulated segments configured to alternatively enclose the respective bodies during transformation between first and second configurations. Patent claims 18-20 further teach additional articulated segments and coupling relationships. The pending claims merely define obvious refinements of the patented multiple-body articulated toy figure and therefore are not patentably distinct.
All in all, the pending claims largely add incremental structural details to the same overall invention and do not appear to define a patentably distinct inventive concept.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21-40 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (US Patent No. 10,987,604).
Regarding claim 21, Yamada teaches a toy figure comprising a base (9, see Figure 1; a body (8) extending from the base; and a plurality of segments (4,5,6,7,13 and 14). A subset of the plurality of segments is configured to rotate relative to the base to transition the toy figure between a first configuration (Figure 4) and a second configuration (Figure 7). In the first configuration, the plurality of segments cooperatively encloses the body, while in the second configuration the body is exposed. The subset includes articulated segments coupled together by pivot connections that define an internal volume in the first configuration and face away from the internal volume in the second configuration. To the extent that Yamada does not expressly disclose the claimed arrangement using identical terminology, it would have been obvious to one of ordinary skill in the art to configure the articulated segments and support structure to perform the claimed transformation because such modification merely represents the predictable use of known articulated components according to their established functions to obtain the expected result of selectively enclosing and exposing the toy body while increasing transformation options and play value, without changing the principle of operation of Yamada’s toy.
Regarding claims 22-25, Yamada teaches or at lest suggests that the articulated segment extends from the base in different directions between the first and second configurations (see Figures 4 and 7), that the enclosure encloses the body in the first configuration and exposes the body in the second configuration, that the enclosure defines an internal volume with a segment surface facing the internal volume in the first configuration and facing away in the second configuration, and that adjacent segments remain coupled throughout transformation. It would have been obvious to optimize the orientation and coupling relationships of the articulated segments because these represent routine design choices that merely rearrange known articulated members to achieve predictable transformation configurations without altering the operation of the toy.
Regarding claims 26-33, Yamada teaches a transformable toy having a central support structure, multiple articulated segments, and body portions that are selectively enclosed and exposed during transformation (see all Figures). It would have been obvious to provide an additional body extending from the support structure, arrange body portions on opposite sides of the support structure, and provide additional articulated segments extending in opposite directions because duplication or rearranging known structural components to provide additional transformation states and increased play value is nothing more than the predictable use of prior art elements according to their established functions.
Regarding claims 34-35, Yamada teaches articulated segments connected by turning axes that rotate relative to one another during transformation. It would have been obvious to include an additional segment coupled to an adjacent segment and configured to rotate relative thereto, including extending transversely during transformation, because adding another articulated member to an existing linkage is merely the predictable expansion of Yamada’s articulated mechanism to provide additional transformation movement and enclosure while performing the same known function.
Regarding claims 36-40, Yamada teaches a transformable toy having a support structure, multiple body portions, and articulated segments that selectively enclose and expose portions of the toy during transformation (see all Figures). It would have been obvious to configure first and second body portions extending from opposite sides of the support structure and to arrange the articulated segments to selectively enclose one body portion in one configuration and the other body portion in another configuration because this merely represents a predictable variation of Yamada’s transformation mechanism that increases the number of transformation mechanism that increases the number of transformation configurations without changing the fundamental operation of the device.
Conclusion
The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a). Proper use of this procedure will result in such communication being considered as timely if the established date is within the required period for reply. The Certificate should be signed by the individual actually depositing or transmitting the correspondence or by an individual who, upon information and belief, expects the correspondence to be mailed or transmitted in the normal course of business by another no later than the date indicated.
Certificate of Mailing
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
on __________.
(Date)
Typed or printed name of person signing this certificate:
________________________________________________________
Signature: ______________________________________
Certificate of Transmission by Facsimile
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (___)_____ -_________ on _____________. (Date)
Typed or printed name of person signing this certificate:
_________________________________________
Signature: ________________________________________
Certificate of Transmission via USPTO Patent Electronic Filing System
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office (USPTO) patent electronic filing system to the USPTO
on _____________.
(Date)
Typed or printed name of person signing this certificate:
_________________________________________
Signature: ________________________________________
Please refer to 37 CFR 1.6(a)(4), 1.6(d) and 1.8(a)(2) for filing limitations concerning transmissions via the USPTO patent electronic filing system, facsimile transmissions and mailing, respectively.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 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, Nicholas J. Weiss can be reached at (571) 207-1775. 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.
/NINI F LEGESSE/Primary Examiner, Art Unit 3711
Prosecution Insights