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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/4/26 has been entered.
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 1-20 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. Independent claims 1 and 16 both disclose the limitations of the sound dampening material having a thickness from 0.03 to 0.7 inches and a depth of the pattern being 0.014 to 0.2 inches which were calculated by measuring the drawings, but nothing in the drawings or the specification discloses that the provided drawings are scale drawings from which dimensional information can be correlated furthermore while the specification does disclose that the bodies can range in size between 0.5-3.5 inches there is no disclosure that the thickness or pattern depth vary proportionally relative to the size of the body, at most the drawings can show a particular thickness and pattern depth for a particularly sized body but since no dimensional characteristics or referenced scale are linked to the drawings themselves the specific dimensions are unascertainable.
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 1-20 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 term “about 0.5 to about 3.5 inches” in claims 1 and 16 is a relative term which renders the claim indefinite. The phrase “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification fails to provide any disclosure to determine what variations in size are intended to be to be encompassed to meet the requirement of “about” and as such the scope of the claim is unascertainable.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13-15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claims fail to include all the limitations of the claims on which they depend since the claims are only directed to the storage container not the manipulative device as a whole. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-5, 7-11 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over McBride (AU2021221547B1). McBride discloses a toy manipulative device (abstract) having at least three three-dimensional bodies (Fig. 1), wherein each body is sized to be 1.378 inches or 35mm (paragraph 33) and is formed with a respective single magnet (2000) with a magnet surface therein (Fig. 1). The bodies are configured to hold on to each other to form a chain due to magnetic forces between the respective magnet surfaces and to disengage from each other due to physical separation of the bodies to enable a user to manipulate the bodies relative to each other (paragraphs 32 & 39). A flexible material capable of providing sound dampening such as plastic or silicone can completely cover the magnet surfaces of each of the bodies (paragraph 34) with a desired thickness (Fig. 1) and can include a texture or pattern with a depth (Figs. 5 & 6, paragraph 37). The bodies can be configured to be spherical or can have a polygonal shape (paragraphs 11 & 12). The pattern or texture on at least two of the three-dimensional bodies can include different raised patterns such as one three-dimensional body having a convex raised pattern (Fig. 6) and a second three-dimensional body having a flattened raised pattern (Fig. 5). A method of using the manipulative device includes providing a plurality of three-dimensional bodies arranged in a chain and substituting the positions of the bodies in the chain to create a different configuration (paragraph 39). McBride discloses the basic inventive concept with the exception of the flexible material having a thickness of 0.03 to 0.7 inches and a pattern depth of 0.014 to 0.2 inches. It would have been obvious to one of ordinary skill in the art to dimension the thickness and pattern depth as claimed since it has been held that where the only difference between the prior art and the claimed invention is a recitation of relative dimensions and the device having the relative dimensions would not perform differently than the prior art then the claimed device is not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over McBride as applied for claim 1 above. McBride discloses the basic inventive concept with the exception of the three-dimensional bodies simulating balls such as golf balls, footballs, foosballs, baseballs, basketballs, rugby balls, soccer balls or volleyballs. It would have been an obvious matter of design choice to configure the spherical three-dimensional bodies of McBride to emulate different balls, since it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention over the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over McBride as applied for claim 1 above and further in view of Meyer (2005/0045507) and He (CN219237767U). McBride discloses the basic inventive concept with the exception of including a storage container. Meyer discloses a storage container for amusement elements having a bottom tray (2) and a top lid (3) that covers the bottom tray (Figs. 1 & 2). The bottom tray and top lid each have respective opposing first (7) and second (8) ends that are configured to respectfully and interchangeably match up with each other when the top lid covers the bottom tray (Fig. 1). The bottom tray also includes indented regions (5) below a top edge of the bottom tray (Fig. 1). A ridge (4) extends between the first and second ends of the bottom tray (Fig. 1). The top lid includes an opening notch (41) that matches up with an opening notch (23) of the bottom tray when the top lid covers the bottom tray (Fig. 2). Although, Meyer does not disclose a storage container for magnetic bodies, it does teach providing a storage container for amusement elements and as such it would have been obvious to one of ordinary skill in the art to include a storage container as taught by Meyer with the device of McBride for the predictable result of providing a container to allow easy storage and displaying of the device while not in use (paragraphs 3-4). McBride and Meyer disclose the basic inventive concept with the exception of including a first magnet in the first end of the bottom tray, a second magnet in the first end of the top lid, a third magnet in the second end of the bottom tray and a fourth magnet in the second end of the top lid. He discloses a storage container (Fig. 2, description) with a bottom tray (200) that includes a magnet (201) on each of a first end (left side) and a second end (right side) and a lid (100) that includes a magnet (201) on each of a first end (left side) and a second end (right side). Since Meyer and He both disclose storage containers, it would have been obvious to one of ordinary skill in the art to modify McBride and Meyer to include magnets on both the first and second ends of each of the bottom tray and top lid as taught by He for the predictable result of creating a more secure connection between the tray and lid providing enhanced functionality.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA HYLINSKI whose telephone number is (571)272-2684. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
