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 .
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Golden-Morace (US 2010/0311528). Note the basis for the rejections set forth in the office action filed May 28, 2025. Regarding the amendment to claim 1, note paragraph [0019] of Golden-Morace stating that the fabric article (100) is a substantially spherical object where the spherical shape would take form in the absence of any natural or unnatural forces acting thereon. Thus, the fiber ball is resilient in order to return to its spherical shape.
Claims 1, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stillinger (US 4,756,529). Regarding claim 1, Stillinger discloses a ball comprising a plurality of individual elastomeric filaments (10a, 10b, 10c) that are bundled together with a fastening fiber (14) at a central core. The filaments define fibers that form a fiber ball. Further, Stillinger teaches that the filaments are cut at a predetermined length from the fastening fiber to define the fiber ball. Note column 2, lines 55-60. Regarding the limitation for the fibers to be resilient, note the Abstract stating that the filaments are elastomeric. Further, note column 2, lines 57-60 stating that the filaments spring back to the center portion. Thus, the filaments define a resilient fiber ball. Regarding the limitation for the ball to be three inches in diameter, note column 2, lines 32-34 stating that the ball is about 3-5 inches in diameter.
Regarding the limitation for the ball to emit scrunchy tactile sensations when manually compressed, note column 2, lines 35-41 and column 2, line 61 through column 3, line 4 teaching that the ball is manually compressed by a user and collapses significantly upon impact. Using a broadest reasonable interpretation, the ball of Stillinger emits scrunchy tactile sensations when manually compressed. Regarding the limitation for the cut fiber bundle to be heated in a spinning oven at a predetermined temperature and for a predetermined duration, it is noted that this limitation is a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USP 964, 966 Fed. Cir. 1985). Here, both Stillinger and the instant invention define a compressible ball comprising a plurality of fibers which are fastened at a central core by a fastening fiber to form the spherical ball. Thus, because both Stillinger and the instant invention define the same end product, the product-by-process claim limitation is anticipated by Stillinger. See MPEP 2113.
Regarding claim 11, Stillinger teaches a length for the fibers between 3-5 inches. The size inherently defines a size that looks like a snowball to a user. The spherical shape inherently defines an appearance that looks like a snowball to a user.
Regarding claim 12, note column 2, lines 35-41 and column 2, line 61 through column 3, line 4 of Stillinger teaching that the ball is compressible upon impact. Further, note column 2, lines 55-60 stating that the filaments have a natural tendency to form the substantially spherical form. Thus, Stillinger teaches that the ball can recover to its original form after impact and when no external forces are acting thereon.
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 AJA. 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/AJA/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, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,993,876. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent substantially define the same invention as that of claims 1, 11, and 12. Note the basis for the rejections set forth in the office action filed May 28, 2025. Regarding the amendment for the fibers to be resilient, note claim 9 of ‘876 stating that the fiber ball is operable to compress upon impact and the recover to its original form after impact. Thus, the fibers are resilient.
Claims 1, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 8,992,356. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent substantially define the same invention as that of claims 1, 11, and 12. Note the basis for the rejections set forth in the office action filed May 28, 2025. Regarding the amendment for the fibers to be resilient, note claim 7 of ‘356 stating that the fiber ball is designed to recover to its original form after impact. Thus, the fibers are resilient.
Allowable Subject Matter
Claims 13-21 are allowed.
Claims 2-9 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.
Response to Arguments
Applicant's arguments filed August 22, 2025 have been fully considered but they are not persuasive. The applicant states that the fiber ball of the instant invention is resilient and refers to paragraphs [022] and [0038] of the specification in stating that the ball deforms upon impact and then recovers to its original form after impact. Similarly, Golden-Morace meets the same limitation by teaching that the fabric article (100) is a substantially spherical object where the spherical shape would take form in the absence of any natural or unnatural forces acting thereon. Note paragraph [0019].
Regarding the rejection under 35 U.S.C. 102, the applicant contends that the ball of Golden-Morace does not meet the limitation for a ball that is composed of bundled fiber beads that mimic the look and feel of a snowball. The applicant states that the rolled strips of fabric of Golden-Morace do not meet the limitation for a plurality of individual fiber beads as recited. However, this is not persuasive as the applicant appears to be requiring the fiber beads to include limitations not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Here, the claim merely defines the ball comprises a plurality of individual fiber beads. The rolled tubes as taught by Golden-Morace are made from a fiber material. Note paragraph [0032] defining the fibers as cloth fabric either natural or synthetic. The fabric is made of fibers and thus, the rolled tubes of Golden-Morace meet the limitation for the ball to comprise a plurality of individual fiber beads.
Regarding the applicant’s argument that the spherical shape of Golden-Morace is a fleeting desire with no resilience, this argument is also not persuasive as Golden-Morace particularly teaches that the ball returns to the spherical shape. Indeed, the teaching of Golden-Morace is very similar to that recited by applicant. Paragraphs [022] and [0038] of the instant specification state that the ball deforms upon impact and then recovers to its original form after impact. Paragraph [0019] of Golden-Morace states that the fabric article (100) is a substantially spherical object where the spherical shape would take form in the absence of any natural or unnatural forces acting thereon.
Regarding the applicant’s statement that the bead fibers of the instant invention are formed by forcing material through spinneret holes to form the bead, while this can be appreciated, the instant claim does not recite any limitations relating to the spinneret for forming the fiber beads and merely sets forth a plurality of fiber beads. Further, the instant specification is silent as to any particular definition for the limitation “fiber beads”. Thus, a plain meaning for the language must be used for the limitation. Note MPEP 2111.01. Using a broadest reasonable interpretation, the rolled fabric tubes of Golden-Morace meet the claim limitation by providing a plurality of fiber beads that are bundled together at their centers by a fastening fiber to form the spherical ball. Again, the applicant appears to be relying on limitations not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding the applicant’s argument that the ball of Golden-Morace does not mimic the look and feel of a snowball by emitting scrunchy tactile sensations, it is noted that this limitation is a relative limitation. The ball of Golden-Morace is taught as being compressible by a user and thus, will inherently emit scrunchy tactile sensations to some extent during compression. The applicant appears to be arguing a difference in degree that is not presented in the instant claims and thus, this argument is not persuasive. Using a broadest reasonable interpretation and because Golden-Morace particularly teaches compression of the resilient ball, the ball will inherently emit scrunchy tactile sensations when manually compressed.
Regarding the applicant’s argument that Golden-Morace does not teach the use of a spinning oven to form the ball, it is noted that this limitation is a product-by-process limitation. Note MPEP 2113. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USP 964, 966 Fed. Cir. 1985). Here, both Golden-Morace and the instant invention define a compressible ball comprising a plurality of fibers which are fastened at a central core by a fastening fiber to form the spherical ball. Thus, because both Golden-Morace and the instant invention define the same end product, the product-by-process claim limitation is anticipated by Golden-Morace.
Regarding claim 11, the applicant contends that the ball of Golden-Morace resembles a sea anemone and not a snowball. This argument is also not persuasive as the ball of Golden-Morace resembles a snowball to some extent. For example, simply providing the spherical ball of Golden-Morace with a three inch diameter resembles a spherical snowball. The applicant appears to be arguing limitations or requirements for the ball to resemble the snowball that are not recited in the instant claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding claim 12, the applicant contends that the ball of Golden-Morace will not return to its spherical shape after experiencing external forces destroying its initial shape. However, this argument is not persuasive as paragraph [0019] of Golden-Morace clearly states that the fibers return to the spherical shape when no forces are acting upon the ball. Thus, Golden-Morace teaches that the fibers compress upon impact and then recover to the spherical shape after impact and when no forces are acting upon the ball. It is noted that this limitation relates to the intended use of the ball. Note MPEP 2114(II) stating that the manner of operating the device does not differentiate the apparatus claim from the prior art. “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Here, the ball of Golden-Morace is capable of compressing upon impact and recovering to its spherical shape and thus, meets the claim limitation.
Regarding the obviousness-type double patenting rejections, the applicant states that they filed terminal disclaimers overcoming the rejections. However, no terminal disclaimers have been received with the response and thus, the double patenting rejections remain.
The Declaration filed August 22, 2025 has been fully considered but is not persuasive in overcoming the rejections as set forth above. The Declaration states that the ball of Golden-Morace does not teach the ball comprised of bundled fiber beads that mimic the look and feel of a snowball. The Declaration also states that the rolled tubes of Golden-Morace are not individual fiber beads or filaments as claimed by applicant and that the rolled tubes have different mechanical and physical properties than the cut fiber bundles of the instant invention. Finally, the Declaration states that the cut fiber bundles do not mimic the look and feel of a snowball by emitting scrunchy tactile sensations by compression of the ball which results from the compact and resilient entanglement of fibers achieved by heating the cut fiber bundle in a spinning oven at a predetermined temperature for a predetermined duration. However, these arguments are not persuasive. Using a broadest reasonable interpretation, the ball of Golden-Morace is inherently capable emitting scrunchy tactile sensations to a user when manually compressed. The Declaration appears to be relying on a particular definition or requirement for the tactile sensations which is not recited in the claims. The ball of Golden-Morace is taught as being compressible by a user and it is inherently capable of emitting scrunchy tactile sensations to that user to some extent and thus, meets the claim limitations. Further, even if there exists different mechanical and physical properties between the cut fiber bundles of the instant invention and the rolled fabric/fiber tubes of Golden-Morace, the claims are silent as to these differences in properties. Instant claim 1 merely defines a resilient fiber ball which is met by the teachings of Golden-Morace. Note paragraph [0019]. Regarding the statement that the ball of the Golden-Morace does not enjoy compact and resilient entanglement of fibers, attention is again directed to paragraph [0019] teaching the resiliency of the rolled tubes. Further, the fibers are inherently capable of entanglement during use.
Regarding the limitation for the fibers to be heated in a spinning oven at a predetermined temperature for a predetermined duration, this product-by-process limitation does not distinguish the instant claim from the prior art as the end products are the same, namely a synthetic fiber ball that mimics the look and feel of a snowball by emitting scrunchy tactile sensations. It is noted that the limitation for the ball to emit a scrunchy tactile sensation when compressed is a relative limitation with no basis for comparison. The ball of Golden-Morace meets the claim limitation by providing a ball that is compressible and capable of emitting scrunchy tactile sensations to some extent to the user. Further, the Declaration’s statement that the end products are not the same is also not persuasive as the Declaration does not establish a nexus between the claimed subject matter and the arguments. Note MPEP 716.01(b). The Declaration does not establish that “the asserted objective evidence of record is tied to a certain product and that product includes the claimed features, and is coextensive with them.” The statement that the end product of instant claim 1 made by heating in spinning oven at a predetermined temperature for a predetermined duration and that of Golden-Morace are not the same is conclusory without any evidentiary support as to the differences. A nexus between the resilient fiber ball that emits scrunchy tactile sensations when manually compressed and the product-by-process limitations is not presented. For example, the scrunchy tactile sensations could instead be attributed to other reasons such as the fiber beads being formed by forcing fiber material through a spinneret.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN B WONG whose telephone number is (571)272-4416. The examiner can normally be reached Monday-Friday 7:30am-3:30pm.
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/STEVEN B WONG/Primary Examiner, Art Unit 3711