DETAILED ACTION
Note to Applicant
The Examiner of record on this application is new. However, the Examiner has maintained the previous rejections given by Examiner John Ricci. As such, this action is a final office action.
Election/Restrictions
Newly submitted claim 21-25 are directed to an invention that is independent or distinct from the invention originally elected and/or claimed for the following reasons (emphasis added). The Examiner takes a dual approach:
Via specific election - First, in the election filed 6/30/25, applicant elected to pursue claims 1-13. Claims 1-13 were deemed by the previous Examiner to encompass “a water toy which includes a compressed cellulose sponge contained within a dissolvable container” (see restriction posted 6/2/25). Newly presented claims 21-25 clearly do not encompass the water toy within the dissolvable container, but rather encompasses “water-soluble adhesive” binding “a plurality of cellulose sponge layers together”; the adhesive dissolving in water. Restated, claims 21-25 never require a dissolvable container enclosing the sponge toy, the container comprising “poly(vinyl alcohol)(PVOH, PVA, or PVAI)” as required by original claims 10-11.
Via election by original presentation - Second, and alternatively, claims 21-25 can also be considered a “sub-combination” of the “combination” of originally presented claims 1-13. Restated, the sub-combination sponge as claimed in claims 21-25 can be considered the “sponge” in “combination” of claims 1-13 (i.e. the sponge surrounded by the container as described above). However, according to MPEP § 806.05(c), the combination as claimed does not require the particulars of the sub-combination. Restated, the “combination” as claimed in claims 1-13 never required the sponge to have adhesive binding in between plurality of layers of the sponge as required by “sub-combination” of claims 21-25. In addition, the sub-combination has utility by itself or in other combinations as it can be used individually as a toy. As such, claims 21-25 could have been properly restricted from claims 1-13 at the time of filing and, and as such, are restricted and withdrawn now.
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 Accordingly, claims 21-25 withdrawn from consideration as being directed to a non-elected invention.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 Objections
Claim 2 is objected to because of the following informalities: claim 2 uses the phrase “and/or”. It is unclear from the phrase if the required limitations are in the alternative, or if both are required. The Examiner recommends that applicant use one of either “and” or “or”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: claim 7 has an extra “]” present in the claim preamble, Appropriate correction is required.
Claim 10 is objected to because of the following informalities: in claim 10, the quotes around “bath bomb” should be removed. Appropriate correction is required.
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.
Claim 5 is 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. Claim 5 should first state that the marker used is the “permanent marker” as claim 2 does not require it (i.e. it can be the washable marker based on “or”). That is, claim 5 should read “where the marker is the permanent marker, and wherein the design imparted….”. Based on current language of claim 2 and 5, claim 5 is not actually required. That is, claim 2 states that the marker can be “permanent or washable”. As such, a “washable marker” may be present and claim 5 is rendered moot. Using the above recommended language with fix this error.
Claim 6 is 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. Claim 6 should first state that the marker used is the “washable marker” as claim 2 does not require it (i.e. it can be the permanent marker). That is, claim 6 should read “where the marker is the washable marker, and wherein the design imparted….”. Based on current language of claim 2 and 6, claim 6 is not actually required. That is, claim 2 states that the marker can be “permanent or washable”. As such, a “permanent marker” may be present and claim 6 is rendered moot. Using the above recommended language with fix this error.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farrell et al. (herein “Farrell”; US Pat. No. 5,522,755).
Regarding claim 1, Farrell discloses a water toy (Fig. 1, item 6 and col. 3, lines 5-21; clearly disclosing the “food item” rises via water) comprising: a compressed cellulose sponge formed into a toy shape (col. 3, lines 5-21 and 29-36; clearly disclosing “cellulose sponge” material and Fig. 1, item 6); and wherein the compressed cellulose sponge is configured to expand when hydrated to form a three-dimensional toy structure (col. 2, lines 33-35; as noting this is functionally possible given the structure) that is biodegradable (col. 3, lines 29-36; as previously noted by Examiner Ricci, “cellulose” is inherently “biodegradable”).
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.
Claims 2, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Farrell et al. (herein “Farrell”; US Pat. No. 5,522,755) in view of Carraway (US Pat. No. 6,447,363).
Regarding claim 2, Farrell discloses a water toy (Fig. 1, item 6 and col. 3, lines 5-21; clearly disclosing the “food item” rises via water) comprising: a compressed cellulose sponge formed into a substrate (col. 3, lines 5-21 and 29-36; clearly disclosing “cellulose sponge material and Fig. 1, item 6); wherein the substrate is configured to receive a design applied (col. 3, lines 5-6; noting “printed” makes obvious a design is printed on the sponge, see also col. 3, lines 53-58; stating “painted or printed” upon a sponge wafer); and wherein the compressed cellulose sponge expands when hydrated to reveal the applied design in the three-dimensional form (col. 2, lines 33-35; as noting this is functionally possible given the structure, see also Fig. 5). It is noted that Farrell does not specifically disclose a customizable water toy and kit, markers comprising one or more permanent marker and/or washable marker, and a design applied by the user using the markers. However, Carraway discloses a toy wherein the toy is a customizable toy and kit (Fig. 1; noting it is a “kit” because it can some with a permanent marker, see col. 3, lines 4-23, and “customizable” because the user can write whatever they want), markers comprising one or more permanent marker and/or washable marker, and a design applied by the user using the markers (col. 3, lines 4-23; noting specifically “permanent marking pen”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Farrell to use a customizable water toy and kit, markers comprising one or more permanent marker and/or washable marker, and a design applied by the user using the markers as taught by Carraway because doing so would be combining prior art elements (a sponge toy that may have printing on it, and a toy that has printing on it created by a user via a permanent marker) according to known methods (creating the printed material on the toy via the permanent marker) to yield predictable results (the continued ability to have printing on the sponge toy, the printing created by a permanent marker).
Regarding claim 5, the combined Farrell and Carraway disclose that the design imparted using the permanent marker results in a fixed design onto the substrate (Farrell: Fig. 5 and col. 3, lines 53-58 or Carraway: col. 3, lines 4-23; noting this is functionally possible as it is a “permanent” marker).
Regarding claim 6, the claim limitation is technically not needed. Claim 2 states that the marker can be “permanent or washable”. Carraway discloses “permanent” and is rejection in claim 5 above. As such, claim 6 does not further add to the limitation of claim 2 because the marker does not need to be “washable”, and thus this interpretation renders claim 6 moot. However, assuming arguendo that it is necessary, in the previous rejection, Examiner Ricci appeared to take the position that using a washable marker was an obvious variant from a permanent marker. That is, regarding the type of marker used, it has been held that the selection of a known material based on its suitability for its intended use is obvious. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). A POSA, using common sense, would understand that using permanent marker would create a lasting image, and using a washable marker would allow for “ a clean substrate for the next use”. The Examiner relies on Normand, US Pub. No. 2009/0280716 A1 to evidence that washable markers are a known to be an “obvious variant” as previously rejected by Examiner Ricci and would be known to a POSA to dissolve in water to provide a clean substrate for the next use. That Examiner also notes that Carraway lists the use of a “pen” in col. 3, lines 18-23. Without reading any limitations into claim 6, the Examiner notes that markings from a pen may functionally be washed out to provide a clean substrate for the next use.
Regarding claim 7, the combined Farrell and Carraway disclose that the compressed cellulose sponge material is die-cut into a predetermined shape (Farrell: Fig. 2; showing numerous shapes, and noting “die-cut” is merely a product-by-process limitation, but also see Farrell: col. 3, line 5 specifically stating “cut out novelty food items” which makes obvious die-cut), and wherein a design is applied to the compressed cellulose sponge substrate that is visible when the substrate expands upon hydration (Farrell: col. 3, lines 2-6 and Fig. 7; noting this is obvious as the sponge material is “printed” on, and the ability for it to be visible is functionally possible given the structure, see also Fig. 5 and col. 3, lines 53-58; noting “painted or printed upon” the sponge wafer).
Allowable Subject Matter
Claims 9-13 were previously indicated as allowable by Examiner Ricci. This Examiner maintains that allowable subject matter.
Response to Arguments
Regarding claim 1, applicant argues that Farrell does not disclose “a dissolvable container”. The Examiner is unclear why this is argued. Claim 1 never claims a “dissolvable container”.
Regarding claim 2, applicant argues Carraway in isolation instead of what the reference teaches a POSA. Farrell already discloses printing on the sponge. Carraway disclose that that printing can be accomplished by the user via permanent marker.
No other arguments are advanced.
Finally, of note, the Examiner notes claims 14-20 are still present, but withdrawn. The Examiner also notes that applicant traversed the original restriction. If applicant intends to make claim 14 allowable (i.e. maintain their traverse), then claim 14 must include the entire limitation of claim 9. Otherwise, claims 14-20 should be canceled to create the allowance of claims 9-13.
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
6/3/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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