DETAILED ACTION
Election/Restrictions
Newly submitted claim 4 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 4 now requires “loose” particles. Originally presented claim 4 required “a group selected from liquid, gel, and lubricated particles”. As such, applicant has switched species from “lubricated particles” to “loose particles”.
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 Accordingly, claim 4 is withdrawn from consideration as being directed to a non-elected invention.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.
Claim 8 is also withdrawn because it is dependent on claim 4 which is withdrawn as outlined above.
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 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, 5-7, 16, 17 and 19 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. Claim 1 now claims the use of a “friction fit” and deletes the term “interference fit”. The problem with this is that the specification consistently refers to a “interference” fit and never discusses a “friction” fit. Restated, the word “friction” is not even present in the specification. In all honesty, the Examiner construes “interference fit”, “friction fit”, and “press fit” to be synonymous terms. However, applicant clearly intends “friction fit” to mean something different than “interference fit” because otherwise, why make the amendment to the claim: just leave it as “interference fit” in the claims. In addition, applicant is specifically using this new phrase, by way of amendment, to attempt to overcome the prior art. As such, claim 1 contains new matter. Assuming arguendo that the Examiner has reached this rejection in error, then the Examiner gives a specification objection. That is, the term “friction fit” would need to be added to the specification for proper antecedent basis and applicant should specifically go on record as to why they have support for this limitation (emphasis added).
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, 5, 6, 16, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Mooney (US Pub. No. 2019/0030449 A1) in view of Kirsten et al. (herein “Kirsten”; US Pub. No. 2018/0140962 A1).
Regarding claim 1, Mooney discloses a toy construction block set (Fig. 12), comprising: a plurality of interconnectable blocks (Fig. 12), wherein the plurality of interconnectable blocks includes a first block and a separate and distinct second block (Fig. 12; making this obvious); wherein each of the plurality of interconnectable blocks has a main body with a top surface and a bottom surface (Figs. 11A and 11B being exemplary for the blocks shown in Fig. 12), wherein the main body is molded from a thermoplastic elastomer material (par. [0059]; noting LLDPE is a very flexible “thermoplastic”; par. [0060]; noting “rubber” and “silicon”, i.e. silicone, are thermoset “elastomers”, so the ability to use a “thermoplastic elastomer” is obvious given the listed materials; also noting “molded” is merely a product-by-process limitation, and since the product is shown, the burden shifts back to applicant to show the process provides an unobvious product; however, at a minimum Mooney clearly discloses an “elastomer” in the form of rubber or silicone) that enables the main body to elastically stretch in all directions by at least ten percent without damage (pars. [0059]-[0060]; noting this is functionally possible given the material of at least an elastomer, i.e. it is inherent characteristic in a rubber or silicone material, also see pars. [0059]-[0060] making obvious a thermoplastic elastomer as outline above, also inherently having this property); wherein each of the plurality of interconnectable blocks has at least one male connector protrusion extending from the top surface (Fig. 11A, items 423a and 423b); and at least one female connector receptacle formed into the bottom surface (Fig. 11B, items 424a and 424b); wherein the at least one male connector protrusion has a tapered cylindrical shape that tapers with a camber angle as the at least one male connector protrusion extends away from the top surface of the main body (Fig. 11A, item 423a showing cylindrical connector and Fig. 13, item 524a clearly showing a gradually tapered connector, noting this appears obvious from the figure, but also specifically see par. [0047] making “taper” obvious); wherein the at least one female connector receptacle has a tapered cylindrical shape that tapers with the camber angle as the at least one female connector receptacle extends into the bottom surface of the main body (Fig. 11B, item 424a showing cylindrical, and Fig. 13, item 524a clearly showing a gradually tapered connector, noting this appears obvious from the figure, but also specifically see par. [0046] and [0048] making “taper” obvious); wherein the at least one male connector protrusion on the first block can pass into and engage the at least one female connector receptacle on the second block with an friction fit (Fig. 12 and par. [0128]; noting this is obvious given structure and also noting it is functionally possible given the structure as some fit involving friction would be obvious), wherein the at least one female connector receptacle on the second block elastically widens when compressed against the at least one male connector protrusion on the first block in order to receive the at least one male connector protrusion (pars. [0059]-[0060]; the Examiner believes that this is obvious and functionally possible given the ability to make the material from at least an elastomer and Fig. 12 and par. [0128], giving the ability to connect the blocks with a friction fit); wherein the at least one male connector protrusion elongates when pulled away from the at least one female connector receptacle on the second block, therein eliminating the friction fit and enabling the first block to separate from the second block (pars. [0059]-[0060]; the Examiner again believes that this is obvious and functionally possible given the ability to make the material from at least an elastomer, i.e. this is an inherent characteristic of an elastomer and given Fig. 12 and par. [0128]; the ability to fit the blocks in a friction fit); wherein the first block and the second block each has at least one internal chamber formed into the main body, wherein the at least one internal chamber is separate and distinct from the at least one female connector receptacle (par. [0082] and Fig. 9A; noting the internal portion of the block is hollow; meeting the claimed limitation; alternatively, this can simply be the second female connector in Fig. 11B that can be labeled as a “internal chamber”; noting “internal”, broadly speaking, just means it runs into the internal portion of the block). In the alternative, assuming arguendo that Mooney does not specifically makes obvious the material is a thermoplastic elastomer that enables the main body to elastically stretch in all directions by at least ten percent without damage, the male connector passes into the female connector with a friction fit, wherein the at least one female connector receptacle on the second block elastically widens when compressed against the at least one male connector protrusion on the first block in order to receive the at least one male connector protrusion, wherein the at least one male connector protrusion elongates when pulled away from the at least one female connector receptacle on the second block, therein eliminating the friction fit and enabling the first block to separate from the second block, Kirsten discloses a similar connecting toy wherein the material used is a thermoplastic elastomer (par. [0027]; noting “thermoplastic rubber” is a “thermoplastic elastomer”), and makes obvious that the projections coming off the thermoplastic elastomer strip “have a diameter that is slightly larger than a corresponding recess in a cooperating toy block such that that projection deforms upon being urged into a corresponding recess to create fictional interference” (par. [0023]; emphasis added). Furthermore, assuming arguendo that the disclosed “elastomer” of Mooney cannot inherently meet the “stretching in all direction by at least ten percent without damage”, the “at least one female connector receptacle on the second block elastically widens”, and “the at least one male connector protrusion elongates when pulled away from the at least one female connector receptacle on the second block, therein eliminating the friction fit and enabling the first block to separate from the second block”, it is the Examiner’s position that the TPR or TPE (i.e. thermoplastic elastomers) disclosed in Kirsten can functionally meet these limitations based on the inherent characteristics of a “thermoplastic elastomer” as applicant has not specified a particular TPE to be used in the specification. That is, the ability of the block to expand without damage, the ability of the female to expand when connected, and the ability of the male connector to elongate with removed, is functionally possible given the inherent characteristics of a thermoplastic elastomer because Mooney discloses the rest of the actual structure in this claim 1. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Mooney to make the material from thermoplastic elastomer and to use a friction fit as taught by Kirsten because doing so would be a combining prior art elements (a block with projections and recess made from elastomer and the projections made to friction fit into the recess of another block, and a block strip with projections made from thermoplastic elastomer and the projections made to deform when pressed into a friction engagement with another block) according to known methods (using the thermoplastic elastomer in the former block to continue to use an elastomer material, the projections and recesses engaging in a friction fit with deformation) to yield predictable results (the continued ability to use an elastomer in the former block, the elastomer being a thermoplastic elastomer with the ability to stretch without damage, and provide deformation at the recess and projection when frictionally engaged).
Regarding claim 2, the combined Mooney and Kirsten disclose that each the at least one internal chamber is sealed within each the main body (Mooney: Figs. 11A and 13; the Examiner taking the broadest reasonable interpretation of “sealed” to mean “to close or fasten with a seal” as defined by thefreedictionary.com, see Fig. 13, item 541b and 542b and par. [0127]).
Regarding claim 3, the combined Mooney and Kirsten disclose that the at least one internal chamber extends into the at least one male connector protrusion (Fig. 7, item 223b; noting this embodiment shows the clearest view that the protrusion, item 223b, is hollow on the inside, and noting it would be obvious to apply this teaching to the embodiment as shown in Fig. 11A with the cylindrical protrusions).
Regarding claim 5, the combined Mooney and Kirsten disclose that each the at least one internal chamber is a single internal chamber formed within each the main body, wherein the at least one male connector protrusion and the at least one female connector receptacle are disposed on opposite sides of the internal chamber (Mooney: Figs. 9A, 11A, and 13; noting this is obvious).
Regarding claim 6, the combined Mooney and Kirsten disclose that the at least one female connector receptacle includes multiple female connector receptacles extending into the main body (Mooney: Fig. 11B; noting “two” meets the limitation “multiple”).
Regarding claim 16, the combined Mooney and Kirsten disclose that the first block and the second block have different shapes (Mooney: Figs. 8B and 9B; as seen in Fig. 12; noting much like Fig. 8B, Fig. 12 makes obvious double connection/stud blocks, item 400c, and much like Fig. 9B, Fig. 12 makes obvious single connection/stud blocks, item 440’b).
Regarding claim 17, the combined Mooney and Kirsten disclose that the first block and the second block are of different sizes (Mooney: Figs. 8B and 9B; as seen in Fig. 12; noting much like Fig. 8B, Fig. 12 makes obvious double connection/stud blocks, item 400c, and much like Fig. 9B, Fig. 12 makes obvious single connection/stud blocks, item 440’b).
Regarding claim 19, the combined Mooney and Kirsten disclose that at least one male connector protrusion widens and increases the friction fit when the first block is connected to the second block and is biased toward the second block (Mooney: pars. [0059]-[0060] and Kirsten: par. [0027]; noting the Examiner construes this functional limitation as possible given the structure and the ability to make the block out of either a regular elastomer as taught by Mooney or a thermoplastic elastomer as taught by Kisten).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mooney (US Pub. No. 2019/0030449 A1) in view of Kirsten et al. (herein “Kirsten”; US Pub. No. 2018/0140962 A1) and in further view of Fujihara et al. (herein “Fujihara”; US Pub. No. 2009/0105396 A1).
Regarding claim 7, is noted the combined Mooney and Kirsten disclose that do not specifically disclose that the thermoplastic elastomer each forming the main body is mixed with a plasticizing oil. However, Kirsten also discloses the ability to use a thermoplastic elastomer as the body material (par. [0027]). In addition, Fujihara discloses the ability to use a thermoplastic elastomer with a plasticizing oil (par. [0041]) to produce a material used in toys (par. [0049]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Mooney and Kirsten to use a plasticizing oil with the elastomer as taught by Weng because doing so would be use of a known technique (using a plasticizing oil with a thermoplastic elastomer) to improve a similar product (a toy that can be made from a thermoplastic elastomer) in the same way (using a plasticizing oil with a thermoplastic elastomer, the plasticizing oil acting as a softening material for the elastomer material).
Response to Arguments
Applicant's arguments filed 7/14/16 have been fully considered but they are not persuasive.
Applicant has taken claim previous claim 18 and placed it into claim 1. In doing so, applicant has changed the phrase “interference fit” to “friction fit”. The amendment changes the scope of the claims and allows the Examiner to amend the rejection accordingly. The Examiner notes that the prior art references have not changed, but the rejection has been further elaborated upon. As such, this rejection is properly a final rejection.
Applicant is kindly reminded that they should provide support to any claim amendments. In this particular case, applicant should go on record as to why they have support for changing “interference fit” to “friction fit” when “interference fit” is used throughout the entire specification and “friction” is never used. As noted above, assuming arguendo that this is not new matter and the 112(a) is made in error, the term “friction fit” needs to be added to the specification.
103 Rejection
Distinguishing the Cited Prior Art
The Examiner notes that simply because Mooney has a “preference” for paper pulp, this does not constitute a teaching away from the use of rubber or silicone (see MPEP 2123(II); noting “nonpreferred and alternative embodiments constitute prior art”; applicant arguing that “the blocks disclosed in the Mooney Publication need not have elastic properties”, but Mooney clearly discloses the use of rubber and silicone that do have elastic properties).
The Examiner agrees with applicant that Mooney does not specifically disclose a “thermoplastic elastomer” (emphasis added). However, Mooney clearly discloses normal [thermoset] elastomers in the form of rubber or silicone (par. [0060]) and very flexible “thermoplastics” in the form of LLDPE (par. [0059]). As such, the ability to use a “thermoplastic elastomer” would be obvious given the listed material. This position is further strengthened by the fact that applicant never actually lists or claims a specific thermoplastic elastomer.
The Examiner does concede that LLDEP and PA are specifically not “thermoplastic elastomers”, they are only “thermoplastics” (emphasis added). The office action has been amended accordingly, but the Examiner’s rejection has not really changed. Nonetheless, Mooney at a minimum discloses a typical “elastomer” in the form of rubber or silicone. Kirsten cures that deficiency by disclosing a “thermoplastic elastomer”. The Examiner’s position is that either a normal elastomer as taught by Mooney or a thermoplastic elastomer as taught by Kirsten would meet the functional stretching limitations as claimed by applicant because the inherent characteristics of an elastomer or a thermoplastic elastomer allow for this functional language.
Applicant then tries to argue that since Mooney also discloses that the blocks can be metal, paper pulp, or hard plastic; the materials essentially teaching away from using rubber or silicone (applicant more specifically stating that “stretch is a feature that has no importance to Mooney”; but the Examiner noting that Mooney specifically discloses materials that can stretch and thus specifically envisions this type of embodiment). This argument of nonpreferred embodiment has been addressed above.
Applicant argues that “The Mooney Publication makes no disclosure concerning female connector receptacles that elastically widen when compressed. As previously stated, the elastic properties in the block constructs of Mooney have no importance.” However, Mooney specifically envisions using rubber or silicone which is a typical thermoset elastomer. As such, Mooney does envision a block that can stretch; regardless of whether this is preferred.
Applicant further argues that:
The Mooney Publication discloses thin-walled construction elements made of two parts that are connected at a hinge. The construction elements are designed for nesting (inserting one element inside another for storage). The claimed invention, by contrast, involves solid-molded TPE blocks with specifically formed internal chambers, where the TPE material enables elastic stretching, compression, and friction-fit behavior. These are fundamentally different structural concepts.
The Examiner suggests that applicant actually claim that structural difference. Restated, the Examiner’s position is that Mooney discloses the basic claimed structure of the block in claim 1. The ability of the female receptacle, and male projection, and the entire block to stretch or deform is functionally possible given the inherent characteristic of either typical elastomer disclosed by Mooney, or thermoplastic elastomer disclosed by Kirsten. Restated, and for the record, the Examiner’s position is that the elastomer or thermoplastic elastomer allows the block to deform as functionally claimed in claim 1 because there is no other required claimed or disclosed structure (other than claim 1) that creates this feature (e.g. see the discussion below regarding the lack of a specific type of TPE, its hardness, and its thickness listed in the specification).
Applicant goes on to argue Kirsten in isolation instead of what the reference teaches one of ordinary skill in the art. Kirsten discloses the ability to use a thermoplastic elastomer to create a base having projections onto which other blocks are connected. Use of this type of thermoplastic elastomer material in the Mooney invention, especially when Mooney discloses both individual thermoplastics and elastomers, would be obvious.
Applicant argues that “The Examiner's "simple substitution" rationale for combining Kirsten's TPR material with Mooney's construction blocks fails because such a substitution would inhibit Mooney's nesting function”. The Examiner fails to see the logic in this argument. Mooney already discloses an elastomer. Mooney already discloses a thermoplastic. The ability to use a thermoplastic elastomer as taught by Kirsten would be obvious because Mooney already discloses the use of an stretchy elastomer. Nonetheless, the KSR rationale has been changed based on the claim amendments.
Applicant argues that the “TPE material” has a “specific engineered design” (noting applicant arguing “The specific combination of TPE material, tapered cylindrical geometry, and fully isolated internal chamber”, but Mooney makes obvious the elastomer material, tapered cylindrical geometry, the fully isolated internal chamber, and Kirsten makes obvious TPE) . In addition, applicant never actually lists the specific TPEs being used that appears to be so critical to the invention. Interestingly enough, the specification also never talks about a wall thickness of the material or hardness of the thermoplastic elastomer (i.e. Shore A, C, or D). As such, these design parameters do not appear to be criticality to the invention. Thus, as far as the Examiner is concerned, it would appear obvious that a normal elastomer could meet the functional stretch limitations as claimed, for sure a general thermoplastic elastomer, as other design parameters are not critical.
Applicant states that the combined Mooney/Kirsten do not disclose the functional language as rejected by the Examiner. MPEP 2112(IV) states that an inherency argument may be made when the claimed limitation is “the natural result of the combination of the prior art elements”. Applicant citation to 112(f) is irrelevant. Applicant is not using “means” language”. Also, the Examiner has never given a 112 rejection on the functional limitations. Rather, the functional limitation is inherently possible given the material of at least an elastomer as taught by Mooney, or at least a thermoplastic elastomer as taught by Kirsten. The Examiner has expanded upon this in the rejection above to make this crystal clear.
Applicant argues that “ In the Mooney Publication, it is clear that the properties of the material used to make the construction block are irrelevant. Mooney states that the material can be paper, plastic, rubber, or metal” (emphasis added). However, within this statement, applicant clearly acknowledges that Mooney discloses an elastomer that would be inherently stretchy. Also, as noted above, a nonpreferred embodiment does not create a teaching away.
Claims 4 and 8 have been withdrawn by election by original presentation. As such, arguments toward them are moot.
With regards to claim 6, applicant does not argue the Coleman with any specificity.
With regards to claim 7, applicant does not argue the Fujihara with any specificity.
No other arguments are advanced.
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, Nicholas Weiss can be reached on (571)270-1775. 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
7/27/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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