DETAILED ACTION
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, 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 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 1, 5, 6, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Westersund (US Pat. No. 5,542,870) in view of Hopper et al. (herein “Hooper”; US Pub. No. 2006/0040582 A1) and in further view of Cartlidge et al. (herein “Cartlidge”; US Pub. No. 2006/0099875 A1).
Regarding claim 1, Westersund discloses a toy (Fig. 3) comprising: a base (Fig. 5, items 60 and 61) with a base inner surface (Fig. 1, item 61) and a base outer surface (Fig. 1, item 60) where the base inner surface comprises a first display area (Fig. 5, item 61 and Fig 4, item 50a or Fig. 3, item 50, and col. 5, lines 26-29) that is attachable by a user (col. 2, lines 61-67 and col 6, lines 20-31; noting this is functionally possible starting with the disclosed pieces); a first compartment door (Fig. 5, items 12a and 12b) with a first compartment door inner surface (Fig. 5, item 12a) and a first compartment door outer surface (Fig. 5, item 12b), where the first compartment door has an open position (Fig. 5) and a closed position and is attached to the base (Fig. 1), where the first compartment door outer surface comprises a first portion of an exterior display area (Fig. 1, items 19 and col. 5, lines 4-13) and the first compartment door inner surface comprises a second display area (Fig. 5, item 52 and col. 5, lines 26-42) that is attachable from the compartment door by the user (col. 2, lines 61-67 and col 6, lines 20-31; noting this is functionally possible starting with the disclosed pieces; under this interpretation, the Examiner taking the position that the inner door surface can be attached to the outer door surface); a second compartment door (Fig. 5, items 14a and 14) with a second compartment door inner surface (Fig. 5, item 14a) and second compartment door outer surface (Fig. 5, item 14b), where the second compartment door has an open position (Fig. 5) and a closed position and is attached to the base (Fig. 1), where the second compartment door outer surface comprises a second portion of the exterior display area (Figs. 1 and 2 and col. 3, lines 1-4; noting it is obvious that all of the exterior panels can “printed indicia” in the form of “colorful visual and written recitations”; see also Fig. 1, items 19 and col. 5, lines 4-13; noting the images and/or indicia can functionally be part of the “exterior display area” because it is on the exterior surface of the box, consistent with the theme of first “compartment door”) and the second compartment door inner surface comprises a third display area that is attachable from the compartment door by the user (col. 2, lines 61-67 and col 6, lines 20-31; noting this is functionally possible starting with the disclosed pieces, the Examiner taking the position that the inner door surface can be attached to the outer door surface; see also Fig. 5, item 14a, Fig. 4, item 16 and col. 5, lines 4-13; noting it can functionally be a “third display area” because at least one plant is shown on item 16), and when the first compartment door and the second compartment door are in the closed position, the first portion of the exterior display area meet to form a single continuous exterior display area for displaying a single scene (Figs. 1 and 2 and col. 3, lines 1-4; noting it is obvious that all of the exterior panels can “printed indicia” in the form of “colorful visual and written recitations”; these individual areas can functionally be construed to display “a single display” as the limitation is subjective as to what exactly is required to be “a single display” and the indicia may show related activities possible within the box, see Westersund: col. 3, lines 1-4; finally noting, when closed, the sides are “continuous” with one another to form an “exterior”) and where the single scene comprises raised elements formed in three dimensions (Fig. 2, item 18; specifically stating “animal heads 18 or objects may be molded-in-place on knobs 17”; and these heads or objects may be considered part of the overall continuous single display; noting the dinosaur head of Fig. 2, item 18 is consistent with the activity/play of Fig. 4), and one or more individual display item where the individual display item is attachable and detachable from the toy (Fig. 3 and col. 5, lines 28-32; specifically noting that “toy archers” can be functionally be placed and removed from the “balconies” of the castle). It is noted that Westersund does not specifically disclose that first display and third display (i.e. the inner door surfaces) are detachable by the user (from the outer door surfaces). However, the Examiner takes three positions with regards to this limitation. First, the ability to make the displays detachable is common sense. That is, Westersund clearly discloses that the displays (i.e. inner panels) are “attachable” by the user (col. 2, lines 61-67 and col 6, lines 20-31). Westersund also makes obvious the ability to attach the external panels with internal panels “having a variety of scenery and structures being quickly snapped-in place” (col. 2, lines 59-67). As such, making the inner display panels detachable from the external panels would be common sense to allow the user to “quickly” connect and/or reconnect a “variety of scenery and structures” to create the box. Second, the ability to detach the displays is functionally possible. As noted above, Westersund discloses the ability to “attach” the inner display to the external panels via a “snap” fit (col. 2, lines 61-67 and col 6, lines 20-31). While Westersund generally discloses that the snap connectors cannot be “pulled” apart by “a child” (col. 4, lines 48-49), it would be obvious that some amount of force could pull apart the structure; especially if it was an “adult”. Finally, it has been that making a larger structure separable is not patentable if it were desirable to gain access to either part. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961)(see applicant’s spec, page 3-4, giving no criticality for this limitation). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the inner display surface could be made separable from that exterior display surface in order to more easily change the content of each display based on its corresponding theme (see Westersund: col. 5, lines 4-13 and 25-42). In an alternative rejection, Westersund discloses that “interior scenery is provide extending horizontally from the interior of each side panel (becoming vertical when folded)” (see Fig. 4, noting plants and/or rock formations on a plurality of panels, and col. 2, lines 27-30; the Examiner noting that the actual individual “interior scenery” (i.e. the plants and rocks) may be the “display area”; emphasis added). In addition, Hopper discloses scenery that may be “removably attached” to a panel (par. [0019]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Westersund to make the individual interior scenery the “display areas” and “removably attached” to the panels as taught by Hopper because doings so would be combining prior art elements (a panel that uses interior scenery and a panel that uses removably attached scenery) according to known methods (a simple substitution of the use of removable scenery) to obtain predictable results (the continued ability to use scenery on the interior of the panels, the scenery being removably attached). Finally, and in the alternative, assuming arguendo that the combined Westersund and Hooper do not make obvious that the single scene comprises raised elements formed in three dimension, the Examiner takes two additional positions. First, Westersund discloses a scene inside the box with three dimension elements (Fig. 4, items 50a and col. 5, lines 26-42). As such, using three dimensional raised elements on the outside of the box would be a mere rearrangement of parts (See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)). Second, Cartlidge discloses an open and close display wherein an exterior surface wherein the surface specifically contains raised elements that can create a single continuous scene (Figs. 1a and 1b, item 20 on surfaces 4 and 8 and par. [0061]; noting both sides may have raised elements and the sides are “continuous” with one another). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that using raised three dimensional elements on the exterior surface to create a single scene would not modify the operation of the device: that is, the exterior surface would create a three dimensional visual scene much like the interior surface. In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Westersund and Hooper to use raised three dimensional elements on the exterior as taught by Cartlidge because doing so would be combining prior art elements (an exterior package depicting a scene, and an exterior package depicting a scene using three dimensionally raised elements) according to known methods (a simple substitution of one into the other) to yield predictable results (the continued ability to depict a scene on the exterior of the package, the scene being created by raised three dimensional elements).
Regarding claim 5, the combined Westersund, Hopper, and Cartlidge disclose that the first compartment door is attached to the base by a hinge (Westersund: Fig. 1, items 17a-d and col. 4, lines 16-18).
Regarding claim 6, the combined Westersund, Hopper, and Cartlidge disclose that the second compartment door is attached to the base by a hinge (Westersund: Fig. 1, items 17a-d and col. 4, lines 16-18).
Regarding claim 11, the combined Westersund, Hopper, and Cartlidge disclose that the toy is made from a material selected from the group consisting of PVC, plastic, rubber, wood and metal (Westersund: col. 6, lines 41-44; noting “polystyrene” is a specific type of “plastic”).
Regarding claim 12, the combined Westersund, Hopper, and Cartlidge disclose that the toy is manufactured by a process selected from the group consisting of casting, molding, cutting, sewing, 3d printing and machining (Westersund: col. 6, lines 41-44; noting “injection molding” meets “molding”; also noting this is merely a product-by-process limitation).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Westersund (US Pat. No. 5,542,870) in view of Hopper et al. (herein “Hooper”; US Pub. No. 2006/0040582 A1) in view of Cartlidge et al. (herein “Cartlidge”; US Pub. No. 2006/0099875 A1) and in further view of Lin (US Pat. No. 6,439,953 B1).
Regarding claim 10, it is noted that the combined Westersund, Hopper, and Cartlidge do not specifically disclose that the one or more individual display items include a tab that is sized to couple with a corresponding slot on the toy. However, Westersund discloses the use of toys that can be placed and/or removed from the three-dimensional landscape (col. 5, lines 29-33; disclosing specifically “toy archers, toy swordsmen, horse-mounted knights”). In addition, Lin discloses a three-dimensional toy (abstract) wherein the one or more individual display items include a tab that is sized to couple with a corresponding slot on the toy (Fig. 1; noting the “tabs” that fit into slots at the base). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Westersund, Hopper, and Cartlidge to make the one or more individual display items include a tab that is sized to couple with a corresponding slot on the toy as taught by Lin because doing so would be use of a known technique (using tabs on items that attach to slots in a base to create a three dimensional display) to improve a similar product (a three-dimensional landscape with a base that can have items placed and/or removed from it) in the same way (using tabs on items that attach to slots to create a three dimensional display, the tabs and slots use to keep the items attached to the base).
Response to Arguments
Applicant's arguments filed 7/11/25 have been fully considered but they are not persuasive.
First, regardless of what the previous rejection may or may have not shown, applicant has amended claim 1. As such, a final office action is proper based on the amendment.
Second, the Examiner now specifically acknowledges and discusses the requirement of a “single continuous exterior display” as claimed in claim 1. As noted above, “Westersund” (noting applicant repeatedly and incorrectly refers to the reference as “Westerlund”) discloses indicia on the exterior surface (see Remarks, received 7/11/25,page 1; applicant acknowledging that Westersund discloses that the indica may be “colorful visual and written recitations of those activities which are possible within the box”). The Examiner notes that first, what is considered to be a “single continuous exterior display” is completely subjective. Two completely different topics may be considered a single display if they both give an overall impression to a user. Sides, even if at right angles, can be considered “continuous” because there are no gaps in the surface. In addition, Westersund is specifically stating that the indicia is indicative of the possible activities within the box (col. 3, lines 1-4). As such, the indicia used on the exterior surfaces are clearly related to one purpose/topic (i.e. activities possible within the box). As such, this indicia can be considered linked and meet the limitation of displaying a “single exterior display”. As the sides have no gaps, the surface can be considered “continuous”. Restated, Westersund reads on this limitation.
Next, Westersund discloses the use of a dinosaur head on the knob in Fig. 2, item 18. At least the knob is raised from the flat surface which has the indicia and the knob including the dinosaur head is a three-dimensional object. The object depicted (Fig. 2, item 18; noting a dinosaur head) is also indicative of the “possible activities within the box” (i.e. the dinosaur landscape of Fig. 4). As such, Westersund can be considered to also broadly show “that the single scene comprises raised elements formed in three dimension” (see applicant’s Remarks, page 2; applicant arguing that neither Westersund or Hopper disclose this, but noting applicant does not take into account the knobs showing the dinosaur head).
The Examiner also gives alternate rejections. For example, the use of raised three-dimensional elements on the exterior surface would be a mere rearrangement of parts because Fig. 4, item 50a already show these raised elements on the inside of the box. The Examiner also brings in Cartlidge. Cartlidge clearly discloses that the exterior of the container has raised three dimensional elements (Figs. 1a and 1b, item 20 on surfaces 4 and 8 and par. [0061]; noting both sides may have raised elements). These raised elements are also indicative of the content on the inside; consistent with the description in Westersund.
No other specific arguments are given.
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 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, Nicholas Weiss can be reached on (571)270-1775. 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
1/20/26/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711