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
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because certain of the drawings of record – in particular, Figures 2-6, 10-13 and 18 - do not have the requisite line quality. Under 37 CFR 1.84(b)(1), black and white photographs (and photocopies thereof) are generally not permitted in patent applications. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 13 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 12 of prior U.S. Patent No. 12,201,915. This is a statutory double patenting rejection.
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 1-12 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,201,915. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter is recited or suggested in the claims of the ‘915 patent, as follows:
Claim 1
Claim 1 of ‘915 patent
A toy figure, comprising:
A toy figure, comprising:
a first body component defining a first hole;
a first body component defining a first cavity and a first hole;
a second body component defining a second hole;
a second body component defining a second cavity and a second hole;
and a connector that couples the first body component to the second body component, the connector including:
and a connector that couples the first body component to the second body component, the connector including:
a first connector portion insertable into the first hole, the first connector portion including a first side portion and a second side portion that is movable toward the first side portion as the first connector portion is being inserted into the first hole and away from each other after the first connector portion passes through the first hole;
a first connector portion engageable with the first body component and insertable into the first hole and first cavity, the first connector portion defining a first opening therethrough, the first connector portion including a first side portion and a second side portion, the first side portion and the second side portion moving toward each other as the first connector portion is being inserted into the first hole and away from each other after the first connector portion has been inserted into the first cavity;
a second connector portion insertable into the second hole; and
a second connector portion engageable with the second body component and insertable into the second hole and second cavity, the second connector portion defining a second opening therethrough; and
an intermediate connector portion located between and coupled to the first connector portion and the second connector portion, the intermediate connector portion including a first middle portion and a second middle portion that define a channel therebetween, wherein the first middle portion and the second middle portion are movable toward and away from each other.
an intermediate connector portion located between and coupled to the first connector portion and the second connector portion, the intermediate connector portion including a first middle portion and a second middle portion that define a channel therebetween, the channel being in communication with the first opening and the second opening, wherein the first middle portion and the second middle portion are movable toward and away from each other.
The limitations of claim 2 are recited in claim 2 of the ‘915 patent.
The limitations of claim 3 are recited in claims 3 & 4 of the ‘915 patent.
The limitations of claim 4 are recited in claim 5 of the ‘915 patent.
The limitations of claim 5 are recited in claims 6 & 7 of the ‘915 patent.
The limitations of claim 6 are recited in claims 8 & 9 of the ‘915 patent.
The limitations of claim 7 are recited in claim 10 of the ‘915 patent.
The limitations of claim 8 are recited in claim 11 of the ‘915 patent.
The limitations of claims 9-11 are recited in claim 1 of the ‘915 patent.
The limitations of claim 12 are recited in claim 12 of the ‘915 patent.
The limitations of claim 14 are recited in claim 13 of the ‘915 patent.
The limitations of claim 15 are recited in claim 14 of the ‘915 patent.
The limitations of claim 16 are recited in claim 16 of the ‘915 patent.
The limitations of claim 17 are recited in claim 17 of the ‘915 patent.
The limitations of claim 18 are recited in claim 18 of the ‘915 patent.
The limitations of claim 19 are recited in claim 19 of the ‘915 patent.
The limitations of claim 20 are recited in claim 1 of the ‘915 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KURT FERNSTROM whose telephone number is (571)272-4422. The examiner can normally be reached M-F 10-6.
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, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KURT FERNSTROM/Primary Examiner, Art Unit 3715
August 21, 2026
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