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 .
Election/Restrictions
This action is in response to applicant’s remarks and amendments dated 07/28/2025. Claims 1, 6, and 7 have been amended. Claims 2-5 and 8 have been cancelled. Claims 1, 6, 7, and 9 are currently pending.
Claim Objections
Claims objected to because of the following informalities: The claims have many grammatical errors which require correction. For instance, lines 17, 21, 29, and claim 7 recite “the said” which is redundant. Only one of “the” or “said” should be recited. Claim 1 line 19 recites “said square shaped block,” which appears it should be “blocks.” Line 19 appears to be missing a comma after “B.” Line 28 recites “including,” which should presumably be “including:” or similar. Line 34 recites “blocks; and;” which is grammatically incorrect. This list is non-exhaustive. Applicant is required to review and correct these and all such similar grammatical issues.
Claim Rejections - 35 USC § 112
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, 6, 7, and 9 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.
Claim 1 line 17-19 recite that the said six faces are imprinted with a letter and with indicia relating to that letter. However, the drawings and specification seem to indicate that only one or a couple of the faces are imprinted with a letter while only one or a couple of other faces are imprinted with pictorial indicia. Therefore, it is unclear if each face was intended to be claimed with a letter or not, and whether each face was intended to be claimed with related indicia, or if only some of the faces are intended to have letters and others indicia. Appropriate correction is required.
Similarly, lines 25-29 recite indicia on six faces of each block includes... and then recites a long list of indicia. However, it is presumed that not each block was intended to include all of the indicia listed. It is, therefore, unclear what indicia is intended to be included on which block and which face. The claim currently reads as though each block includes every recited indicia, which would result in extremely congested indicia on the blocks, and, does not seem to be what is shown or described in the application. Appropriate correction is required.
Claim 1 lines 21 and 26 recite “the said remaining letters,” and “said alphabets,” which both lack proper antecedent basis and are grammatically incorrect. Presumably there was intended to be a recitation to and then subsequent reference to the alphabet here. Appropriate correction is required.
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 1, 6, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Levin (US Patent No. 2,483,833) in view of Mejia (US Patent No. 7,011,525 B2).
In Reference to Claims 1, 6, 7, and 9
Levin teaches (Claim 1) A product for promoting creative thinking, initiating conversations and improving social skills, said product comprising: twenty-six square-shaped blocks each having six faces (fig. 1 and column 3 lines 56-58); wherein the said six faces of a first of said twenty-six square shaped blocks imprinted with a letter A and indicia relating to said letter A, the six faces of a second of said square-shaped block imprinted with a letter B and indicia relating to said letter B and the six faces of remaining 24 square-shaped blocks each imprinted with a letter and indicia relating to the said remaining letters ending with the last block relating to letter Z and indicia relating to letter Z (fig. 1 and column 3 lines 56-58); wherein said indicia on said six faces of each of said square-shaped blocks include big [] letters of said alphabets, full words, [], numbers, symbols, pictures of animals, flora / fauna, objects, tools, structures, sporting equipment, illustrations depicting diverse subject matter including, nature scenes, seasons, weather, human activities, pictures depicting human emotions related to the said letter of that block (fig’s 1-4; column 3 line 56 – column 4 line 8; at least words, letters, numbers, and a variety of pictures); wherein said twenty-six square-shaped blocks comprising said indicia used in a game setting to educate individuals from diverse age groups and social and educational backgrounds participating in said game setting to form creative sentences, questions, expressions and talking points using said letters and indicia on said twenty-six square-shaped blocks; and; said participants in said game setting forming said creative sentences, questions, expressions and talking points using said letters and indicia on said twenty-six square-shaped blocks to initiate conversations and interact socially with other participants in said game setting (this is intended use language that does not add structure to the claims, the blocks could be used this way, meeting these limitations);
(Claim 6) wherein the participants in the game setting are assigned a number of the blocks which they place side by side to form a sentence, a question, an expression, a talking point using the letters and other indicia on the six faces of their assigned number of blocks to initiate a conversation with the other participants in the game setting (this is an intended use that does not add structure to the claim, the blocks could be arranged);
(Claim 7) wherein the participants in the game setting use the letters and other indicia on the said six faces of all twenty-six blocks to form creative sentences, write a story and share the said creative sentences and said story with the other participants in the game setting (this is an intended use that does not add structure to the claim, the blocks could be used to form sentences, etc.);
(Claim 9) wherein the blocks are used as an icebreaker activity in a classroom setting, used to overcome writer’s block, used as a conversation piece in social gatherings, family activities, used to build a dialog for therapeutic purposes (this is an intended use that does not add structure to the claim, the blocks could be used in these settings).
As noted in the 112 rejection, it is unclear what indicia in the recited list in claim 1 is intended to be specifically included. In the event that everything in the recited list is intended to be included Levin fails to teach partial words, small letters and some of the other picture indicia claimed.
Mejia further teaches partial words, small letters, and a wider variety of indicia (fig’s 1 and 2).
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 letter / language blocks of Levin with the feature of partial words, small letters, and additional variety of indicia as taught by the letter / language blocks of Mejia for the purpose of providing additional phonetic sounds and additional visual bridges to sounds as taught by Mejia (summary), making the device more comprehensive, enhancing the learning properties of the device, making the device more useful and attractive to the users.
Further, the examiner notes that it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of toy block does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. letter / number / picture indicia and the substrate e.g. toy block, which is required for patentability.
Intended Use Language Note
The majority of the claim limitations recited are intended uses, which do not add structure to the claims. The examiner notes that it has been held that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Further still, it has also been held that "The recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “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).
Response to Arguments
Applicant's arguments filed 07/28/2025 have been fully considered but they are not persuasive.
Applicant explains the intended uses of the prior art blocks, and then explains the intended use of the blocks of the present invention. These intended uses do not obviate the rejection. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the only structure recited in the claims is indicia on blocks. Since the prior art teaches similar indicia on blocks, and is fully capable of performing the intended uses claimed, there are no structural differences found that are patentably distinguishable from the prior art. See action above for further details.
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