DETAILED ACTION
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/4/25 has been entered. Claims 24-43 are pending and under examination.
Claim Rejections – 35 USC § 102 (AIA )
Claims 24-26, 28, 31-32, and 39-42 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2010/0203489 A1 to KOSTER.
Regarding claim 24, KOSTER teaches a user interactive training system for assisting in instilling a desirable behavior in the user (This preamble does not further define the structure of the claimed invention because it is solely directed to the purpose or intended use of the claimed invention, and the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention. See MPEP 2111.02(II): “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”; See also In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962)(statement of intended use in an apparatus claim did not distinguish over the prior art apparatus); Additionally, see KOSTER, par. 0001: device for maintaining a record of the rotation of injection sites in an injection regimen; par. 0005: system and method … to encourage children and adults to continue use of the reminder system), comprising:
at least two action based accessories carrying thereon indicia perceivable by the user (FIG. 2B, ref. 60, 62, 64, 66; par. 0008; 0025; 0034: stuffed toy or doll may accept a plurality of markers, interpreted as equivalent to the claimed action based accessories, for use as future reminders of where and when the next successive injections should occur … markers may be labeled, interpreted as equivalent to the claimed indicia perceivable by the user, the labels comprising a number or letter indicator representing a sequential order in which the patient or caregiver should administer future injections … the markers may comprise labels, colors or other distinctive markings that track the time and type of the next successive injections), said indicia on each of said at least two action based accessories including an instruction for performance of a particular task, said particular task associated with of a one of said at least two action based accessories being different from another said particular task associated with another one of said at least two action based accessories, said performance of each said particular task associated with said one and said another of said at least two action based accessories, respectively, thereby instilling in the user a different particular desirable character trait (This limitation is not given patentable weight because it is directed to non-functional descriptive material. First, this limitation is directed toward printed matter because it defines the content of information of the indicia, i.e., instructions for the user to perform. See MPEP 2111.05; See also In re DiStefano, 808 F.3d 845, 848, 117 USPQ2d 1265, 1267 (Fed. Cir. 2015). Additionally, the claimed instructions are not functionally or structurally related to the associated physical substrate, i.e., the generically claimed action based accessories, as the instructions are directed to conveying a message or meaning to a human reader independent of the supporting product, and the product does not perform some function with respect to the printed matter to which it is associated. See MPEP 2111.05. In other words, the action based accessories claimed merely serve as a support to display the claimed instructions. See MPEP 2111.05; See also In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished)(Applicant asserted that the printed matter allowed the cards to be “collected, traded, and drawn”; “identify and distinguish one deck of cards from another”; and “enable[] the card to be traded and blind drawn”. However, the court found that these functions do not pertain to the structure of the apparatus and were instead drawn to the method or process of playing a game.). Additionally, where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. See MPEP 2112.01(III); See also In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining “[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.”). In this case, the printed matter, i.e., instructions, and product, i.e., action based accessories, do not depend upon each other. Thus, no functional relationship exists. Additionally, the claimed instilling in the user a different particular desirable character trait merely defines an intended result or outcome of using the claimed product, without imposing any structural limitations on the claimed product, and therefore is not given patentable weight. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962)(statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). Additionally, this limitation is solely directed to a desired effect of the claimed product on the human mind, without imposing any structural limitations on the claimed product itself. See MPEP 2114(II)(“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Additionally, KOSTER teaches this limitation, see FIG. 2B, ref. 100; par. 0008; 0025; 0034: stuffed doll 100 configured to have markers 60, 62, 64, 66 attached thereto; plurality of markers for use as future reminders of where and when the next successive injections should occur … The markers may be labeled, the labels comprising a number or letter indicator representing a sequential order in which the patient or caregiver should administer future injections. In accordance with a still further aspect of the present invention, the markers may comprise labels, colors or other distinctive markings that track the time and type of the next successive injections. Therefore, this limitation is not given patentable weight. Thus, this limitation does not distinguish the claimed invention over the prior art.);
an interactive apparatus to which said at least two action based accessories are removably fastenable (FIG. 2B, ref. 100; par. 0008; 0025; 0034: stuffed doll 100 configured to have markers 60, 62, 64, 66 attached thereto; the markers may be comprised of a hook-and-loop fastener material such as Velcro) only upon completion of each said particular task associated with each of said at least two action based accessories, respectively, within a predetermined time interval (This limitation is not given patentable weight because it is solely directed to a rule for how to use the claimed product, without imposing any structural limitations on the product itself. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114; See also Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In this case, defining when the action based accessories can be fastened to the interactive apparatus amounts to rules for how to operate the device, without imposing any structural limitations on the device itself. Therefore, this limitation is not given patentable weight. Thus, this limitation does not distinguish the claimed invention over the prior art.);
discrete connectors being carried on said interactive apparatus, and each of said at least two action based accessories including a cooperative connector for fastenable engagement with any one of said discrete connectors, said each of said at least two action based accessories being configured to permit the fastenable engagement irrespective of a position of said any one of said discrete connectors (e.g., par. 0022: injection areas 2-18 of the doll 100 may be indicated in a variety of ways, such as … different fabrics with varying textures for the areas; FIG. 2B, ref. 60, 62, 64, 66 and ref. 4, 6, 8, 10, 12, 14, 16, 18; par. 0025: hook-and-loop fastener material such as Velcro to allow the markers to adhere temporarily but flexibly to the stuffed doll. As shown in Figure 2B, any marker is capable of attaching to any injection location on the stuffed doll by way of hook and loop fasteners); and
an awareness by the user of at least one of said at least two action based accessories having been fastened to the interactive apparatus confirming successful completion of said particular task associated therewith by the user within said predetermined time interval, and serving as a validation of successfully completing said particular task, thereby reinforcing in the user the particular desirable character trait associated said particular task (This limitation is not given patentable weight because it merely describes an intended outcome or result of using the claimed product without imposing any structural limitations. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962)(statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). Additionally, this limitation is solely directed to a desired effect of the claimed product on the human mind, without imposing any structural limitations on the claimed product itself. See MPEP 2114(II)(“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).) Therefore, this limitation is not given patentable weight. Thus, this limitation does not distinguish the claimed invention over the prior art.)
Regarding claim 39, KOSTER teaches a kit (Abstract: system; FIG. 2B, as shown comprising multiple components, including stuffed doll and markers) for providing a user with elements at hand which when combined can be used to guide behavior thereby to encourage development of desirable habits (This preamble does not further define the structure of the claimed invention because it is solely directed to the purpose or intended use of the claimed invention, and the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention. See MPEP 2111.02(II): “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”; See also In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962)(statement of intended use in an apparatus claim did not distinguish over the prior art apparatus); Additionally, see KOSTER: par. 0001: device for maintaining a record of the rotation of injection sites in an injection regimen; par. 0005: system and method … to encourage children and adults to continue use of the reminder system), comprising:
an interactive apparatus (FIG. 2B, ref. 100; par. 0025; 0034: stuffed doll 100);
at least two action based accessories fastenable to said interactive apparatus, said at least two action based accessories each including indicia perceivable by the user (FIG. 2B, ref. 60, 62, 64, 66; par. 0008; 0025; 0034: stuffed toy or doll may accept a plurality of markers, interpreted as equivalent to the claimed action based accessories, for use as future reminders of where and when the next successive injections should occur … the markers may be comprised of a hook-and-loop fastener material such as Velcro … markers may be labeled, interpreted as equivalent to the claimed indicia perceivable by the user, the labels comprising a number or letter indicator representing a sequential order in which the patient or caregiver should administer future injections … the markers may comprise labels, colors or other distinctive markings that track the time and type of the next successive injections), said indicia on each of said at least two action based accessories including an instruction for performance of a particular task to be carried out by the user (This limitation is not given patentable weight because it is directed to non-functional descriptive material. First, this limitation is directed toward printed matter because it defines the content of information of the indicia, i.e., instructions for the user to perform. See MPEP 2111.05; See also In re DiStefano, 808 F.3d 845, 848, 117 USPQ2d 1265, 1267 (Fed. Cir. 2015). Additionally, the claimed instructions are not functionally or structurally related to the associated physical substrate, i.e., the generically claimed action based accessories, as the instructions are directed to conveying a message or meaning to a human reader independent of the supporting product, and the product does not perform some function with respect to the printed matter to which it is associated. See MPEP 2111.05. In other words, the action based accessories claimed merely serve as a support to display the claimed instructions. See MPEP 2111.05; See also In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished)(Applicant asserted that the printed matter allowed the cards to be “collected, traded, and drawn”; “identify and distinguish one deck of cards from another”; and “enable[] the card to be traded and blind drawn”. However, the court found that these functions do not pertain to the structure of the apparatus and were instead drawn to the method or process of playing a game.). Additionally, where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. See MPEP 2112.01(III); See also In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining “[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.”). In this case, the printed matter, i.e., instructions, and product, i.e., action based accessories, do not depend upon each other. Thus, no functional relationship exists. Therefore, this limitation is not given patentable weight. Thus, this limitation does not distinguish the claimed invention over the prior art.), attachment of said at least two action based accessories being contingent upon completion of said task within a specified time interval (This limitation is not given patentable weight because it is solely directed to a rule for how to use the claimed product, without imposing any structural limitations on the product itself. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114; See also Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In this case, defining when the action based accessories can be fastened to the interactive apparatus amounts to rules for how to operate the device, without imposing any structural limitations on the device itself. Therefore, this limitation is not given patentable weight. Thus, this limitation does not distinguish the claimed invention over the prior art.), said particular task associated with of a one of said at least two action based accessories being different from another said particular task associated with another one of said at least two action based accessories, said performance of each said particular task associated with said one and said another of said at least two action based accessories, respectively (further defining non-functional descriptive material identified above, and thus does not distinguish the claimed invention over the prior art based on the same rationale stated above), thereby instilling in the user a different particular desirable character trait (The claimed instilling in the user a different particular desirable character trait merely defines an intended result or outcome of using the claimed product, without imposing any structural limitations on the claimed product, and therefore is not given patentable weight. Therefore, this limitation is not given patentable weight. Thus, this limitation does not distinguish the claimed invention over the prior art. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962)(statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). Additionally, this limitation is solely directed to a desired effect of the claimed product on the human mind, without imposing any structural limitations on the claimed product itself. See MPEP 2114(II)(“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).) Therefore, this limitation is not given patentable weight. Thus, this limitation does not distinguish the claimed invention over the prior art. Additionally, KOSTER teaches this limitation, see FIG. 2B, ref. 100; par. 0008; 0025; 0034: stuffed doll 100 configured to have markers 60, 62, 64, 66 attached thereto; plurality of markers for use as future reminders of where and when the next successive injections should occur … The markers may be labeled, the labels comprising a number or letter indicator representing a sequential order in which the patient or caregiver should administer future injections. In accordance with a still further aspect of the present invention, the markers may comprise labels, colors or other distinctive markings that track the time and type of the next successive injections) Therefore, this limitation is not given patentable weight. Thus, this limitation does not distinguish the claimed invention over the prior art.); and
discrete connectors being carried on said interactive apparatus (e.g., par. 0022: injection areas 2-18 of the doll 100 may be indicated in a variety of ways, such as … different fabrics with varying textures for the areas; FIG. 2B, ref. 60, 62, 64, 66 and ref. 4, 6, 8, 10, 12, 14, 16, 18; par. 0025: hook-and-loop fastener material such as Velcro to allow the markers to adhere temporarily but flexibly to the stuffed doll), and each of said at least two action based accessories including a cooperative connector for fastenable engagement with any one of said discrete connectors, said each of said at least two action based accessories being configured to permit the fastenable engagement irrespective of a position of said any one of said discrete connectors (FIG. 2B, ref. 60, 62, 64, 66 and ref. 4, 6, 8, 10, 12, 14, 16, 18; par. 0025: hook-and-loop fastener material such as Velcro to allow the markers to adhere temporarily but flexibly to the stuffed doll. As shown in Figure 2B, any marker is capable of attaching to any injection location on the stuffed doll by way of hook and loop fasteners).
Regarding claim 25 and 41, KOSTER further teaches wherein said discrete connectors carried on said interactive apparatus are disposed at spaced apart locations on said interactive apparatus (e.g., par. 0022: injection areas 2-18 of the doll 100 may be indicated in a variety of ways, such as … different fabrics with varying textures for the areas; FIG. 2B, ref. 60, 62, 64, 66 and ref. 4, 6, 8, 10, 12, 14, 16, 18; par. 0025: hook-and-loop fastener material such as Velcro to allow the markers to adhere temporarily but flexibly to the stuffed doll; FIG. 2B illustrates the injection areas at spaced apart locations); and said at least two action based accessories include a plurality of action based accessories which are all a similar shape and size (FIG. 2B; par. 0025; 0034: markers 60, 62, 64, 66, as shown having the same shape and size).
Regarding claim 26 and 42, KOSTER further teaches wherein said interactive apparatus is formed in a general shape of an organism (FIG. 2B illustrating the stuff doll 100 as generally human in shape; par. 0006: The stuffed toy may be a doll including a body having a head, torso, arms, and legs).
Regarding claim 28, KOSTER further teaches wherein said interactive apparatus comprises: an interior flexible material defining a general form of said interactive apparatus (par. 0022: stuffed doll; claim 1: the body having a stuffing filled therein); and at least one fabric covering said flexible material (par. 0022: different fabrics).
Regarding claim 31, KOSTER further teaches wherein said connectors and said cooperative connector include hook and loop fasteners (par. 0025: hook-and-loop fastener material such as Velcro to allow the markers to adhere temporarily but flexibly to the stuffed doll).
Regarding claim 32, KOSTER further teaches wherein said connectors carried on said interactive apparatus are adhered to an exterior surface of the interactive apparatus in a predetermined arrangement (FIG. 2B, ref. 4, 6, 8, 10, 12, 14, 16, 18, illustrating the injection sites arranged at predetermined locations; par. 0022: The doll may include areas that correspond suitable injection sites on the patient's body… These injection areas 2-18 of the doll 100 may be indicated in a variety of ways, such as … different fabrics; par. 0025: hook-and-loop fastener material such as Velcro … to allow the markers to adhere temporarily but flexibly to the stuffed doll).
Regarding claim 40, KOSTER further teaches wherein said interactive apparatus is formed in a recognizable shape (FIG. 2B illustrating the stuff doll 100 as generally human in shape; par. 0006: The stuffed toy may be a doll including a body having a head, torso, arms, and legs).
Claim Rejections - 35 USC § 102/103 (AIA )
Claims 27 and 43 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by KOSTER, or alternatively under 35 USC 103 as being obvious over KOSTER.
Regarding claim 27 and 43, KOSTER teaches the elements above, but does not further teach wherein: said organism is a tree having branches; and said at least two action based accessories include a leaf attachable to a one of said branches.
However, subject matter directed solely to matters relating to ornamentation which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). In this case, the claim only further defines the aesthetic design of the interactive apparatus (i.e., a tree having branches) and action based accessory (i.e., a leaf attachable to one of said branches) with no apparent mechanical function or significance, and thus does not patentably distinguish the claimed invention from the prior art. As provided with respect to the independent claims from which claims 27 and 43 depend, KOSTER teaches the claimed structural functionality, including at least one action based accessory is attachable to the interactive apparatus. By defining these elements as representing a tree with branches and a leaf, the claim merely further defines the aesthetic design of these features. Thus, claim 27 and 43 do not patentably distinguish the claimed invention over KOSTER.
Alternatively, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified KOSTER to have other shapes, including the tree with branches and a leaf shape recited in the claim, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over KOSTER, and the device of KOSTER could still be used in the same manner by providing a visual reminder of past and future injections using any shaped markers and stuffed body. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claim Rejections - 35 USC § 103 (AIA )
Claims 29 and 30 are rejected under 35 U.S.C. 103 as being obvious over KOSTER, as applied to claim 28, in view of US 5,515,563 to CHAO.
Regarding claim 29, KOSTER teaches the elements above, but does not expressly disclose wherein the at least one fabric is selected from the group consisting of plush, terrycloth, flannel, cotton, silk, corduroy, velvet and polyester.
Regarding claim 30, KOSTER teaches the elements above, but does not expressly disclose wherein the interior flexible material is selected from the group consisting of synthetic fiber, polyester fiberfill, cotton, silk and wool.
CHAO also teaches a human-shaped pillow (Abstract; col. 2, lines 60-64; FIG. 1, ref. 10) made of cotton (col. 3, lines 1-4) and filled with a resilient material, such as synthetic fiber (claim 13). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the same materials used to construct the human-shaped pillow of CHAO in the human-shaped stuffed doll of KOSTER as doing so would amount to applying a known technique of manufacturing to improve similar devices in the same way.
Claim 33 is rejected under 35 U.S.C. 103 as being obvious over KOSTER, as applied to claim 24, in view of US 2009/0188044 to DOWNER.
Regarding claim 33, KOSTER teaches the elements above, but does not expressly disclose wherein said connectors are one of sewn or glued to a exterior of said interactive apparatus. DOWNER teaches an interactive pillow for children (Abstract) that includes pieces of Velcro, sewn to the front of the pillow, for attaching interchangeable face pieces (par. 0002; 0005; claim 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the technique of sewing Velcro (aka hook and loop) pieces to the outside surface, as taught by DOWNER, into the invention of KOSTER, thereby applying a known technique of attaching Velcro to a known device ready for improvement to yield predictable results.
Claims 34-38 are rejected under 35 U.S.C. 103 as being obvious over KOSTER in view of US 2010/0211531 to ROBERTS.
Regarding claim 34, KOSTER teaches a method (Abstract: method) of rewarding positive behavior by a user in order to encourage in the user development of a desirable character trait (Examiner notes this phrase does result in a manipulative difference between the claimed invention and the prior art because it is solely directed to the purpose or intended use of the claimed invention, and the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention. See MPEP 2111.02(II): “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”; Additionally, see KOSTER: par. 0001: device for maintaining a record of the rotation of injection sites in an injection regimen; par. 0005: system and method … to encourage children and adults to continue use of the reminder system), comprising:
providing at least two action based accessories and an interactive apparatus to which said at least two action based accessories are fastenable, each of said at least two action based accessories carrying thereon indicia perceivable by the user (FIG. 2B, ref. 60, 62, 64, 66; par. 0008; 0025; 0034: stuffed toy or doll may accept a plurality of markers, interpreted as equivalent to the claimed action based accessories, for use as future reminders of where and when the next successive injections should occur … markers may be labeled, interpreted as equivalent to the claimed indicia perceivable by the user, the labels comprising a number or letter indicator representing a sequential order in which the patient or caregiver should administer future injections … the markers may comprise labels, colors or other distinctive markings that track the time and type of the next successive injections) and including an instruction for performance of a particular task, said particular task associated with of a one of said at least two action based accessories being different from another said particular task associated with another one of said at least two action based accessories (FIG. 2B, ref. 100; par. 0008; 0025; 0034: stuffed doll 100 configured to have markers 60, 62, 64, 66 attached thereto; plurality of markers for use as future reminders of where and when the next successive injections should occur … The markers may be labeled, the labels comprising a number or letter indicator representing a sequential order in which the patient or caregiver should administer future injections. In accordance with a still further aspect of the present invention, the markers may comprise labels, colors or other distinctive markings that track the time and type of the next successive injections);
having the user perform said particular task which is associated with each of said at least two action based accessories (par. 0031: patient may administer an injection to himself or herself);
adhering discrete connectors to an exterior of said interactive apparatus so as to be carried on said interactive apparatus (e.g., par. 0022: injection areas 2-18 of the doll 100 may be indicated in a variety of ways, such as … different fabrics with varying textures for the areas; FIG. 2B, ref. 60, 62, 64, 66 and ref. 4, 6, 8, 10, 12, 14, 16, 18; par. 0025: hook-and-loop fastener material such as Velcro to allow the markers to adhere temporarily but flexibly to the stuffed doll);
providing each of said at least one action based accessory with a cooperative connector fastenably engageable with said discrete connectors (FIG. 2B, ref. 60, 62, 64, 66 and ref. 4, 6, 8, 10, 12, 14, 16, 18; par. 0025: hook-and-loop fastener material such as Velcro to allow the markers to adhere temporarily but flexibly to the stuffed doll.); and
fastening each of said at least two action-based accessories to any one of said discrete connectors carried on said interactive apparatus (FIG. 2B, ref. 60, 62, 64, 66 and ref. 4, 8, 14, 16; par. 0008: The markers may be placed on the stuffed doll; par. 0025; 0034: record of a plurality of past …injections through the use of a plurality of markers … patient may use markers 60, 62, 64, 66 on a stuffed doll 100; As shown in Figure 2B, any marker is capable of attaching to any injection location on the stuffed doll by way of hook and loop fasteners)
To the extent KOSTER does not expressly disclose the fastening step as contingent upon completion of the at least one task within a specified time interval as a reward for the user having completed each said particular task within said specified time interval, ROBERTS teaches a related system and method to promote patient compliance with a dosage regimen of a prescribed pharmaceutical agent (Abstract). ROBERTS teaches that effectiveness of a particular dosage regimen of a pharmaceutical to treat a disease or disorder oftentimes depends upon the patient's strict adherence to the particular regimen, and such a regimen can require the patient to take the medication according to set time intervals (par. 0002). ROBERTS system and method includes using a card (i.e., interactive apparatus) wherein stickers (i.e., action based accessories) are fastened to the card location that indicates days and relative times according to the dosage regimen once the pharmaceutical agent administration is complete, which is associated with a reward (par. 0028).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the method of associating a reward for a user attaching action based accessories onto an interactive apparatus upon the completion of administration of a pharmaceutical agent according to a specified time interval, as taught by ROBERTS, into the invention of KOSTER, in order to incentive the user to adhere to particular regimen, thereby increasing the effectiveness of a particular dosage regimen. Moreover, defining the fastening as a reward for the user as claimed merely describes an intended purpose or benefit of the fastening which does not have an effect on how the claimed step is performed, and thus does not distinguish the claimed process over the prior art process.
Regarding claim 35, KOSTER further teaches wherein said adhering includes affixing said discrete connectors to said interactive apparatus at spaced apart locations thereon (e.g., par. 0022: injection areas 2-18 of the doll 100 may be indicated in a variety of ways, such as … different fabrics with varying textures for the areas; FIG. 2B, ref. 60, 62, 64, 66 and ref. 4, 6, 8, 10, 12, 14, 16, 18; par. 0025: hook-and-loop fastener material such as Velcro to allow the markers to adhere temporarily but flexibly to the stuffed doll; FIG. 2B illustrates the injection areas at spaced apart locations).
Regarding claim 36, KOSTER further teaches forming said interactive apparatus in a general shape of an organism (FIG. 2B illustrating the stuff doll 100 as generally human in shape; par. 0006: The stuffed toy may be a doll including a body having a head, torso, arms, and legs).
Regarding claim 37, KOSTER teaches the elements above, but does not further teach wherein: said organism resembles a tree having branches; and said at least one action based accessory includes a leaf attachable to a one of said branches. However, subject matter directed solely to matters relating to ornamentation which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). In this case, the claim only further defines the aesthetic design of the interactive apparatus (i.e., a tree having branches) and action based accessory (i.e., a leaf attachable to one of said branches) with no apparent mechanical function or significance, and thus does not patentably distinguish the claimed invention from the prior art. As provided with respect to the independent claims from which claims 27 and 43 depend, KOSTER teaches the claimed structural functionality, including at least one action based accessory is attachable to the interactive apparatus. By defining these elements as representing a tree with branches and a leaf, the claim merely further defines the aesthetic design of these features. Thus, claim 27 and 43 do not patentably distinguish the claimed invention over KOSTER.
Alternatively, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified KOSTER to have other shapes, including the tree with branches and a leaf shape recited in the claim, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over KOSTER, and the device of KOSTER could still be used in the same manner by providing a visual reminder of past and future injections using any shaped markers and stuffed body. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Regarding claim 38, KOSTER further teaches wherein said interactive apparatus comprises: an interior flexible material defining a general form of said interactive apparatus (par. 0022: stuffed doll; claim 1: the body having a stuffing filled therein); and at least one fabric covering said flexible material (par. 0022: different fabrics).
RESPONSE TO ARGUMENTS
Applicant's arguments filed 11/4/25 have been fully considered but they are not persuasive. Additionally, Applicant maintains the previously addressed arguments. Examiner incorporates by reference all previous response to arguments addressing Applicant’s previous arguments.
Applicant argues the previous rejection does not address every element claimed. However, the rejection in the previous Office Action considers all claim limitations, including identifying certain limitations that are not given patentable weight. Regarding the claimed “instruction” on the claimed action based accessories, this limitation merely defines non-functional printed matter on each action based accessory. The content of the printed matter does not perform a function with respect to the substrate to which it is associated. Moreover, the printed matter does not further define the structure of the action based accessories. Instead, the content of the printed matter relates to how the action based accessory is to be used. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Therefore, the recited “instructions” does not distinguish the claimed invention over the prior art. Nonetheless, under the broadest reasonable interpretation of the claimed instructions, KOSTER teaches this limitation (see rejection above, including par. 0008, describing a plurality of markers for use as future reminders, interpreted as equivalent to instructions, of where and when the next successive injections should occur). Additionally, the claimed “instilling in the user a different particular desirable trait” does not further define the structure of the claimed apparatus, and thus is not given patentable weight. KOSTER teaches all the structural limitations of the claim, as identified in the rejection above. Therefore, Applicant’s argument is not persuasive.
Applicant argues the newly recited subject matter “effectively establishes a new and nonobvious functional relationship between the indicia comprising instructions and the substrate (i.e., each of the at least two action based accessories) based on “the use of instructional information provided by the indicia provided on the action based accessories themselves by the user in order to make the claimed apparatus and kit functionable.” At the outset, KOSTER teaches the claimed indicia, including instructions for performance of a particular task (see rejection above, including par. 0008, describing a plurality of markers for use as future reminders, interpreted as equivalent to instructions, of where and when the next successive injections should occur). Nonetheless, the claimed indicia is interpreted as non-functional descriptive material. Applicant has not identified a new and nonobvious functional relationship between the indicia, i.e., instructions, and the underlying substrate, i.e., each action based accessory. Moreover, where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining “[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.”). To the extent the indicia disclosed by KOSTER does not include the exact information claimed, which Examiner does not concede, a difference in the content of instructions will not distinguish the claimed product from KOSTER. Additionally, “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). As stated in the rejection, KOSTER teaches the claimed structure, including markers, interpreted as equivalent to action-based accessories, bearing labels, interpreted as indicia on each action-based accessory. The claimed content of instructions, and timing requirements, are related solely to how the structure is intended to be used, with no limitations to the structure claimed, and thus do not define what the device is. Instead, the content of instructions, and timing requirements of when to fasten the action based accessories, are directed to how the device could be used, not the structure, and thus do not distinguish the claimed invention over the cited prior art.
Conclusion
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/JAMES B HULL/Primary Examiner, Art Unit 3715