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 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.
Claim 10 is 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.
Regarding claim 10 lines 5, there is a lack of antecedent basis for “the second portions”. Note only a singular “second portion” was recited previously in claim 7.
Re-claim 10 line 6, there is a lack of antecedent basis for “the first portions”. Note only a singular “first portion” was recited previously in claim 7.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2021-153612A to Bandai Co LTD (as cited by applicant) herein referred as “Bandai”.
Regarding claim 1 Bandai discloses: a toy (1A(1)) transformable into a first form (see at least Figs 1-5) and a doll-shaped second form (see at least figs 6-8) , the toy comprising: first parts constituting upper limbs (21, 22) or lower limbs (23, 24) in the second form; and a second part constituting a body (10) in the second form, wherein the first parts each include a first sub-part (21U or 22U as shown in Fig 7) that is supported rotatably on the second part (see Fig 9 and note ball joint connector 15), and a second sub-part (21Z or 22Z) that is supported rotatably on the first sub-part (as seen in Fig 8 note the intermediate swivel connection between members 21U,22U and 21Z, 22Z), and the first sub-part and the second sub-part constitute a part of an outer shell of the toy in the first form (see Fig 3).
Re-claim 2 Bandai discloses: the toy according to claim 1, wherein the part of the outer shell formed by the first sub-part and the second sub-part forms a surface continuous with an outer surface of the second part in the first form (as seen from Fig 3 in the first form the first and second subparts 21, 22 forms the continuous surface with the second part 10).
Re-claim 3 Bandai discloses: the toy according to claim 1, wherein the first form is an egg shape (as shown in Figs 1-4 the first form is an “egg shape”).
Re-claim 4 Bandai discloses: the toy according to claim 3, wherein in the first form, the first sub-part (21U or 22U) and the second sub-part (21Z or 22Z) constitute outer shells at both ends in a long axis direction of the egg shape (as seen in Fig 3).
Re-claim 5 Bandai discloses: the toy according to claim 4, wherein in a state where an end portion of the first sub-part on a second part side and an end portion of the second sub-part on a side opposite to a first sub-part side are brought close to each other, the first sub-part and the second sub-part form a continuous surface (note as shown in Figs 7 (open or second form) the first and second subparts (21U,22U) and (21Z, 22Z) are “brought together” to foldably collapse the figure into the shape of an egg/first form as seen in Fig 3 (closed or first form) .
Re-claim 6 Bandai discloses: the toy according to claim 5, wherein the continuous surface includes a flat surface (see at least one of the flat surfaces as shown in Fig 1 at element number 22(20)).
Re-claim 7 Bandai discloses: the toy according to claim 1, wherein each of the first sub-part (21U, 22U) and the second sub-part (21Z, 22Z) includes a first portion constituting the outer shell (as clearly shown in Fig 3) in the first form and a second portion provided on an inner side of the first portion (note as shown in Fig 7 those portions that are on the “inner sides” opposite the outer shells).
Re-claim 8 Bandai discloses: the toy according to claim 7, wherein a connecting portion between the first portion and the second portion is provided in an area extending along a longitudinal direction of the second portion (note due to the breadth of this claim limitation as shown in Fig 7, note the outer shells of members (21, 22) have an integral “connection portion” with the interior portion (see detail of Fig 11 and shows inner pieces such as element 16, 13, 20(15) attached to the outer shells)).
Re-claim 9 Bandai discloses: the toy according to claim 7, wherein in the second form, the first portion constitutes a shield member of the doll-shaped toy (as shown in Fig 3).
Re-claim 10 Bandai discloses: the toy according to claim 7, wherein in a state where an end portion of the first sub-part on a second part side and an end portion of the second sub-part on a side opposite to a first sub-part side are brought close to each other, the first sub-part and the second sub-part form a continuous surface, and the second portions of the first sub-part and the second sub-part are accommodated in a space inside the first portions in a state where the first sub-part and the second sub-part form the continuous surface (note as shown in Figs 7 (open or second form) the first and second subparts (21U,22U) and (21Z, 22Z) are “brought together” to foldably collapse the figure into the shape of an egg/first form as seen in Fig 3 (closed or first form) .
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.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021-153612A to Bandai CO LTD (as cited by applicant) herein referred to as Bandai in view of JP 2000-185180A to Arai (as cited by applicant).
Regarding claims 11 and 12, Bandai fails to specifically disclose the first portion is formed by a member having a hardness lower than that of at least a part of the second portion and wherein a connecting portion between each of the first parts and the second part and a connecting portion between the first sub-part and the second sub-part each include resin members having different hardness.
Arai discloses a posable figurine that can be constructed of soft and hard material resins in order to shape and protect certain areas of the doll (see paragraph [0002-0004].
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have utilized the known teachings of Arai of having various soft and hard resins in the construction the various first and second portions or first and second sub part connecting portions into the device of Bandai dependent upon the desired protection and moldability of the particular parts of the play toy.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN 213965139U to Cai et al discloses an egg-shaped deformable toy that opens into a doll form.
CN 110102065A to Lin discloses a deformable toy having various arms and legs that fold into an egg-shaped form.
CN 206424554U to Xie discloses a wing-shaped deformable toy having an egg-shaped form.
WO 2013035486A1 to Fukuchi discloses a humanoid toy with a ball and second joints for the limbs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER M POON whose telephone number is (571)272-6891. The examiner can normally be reached on Mon-Thurs from 8am to 2pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Thomas, can be reached at telephone number 571-272-8004. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PETER M POON/Supervisory Patent Examiner, Art Unit 3643
Prosecution Insights