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 6-9, 11-15, 17-19, 22, and 23 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 6 and 13 now claim “a plurality of recess bounded by a portion of the sidewall and a cruciform structure” (emphasis added). However, the term “cruciform” is not in the originally filed specification. The word appears to be applicant’s interpretation, after the fact, of what Figs. 2, 4, and 10 appear to show. As such, the language is considered new matter.
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.
Claims 6-9, 11-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Woodhouse (US Pat. No. 9,067,147 B1) in view of Christiansen et al. (herein “Christiansen”; US Pat. No. 4,205,482).
Regarding claim 6, Woodhouse discloses a coupling toy system (Fig. 23A, item 2305 or 2307), comprising at least one portion of a toy figure having a top surface, a bottom surface, and a side wall extending between the top and bottom surfaces (Fig. 23A, item 2305; noting all these surfaces would be inherent), wherein the bottom surface has a plurality of recesses sized to frictionally engage the plurality of studs (Fig. 5C, items 526, col. 11, line 66 to col. 12, line 4, see Fig. 11A for a clear view of the underside of the legs as positioned together to create four recesses, or see Christiansen: Figs. 1 and 2 for further evidence; also see col. 7, line 65 to col. 8, line 11 discussing functional language of the frictional engagement). It is noted that Woodhouse does not specifically disclose a toy platform having a plurality of studs with a spacing between the plurality of studs wherein the plurality of studs are arranged in a parallel matrix, a plurality of recesses extending at least partially through the side wall, wherein the plurality of recesses are spaced to correspond with the spacing of the parallel matrix of the plurality of studs of the toy platform, further wherein the plurality of recesses are equally separated from one another by a cruciform shaped sidewall extending upwardly from the bottom surface. However, Woodhouse does make obvious that the bottom of the toy figure (i.e. the bottom of the mini-figure) can be connected to studs (col. 11, line 66 to col. 12, line 4; see specifically Fig. 24B showing engagement to a lower block) and what can be considered a cruciform structure between the recesses (Fig. 23, item 2303 being exemplary to show the bottom surface). In addition, Christiansen discloses an identical toy figure used in conjunction with a toy platform having a plurality of studs with a spacing between the plurality of studs wherein the plurality of studs are arranged in a parallel matrix (Fig. 2, item 31, and see Figs. 12 and 13 for the “parallel matrix”, noting engagement with a 4x4 parallel stud arrangement is obvious), a plurality of recesses extending at least partially through the side wall (Fig. 5 below, items 27 for the tops of both legs, i.e. the holes with relief portions into the side walls, to fulfill the “plurality” limitation), wherein the plurality of recesses are spaced to correspond with the spacing of the parallel matrix of the plurality of studs of the toy platform (Figs. 1 and 2), further wherein the plurality of recesses are equally separated from one another by a cruciform shaped sidewall extending upwardly from the bottom surface (see Fig. 1; reproduced below; noting “cruciform” as defined by dictionary.com means “being in the shape of a cross; cross-shaped”). In the alternative, regarding the exact shape of the [cruciform] intermediate portion, 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 entire spec, noting the term “cruciform” is not even present, so there can be no criticality for it). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Woodhouse to use a toy platform having a plurality of studs with a spacing between the plurality of studs wherein the plurality of studs are arranged in a parallel matrix, a plurality of recesses extending at least partially through the side wall, wherein the plurality of recesses are spaced to correspond with the spacing of the parallel matrix of the plurality of studs of the toy platform, further wherein the plurality of recesses are equally separated from one another by a cruciform shaped sidewall extending upwardly from the bottom surface as taught by Christiansen because doing so would be combining prior art elements (a toy figure that can be connected to studs, and a platform with a parallel matrix of studs that connects to an identical toy figure having a plurality of quadrilaterally spaced recesses with a cruciform intermediate portion, and a plurality of recesses extending at least partially through the side wall) according to known methods (a simple substitution of one element into the other) to obtain predictable results (using a toy platform with a parallel matrix studs to engage a toy figure that is capable of being attached to studs using a quadrilaterally spaced recesses with a cruciform intermediate portion, the toy figure having a plurality of recesses that at least partially extends through the side wall). In the addition, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact shape of the intermediate portion (aka the cruciform) would not be significant: that is, the recesses would frictionally engage the studs of the platform regardless of the exact shape of the intermediate portion.
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Regarding claim 7, the combined Woodhouse and Christiansen disclose that the top surface is connected to a toy character or a toy building structure (Woodhouse Fig. 23A, noting this entire larger structure can be considered a toy character, or in the alternative, the top half of the mini-figure, item 2305).
Regarding claim 8, the combined Woodhouse and Christiansen disclose that of the plurality of studs are cylinder (Christiansen: Fig. 2, items 30 and 31), and the plurality of recesses are partially cylindrical (Christiansen: Figs. 5 above , items 27 on the tops of each leg; noting it is “partially” because a portion is cut out of the side wall). In the alternative, regarding using a “partially cylindrical recess”, 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. [0030], applicant specifically stating that the recess may be cylindrical rather than partially cylindrical). 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 recess would not be significant: that is, the recesses would friction fit with the four studs regardless of whether it was partially or fully cylindrical.
Regarding claims 9 and 15, the combined Woodhouse and Christiansen disclose that the plurality of recesses comprise two recesses (Christiansen: Fig. 5 above, item 27 for the tops of both legs). It is noted that the combined Woodhouse and Christiansen do not specifically disclose that the plurality of recess comprise four recesses. However, Christiansen discloses four recesses configured to engage four studs on a platform (Figs. 1, 5, and 2 above), with two of those recesses having the recess that at least partially extend through the side wall (Fig. 5 above, items 27 for the tops of both legs). In addition, regarding making all four recesses extend partially through all the side walls, it has been held that the duplication of parts is not given patentable weight unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that making all four recesses have a recess that extends at least partially through the wall would not make the invention perform differently: that is, all four recess would continue to engage the stud matrix.
Regarding claim 11, the combined Woodhouse and Christiansen disclose that at least one portion of the toy figure comprises two separated structures on the toy figures (Woodhouse: Fig. 23A, items 2305 and 2307 as each foot or shoe).
Regarding claims 12 and 17, the combined Woodhouse and Christiansen disclose that the two separated structures on the toy figures are two shoes or two extremities connected to a toy character (Woodhouse: Fig. 23A, items 2305 and 2307; noting these may functionally be considered feet or shoes, or at a minimum, two extremities).
Regarding claim 13, Woodhouse discloses a coupling toy kit system (Fig. 23A, item 2305), comprising a toy figure (Fig. 23A, items 2305 or 2307) each comprising a least one coupling portion having a top surface, a bottom surface, and a side wall extending between the top and bottom surfaces (Fig. 23A, item 2305; noting this is all inherent), wherein the top surface of the at least one coupling portion of the toy figure is connected to a toy character or a building structure (Fig. 23A, proximate the neck of the mini-figure is connected to the larger “toy character”) and the bottom surface of the at least one coupling portion of the toy figure has a plurality of recesses bounded by a portion of the sidewall (Fig. 5C and Fig. 23A, item 2303 being exemplary, noting side walls are obvious, the Examiner referring to the two top recesses at the top of each leg, easiest to see in Fig. 23A,item 2303). It is noted that Woodhouse does not specifically disclose a toy platform having a top surface with a group of at least four studs disposed equidistant from one another, a plurality of recesses bound by a cruciform structure extending upwardly from the bottom surface, wherein each recess in the plurality of recess is sized and spaced to simultaneously frictionally engage at least one stud from the group of at least four studs. However, Woodhouse appears to show a cruciform structure (Fig. 23, item 2303 being exemplary to show the bottom surface). In addition, Christiansen discloses an identical toy figure used in conjunction with a toy platform having at least four studs disposed equidistant from one another (Fig. 2, item 31, and see Figs. 12 and 13 for the four studs equidistant), a plurality of recesses bound by a cruciform structure extending upwardly from the bottom surface (see Fig. 1; reproduced above; noting “cruciform” as defined by dictionary.com means “being in the shape of a cross; cross-shaped”), wherein each recess in the plurality of recess is sized and spaced to simultaneously frictionally engage at least one stud from the group of at least four studs (Figs. 1 and 2 for further evidence of “simultaneous frictional engagement”; see also Woodhouse: col. 7, line 65 to col. 8, line 11 discussing functional language of “frictional engagement”). In the alternative, regarding the exact shape of the [cruciform] intermediate portion, 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 entire spec, noting the term “cruciform” is not even present, so there can be no criticality for it). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Woodhouse to use a toy platform having a plurality of studs with a spacing between the plurality of studs wherein the plurality of studs are arranged in a parallel matrix, a plurality of recesses extending at least partially through the side wall, wherein the plurality of recesses are spaced to correspond with the spacing of the parallel matrix of the plurality of studs of the toy platform, further wherein the plurality of recesses are equally separated from one another by a cruciform shaped sidewall extending upwardly from the bottom surface, and wherein each recess in the plurality of recess is sized and spaced to simultaneously frictionally engage at least one stud from the group of at least four studs as taught by Christiansen because doing so would be combining prior art elements (a toy figure that can be connected to studs, and a platform with a parallel matrix of studs that connects to an identical toy figure having a plurality of quadrilaterally spaced recesses with a cruciform intermediate portion, and a plurality of recesses extending at least partially through the side wall) according to known methods (a simple substitution of one element into the other) to obtain predictable results (using a toy platform with a parallel matrix studs to engage a toy figure that is capable of being attached to studs using a quadrilaterally spaced recesses with a cruciform intermediate portion, the toy figure having a plurality of recesses that at least partially extends through the side wall). In the addition, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact shape of the intermediate portion (aka the cruciform) would not be significant: that is, the recesses would frictionally engage the studs of the platform regardless of the exact shape of the intermediate portion.
Regarding claim 14, the combined Woodhouse and Christiansen discloses that each of at least four studs are cylindrical (Woodhouse: Fig. 11A, item 1005 being exemplary; noting the studs are cylindrical), and the plurality of recesses are partially cylindrical (Christiansen: Figs. 5 above , items 27 on the tops of each leg; noting it is “partially” because a portion is cut out of the side wall). In the alternative, regarding using a “partially cylindrical recess”, 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. [0030], applicant specifically stating that the recess may be cylindrical rather than partially cylindrical). 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 recess would not be significant: that is, the recesses would friction fit with the four studs regardless of whether it was partially or fully cylindrical.
Claims 18, 19, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Woodhouse (US Pat. No. 9,067,147 B1) in view of Christiansen et al. (herein “Christiansen”; US Pat. No. 4,205,482) and in further view of Ahn et al. (herein “Ahn”; US Pub. No. 2015/0367245 A1).
Regarding claims 18 and 19, it is noted that the combined Woodhouse and Christiansen do not specifically disclose one or more magnets operative to facilitate coupling of the toy figure to the platform. However, both Woodhouse and Christiansen disclose the use of building blocks using studs and receiving openings (Fig. 23A and 2, respectively). In addition, Ahn discloses a similar building block wherein the blocks have one or more magnets operative to facilitate coupling of the block to another block (abstract and Fig. 3). Thus, it would have been obvious to one of ordinary skill in the art to modify the combined Woodhouse and Christiansen to use one or more magnets to facilitate coupling of the toy figure to the platform as taught and suggested by Ahn because doing so would be use of a known technique (using magnets in a building block) to improve a similar product (building blocks with studs and receiving openings) in the same way (using magnets in a building block with studs and receiving openings, the magnets allowing for an increased connection beyond the studs and receiving openings).
Regarding claims 22 and 23, it is noted that the combined Woodhouse and Christiansen do not specifically disclose one or more magnets are disposed in the at least one coupling portion of the toy figure. However, both Woodhouse and Christiansen disclose the use of building blocks using studs and receiving openings (Fig. 23A and 2, respectively). In addition, Ahn discloses a similar building block wherein the blocks have one or more magnets disposed in the at least one coupling portion of the toy (abstract and Fig. 3). Thus, it would have been obvious to one of ordinary skill in the art to modify the combined Woodhouse and Christiansen to use one or more magnets disposed in the at least one coupling portion of the toy figure as taught and suggested by Ahn because doing so would be use of a known technique (using magnets in a building block) to improve a similar product (building blocks with studs and receiving openings) in the same way (using magnets in a building block with studs and receiving openings, the magnets allowing for an increased connection beyond the studs and receiving openings).
Response to Arguments
Applicant's arguments filed 9/4/24 have been fully considered but they are not persuasive.
Recission of Prior Statements of Patentability
Applicant asks the Examiner to “acknowledge that…applicant hereby rescinds The Remarks appearing in the March 16, 2024 Response to Final Office Action at pages 3-5”. The Examiner acknowledges applicant’s attempt to rescind previous statements, but will not do so. Restated, there is no basis (in the MPEP or otherwise) to require the Examiner to rescind prosecution history. Any and all comments and claim amendments are part of the prosecution file wrapper and may be pertinent in the event applicant wishes to appeal the office action, or in the event the application publishes to patent.
103
At the onset, the Examiner sees no support for the use of the term “cruciform”. The word appears to be a word that applicant has used after-the-fact to try to quantify the shape of the intermediate portion as viewed in the figures (for example, see applicant’s Fig. 4). It could be easily argued that the shape, as shown in applicant’s Fig. 4, does not have a “cross” appearance. Restated, the plain meaning of the term “cruciform”, again which applicant has specifically selected after-the-fact, is defined by dictionary.com “being in the shape of a cross”. It is not “cross-like” is appearance, or a “pseudo-cross shape”. In any event, assuming arguendo that the Examiner is incorrect concerning the new matter, applicant has no criticality for the exact shape because the exact shape is not detailed in the specification.
Furthermore, the Examiner respectfully disagrees with applicant that Woodhouse and Christiansen do not show this cruciform limitation. For example, as used in the rejection above, Christiansen: Fig. 1 shows that the structure between the recesses can be considered “cruciform” in shape. Furthermore, it would appear that, based on the lack of criticality, the exact shape is not critical so that any type of shape for the intermediate portion could be used.
No other arguments are advanced.
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 extension fee 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 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, Eugene Kim can be reached on (571)272-4463. 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
9/16/24
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
Prosecution Insights