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 .
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.
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Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,269,291 (hereinafter ‘291). Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to claim 1, patent ‘291 (claim 1) recites a spin art stamp creating device, comprising:
a tray, having a raised shelf therein, the raised shelf including a first hole (lines 2-3);
a spinner platform configured to be received within the tray (lines 4-5), wherein the spinner platform includes an opening (line 6); and
a ball bearing seated within the opening of the spinner platform (lines 7-8), the ball bearing defining a second hole which overlies and aligns with the first hole of the tray (lines 9-10).
With respect to claim 2, patent ‘291 (claim 2) recites the spin art stamp creating device of claim 1, wherein the tray has a circular configuration defined by a bottom wall and a side wall extending around the bottom wall.
With respect to claim 3, patent ‘291 (claim 3) recites the spin art stamp creating device of claim 2, wherein the bottom wall of the tray is convex.
With respect to claim 4, patent ‘291 (claim 6) recites the spin art stamp creating device of claim 1, wherein the raised shelf and the first hole are each centrally located within the tray.
With respect to claim 5, patent ‘291 (claim 7) recites the spin art stamp creating device of claim 1, wherein the opening is centrally located on the spinner platform.
With respect to claim 6, patent ‘291 (claim 8) recites the spin art stamp creating device of claim 1, wherein the ball bearing is secured into the spinner platform by press-fit.
With respect to claim 7, patent ‘291 (claim 1) recites The spin art stamp creating device of claim 1, further comprising: a stamper, having a post configured to be received by both the first hole of the tray and the second hole of the ball bearing, such that the stamper and the spinner platform are configured to simultaneously rotate within the tray about the ball bearing of the spinner platform (lines 11-15).
With respect to claim 8, patent ‘291 (claim 4) recites the spin art stamp creating device of claim 7, wherein the stamper further comprises a stamp platform.
With respect to claim 9, patent ‘291 (claim 10) recites a spin art stamp creating device, comprising:
a tray including a first hole (claim 9, line 2), wherein the tray has a bottom wall and a side wall extending around the bottom wall (it is inherent that a “tray” has a bottom wall and a side wall as claimed);
a spinner platform rotatably supported within the tray (claim 10, lines 1-3), wherein the spinner platform includes an opening (claim 10, line 4); and
a ball bearing supported within the opening of the spinner platform, wherein the ball bearing defines a second hole which overlies and aligns with the first hole of the tray (claim 9, lines 7-9).
With respect to claim 10, patent ‘291 (claim 11) recites the spin art stamp creating device of claim 9, wherein the opening is centrally located on the spinner platform.
With respect to claim 11, patent ‘291 (claim 12) recites the spin art stamp creating device of claim 10, wherein the ball bearing is secured into the spinner platform by press-fit.
With respect to claim 12, patent ‘291 (claim 9, see rejection of claim 9 above) recites the spin art stamp creating device of claim 11, wherein the tray has a circular configuration defined by the bottom wall and the side wall extending around the bottom wall.
With respect to claim 13, patent ‘291 (claim 14) recites the spin art stamp creating device of claim 12, wherein the bottom wall of the tray is convex.
With respect to claim 14, patent ‘291 (claim 9) recites the spin art stamp creating device of claim 9, further comprising a stamper having a post configured to be received by the first hole of the tray such that the stamper is configured to rotate within the tray about a central axis of the post of the stamper (lines 3-6).
With respect to claim 15, patent ‘291 recites the spin art stamp creating device of claim 14, wherein the post of the stamper is configured to be received by both the first hole of the tray and the second hole of the ball bearing (claim 9, lines 10-13), such that the stamper is configured to simultaneously rotate within the tray about the ball bearing of the spinner platform (claim 10, lines 7-9).
Allowable Subject Matter
Claims 16-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior arts fail to anticipate and/or suggest the combination of the claimed invention.
Specifically, the prior arts fail to teach, inter alia, the limitations of claims 16-20.
The closest prior art, MacFadyen (US Publication 2012/0058269), teaches a spin art stamp (FIG. 1) including a tray (including 100), a spinner (210), and stamper (220). However, the spinner and stamper of MacFadyen are connected and powered by a motor (140; [0080]). Thus, the mechanism and connection of the spinner and stamper for spinning is different from those of the instant invention. The invention of MacFadyen does not need the ball bearing as required by the claims and to modify MacFadyen would be detrimental to the motorized spinning art device as originally intended.
Another close prior art, Rudell et al. (US Publication 2011/0195382), teaches the spin art device similar to the instant invention. Rudell teaches a tray (a part of 16), a spinner (42), and stamper (34, 36; FIG. 4; [0021]). Rudell further teaches the mechanism to spin the spinner is a motor (20; FIG. 1) and/or mechanical gear linkages (32; FIG. 2). Thus, the mechanism and connection of the spinner and stamper for spinning is different from those of the instant invention. The invention of Rudell does not need the ball bearing as required by the claims nor is it obvious to modify the spin art device of Rudell to have ball bearings as such modification would be extensive to achieve the same functionality as originally intended.
Another similar prior art, MacCarthy (US Patent 5,134,778), teaches a design making instrument to make art with on a spinning surface. MacCarthy teaches a spinner (2) connected to a ball bearing (33; FIG. 10), which in turn connected to a base (6) of a tray (5; FIG. 1; col. 8, lines 60-64). However, MacCarthy is not specific on how the spinner is attached to the ball bearing for spinning the spinner. Thus, MacCarthy is silent regarding “the spinner platform is configured to receive a ball bearing, and the ball bearing defines a second hole which overlies and aligns with the first hole of the tray; and a stamper, having a post configured to be received by both the first hole of the tray and the second hole of the ball bearing, such that the stamper and the spinner platform are configured to simultaneously rotate within the tray about the ball bearing of the spinner platform” as required by the claim(s).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUANG X.L NGUYEN whose telephone number is (571)272-1585. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/QXN/Examiner, Art Unit 2853
/STEPHEN D MEIER/Supervisory Patent Examiner, Art Unit 2853
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