Detailed 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/27/2025 has been entered. Claim 1 is amended. Claims 9 and 13-20 are cancelled. Claims 7-8 and 10-12 are withdrawn from examination. New claims 21-25 are added. Claims 1-8, 10-12, and 21-25 remain pending.
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 .
Response to Amendments and Arguments
Applicant’s amendments to claim 1 regarding the ratio of waterglass to sand is noted. Upon further search and consideration, a rejection over a new secondary art is made in this office action and is detailed below in the 35 USC 103 section.
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 and 21-25 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 recites “the object being a final good selected from the group consisting of a toy, a medallion, a building block, and furniture” which is a broader limitation than that recited afterwards: “wherein when the object is a building block, the object is selected from the group consisting of a brick, a block, a building frame, a shingle and a roofing tile”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claim 1 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 1-6 and 21-25 are dependent on claim 1 and are rejected as well.
For the purpose of Examination, the Examiner considers the narrower limitation of “building block” being a required feature of claim 1.
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 (i.e., changing from AIA to pre-AIA ) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over DOWNIE (The Ultimate Book of Saturday Science – of record), hereinafter DOWNIE, in view of FOSECO (Non-Ferrous Foundryman's Handbook, chapter 14; sodium silicate bonded sand), hereinafter FOSECO. Note that the italicized text below are the instant claims.
Regarding claims 1 and 21-25, DOWNIE discloses An object made of waterglass-bonded sand, the object being a final good selected from the group consisting of a toy, a medallion, a building block, and furniture, wherein when the object is a building block, the object is selected from the group consisting of a brick, a block, a building frame, a shingle and a roofing tile {note section 35 USC 112(b) above, [P 34-36] note mixing dry sand with sufficient amount of water-glass water mix, note a small sandcastle consists of building blocks (block) usually made by a bucket, note the picture of the sandcastle and the top that resembles a block or building block}.
DWWNIE, however, is silent on the ratio of waterglass to sand.
In the same field of endeavor that is related to sodium silicate (waterglass) bonded sand, FOSECO discloses wherein said waterglass-bonded sand is fashioned from a moldable composition comprising between about 3 parts and about 10 parts waterglass for every 100 parts sand (w/w) (claim 1), wherein said waterglass-bonded sand is fashioned from a moldable composition comprising between about 5 parts and about 7 parts waterglass for every 100 parts sand (w/w) (claim 21) {[P 205] note the highlighted sections}.
Note that FOSECO teaches the advantages and disadvantages of the ratio of waterglass to sand {[P 205] note the highlighted sections}. Therefore, FOSECO recognizes this ratio as a result-effective variable affecting the desired properties of the object.
It is well established that determination of optimum values of result-effective variables (in this case the effect of waterglass to sand ratio on the desired properties of object) is within the skill of one practicing in the art {see MPEP 2144.05 (ll)(B)}. At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have optimized this ratio which is a result-effective variable through routine experimentation to have determined the ratio necessary to achieve the desired properties of a sandcastle made by DOWNIE that in certain cases will lead to the claimed ratios.
Regarding the last limitation of claim 1 and claims 22-24 limitations reciting “so that object does not lose substantial structural integrity when immersed for less than 15 minutes in sea water (claim 1), wherein the object loses all structural integrity only after between 7 and 8 hours immersion in sea water (claim 22), wherein the object does not lose substantial structural integrity when immersed for less than 30 minutes in sea water (claim 23), wherein the object does not lose substantial structural integrity when immersed for less than 60 minutes in sea water (claim 24)”, the Examiner submits that as established above, and since it is within the skill of an artisan to have selected the claimed ratios to obtained the desired properties, the properties recited in this limitation will be present in the object of modified DOWNIE.
Regarding claim 2, modified DOWNIE discloses comprising not less than 50% by weight said waterglass-bonded sand {[P 34-36] note that the sand castle is made of water glass bonded sand thus nearly all of this material or more than 50%}.
Regarding claim 3, modified DOWNIE discloses wherein sand in said waterglass-bonded sand is beach sand {[P 34] note the discussion on building sandcastle on the beach, thus the sand used is beach sand}.
Claims 4-6 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over DOWNIE as applied to claim 1 above, and further in view of COMPTON (US 3,447,56 – of record), hereinafter COMPTON.
Regarding claims 4-6, and 25, modified DOWNIE discloses all the limitations of claim 1 as discussed above. DOWNIE, however, is silent on the object being a toy of the form of animal figure or toy building block and weighing less than 1000g.
In the same field of endeavor that is related to molded sand object, COMPTON discloses being a toy (claim 4), weighing not more than 1000 g (claim 5), the object being a toy selected from the group consisting of a human figure, an animal figure, a vehicle figure, a container, a digging implement, and a toy building block (claim 6), the object being a toy selected from the group consisting of a vehicle figure, a container, a digging implement, and a toy building block (claim 25) {note toy is made of building block to aggregates of sand, [FIGs. 3, 10], [claim 1], [C6, L74-75]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the sandcastle of modified DOWNIE with the animal toy figure of COMPTON. Note that it has been held that a simple substitution of one known element for another is likely to be obvious when predictable result are achieved {see MPEP 2143 (I)(B)}. Predicable results are achieved because in this case both are used as molded sand objects and in the same field of endeavor.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748