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 in response to applicant’s remarks and amendments dated 07/16/2026. Claims 1 has been amended. Claims 14-17 were previously withdrawn. Claims 5, 15, 16, and 20 have been cancelled. Claims 21-24 are new. Claims 1-4, 6-14, 17-19, and 21-24 are currently pending.
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 1-4 and 6-13 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 lines 17-20 now recites what appear to be duplicate recitations with different wording. Claim 1 lines 11-12 recites a memory configured to store a sequence of the detecting by the reader, and then lines 14-16 recite the processor sets value in context with a sequence, to generate an output that is reflective of the sequence. However, now lines 17-20 recites the processor is adapted to determine a logical order, perform an interpretation, and generate a meaningful output. This reads as the same processing steps as were already recited. It is unclear if this is intended to be a second reading with a second output, or the same reading with output that was previously claimed. Further, it is unclear if the “logical order” and the “sequence” are intended to be different or the same. A sequence is a logical order. Further, there do not appear to be more than one sequence / logical order, therefore it is unclear why now different terms are being used for what seems to be the same element. The examiner also notes that “a sequence” recited in line 15 appears to be the same sequence previously referenced and is, therefore, an antecedent basis issue. Presumably this second reference was intended to be “the sequence.” Appropriate correction / clarification is required.
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 1-4, 7-9, 11-13, and 18-19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Herman et al. (US Patent No. 5,364,272).
In Reference to Claim 1-4, 7-9, 11-13, and 18-19
Herman teaches (Claim 1) An educational toy set comprising: a. a shape (items 14, fig. 1) having at least one shape-identifier (items 50, fig. 2) corresponding to one or more shape feature(s) (column 4 lines 7-10 and 54-58); b. a shape-identification element having at least one reader (items 46, fig. 2) to detect and/or activate at least one shape-identifier inside an effective range of the at least one reader (column 4 lines 18-21 and 49-58); c. a processing unit, adapted at processing a detecting and/or activating of at least one shape-identifier by the reader (item 20, fig. 1, column 4 lines 49-58), and d. an output unit, adapted at giving an auditive output, reflective of the processing of said detecting and/or activating in conjunction with the one or more shape feature(s) (column 2 line 65 – column 3 line 7); and e. a memory unit configured to store a sequence of the detecting and/or activating of the at least one shape-identifier by one or more of the at least one reader (column 3 lines 20-24), and wherein each of the one or more shape feature(s) includes any one or a combination of: shape form value, number value, letter value, or picture value of the shape, and the processing comprises setting a shape feature value in context with a sequence of shape features, thereby generating a meaningful output which is reflective of the sequence of shape features (column 2 line 65 – column 3 line 5), wherein the processing unit is adapted to determine a logical order of the detected shape features from the sequence of shape features, perform a contextual interpretation based on a determined logical order, and generate the meaningful output that matches the logical order from the contextual interpretation (column 2 line 65 – column 3 line 5; letter blocks read in sequence is a contextual interpretation based on a determined logical order; also note this appears to simply be a re-stating of what has already been claimed);
(Claim 2) comprising a plurality of shapes, each having at least one shape-identifier corresponding to one or more shape feature(s) (items 14a, 14b, 14c, etc., fig. 1; column 2 lines 44-52, column 2 lines 65-66);
(Claim 3) comprising a plurality of shape-identification elements each having at least one reader and each having an effective range of the at least one reader (items 46, fig. 7, column 4 lines 18-48);
(Claim 4) where the output is reflective of a feature of the one of the plurality of shape-identification elements that has performed the detecting and/or activating of at least one shape-identifier (column 2 line 65 – column 3 line 5);
(Claim 7) comprising a plurality of effective ranges, each of a particular reader, and the effective ranges are adjusted so that they do not overlap (column 4 lines 18-48, items 46 read items 50 in close contact only and do not read adjacent items 50);
(Claim 8) wherein the output in conjunction with the one or more shape feature(s) is reflective of a feature selected from the group consisting of: the shape form value, the number value, the letter value, or the picture value of the shape (column 2 line 65 – column 3 line 5);
(Claim 9) whereby shape-identification element comprises at least one shape receptacle adapted at receiving a shape to bring the shape into an effective range associated with said shape receptacle (items 12a-c, fig. 1, column 2 lines 43-52);
(Claim 11) whereby the processing unit is further adapted at prompting a user by means of auditive output by the output unit (column 3 lines 30-34, instructional information).
(Claim 12) whereby the shape-identification element(s), the processing unit and the output unit are part of a play tray and the shape(s) are separate and adapted to be brought into an effective range of at least one reader inside the play tray, in particular by fitting a shape into a shape receptacle (fig. 1, items 14, into items 12 of item 10, “base” includes processing unit, output unit, and shape identification elements);
(Claim 13) whereby at least two of a plurality of shapes are designed to be stackable (fig. 1, cubes are stackable, note this is merely an intended use).
(Claim 18) wherein the shape receptacle is part of the play tray (fig. 1, items 12 are part of item 10).
(Claim 19) wherein the processing unit is configured to process the at least one shape-identifier as a function of at least one parameter selected from: the one or more shape feature(s), a number of shape-identifier(s), a position of the reader, and a time of reading (column 2 line 65 – column 3 line 5).
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 1-4, 7-9, 11-13, 18-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Herman et al.
In Reference to Claims 1-4, 7-9, 11-13, and 18-19
The examiner notes that, as best understood, Herman teaches all of the elements of these claims as discussed above. However, in the alternate view that Herman does not specifically teach the order of processor steps attempting to be claimed, an alternate rejection is set forth below:
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 processing steps in a different or more particular order simply as a matter of engineering design choice, since it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
Since the prior art of Herman teaches all of the elements claimed, namely, a shape having a shape identifier, a shape-identification element, a processing unit, an output unit, and a memory; and, since the functions of the memory and processor in Herman are configured to read shape elements in a sequence, to match that sequence to a predetermined sequence, and then to provide an output that corresponds to the sequence, merely claiming different processor / memory programming steps that produce this same function is an obvious matter of engineering design choice, and is not a patentable advance. The function claimed and the function in the prior art are the same, therefore, simply claiming a different order of processing which does not produce any new or unexpected results is not a patentable advance.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Herman in view of Sabo et al. (US Patent No. 9,333,427).
In Reference to Claim 6
Herman teaches all of claim 1 as discussed above.
Herman fails to teach the feature of claim 6.
Sabo teaches (Claim 6) comprising an interface for connecting the processing unit with at least one further information processing device (column 3 lines 10-12; column 7 lines 25-39, column 8 lines 42-49, USB).
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 block reading system device of Herman with the feature of a further information processing device as taught by the block reading system device of Sabo for the purpose of providing more processing power, more instructions, and a wider range of capabilities, making the device more comprehensive, and more attractive to the users.
Further, the examiner notes that it has been held that rearrangement of parts is an obvious matter of design choice where the operation of the device is not modified, see In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), and that making components separate but connected vs. integral is an obvious matter of engineering design choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Since all of the components and functions claimed are taught in Herman, merely claiming a further connected information processing unit which would not perform any functions different from or additional to the claimed functions is an obvious matter of engineering design choice, and is not a patentable advance. Simply adding additional processing devices external to the device is merely a matter of rearrangement of parts / separating integral parts, and is not a patentable distinction.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Herman in view of Creedican (US PGPub. No. 2017/0136380 A1).
In Reference to Claim 10
Herman teaches all of claim 1 as discussed above.
Herman fails to teach the feature of claim 10.
Creedican teaches (Claim 10) whereby the shape has a shape surface made of wood (paragraph 0016).
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 electronic block system of Herman with the feature of making the blocks of wood as taught by the electronic block system of Creedican for the purpose of selecting a known and economical material, making the device inexpensive and easy to make, making the device more attractive to the manufacturers.
Further, the examiner notes that it has been held that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Making the shapes of wood, plastic, rubber, fiberglass, or any other suitable material is an obvious matter of engineering design choice, and is not a patentable advance.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Herman in view of Shi (US PGPub. No. 2016/0346686).
In Reference to Claim 21
Herman teaches all of claim 1 as discussed above.
Herman further teaches (Claim 21) wherein the processing unit prompts an error notification if the [orientation] of shape features does not match a predetermined operation stored in a memory (column 6 lines 23-28).
Herman fails to teach an error for an incorrect sequence, specifically.
Shi teaches providing an error message for an incorrect sequence (paragraph 0046 lines 29-44).
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 electronic sequencing game system of Herman with the feature of an error notification for an incorrect sequence as taught by the electronic sequencing game system of Shi for the purpose of providing additional feedback to a user for misspelled words, making the system more comprehensive, more useful, and more attractive to the users.
Claims 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Herman in view of Jeffway, Jr. et al. (US Patent No. 7,428,994 B1).
In Reference to Claim 22
Herman teaches all of claim 1 as discussed above.
Herman does not specifically teach the interpretation is based on a previously detected sequence.
Jeffway teaches (Claim 22) wherein a contextual interpretation is based upon a previously detected sequence (column 8 line 60 – column 9 line 13).
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 sequencing game system of Herman with the feature of providing an interpretation based on a previously detected sequence as taught by the game system of Jeffway for the purpose of adding complexity to sequences, increasing difficulty, making the game progressive, and more interesting and attractive to the users.
In Reference to Claim 23
Herman teaches all of claim 1 as discussed above.
Herman further teaches a sequence of shape features (column 2 lines 65-66).
Herman fails to teach the remaining features of claim 23.
Jeffway teaches (Claim 23) wherein the meaningful output is a prompting to a user by the output unit to place a new [color] matching the logical order (column 8 line 60 – column 9 line 13).
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 sequencing game system of Herman with the feature of providing an output prompt to place a new element in a sequence as taught by the game system of Jeffway for the purpose of adding complexity to sequences, increasing difficulty, making the game progressive, and more interesting and attractive to the users.
In Reference to Claim 24
Herman teaches (Claim 24) An educational toy set comprising: a shape (items 14, fig. 1) having at least one shape-identifier (items 50, fig. 2) corresponding to one or more shape feature(s) (column 4 lines 7-10 and 54-58); a shape-identification element having at least one reader (items 46, fig. 2) to detect and/or shape- identifiers inside an effective range of the at least one reader (column 4 lines 18-21 and 49-58); a processing unit, adapted at processing a detecting and/or activating a sequence of shape-identifiers by the reader (item 20, fig. 1, column 4 lines 49-58), an output unit, adapted at giving an auditive output, reflective of the processing of said detecting and/or activating in conjunction with the one or more shape feature(s) (column 2 line 65 – column 3 line 7, audio and/or visual output); and a memory unit configured to store a detected sequence of the detecting and/or activating of shape-identifiers by the at least one reader (column 3 lines 20-24), and wherein each of the one or more shape feature(s) includes any one or a combination of: shape form value, number value, letter value, or picture value of the shape (column 2 lines 65-66), [].
Herman does not specifically teach the interpretation is based on a previously detected sequence.
Jeffway teaches (Claim 24) wherein the processing unit performs contextual interpretation based upon a previously detected sequence of shape-identifiers (column 8 line 60 – column 9 line 13).
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 sequencing game system of Herman with the feature of providing an interpretation based on a previously detected sequence as taught by the game system of Jeffway for the purpose of adding complexity to sequences, increasing difficulty, making the game progressive, and more interesting and attractive to the users.
Response to Arguments
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
Applicant’s argument that Herman does not teach determining a logical order of detected shape features is not persuasive. This is precisely what Herman teaches. See action above. Further, these newly added recitations are confusing and appear to be duplicate recitations. See action above for further details.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 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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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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