DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 2/2/26. Claims 12-14 are cancelled; claims 1-3, 6-7 and 15-20 are amended; claims 1-11 and 15-20 are pending.
Claim Objections
2. Claim 17 is objected to because of the following informalities: “wherein side of the flexible shell” should be amended to “wherein a side of the flexible shell”.
Drawings
3. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the elastic arm that “extends from an edge of the opening to a center of the opening” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
4. 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 1-11 and 15-20 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 limitations of independent claim 1 not supported by the specification as originally filed are as follows:
“a flexible cover, an outer contour of the flexible cover is greater than an contour of the opening, the outer contour of the flexible cover is defined by a perimeter of the flexible cover, and the contour of the opening is defined by a perimeter of the opening;”
The written description does not address a perimeter of the opening or cover. Presumably, applicant is relying on the drawings to show this feature. However, the drawings appear to show the perimeter of the opening to be greater than a perimeter of the cover because the perimeter of the opening includes the perimeters of the arms as shown in annotated figure 1 below. Should applicant traverse this position, examiner notes the drawings, at minimum, are inconclusive of determining a perimeter magnitude of the opening versus the perimeter of the cover, and thus cannot serve as the basis for this limition.
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Claim Rejections - 35 USC § 112
5. 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.
Claims 1-11 and 15-20 are 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. The recitation in claim 1 of “an elastic arm, the elastic arm … extends from an edge of the opening to a center of the opening” is unclear and contradicted by the drawings. The drawings do show the arms extending to a center of the opening. For examining purposes, the scope will be construed as the arms extending such that they are touching or nearly touching at a center of the opening since they arms are required to be uniformly arranged and extend to a center of the opening. Applicant can accept this scope construction and the 112(b) and objection to the drawings will be removed.
Double Patenting
6. 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.
7. Claims 1-3 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6 of U.S. Patent No. 12,337,257.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims comprise a scope that substantially reads on the present claims, sans the following: the limitation that the elastic arms extend to a center of the opening is not expressly taught by the applied art. However, per MPEP 2144.04, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) when the only difference between the prior art and claimed invention is a particular arrangement that would not modify the operation of the device, such differences were held unpatentable. Here, no functional criticality is provided to the arms extending to the center of the opening. The patented claims teach wherein the arms are uniformly arranged around the opening as claimed, and apply a force on the cover, wherein the cover “seals the water storage cavity”. As such, the difference between the claimed arrangement of the elastic arms, and the arrangement provided by the patented claims is considered to be obvious in view of MPEP 2144.04, In re Japikse.
8. Claims 1, 4-11 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 7-17 of U.S. Patent No. 12,337,257 in view of McGinn (US Pat. No. 9,642,487)
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims comprise a scope that substantially reads on the present claims, sans the following:
Multiple arms integrally formed with the shell, uniformly arranged around the opening and extending to a center of the opening.
Examiner cites to McGinn for its teaching of multiple arms 32 uniformly arranged around an opening of shell 11 to secure cover 20 covering the opening (Fig.’s 1-4; column 3). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a second arm uniformly arranged to the toy water balloon of the patented invention. The rationale to combine is to provide a strong and uniformly applied force to the cover, ensuring the seal is maintained.
The limitation that the elastic arms extend to a center of the opening is not expressly taught by the applied art. However, per MPEP 2144.04, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) when the only difference between the prior art and claimed invention is a particular arrangement that would not modify the operation of the device, such differences were held unpatentable. Here, no functional criticality is provided to the arms extending to the center of the opening. The patented claims teach wherein the arms are uniformly arranged around the opening as claimed, and apply a force on the cover, wherein the cover “seals the water storage cavity”. As such, the difference between the claimed arrangement of the elastic arms, and the arrangement provided by the patented claims is considered to be obvious in view of MPEP 2144.04, In re Japikse.
Lastly, and regarding the limitation that the arms are integrally formed with the shell, , the Federal Circuit has held that integrating two or more pieces into a single piece structure is obvious in the art absent critical evidence demonstrating a solution to a perceived need in the art. See MPEP 2144.04, In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349(CCPA 1965) and Schenck v. Nortron Corp.,713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983). Here, a person ordinary skill in the art would have found it obvious to make the elastic arms of the patented invention modified by McGinn to be integral with the shell. This will expectantly improve the durability of the toy and improve the process of manufacturing as the arms can be formed via a molding process.
Response to Arguments
9. Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
10. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711