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 .
This action is based on applicant’s remarks and amendments dated 06/22/2026. Claims 1 and 3 have been amended. Claims 2 and 4-15 have been cancelled. Claims 1, 3, and 16-20 are currently pending.
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 1, 3, and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,766,622 B1 and claims 1-11 of U.S. Patent No. 12,151,182 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘622 patent and the ‘182 patent would read on / anticipate the claims of the present application.
Claims 1, 3, and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 6, 9, and 18-21 of copending Application No. 18/431,497 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘497 application would read on / anticipate the claims of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 16, and 19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Klepper et al. (US PGPub. No. 2015/0065007 A1).
In Reference to Claims 1, 16, and 19
Klepper teaches (Claim 1) A magnetic building block, comprising: a building block main body, the building block main body being a square building block main body and being formed by six interconnected side walls (fig. 1); the six side walls comprising a front side wall, a rear side wall, a left side wall, a right side wall, an upper side wall, and a lower side wall (walls of item 100, fig. 1); the building block main body comprising four inner wall assemblies (inner walls and outer walls forming compartments 108, fig. 1); wherein each inner wall assembly is respectively located at a corresponding junction formed by two corresponding adjacent side walls, each inner wall assembly comprises two inner wall portions, the two inner wall portions are two planar plates perpendicularly connected together, and the two inner wall portions are connected to the two corresponding adjacent side walls respectively (flat portions of inner walls forming compartments 108 connect to side walls, are perpendicular to each other, and are connected to each other via rounded section therebetween); wherein the four inner wall assemblies, the front side wall, the rear side wall, the left side wall, and the right side wall cooperatively define four compartments (from a top item 108 to a bottom 108 along a seam at the sidewall corners, fig. 1); each compartment is defined by the two inner wall portions of a corresponding inner wall assembly and two corresponding adjacent side walls, and each compartment extends from the upper side wall to the lower side wall (inner wall portions that form items 108, not separately labeled from top to bottom in conjunction with outer walls, fig. 1); wherein the building block main body further comprises four supporting member portions corresponding to the four compartments, each supporting member portion is positioned in a corresponding compartment, and each supporting member is connected to at least one side wall and/or at least one inner wall portion that defines the compartment (items 410 and 424, fig’s 1 and 5, at least at corners, items 424 are four members); the compartment comprises an upper compartment space and a lower compartment space (upper and lower items 108, fig’s 1 and 5); wherein the building block main body further comprises four groups of magnet assemblies (an upper and a lower item 110 along each junction, fig’s 1 and 5), and each group of magnet assembly is arranged in a corresponding compartment (fig. 1); in each compartment, the magnet assembly comprises a first magnet member and a second magnet member (a top and a bottom pair of items 110, fig. 1), and the first magnet member and the second magnet member both have an S pole and an N pole (paragraph 0045); the supporting member comprises a first end facing the upper side wall and a second end facing the lower side wall (fig’s 1 and 5, portion of items 410 / 424 that face upper and lower compartments), the first magnet member is positioned in the upper compartment space between the first end and the upper side wall (an upper item 110, fig. 1), the first magnet member is capable of rotating within the upper compartment space (paragraph 0043), the second magnet member is positioned in the lower compartment space between the second end and the lower side wall (a lower item 110, fig. 1), and the second magnet member is capable of rotating within the lower compartment space (paragraph 0043); wherein in each of the compartments, avoidance gaps are provided between the corresponding supporting member and each of the corresponding inner wall portions (spaces around items 110, fig. 1), and between the corresponding supporting member and each of the side walls (spaces around items 110, fig. 1); the avoidance gaps are configured for accommodating a grinding tool configured for removing additional parts of the supporting member (note this is merely functional language, all that is claimed structurally here are gaps, which are found in Klepper).
(Claim 16) wherein the supporting member is integrally formed with or is fixedly connected to at least one inner wall portion or at least one side wall (paragraph 0101);
(Claim 19) wherein at least one portion of the compartment is completely filled by the supporting member, and the supporting member is configured for separating the upper compartment space from the lower compartment space, so that the upper compartment space is not in communication with the lower compartment space (fig’s 1 and 5, upper and lower compartments are completely sealed by items 410 and 424, the space that these elements take up is also “completely filled”).
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 3, 17, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Klepper.
In Reference to Claim 3
Klepper teaches all of claim 1 as discussed above.
Klepper further teaches that the length of the inner wall portion is larger than the length of the supporting member, and that the volume of the upper compartment is larger than that of the magnet (fig. 1).
Klepper does not disclose specific ratios.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific ratios claimed simply as a matter of engineering design choice, since, it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of providing a space for a magnet are taught in Klepper, which inherently would require the supporting member to be smaller than the outer wall and the space to be larger than the magnet, merely claiming specific ratios to provide this result is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 17
Klepper further teaches (Claim 17) wherein the supporting member is [] connected to at least one inner wall portion and at least one side wall, so that the supporting member is [] inside the compartment along at least one inner wall portion and at least one side wall (paragraph 0101).
Klepper fails to teach the feature of the supporting member being movable.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the supporting member movably retained instead of fixedly retained simply as a matter of engineering design choice, since, it has been held that making components of a device integral or separable elements are obvious matters of engineering design choice. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Since the function of the supporting member would be the same (to retain magnets within their respective compartments) regardless of whether it moves slightly, is fixed to the walls, or is integral with the walls, merely claiming this minor distinction is not a patentable advance.
In Reference to Claim 18
Klepper teaches all of claim 1 as discussed above.
Klepper further teaches (Claim 18) wherein the magnetic building block comprises a partition plate portion (items 410, fig’s 1 and 5), the supporting member comprises an upper supporting portion and a lower supporting portion (upper and lower sides of corners of items 410/424), a [upper] side of the upper supporting portion is connected to an upper surface of the partition plate portion (item 424 connected to item 410), and an [] face of the [] portion is configured for retaining the first magnet member within the upper compartment space (fig. 1); an [lower] side of the lower supporting portion is connected to a lower surface of the partition plate portion, and a [] face of the [] portion is configured for retaining the second magnet member within the lower compartment space (items 424 connected to items 410).
Klepper fails to teach the specific arrangement between the plate and supporting portions claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the arrangement claimed simply as a matter of engineering design choice, since, it has been held that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Since Klepper teaches both a plate and supporting member that hold the magnets into compartments at the corners of the block, merely rearranging the orientation of these elements to achieve the same result is an obvious matter of engineering design choice and is not a patentable distinction.
In Reference to Claim 20
Klepper teaches all of claim 1 as discussed above.
Klepper further teaches (Claim 20) wherein the supporting member is configured as a [right angle] supporting member (fig’s 1 and 5).
Klepper fails to teach the particular shape claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the supporting member the claimed shape simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since Klepper teaches both a plate and supporting member that hold the magnets into compartments at the corners of the block, merely changing the shape to achieve the same result is an obvious matter of engineering design choice and is not a patentable distinction.
Response to Arguments
Applicant’s arguments, see Remarks, filed 06/22/2026, with respect to the 112 rejections have been fully considered and are persuasive. The 112 rejections have been withdrawn.
Applicant's remaining arguments filed 06/22/2026 have been fully considered but they are not persuasive.
Applicant argues that the recitation of gaps for accommodating a grinding tool are not found in Klepper. This is not persuasive. This is merely functional language that does not define anything other than a gap. There is no recitation of a grinding tool, a specific size of a grinding tool, a specific size gap, or any other structure that would obviate the rejection. Simply reciting a gap when a gap is found in the prior art is not enough to overcome the rejection. Although Klepper does not disclose accommodating additional objects, there is a space formed in the compartments, as claimed, around magnets where a grinding tool could be inserted, therefore, these recitations are met by Klepper.
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 JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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