DETAILED ACTION
Drawings
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 first fitting surface and the second fitting surface are compressed together in a closed state” of claim 42; “the first fitting surface and the second fitting surface deform to define water-tight seal in the closed state” of claim 43; and “wherein the first fitting surface and the second fitting surface compress into a water-tight seal” of claim 50; “the first fitting surface comprises a first slope and the second fitting surface comprises a second slope; and wherein the first slope of the first fitting surface and the second slope of the second fitting surface are tilted to each other” of claim 51; and “the magnetic attraction force is sufficient to cause the first fitting surface and the second fitting surface to compress into the tight seal, thereby creating the water-tight seal” of claim 52 must be shown or the feature(s) canceled from the claim(s) (emphasis added). 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.
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.
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 38-57 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 32-45, 47, 51, and 52 of copending Application No. 17/549,920 (reference application) in view of Forutanpour (US Pub. No. 2014/0221136). The Examiner notes that a notice of allowance has been sent out on parent application 17/549,920 based on the Board decision handed down 5/1/26.
Claim 38 of the current application, as newly presented, now claims:
38. (New) A toy water ball, comprising: a first petal including a first edge portion having a first fitting surface; a plurality of first magnetic members fixed inside the first edge portion away from the first fitting surface; a second petal including a second edge portion having a second fitting surface shaped to fit and contact the first fitting surface; and a plurality of second magnetic members fixed inside the second edge portion away from the second fitting surface, wherein the plurality of the first magnetic members mate with the plurality of the second magnetic members to position the first petal and the second petal in a closed state and define a water-carrying cavity, wherein a magnetic attraction force between the plurality of first magnetic members and the plurality of second magnetic members is sufficient to cause the first edge portion and the second edge portion to contact each other and create a water-tight seal, and wherein the first petal and the second petal are configured to separate and release water stored in the water-carrying cavity when the toy water ball hits a person or an object.
Claim 32 of the 17/549,920 application claims:
32. (Currently Amended) A toy water ball, comprising: a first petal comprising an elastic silicone material, the first petal further comprising a silicone sheet configured as a first hemispherical shell, a first edge portion comprising a first fitting surface, and a first magnetic member mounted and fixed inside the first edge portion away from the first fitting surface; and a second petal comprising an elastic silicone material, the second petal further comprising a silicone sheet configured as a second hemispherical shell, a second edge portion comprising a second fitting surface, and a second magnetic member mounted and fixed inside the second edge portion away from the second fitting surface, wherein the toy water ball is movable between a closed state and an open state, wherein the first magnetic member and the second magnetic member are configured to generate a magnetic attraction force when the toy water ball
is in the closed state, the first petal and the second petal forming a closed water-carrying cavity when the toy water ball is in the closed state, wherein the magnetic attraction force is sufficient to cause the first edge portion and the second edge portion to contact each other, wherein the toy water ball is configured such that when placed into water while in the open state and moved to the closed state while still in the water, the first petal and the second petal form the closed water-carrying cavity by way of the magnetic attraction force, the closed water-carrying cavity having at least a portion of the water stored therein, and wherein the toy water ball is configured such that when removed from the water in the closed state and is thrown and hits an object, the first petal and the second petal separate and turn the toy water ball to the open state thereby causing the water stored in the closed water-carrying cavity to be released.
Claim 51 of the 17/549,920 application claims:
51. (Currently Amended) A toy water ball, comprising: a first petal comprising an elastic silicone material, the first petal further comprising a silicone sheet configured as a first hemispherical shell, a first edge portion comprising a first fitting surface, and at least five first magnetic members mounted and fixed inside the first edge portion away from the first fitting surface; and a second petal comprising an elastic silicone material, the second petal further comprising a silicone sheet configured as a second hemispherical shell, a second edge portion comprising a second fitting surface, and at least five second magnetic members mounted and fixed inside the second edge portion away from the second fitting surface, wherein the toy water ball is movable between a closed state and an open state, wherein the first magnetic members and the second magnetic members are configured to generate a magnetic attraction force when the toy water ball is in the closed state, the first petal and the second petal forming a closed water-carrying cavity when the toy water ball is in the closed state, wherein positions of the first magnetic members are arranged in one-to-one correspondence with positions of the second magnetic members, wherein the magnetic attraction force is sufficient to cause the first edge portion and the second edge portion to contact each other, wherein the toy water ball is configured such that when placed into water while in the open state and moved to the closed state while still in the water, the first petal and the second petal form the closed water-carrying cavity by way of the magnetic attraction force, the closed water-carrying cavity having at least a portion of the water stored therein, and wherein the toy water ball is configured such that when removed from the water in the closed state and is thrown and hits an object, the first petal and the second petal separate and turn the toy water ball to the open state thereby causing the water stored in the closed water-carrying cavity
to be released.
As can clearly be seen above, the later filed claim 38 of this current application is broader in scope than claims 32 and 51 of the ‘920 application (based on deleted language). As such, claims 32 and 51 appear to anticipate the claim language 38 of this current application and a terminal disclaimer is warranted.
For claim 39, see claims 33 and 34 of the ‘920 application
For claim 40, see claim 35 of the ‘920 application
For claim 41, the claim is simply a product-by-process limitation; see also claim 43 making obvious “integrally molding”
For claim 42, see claim 40 of the ‘920 application, see also Forutanpour: Fig. 5 and par. [0065]
For claim 43, see claims 32, 40, and 51 of the ‘920 application
For claim 44, the claim is simply a product-by-process limitation, see claim 41 of the ‘920 application specifically disclosing “integrally molded” and also a mere duplication of parts for the second hemisphere
For claim 45, the claim is simply a product-by-process limitation, see claim 41 of the ‘920 application and also a mere duplication of parts for the second hemisphere; noting claim 44 uses the language “molded” as opposed to claim 45 using “integrally formed”; the Examiner seeing no distinction as “molded” would make obvious “integrally formed”
For claim 46, see claim 42 of the ‘920 application
For claim 47, the claim is merely a product-by-process limitation; also see Forutanpour: Fig. 17, item 111; noting there are somehow “positioned” in the edge making obvious the limitation
For claim 48, the claim is merely a product-by-process limitation; also see Forutantpour: Fig. 17, item 111; noting there are somehow “positioned” in the edge making obvious the limitation
For claim 49, see claims 32 and 51 of the ‘920 application
For claim 50, see Forutanpour: Fig. 5 and par. [0065] and claim 39 of the ‘920 application
For claim 51, see Forutanpour: Fig. 5 and par. [0065] and claim 45 of the ‘920 application
For claim 52, see Forutanpour: Fig. 5 and par. [0065] and claims 32, 39, and 51 of the ‘920 application
For claim 53, see Forutanpour: Fig. 5
For claim 54, see claims 32 and 51 of the ‘920 application
For claim 55, see Forutanpour: Fig. 17, item 111
For claim 56, see claims 32 and 51 of the ‘920 application and Forutanpour: Fig. 17, item 111
For claim 57, see Forutantpour: Fig. 17, item 111
It would have been obvious to a person of ordinary skill in the art to modify the 17/549,920 application to use the concave mating surfaces that deform and seal water tight in combination with the evenly spaced out magnets as claimed in claims 42, 47, 48, and 50-57 as taught by Forutanpour because both the ‘920 application and Forutanpour are directed toward balls with hollow cavities and magnets positioned around the respective rims to keep closed two halves of the ball. As such combining the references would yield completely predictable results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. With that said, a notice of allowance has been sent out for the 17/549,920 application.
Allowable Subject Matter
Claims 38-57 would be allowable with the filing of a terminal disclaimer in conjunction with application 17/549,920.
In the Board decisions handed down on 5/1/26, the Board specifically reversed the Examiner’s rejection using Forutanpour (US Pub. No. 2014/0221136) as the primary reference in the rejection of parent application 17/549,920. Forutanpour is by far the best prior art of record for both the parent application and this child application. Based on the Board’s decision in parent 17/549,920, the Examiner now indicates similar subject matter as allowable in this current child application because the Board has specifically ruled that Forutanpour does not make the claimed limitations obvious in the parent application. The Examiner specifically notes that a filing of a terminal disclaimer will link the two applications (i.e. parent 17/549,920 and this child 19/238,311) and the subsequent reasons for allowance as noted above.
Response to Arguments
Applicant has cancelled previous claims 21-34. As such, any arguments directed toward those claims are now moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (571)270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
8/10/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
