DETAILED ACTION
Election/Restriction
Newly submitted claim 29 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 29 now claims that “the second end of at least one connector is partially spherical and the base part comprises a tapered cylindrical hole configured to engage the second end” (as seen in Fig. 6C) . However, previous presented claim 23 claimed that “the three-dimensional base part has one or more cylindrical studs” (as seen in Fig. 11B). As such, by way of the figures, the Examiner assumes that these are mutually exclusive connecting structures. Thus, applicant appears to be going after a different embodiment or species than what was previously presented and acted on during prosecution. This newly presented claim 29 also appears to be in direct contradiction to the specific election on 10/29/24 which elected to pursue original claim 8 (“wherein the mating section comprises a recess to engage a stud [of a base]”).
Newly submitted claim 30 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 30 now claims that “the three-dimensional base part is a plastic LEGO style toy brick” (as seen in Fig. 21). However, previous presented claim 26 claimed that “the three-dimensional base part comprises a vehicle” (as seen in Fig. 1D; emphasis added). As such, by way of the figures, the Examiner assumes that these are mutually exclusive base structures. Thus, applicant appears to be going after a different embodiment or species than what was previously presented and acted on during prosecution.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 30 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1-8, 10, 11, and 23-28 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. The term “predominately” in claim 1, line 3 is a relative term which renders the claim indefinite. The term “predominately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 23-24 and 26 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 23 and 26 claim the specifics of the “three-dimensional base part”. However, claim 1 clearly states that the preamble is directed at “A toy figure comprising…a three-dimensional base part configured to support the toy figure” (emphasis added). As such, claim limitations directed at the three-dimensional base part are outside the scope of the preamble for claim 1 because the preamble of claim 1 only claims “the toy figure”. To overcome the rejection, applicant should amend the preamble of claim 1 to include both the toy figure and the three-dimensional based part. Claim 23 should also read – that the three-dimensional base part has one or more cylindrical studs to engage an integral receptacle on the second end of each plurality of connectors, wherein the receptacle is configured to press fit over the one or more cylindrical studs--.
Claims 27 and 28 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. The term “predominately” in claim 27, line 3 is a relative term which renders the claim indefinite. The term “predominately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 1-8, 10, 11, 23, 25, 27, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over by Andersen (US Pat. No. 6,761,609) in view of Broussard, Sr. (herein “Broussard”; US Pat. No. 3,879,874) and in further view of Bourdelais et al. (herein “Bourdelais”; US Pat. No. 6,326,109 B1).
Regarding claim 1, Williams discloses a toy figure (Fig. 1, collectively items 5 and 3) comprising: a three-dimensional base part configured to support the toy figure on an external surface (Fig. 1, item 1; noting the LEGO base); a plurality of predominantly flat building sheets (Fig. 1, item 5), a plurality of connectors (Fig. 1, items 3; noting four are shown), each connector comprising at least one grooved member integrated into the connector on a first end (Fig. 2; noting “groove” connector item 4 on what can be considered the first end), wherein each of the plurality of connectors are configured to directly engage with a portion of at least one of the plurality of building sheets, via the at least one grooved member (Fig. 1), to hold each of the plurality of building sheets in a desired position in three-dimensional space relative to the base part, wherein each of plurality of connectors are configured to affix to the base part via a second end (Figs. 1 and 2, item 7; noting the bottom can be the second end). It is noted that Andersen does not specifically disclose using photo sections, each photo section comprising a first layer comprising an image receptive material rendered with a first digital image, and a second layer comprising an adhesive material; and a third layer attached to the first layer by the second layer. However, Andersen discloses using building sheets that fit into the groove of a holder (Fig. 1). In addition, Broussard discloses the use of a photo section that is inserted into the groove of a holder with a first layer having a first image (Figs. 7 and 9). Finally, Bourdelais discloses a photo section, each photo section comprising: a first layer comprising an image receptive material rendered with a first digital image (Fig. 2, item 22 on the top of item 18, col. 4, lines 11-14 and col. 4, line 29-30, and col. 6, lines 14-19), and a second layer comprising an adhesive material (Fig. 2, item 20 and col. 6, lines 17-19); and a third layer attached to the first layer by the second layer (Fig. 2, item 22 on the bottom side of item 18). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Anderson to make the groove directly attach to a photo section, each photo section comprising a first layer comprising an image receptive material rendered with a first digital image, and a second layer comprising an adhesive material; and a third layer attached to the first layer by the second layer as taught by Broussard and Bourdelais because doing so would be applying a known technique (using a picture to attach to a groove in a connector, the picture having a first layer with a digital image, a second adhesive layer, and a third layer attached to the first layer) to a known product (a plurality of toy figures that have grooves on a first end of a connector) ready for improvement to yield predictable results (using a picture to attach to a groove in a connector instead of a building sheet, the picture having a first layer with a digital image, a second adhesive layer, and a third layer attached to the first layer and the connector attaching the picture to a base part).
Regarding claim 2, the combined Andersen, Broussard, and Bourdelais disclose that the third layer comprises the image receptive material rendered with a second digital image (Bourdelais: Fig. 2, item 22 on the bottom side of item 18 and col. 6, lines 14-19; specifically disclosing a “two-sided image”).
Regarding claim 3, the combined Andersen, Broussard, and Bourdelais disclose that the plurality of photo sections are each formed with a single sheet of the image receptive material that is folded along a fold line to form the first layer and the third layer of the plurality of photo sections from the single sheet (Bourdelais: Fig. 2 and col. 6, lines 8-19; Fig. 1; making obvious “folded along a line” at item 16; consistent with the written description as cited).
Regarding claim 4, the combined Andersen, Broussard, and Bourdelais disclose that the second digital image is a mirror image of the first digital image (Bourdelais: col. 4, lines 11-32; making obvious the use of “the same image”). In the alternative, regarding printing the same image on the other side, it has been held that the duplication of parts is not given patentable weight unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that using the same image on the second side would not produce new and unexpected results: that is, the second side of the substrate would show the same image that is already produced on the first side. In a second alternative, it has been held that no patentable weight is given to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983). Here, the substate is the base that the image is printed on. As the photographic image has no functional relationship to the actual substrate that it is printed on, the actual content of the image is not given any patentable weight.
Regarding claim 5, the combined Andersen, Broussard, and Bourdelais disclose that one of the photo sections forms a one part flat toy figure comprising a body and a personalized photo face (Broussard: Fig. 7, item 10; noting the subject of the photo can be whomever is “desired” and thus “personalized; also noting an upper torso reads on “body”). In an alternative, it has been held that no patentable weight is given to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983). Here, the substate is the base that the image is printed on. As the photographic image has no functional relationship to the actual substrate that it is printed on, the actual content of the image is not given any patentable weight.
Regarding claim 6, the combined Andersen, Broussard, and Bourdelais disclose that the at least one grooved member comprises a first member and a second member each having an opposing surface for engaging, through friction or tension, at least one of the plurality of photo sections (Andersen: Fig. 2; noting there are four members created by the “+” shaped grooves which reads on at least a first and second member).
Regarding claim 7, the combined Andersen, Broussard, and Bourdelais disclose that the plurality of connectors comprise a mating section, on the second end, to removably engage with the three-dimensional base part (Anderson: Fig. 2, item 7 as seen in Fig. 1).
Regarding claim 8, the combined Andersen, Broussard, and Bourdelais disclose that the mating section comprises a recess to engage a stud to removably engage the at least one grooved member to the three-dimensional base part (Anderson: Fig. 1; noting this is obvious; noting it is actually the connector that is engaged to the base via the recess, but the first end of the connector has the grooved member).
Regarding claim 10, the combined Andersen, Broussard, and Bourdelais disclose that the image receptive material includes at least one of: Zink stickers, Zink paper, instant film paper, thermal printer paper, plain paper, sticker paper, vinyl sticker paper, label paper, glossy paper, a laminate covering, and photo paper (Bourdelais: col. 2, lines 24-26; noting “photographic paper” or “photo paper”).
Regarding claim 11, it is noted that the combined Andersen, Broussard, and Bourdelais do not disclose that the first digital image includes a digitized photo of a hand drawn illustration and a digital photograph of a face (emphasis added). However, Broussard discloses a personalized photograph of a face (Fig. 7, item 10; noting the subject of the photo can be whomever is “desired” and thus “personalized; also noting an upper torso reads on “body”). In addition, it has been held that no patentable weight is given to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983). Here, the substate is the base that the image is printed on. As the photographic image has no functional relationship to the actual substrate that it is printed on, the actual content of the image is not given any patentable weight.
Regarding claim 23, the combined Andersen, Broussard, and Bourdelais disclose that the three-dimensional base part has one or more cylindrical studs to engage an integral receptacle on the second end of each plurality of connectors, wherein the receptacle is configured to press fit over the one or more cylindrical studs (Andersen: Fig. 1; noting this is obvious).
Regarding claim 25, the combined Andersen, Broussard, and Bourdelais disclose that the image receptive material is receptive to hand coloring by at least one of ink, pen, pencil or crayon (Bourdelais: Fig. 2, item 22 on the top of item 18, col. 4, lines 11-14 and col. 4, line 29-30, and col. 6, lines 14-19; noting this is functionally possible given the substrate, and the multitude of writing instruments that can be used).
Regarding claim 27, the combined Andersen, Broussard, and Bourdelais disclose that the second end of the connector comprises a receptacle configured to receive a cylindrical stud integral to the base part, and wherein the connector is predominantly cylindrical (Andersen: Figs. 1 and 2; noting this could be considered “predominantly cylindrical”; emphasis added). In the alternative, regarding the exact shape of the connector, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [00131], giving no criticality to the cylindrical shape). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the connector would not be significant: that is, the connector would attach to a base regardless of its exact outer shape.
Regarding claim 28, the combined Andersen, Broussard, and Bourdelais disclose that the at least one grooved member comprises two crossing grooves (Andersen: Fig. 2).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over by Andersen (US Pat. No. 6,761,609) in view of Broussard, Sr. (herein “Broussard”; US Pat. No. 3,879,874) in view of Bourdelais et al. (herein “Bourdelais”; US Pat. No. 6,326,109 B1) and as evidenced by Pedersen (US Pub. No. 2013/0210315 A1).
Regarding claim 24, the combined Andersen, Broussard, and Bourdelais disclose that cylindrical studs has a diameter of 4.8 mm (Andersen: Fig. 1; noting Andersen disclosing typical LEGO style studs, see assignee of the patent; see Pedersen: par. [0019] evidencing that LEGO studs are inherently 4.8 mm in diameter). In the alternative, regarding the exact diameter, it has been held that if a change in the relative dimensions over the prior does not make the claimed invention perform differently, the claimed device is not patentably distinct from the prior art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)(see applicant’s spec, giving no criticality because the dimension is not disclosed). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact diameter of the stud would not yield a patentably distinct difference: that is, the cylindrical stud would affix the figure to the base regardless of its exact diameter.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over by Andersen (US Pat. No. 6,761,609) in view of Broussard, Sr. (herein “Broussard”; US Pat. No. 3,879,874) in view of Bourdelais et al. (herein “Bourdelais”; US Pat. No. 6,326,109 B1) and in further view of Harms et al. (herein “Harms”; US Pat. No. 6,616,500 B1).
Regarding claim 26, it is noted that the combined Andersen, Broussard, and Bourdelais do not specifically disclose that the three-dimensional base part comprises a vehicle; and wherein each of the plurality of predominantly photo sections are configured to appear to be riding in the vehicle. However, Andersen disclose the ability to attach toy figures to a LEGO style base having studs (Figs. 1). However, Harms discloses a LEGO style base having studs in the form of a vehicle (Fig. 1, item 9). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Andersen, Broussard, and Bourdelais to make the three-dimensional base part comprise a vehicle; and wherein each first of the plurality of predominantly flat first portions are configured to appear to be riding in the vehicle as taught and suggested by Harms because doing so would be simple substitution of one element (using a LEGO base in the form of a vehicle) for another (a flat LEGO base having studs, toy figures attached to the LEGO base) to obtain predictable results (using a LEGO base in the form of a vehicle, the studs allow for toy figures to be attached giving the appearance of riding in the vehicle).
Response to Arguments
Applicant’s arguments with respect to claims 1-8, 10, 11, and 23-28 have been considered but are generally moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Restated, the only reference reused from the previous rejection is Bourdelais. Applicant does not specifically argue this reference in the Remarks.
The Examiner will also state this for the record. Claim 1 states “wherein each of the plurality of connectors are configured to directly engage with a portion of the at least plurality of photo sections” (emphasis added). “Configured to” denotes language that is functionally possible given the structure. As such, the structure is Andersen can clearly be “configured to directly engage with a portion of the at least plurality of photo sections”. That is, the structure is present in Andersen to functional engage a photo section. The Examiner brings in Broussard to unequivocally show that this engagement with a photo section is obvious.
Also, for the record, the language in claim 27 that states “wherein the second end of the connector comprises a receptacle configured to receive a cylindrical stud integral to the base part” does not impart any limitations on the base part. That is, the “base part” is not encompassed in the preamble of claim 1 and thus this language is merely functional language.
Conclusion
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
9/8/25 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711