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. Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer . Claims 1-3, 8, 9, and 15-20 are rejected on the ground of nonstatutory double patenting a s being unpatentable over claims 1-17 of U.S. Patent No. 11,501,659 in view of Kapell . The limitations of claim 1 are taught or suggested by the claims of the ‘659 patent as follows: Claim 1 Claim 1 of ‘659 patent A building set, comprising: a tray having a first row and a second row, each row having a plurality of marker positions; A magnetic building set, comprising: a plurality of trays, each having at least one indent on a first surface of each of the plurality of trays, and at least one indent on a second surface of each of the plurality of trays … ten-frame trays having ten indents on an upper surface and ten indents on a lower surface; a plurality of markers each configured for interchangeably fitting with the plurality of marker positions on the tray; a plurality of unit markers for positioning in the indents on the first and second surfaces of each of the plurality of trays; a connection mechanism having: a first connection on a first side of each of the plurality of markers; a magnetic connection for attaching the plurality of unit markers to the first and second surfaces of each of the plurality of trays, wherein one of the unit markers fitted into in an indent on the first surface of a first of the plurality of trays also fits into an indent on the second surface of a second of the plurality of trays a second connection on a second side of each of the plurality of markers; [see below re: Kapell ] and a third connection at each of the plurality of marker positions; wherein the third connection interchangeably mates with the first connection and the second connection of the plurality of markers; a magnetic connection for attaching the plurality of unit markers to the first and second surfaces of each of the plurality of trays, wherein one of the unit markers fitted into in an indent on the first surface of a first of the plurality of trays also fits into an indent on the second surface of a second of the plurality of trays wherein the tray and plurality of markers are configurable in various exercises and games to teach at least one of numeracy, arithmetic, and spelling. wherein the magnetic building set is configurable in various exercises and games to teach at least one of numeracy, elementary arithmetic, and spelling While the claims of the ‘659 patent do not explicitly recite that the tray comprises a first row and a second row as recited, applicant is advised that it is proper under MPEP 804(II)(B)(2)(a) to use the specification as a guide to learn the meaning of a term in the claim. Further, the scope of the claims is to be determined not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. The portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application. In this case, it is proper to consider the specification when considering the meaning and scope of “ tray ” as recited in the claims. Figures 68-71 of the ‘659 patent teach a tray having first and second rows. The claims of the ‘659 patent disclose or suggest the claim limitations with the exception of the provision of a second connection means on a second side of the marker. This feature is known in the art, as taught for example at col. 3 , lines 4-12 and col. 4, lines 4-8 of K apell , and would have been obvious to one of ordinary skill in the art for the purpose of providing a double-sided magnetic marker which can be attached so as to display either side of the marker. The limitations of claim s 2 and 3 are suggested in claim 1 of the ‘659 patent (“ asymmetrical placement of the magnets such that the attractive or repulsive force between one or more indents within a tray and one or more unit markers placed within the indents depends on the orientation of either or both of the unit marker and the tray ”) . Claim 3 recites an intended use of the device, which is not sufficient to impart patentability to the claim. The limitations of claims 8 and 9 are taught by the claims of the ‘659 patent as viewed in combination with col. 27, lines 42-55 of the specification. The provision of hook and loop fasteners are also considered to be an obvious substitution of one known element for another to achieve predictable results. The limitations of claims 15-18 are disclosed in claim 1 of the ‘659 patent. The limitations of claims 1 9 and 20 are disclosed or suggested in claim 1 of the ‘659 patent in view of Kapell , as discussed above with respect to claim 1 . Claims 4 - 7 are rejected on the ground of nonstatutory double patenting a s being unpatentable over claims 1-17 of U.S. Patent No. 11,501,659 in view of Kapell , and further in view of Hunts. The claims of the ‘659 patent as viewed with Kapell disclose or suggest the claim limitations with the exception of the provision of a magnet floatingly disposed in a cavity in the marker. This feature is known in the art, as taught for example by Hunts at col. 1, lines 35-43 and in claim 1 , and would have been obvious to one of ordinary skill in the art for the purpose of allowing a user to attach the marker in a variety of configurations. With respect to claims 5 and 6, the recitation of asymmetrical placement of the magnet in claim 1 of the ‘659 patent viewed with Hunts suggests the claim limitations Allowable Subject Matter Claims 10-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT KURT FERNSTROM whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-4422 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 10-6 . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Peter Vasat can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-7625 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KURT FERNSTROM/ Primary Examiner, Art Unit 3715 September 3, 2025