DETAILED ACTION
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 21-34 and 37 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. Claim 21 now claims that:
…wherein a long side of each magnetic member of the plurality of first magnetic members
is positioned tangent to a circumferential direction of the first fitting surface, and
a long side of each magnetic member of the plurality of second magnetic members is positioned tangent to a circumferential direction of the second fitting surface…
The language constitutes new matter. The limitation is presumably taken solely from the figures because the term “long side”, “tangent” and “circumferential direction” is never used in the written description (presumably solely taken from Fig. 13, shown below, or possibly Fig. 6). However, the term “tangent” is a geometry term of art. As defined by dictionary.com, “tangent” means “touching at a single point, as a tangent in relation to a curve”. As can be seen in applicant’s Fig. 13 below which is further annotated, there is no way to ascertain from the drawing that the elongated side of the magnets are, by definition, “tangent” to a circumferential direction. This is because a “circumferential direction” is not even shown in the drawing (the Examiner annotates one). Even assuming arguendo that one is present, there is no way to tell that the long sides of the magnets touch the circumferential direction at a single point. It could be presumed that the “circumferential direction” follows the exterior of the ball, but that is never discussed in the specification and the circumferential direction is never shown in the drawings. As best, applicant could argue that the long side of the magnets generally extend in the same direction as the circumferential exterior direction of the ball (emphasis added). But again, this is never really discussed in the written specification. In the alternative, assuming arguendo that the Examiner has reached this 112(a) in error and the limitation has full support, the language at least needs to be added to the specification for proper antecedent basis (i.e. there is a specification objection) and applicant should specifically point out where and why the language is supported by the originally filed specification/drawings.
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Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21 and 23-34 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Forutanpour (US Pub. No. 2014/0221136; as cited in applicant’s IDS) in view of Panec (US Pat. No 5,975,983; as cited in applicant’s IDS) and in further view of Zoellner (US Pub. No. 2005/0170739 A1; as cited in applicant’s IDS).
1Regarding claim 21, Forutanpour discloses a toy ball (Fig. 3, item 11 as seen in Fig. 18, items 127 and 129), comprising: a first petal comprising an elastic material (Fig. 3, item 11a, and par. [0058]; noting rubber may be used), the first petal including a first edge portion having a first fitting surface (Fig. 18; noting the edge of rim on item 129), and a plurality of first magnetic members mounted and fixed inside the first edge portion (Fig. 17, items 111; noting this is obvious and par. [0088]; disclosing item 111 may be a magnet; specifically noting under Boston Scientific Scimed, Inc. v. Cordis Corp., 683 F.3d 1347 (Fed. Cir. 2011), combining side by side embodiments does not require a “leap of inventiveness”); a second petal comprising an elastic material (Fig. 18, item 127 and Fig. 3, item 11b, and par. [0058]; noting rubber may be used), the second petal including a second edge portion having a second fitting surface (Fig. 18; noting the edge on item 127), and a plurality of second magnetic members mounted and fixed inside the second edge portion (Fig. 17, items 111 and Fig. 16, items 93 making obvious corresponding magnets on the other half, see specifically par. [0088] disclosing magnets), wherein the first fitting surface is shaped to fit and contact the second fitting surface (Fig. 3, item 11), wherein the plurality of first magnetic members includes at least five elongated magnets that are spaced apart from each other (Fig. 17, items 111 and par. [0088]; noting eight are shown; see Fig. 16, items 93 and par. [0086] making obvious that they can be “elongated” magnets), and the plurality of second magnetic members includes at least five elongated magnets are spaced apart from each other (Fig. 16, items 93 and pars. [0086] and [0088]; noting equal and opposite polarity magnets at the same location on the other half would be obvious as seen in Fig. 16; the figure also showing elongation), wherein a long side of each magnetic member of the plurality of first magnetic members is positioned adjacent to a circumferential direction of the first fitting surface (Fig. 16, below), and a long side of each magnetic member of the plurality of second magnetic members is positioned adjacent to a circumferential direction of the second fitting surface (Fig. 16, below); wherein the plurality of first magnetic members mate with the plurality of second magnetic members to position the first petal and the second petal in a closed state and define a object-carrying cavity (Fig. 3 and par. [0088]; noting the magnets close the ball as seen in Fig. 3), 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 to create a water tight seal (Fig. 5 and par. [0065]; noting a “water-tight seal” is functionally possible given the structure; noting as per Fig. 5, the ends can be deformed upon connection to create a continuous seal). It is noted that Forutanpour does not specifically disclose that the long sides of the magnets are tangent to a circumferential direction. However, regarding positioning the elongated sides of the magnets so that they are tangent to a circumferential direction, it has been held that the rearrangement of parts is not patentable unless it modifies the operation of the device. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)(see applicant’s specification, the specification never discussing an elongated side, a tangent, or a circumferential direction, let alone giving criticality to it). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact orientation or arrangement of the long side of the magnet as compared to the circumferential direction would not modify the operation of the device; that is, the magnet would allow one hemisphere to connect to another regardless of the exact orientation of the long side of the magnet as compared to the circumferential direction. It is also noted that Forutanpour does not specifically disclose that the ball is toy water ball specifically used to carry water and that the petals are made of silicone, and alternatively, a water tight seal. However, Forutanpour discloses that a reusable sports ball can carry other things (par. [0057]), specifically indicates that the ball can impact another user (par. [0055]; noting the ball can be specifically used in “dodgeball”), and has edges that deform to create, at a minimum, a tight seal (Fig. 5 and par. [0065]). In addition, Panec discloses a similar toy ball wherein the ball is toy water ball specifically used to carry water (Fig. 3) and that it is made of rubber or silicone (col. 2, lines 27-29) and has a watertight seal (col. 2, lines 62-64). Thus, it would have bene obvious to one of ordinary skill in the art at the time of filing to modify Forutanpour to make the ball a toy water ball made out of silicone with a water tight because doing so would be applying a known technique (making a toy ball out of compressible silicone, the toy ball being reusable and can carry water with a watertight seal that can be released upon impact) to a known product (a reusable toy ball that is made of rubber and has two sides and two rims that can be closed by magnets and can have a tight seal) ready for improvement to yield predictable results (making the reusable toy ball from silicone, and specifically using the toy ball for holding water with a watertight seal, the toy ball being flexible and compressible enough to impact a user and also allowing the impact to release water). Finally, it is noted that the combined Forutanpour and Panec do not specifically disclose that the first and second magnets are fixed inside the first and second edge portion away from the first and second fitting surface, respectively. However, Forutanpour clearly disclose the use of magnets to join two contacting portions with edges (par. [0088] and Fig. 17, items 111). In addition, Zoellner discloses a toy that uses magnets wherein the magnets are specifically positioned away from the fitting surface (Fig. 4). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Forutanpour and Panec to position the magnets away from the first and second fitting surface as taught and suggested by Zoellner because doing so would be use of a known technique (using a layer of material over the connecting magnet proximate a surface) to improve a similar product (a toy ball that has two sides connected by adjoining magnets proximate a surface) in the same way (using a layer of material over the connecting magnets in a toy ball that has two connected surfaces by adjoining magnets, the layer of material over the magnets minimizing the risk of injury to the user when the magnets are connected – see Zoellner: par. [0044]).
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Regarding claim 23, the combined Forutanpour, Panec, and Zoellner disclose a connecting member connecting the first petal to the second petal, wherein the connecting member is integrally formed with the first edge portion and the second edge portion (Forutanpour: Fig. 18, item 131; noting they are all connected or “integral”; and alternatively, “integrally formed” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”).
Regarding claim 24, the combined Forutanpour, Panec, and Zoellner disclose that the first fitting surface and the second fitting surface deform into a tight fit in the closed state (Forutanpour: Fig. 5 and par. [0065]).
Regarding claim 25, the combined Forutanpour, Panec, and Zoellner disclose that a first hemispherical shell of the first petal is integrally formed with the first edge portion (Forutanpour: Figs. 3, item 11, Fig. 5, or 18; noting they are all connected and thus “integral”; and alternatively, “integrally formed” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”).
Regarding claim 26, the combined Forutanpour, Panec, and Zoellner disclose that a second hemispherical shell of the first petal is integrally formed with the second edge portion (Forutanpour: Figs. 3, item 11, Fig. 5, or 18; noting they are all connected and thus “integral”; and alternatively, “integrally formed” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”).
Regarding claim 27 the combined Forutanpour, Panec, and Zoellner disclose that each of the plurality of first magnetic members is shaped as a rectangular block, and each of the plurality of second magnetic member is shaped as a rectangular block (Zoellner: Fig. 7, items 122-127). In the alternative, regarding using rectangular shaped magnets over that of circular as shown in Forutanpour: Fig. 17, item 111, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [0034]; giving no criticality to using rectangular shapes). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact shape of the magnets would not be significant: that is, the magnets would allow the two halves to be attracted to each other regardless of their exact shape.
Regarding claim 28, the combined Forutanpour, Panec, and Zoellner disclose that the each of the plurality of first magnetic members is fixed in the first edge portion by integrally molding each first magnetic member in the first edge portion (Forutanpour: Fig. 17, item 111; noting they are connected so they are “integral”; and alternatively, “integrally molding” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”).
Regarding claim 29, the combined Forutanpour, Panec, and Zoellner disclose that the each of the plurality of second magnetic members is fixed in the second edge portion by integrally molding each second magnetic member in the second edge portion (Forutanpour: Fig. 17, item 111; noting they are connected so they are “integral”; and alternatively, “integrally molding” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”; noting duplication of the magnets and their positions with opposite polarity is obvious given the disclosure of par. [0088] and as shown in Fig. 16).
Regarding claim 30, the combined Forutanpour, Panec, and Zoellner disclose that the first petal and the second petal each comprises a semispherical shell (Forutanpour: Figs. 3, 5, and 18, items 127 and 129; noting they are “hemispherical” which is “semispherical”).
Regarding claim 31, the combined Forutanpour, Panec, and Zoellner disclose that the first fitting surface comprises a slope and the second fitting surface comprises a slope; and wherein the slope of the first fitting surface and the slope of the second fitting surface are tilted to each other (Forutanpour: Fig. 5 below and par. [0065]-[0066]; noting they are concave from inside-to-out, so the edges are sloped or titled out toward the middle and each other).
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Regarding claim 32, the combined Forutanpour, Panec, and Zoellner disclose that the first fitting surface and the second fitting surface deform into a tight fit (Forutanpour: Fig. 5 and par. [0065]).
Regarding claim 33, the combined Forutanpour, Panec, and Zoellner disclose that the first fitting surface and the second fitting surface are concavely arranged in a natural state (Forutanpour: Fig. 5 above and par. [0065]-[0066]; noting they are concave from inside-to-out; the Examiner taking the broadest reasonable interpretation of the limitation). In the alternative, regarding the exact shape of the first and second fitting surface, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [0031]; noting the fitting surfaces can actually be “flat, as long as a seal” can be achieved). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the fitting surfaces would not be significant: that is, the surface would continue to seal regardless of its exact shape.
Regarding claim 34, the combined Forutanpour, Panec, and Zoellner disclose that the magnetic attraction force is sufficient to cause the first fitting surface and the second fitting surface to deform into the tight fit against each other and create a water seal (Forutanpour: Fig. 5 and 17 in combination with par. [0065]; noting under noting under Boston Scientific Scimed, Inc. v. Cordis Corp., 683 F.3d 1347 (Fed. Cir. 2011), combining side by side embodiments does not require a “leap of inventiveness”; the Examiner noting that the creation of a water seal is functionally possible given the combined structure as described in Forutanpour: par. [0065]).
Regarding claim 37, the combined Forutanpour, Panec, and Zoellner disclose that 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 (Forutanpour: Figs. 1-18; noting this is functionally possible given the structure and in view of Panec; that is Forutanpour makes obvious the ability to make the ball from rubber (par. [0058]), to hold objects on the interior (par. [0057]), and use magnets to hold halves of the ball together (Figs. 17, 18, and par. [0088]); the ability to overcome that magnetic force and separate the ball to release water is functionally possible given the magnetic force, the speed at which the ball is thrown, and the hardness of the person or object hit; also noting the ability for the ball to hold and release water is obvious in light of Panec).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Forutanpour (US Pub. No. 2014/0221136; as cited in applicant’s IDS) in view of Panec (US Pat. No.5,975,983; as cited in applicant’s IDS) in view of Zoellner (US Pub. No. 2005/0170739 A1; as cited in applicant’s IDS) and in further view of Mowbray et al. (herein “Mowbray”; US Pub. No. 2018/0229885 A1; as cited in applicant’s IDS).
Regarding claim 22, the combined Forutanpour, Panec, and Zoellner disclose a connecting member connecting the first petal to the second petal, the connecting member is configured as a sheet (Forutanpour: Fig. 18, noting it appears to be one solid piece of the material). In the alternative, Forutanpour discloses that the connecting member is some kind of folding hinge (Fig. 18, item 131). In addition Mowbray discloses a similar invention with connected petals wherein the connecting member is a sheet (Fig. 13, item 12 or alternatively, Fig. 18, item 6 and par. [0133]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Forutanpour, Panec, and Zoellner to use a connecting member as a sheet as taught by Mowbray because doing so would be a simple substitution of one element (a sheet hinge or living hinge) for another (some type of folding hinge) to obtain predictable results (the continued ability to use a hinge to fasten two petals together, the hinge being in the form of a sheet or living hinge).
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.
Claim 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 51-52 of copending Application No. 17/549,920 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 51-52 of the ‘920 application essentially claims slightly different functional language that is accomplished using the structure. However, the actual structure claimed between the two independent claims is essentially the same. Furthermore, the orientation of the long side of the magnet can be rejected using case law. That is, the exact orientation or arrangement of the long side of the magnet as compared to the circumferential direction does not appear to be critical to the invention at hand.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 32-45 and 47 of copending Application No. 17/549,920 in view of Forutanpour (US Pub. No. 2014/0221136). Claim 32 of the ‘920 application only claims one magnetic member. Claim 21 of the currently application claims a “plurality” of magnetic members being “at least five”. However, Forutanpour makes obvious that a plurality of magnetic members, including at least five, can be used around the edge portion (Fig. 17, items 111 and par. [0088]). Furthermore, regarding the remainder of the claims, dependent claims 22-34 of the current application essentially claim the same subject matter as dependent claims 33-45 and 47 of the ‘920 application.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 11/26/25 have been fully considered but they are not generally persuasive.
Technically, the amendments to the claims (i.e. the Reply) are non-responsive. Applicant should have provided specific support from the drawings, written specification, or both for amendments to the claims.
Rejection
"the plurality of first magnetic members mate with the plurality of
second magnetic members to position the first petal and the second
petal in a closed state and define a water-carrying cavity"
Applicant essentially argues that the above combined references do not teach a ball used to carry water (see Remarks, pages 7-8). Applicant goes on to argue that “Forutanpour never discloses that its sports ball containing any of these items or other balls or sporting equipment would be used for playing a game such as dodgeball” (see Remarks, page 8). For the record, Forutanpour never really states if the outer ball (see for example, Fig. 3) is intended to be used with the other objects or balls inside, or with them removed (see entire specification; emphasis added). However, what is clear is that the ball in Forutanpour can still functionally be used with the other objects inside (see Figs. 1-3; emphasis added). Couple Forutanpour with the teachings of Panec that the ball is intended to be used with water inside, and the limitations of using a ball with water inside is obvious. Restated, there is nothing in Forutanpour that creates a “teaching away” (implicit or explicit) from using the ball with an object inside because Forutanpour is completely silent on the issue. Furthermore, the fact that Forutanpour shows a ball that can functionally be used with an object inside rebuts applicant’s argument of an implicit teaching away.
On pages 8 and 9, applicant argues that filling he Forutanpour ball with water would “create an unbalanced ball” and “frustrate the [intended] purpose of Forutanpour’s sports ball”. First, the argument already assumes that the water does not fill the entire cavity in order to create the “unbalanced” effect. Second, Forutanpour: Figs. 3 and 11 already show a football inside a spherical ball, the inner football creating an unbalanced effect. As such, to argue a frustration of intended purpose when imbalance is already shown is not compelling.
On page 9, applicant goes on to argue the specifics of the second reference Panec in isolation, instead of understanding what Panec would one of ordinary skill in the art (i.e. an In re Keller argument). Panec teaches a POSA that a reusable ball can be used to hold water and deliver that water on impact. A POSA, when looking at Forutanpour, would understand that Forutanpour can be modified to do the same thing.
the plurality of first and second magnetic members each includes "elongated magnets" and "wherein a long side of each magnetic member of the plurality of first magnetic members is positioned tangent to a circumferential direction of the first fitting surface, and a long side of each magnetic member of the plurality of second magnetic members is positioned tangent to a circumferential direction of the second fitting surface"
For the record, as noted above, the “circumferential direction”, the “long side” of the magnet”, and “tangent” are never discussed in the written specification. Applicant appears to create all of this language from either Fig. 6 or 13; which the Examiner does not believe shows or provides support for this claimed limitation. Furthermore, an argument can be made that using an elongated magnetic has no criticality. Applicant never states why this elongated magnet is required (in the Remarks or the written specification). Along those lines, having the long side tangent to the circumferential direction also does not have any criticality; because these limitation are not even discussed in the written specification. As such, applicant appears to be attempting to add limitations to the structure that have no real criticality. Respectfully submitted, the Examiner declines to allow a claim based on a limitation when, at best no criticality has been established, and at worst, the limitation constitutes new matter. The Examiner addresses the above limitation at length in the above rejection.
Interesting enough and for the record, applicant argues “Zoellner says nothing about ‘positioning’ the magnets ‘tangent to a circumferential direction of [a] fitting surface” (see Remarks, page 10). Respectfully submitted, neither does applicant’s own written description.
B. Claim 22
No other arguments are advanced. For claim 22, applicant simply incorporates the claim arguments above with no additional arguments.
C. New Claim 37
Applicant goes on to argue that “Furthermore, Forutanpour teaches away from separation of its sport ball into its portions when a user is using the sports ball” (see Remarks, page 12). Respectfully, applicant also teaches that the portions do not separate when the user is using the toy. Applicant’s toy only separates on impact and not when the user is carrying it. In addition, using applicant’s own logic, if the outer ball was intended to not “separate”, how could a user open the ball to gain access to the inside ball? Rather, it is clear that the outer ball would separate with some force so that a user could gain access to the inner ball. The ability to open on impact would functionally depend on the velocity of the thrown ball, object hit, angle of and impact, location of impact, and the strength of the magnets. However, at some velocity, the magnetic force would be overcome and the two halves would separate. As such, this argument is also not compelling. Again, couple Forutanpour with Panec and the ability of the ball to separate and release water on impact is obvious.
Nonstatutory Double Patenting Rejection
The non-statutory double patenting rejection is still maintained.
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.
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
1/12/26
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711