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 39, 41 and 51-57 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 specification and figures as originally filed while separately disclosing three different embodiments for a display support, the box with opening configuration does not include magnets as required by the claims as now presented and vague disclosures as on page 19 that the elements 10 and 12 of the application can have features combined does not provide adequate disclose for combining features of the display supports nor does it make clear to one of ordinary skill in the art what features and how they could be combined to show that applicant possessed a particular combination of elements.
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) 38-39, 41, 44-45, 48-50, 52 and 55-56 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano (GB2107200A), McKenna (4722712) and Philipp (1535035). Asano discloses a puzzle toy (abstract) having six first toy members formed as polyhedrons such as tetrahedrons with first, second, third and fourth faces and six edges (Fig. 8, upper members) and six second toy members formed as polyhedrons such as tetrahedrons substantially identical with the first toy members with first, second, third and fourth faces and six edges (Fig. 8, lower members), wherein each first toy member is movably coupled to another first toy member by a first hinged connection at respective first edges thereof (15), each second toy member is movably coupled to another second toy member by a second hinged connection at respective second edges thereof (15) and each first toy member is movably coupled to one of the second toy members by a third hinged connection (15) at respective second and first edges of the respective first and second members to connect the twelve toy members into a continuous loop (Fig. 9) such that each member has two edges each connected to an edge of another so as to be movable about the hinged connections to form a first cubic parallelepiped configuration (Fig. 1), a second configuration where each tetrahedral body contacts only one other tetrahedral body (Fig. 11), a third configuration (Fig. 12), a fourth configuration (Fig. 13), a fifth configuration (Fig. 14), a sixth configuration (Fig. 15) and a seventh configuration (Fig. 16). The flexible hinges are formed from a flexible adhesive (page 2 lines 77-82). Asano discloses the basic inventive concept, with the exception of each of the toy members having three or more magnets coupled to the tetrahedral bodies for stabilizing the puzzle in each of the seven configurations and further including a display support. McKenna discloses a puzzle toy having a plurality of polyhedral bodies with faces hinged together at edges thereof for placement in over seven different stable configurations (Figs. 4-16), wherein bodies hingedly connected to two different bodies can be configured with magnets (166) positioned and configured relative to different faces adjacent to each of the respective hinges and as such be provided with four magnets that enable the configurations to be stable since both faces adjacent each respective hinge are configured with the magnets such that the magnets only magnetically attract when the faces abut one another (Fig. 3 & 3a, column 3 line 49- column 4 line 32). It would have been obvious to one of ordinary skill in the art from the teaching of McKenna to include at least three magnets to each of the toy members of Asano for the predictable result of configuring the puzzle to be maintained in desired configurations until acted upon by a user thereby providing stable constructions with enhanced utility and functionality. The combination creates a stabilized first cubic configuration in which some faces and their respective magnets of the hingedly connected first and second toy members are in contact and magnetically coupled together while the faces are in abutment and a second configuration in which each of the bodies is only magnetically coupled to one other body due to only one face of each body being in abutment. Philipp discloses a display support for toy elements in the form of a display support box that can be affixed to a surface and further having an opening for receiving toy elements configured to include at least one magnet for storing and displaying the toy elements (Figs. 2 & 13). It would have been obvious to one of ordinary skill in the art from the teaching of Philipp to include a display support with the puzzle toy of Asano and McKenna for the predictable result of providing enhanced utility by providing a means to provide both storage and display of the puzzle toy in an interesting manner.
Claims 40, 46-47, 51 and 53-54 are rejected under 35 U.S.C. 103 as being unpatentable over Asano, McKenna and Philipp as applied above. Asano, McKenna and Philipp disclose the basic inventive concept with the exception of the six edges being configured such that first and second edges each have a length of one unit, a third edge has a length of √2 units and fourth, fifth and sixth edges all have a length of √3/2 units. It would have been obvious to one of ordinary skill in the art to configure the tetrahedron members of the references with the above dimensions since changes in size and shape have been held to be an obvious matter of design choice, absent persuasive evidence that a claimed configuration is significant. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 38, 43, 52 and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano, Schaedel (6264199) and Philipp. Asano discloses a puzzle toy (abstract) having twelve polyhedral bodies with four faces and six edges (Figs. 2 & 8), wherein each body is movably coupled to two other bodies along two edges of the six edges by hinges (15) such that each member has two hinged edges each connected to an edge of another body and a non-hinged face that is not bound by either of the hinged edges (Figs. 7-8) such that the bodies are movable about the hinges to form a first cubic parallelepiped configuration (Fig. 1), a second configuration where each tetrahedral body contacts only one other tetrahedral body (Fig. 11), a third configuration (Fig. 12), a fourth configuration (Fig. 13), a fifth configuration (Fig. 14), a sixth configuration (Fig. 15) and a seventh configuration (Fig. 16). Asano discloses the basic inventive concept, with the exception of each of the toy members having one or more magnets for stabilizing the puzzle in each of the different configurations by having one magnet disposed adjacent to the different faces of the four faces. Schaedel discloses a magnetic puzzle having a plurality of hinged together tetrahedron shaped members with four magnets positioned to place one magnet on each face which would include an un-hinged face with a polarity to allow contacted faces to be magnetically coupled and provide magnetic stabilization to configurations formed by the puzzle members (abstract, Figs. 20-21, column 10 lines 9-33). It would have been obvious to one of ordinary skill in the art from the teaching of Schaedel to include a magnet adjacent to each face of the tetrahedron shaped bodies of Asano for the predictable result of configuring the puzzle to be maintained in desired configurations until acted upon by a user thereby providing stable constructions with enhanced utility and functionality. Asano and Schaedel disclose the basic inventive concept, with the exception of including a magnetic display support. Philipp discloses a display support for toy elements in the form of a display support box having at least one magnet for magnetically interacting with the toy elements (Figs. 2 & 13). It would have been obvious to one of ordinary skill in the art from the teaching of Philipp to include a display support with the puzzle toy of Asano and Schaedel for the predictable result of providing enhanced utility by providing a means to display the puzzle toy in an interesting manner.
Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano, Schaedel and Philipp as applied above and further in view of McKenna. The references disclose the basic inventive concept, with the exception of each body consisting of three magnets. McKenna discloses a puzzle toy having a plurality of polyhedral bodies with faces hinged together at edges thereof for placement in over seven different stable configurations (Figs. 4-16), wherein each of the bodies include magnets (166) positioned and configured relative to different faces of the bodies, such that the bodies have fewer magnets than sides to form a non-magnetized face that still enables the formation of stable configurations (Fig. 3 & 3a, column 3 line 49- column 4 line 32). It would have been obvious to one of ordinary skill in the art from the teaching of McKenna to configure the bodies of Asano and Schaedel to consist of only three magnets to provide a non-magnetized face for the predictable result of configuring the puzzle to be maintained in desired configurations until acted upon by a user thereby providing stable constructions with enhanced utility and functionality and since eliminating an element when its function is not required has been held to be an obvious modification. See In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965).
Response to Arguments
Applicant's arguments filed 8/24/26 have been fully considered but they are not persuasive.
In regard to Applicants argument that Fig. 1A and pages 7, 8 and 19 provide support for the display support as claimed, the examiner again notes that the specification and figures as originally filed while separately disclosing three different embodiments for a display support and a vague disclosure on page 19 that the elements 10 and 12 of the application can have features combined does not provide adequate disclose for combining features of the display supports nor does it make clear to one of ordinary skill in the art what features and how they could be combined to show that applicant possessed a particular combination of elements.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the magnets on three different faces enable magnetic connection to non-adjoining members) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). McKenna clearly teaches elements with four magnets on four faces as such meeting the limitations of the claim as presented.
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.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
