DETAILED ACTION
Specification
The specification filed 10/2/25 is accepted.
Drawings
The drawings filed 10/2/25 are accepted but continue to be object to for not showing every claimed feature of the invention.
That is, the drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the blocks having adhesive “covering each external surface of the polyhedral building block, and adhesive forming a continuous coating on each external surface except at one or more discrete regions of the surface” of claim 1 and 20 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-3, 10, 12, 13, and 20 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. Both independent claims 1 and 20 now claim that the blocks having adhesive “covering each external surface of the polyhedral building block, and adhesive forming a continuous coating on each external surface except at one or more discrete regions of the surface” (language taken from claim 1, but claim 20 using similar language). The Examiner fails to see where this is anywhere discussed in the specification (written description or the drawings). The written specification never discusses “discrete regions of the surface…not covered by adhesive and adjacent portion of the adhesive”. Furthermore, “one or more” creates a range that is non-existent within the written specification. Par. [0045], which discusses the “removable labels” as currently claimed in claim 1 and 20, never discusses any “discrete regions” or that there are “one or more” of these “discrete regions”. This limitation is not shown in the original drawings and is not specifically recited in the written description. As such, the amendments to claims 1 and 20 constitute new matter.
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 1-3, 10, 12, 13, and 20 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. Claims 1 and 20 now claim “one or more discrete regions”. The phrase “one or more” is a range that does not have any support within the specification.
Response to Arguments
Applicant's arguments filed 10/2/25 have been fully considered but they are not persuasive.
On page 9 to 10 of the Remarks, filed 10/2/25, applicant argues the following concerning support for the newly added language (emphasis added):
Support for the amended feature is found in Applicant’s specification, as originally filed, because the specification explains that “the adhesive 112 is either applied to or imbued within the building blocks... so as to give the same a sticky or tacky nature,” preferably a chemical substance with bonding strength to hold a block on a vertical wall yet allow later separation and reuse. It is further disclosed that a “dust resistant adhesive” may be used to preserve tackiness for reuse. Each building block has multiple flat sides (faces) intended for adhesive contact with other blocks, and adhesive film may be attached on the sides of the blocks, indicating substantially all side surfaces can be coated. The specification also teaches that indicia (symbols such as letters, numbers, graphics) can be printed or otherwise applied on each side of every block, including via “removable and/or reusable labels.” These symbols occupy non-adhesive portions of the surfaces, as reflected in amended claims 1 and 20. Additionally, the specification and drawings state that the blocks are “free from glue, mechanical fasteners, and magnets,” relying exclusively on the adhesive coating for inter-block connectivity. Claim 20 has been amended for consistency to recite that each “adhesive building block” has an adhesive coating on all external surfaces, and to clarify that the kit includes removable graphic labels that cling to the adhesive-coated blocks (supported by Applicant’s specification at §[0030], which allows indicia in the form of removable labels). These amendments do not add new matter, but rather provide explicit basis and clarity for distinguishing the claimed invention over the cited art.
Respectfully submitted, there is nothing “explicit” about applicant’s attempt to provide support for the limitation. Applicant argues a convoluted approach that does not point to any specifical originally filed figures or citations from the written specification to support the amendment (noting the only specific paragraph cited to, par. [0030], simply states “Figure 7 includes a flow diagram exemplifying a method for assembling the adhesive building block”). In fact, applicant appears to try to provide support from the amended claims (which is improper).
At best, applicant attempts to make out a case that the “one or more discrete regions” are “obvious”. However, “obvious” is not the standard. The originally filed specification (via the drawings or the written description) should clearly “anticipate” the claimed language or limitation (i.e. there should be at least an inherent teaching of the claimed limitation if not explicitly taught). An “obviousness” analysis is not sufficient to provide support for a claimed feature.
The Examiner would also argue that recently submitted drawings filed 1/8/25 (and later entered on the record 1/24/25), which is reproduced below, evidence that applicant never even originally considered that the block had “one or more discrete regions” of non-adhesive because none is actually shown. Restated, the Examiner notes that, based on current claims 1 and 20, the adhesive covers “each external surface of the polyhedral building block, the adhesive forming a continuous coating on each the external surface except at one or more discrete regions of the surface” (emphasis added). As such, each surface has some adhesive on it and discrete regions are formed on the surface within that adhesive coating. However, recently submitted Figs. 1 and 2 (provided below) clearly do not showing this limitation.
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That is, recently submitted Fig. 1 appears to show entire surfaces free of adhesive. Recently submitted Fig. 2 appears to show the entire surface of the block covered in adhesive. None of the figures show the adhesive on each surface, and discrete areas or regions within that surface being free of adhesive. The Examiner provides the above discussion as evidence to show that it does not appear that applicant ever intended the surfaces to have discrete regions. Rather, applicant attempts to create limitations in order to overcome the prior art.
The Examiner also notes that Fig. 4, reproduced below, never shows this limitation either. Fig. 4 presumably shows the label, item 118 (see applicant’s par. [0045]; discussing “indicia 118” and “removable and/or reusable labels”; noting it is somewhat unclear from Fig. 4 what boundary defines the “label”). However, Fig. 4 never shows the adhesive coating as compared to the label, and definitely does not show the “one or more discrete regions” within the adhesive coating.
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As such, the drawings do not clearly show the claimed limitation. As neither the drawings nor the written description sufficiently teach, inherently or otherwise, the new claim amendments, the claim amendments are considered new matter.
The Examiner also wonders, as per the title, how does the removable label stick to the block when title specifically states “Removable non-adhesive graphics”? That is, if the label is a “removable non-adhesive graphic” and thus does not have any adhesive, and the area of the block does not have any adhesive, how does the label stick to the block? The specification never explains this.
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, 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
10/15/25
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711