DETAILED ACTION
Summary
This is a non-final rejection for application 18/386,046. The response to the restriction/election requirement dated 22 May 2026 is acknowledged.
Note that there is a change in the examiner assigned to the application since the previous office 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 .
Election/Restrictions
Applicant’s election of species (b), Claims 6-10 in the reply filed on 22 May 2026 is acknowledged with Claims 1-4 being generic. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 22 May 2026.
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.
Claim 8 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 8 recites that the pedestal is formed of a resin. Claim 8 depends upon, and therefore includes, the limitations of Claim 6 and Claim 1. Claim 1 recites that the creamy substance contains a resin. It is not clear whether the resin recited in Claim 8 is the same resin as is recited in Claim 1 or if it is a different resin. Please clarify so that skilled users can know whether they are within the scope of the claim.
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 1-3, 6-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over TAKAKUTA (US-20180116244-A1) in view of ONO (JP-2000080360-A).
The TAKAKUTA reference is in the IDS dated 24 May 2024
The ONO (JP-2000080360-A) reference is in the IDS dated 15 June 2026. A translation is included in this office action.
Regarding Claim 1, TAKUKUTA teaches a creamy substance which is piped from a pastry bag to create a beautiful cream decoration ([0005]) where the decoration is a toy ([0006]). TAKUKUA teaches that its creamy substance can contain, for example, an acrylic resin ([0023]) and that it may be colored with a coloring agent ([0023]).
TAKUKUTA does not teach a specific coloring agent. ONO in an invention of a multicoloring composition for a laminate of a toy ([0001]) which can be made of an acrylic resin ([0009]) teaches that a pearl pigment can be used ([0008]). ONO teaches that its composition is capable of expressing different colors in a laminate of toys and the like ([0003]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of TAKUKUTA with the teachings of ONO and use a pearl pigment as its coloring agent for the purpose of expressing different colors in its product toys.
Regarding Claim 2, modified TAKUKUTA teaches the invention of Claim 1 where ONO teaches the use of pearl pigments as a coloring agent. ONO teaches a broad range of 0.1-40wt% of its coloring agent which can be pearl pigment ([0008]). This encompasses the 5-6 wt% that is recited by the claim. It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to use amounts of pearl pigment that is within the range recited by ONO in its specification that is also within the range recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 3, modified TAKUKUTA teaches the invention of Claim 1. TAKUKUTA teaches that its creamy resin may include an acrylic resin ([0023]). ONO teaches that its binder resin may be an acrylic ester emulsion resin ([0009]). ONO does not exemplify an acrylic ester emulsion resin but it would be obvious to one of ordinary skill in the art to use an acrylic ester emulsion resin as its acrylic resin based on the teachings of its specification.
Regarding Claim 6, modified TAKAKUTA teaches the invention of Claim 1. TAKAKUTA teaches its decoration toys are formed by piping the creamy resin onto a base 3 ([0010], [0016]) containing a contact guide 311 ([0038]). TAKAKUTA exemplifies many different shapes of contact guides (Fig 5A) including a circular shape (313). TAKAKUTA teaches that each contact guide may be a projection or a recess ([0065]). TAKAKUTA exemplifies recess contact guides on the base but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of TAKAKUTA and use a contact guides on its base that is a projection based on the teachings of the specification. A circular projection contact guide on a base satisfies the requirement of a pedestal (base) with an annular convex portion. The ring around the projecting contact guide can be interpreted as the annular convex portion on the outer periphery of the support portion.
Regarding Claim 7, modified TAKAKUTA teaches the invention of Claim 6. TAKAKUTA teaches that its creamy substance is dried ([0023]) allowing it to be cured to a hardness suitable for storage or use as a toy ([0051]).
Regarding Claim 10, modified TAKAKUTA teaches the invention of Claim 6. TAKAKUTA teaches piping the resin onto the contact guide (Fig 7) which is interpreted in the Claim 6 rejection as forming the base support portion for the decoration toy.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over TAKAKUTA (US-20180116244-A1) in view of ONO (JP-2000080360-A) as applied to Claim 3 above, and further in view of JIANG (CN-107189006-B).
Regarding Claim 4, modified TAKUKUTA teaches the invention of Claim 3 where TAKUKUTA teaches an acrylic resin and ONO makes obvious an acrylic ester emulsion resin. TAKUKUTA and ONO do not teach the specific acrylic monomers used in its acrylic resins. JIANG in an invention of an acrylic resin shape memory material (Abstract) using for making toys (p. 3, Background; p. 8. Example 1), teaches forming its acrylate resin by emulsion polymerization of components which include butyl acrylate and ethyl acrylate (Abstract). JIANG teaches that its composition is light weight, low cost and easily shaped (p. 3, Background). It would be obvious to one or ordinary skill in the art at the time of the effective filing date of the current invention to further modify the invention of TAKUKUTA with the teachings of JIANG and use an acrylic emulsion which includes butyl acrylate and ethyl acrylate for the purpose of obtaining a lightweight, low cost and easily shaped toy material.
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over TAKAKUTA (US-20180116244-A1) in view of ONO (JP-2000080360-A) as applied to Claim 6 above, and further in view of TERAJIMA (JP-2010000152-A).
The TERAJIMA (JP-2010000152-A) reference is cited in the application and included in the IDS dated 1 November 2023. A translation is included in this office action.
Regarding Claim 8, modified TAKAKUTA teaches the invention of Claim 6. TAKAKUTA does not teach the material that forms its base (pedestal). TERAJIMA, in an invention of a toy set for forming decoration toys formed from a cream resin (Abstract), teaches that its pedestal has a reinforcing sheet placed on top of it ([0004]) which is made of transparent or colored synthetic resin ([0005]). The reinforcing sheet has shapes cut out matching the shapes of the decorative toy ([0004]) including circular and annular shapes (Figure 3). TERAJIMA teaches that this allows for secure adhesion of the cream resin to the reinforcing sheet ([0009]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of TAKAKUTA with the teachings of TERAJIMA and include a reinforcing sheet made of resin as part of its base (pedestal) for the purpose of securing adhesion of the cream resin to the base (pedestal).
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over TAKAKUTA (US-20180116244-A1) in view of ONO (JP-2000080360-A) as applied to Claim 6 above, and further in view of TERAJIMA (JP-2010000152-A) and LAW (US-3272112-A).
Regarding Claim 9, modified TAKAKUTA teaches the invention of Claim 6 where TAKAKUTA teaches a circular-shaped, protruding contact guide on the base which satisfies the requirement of a convex support portion, but TAKAKUTA does not teach that this protrusion forms a right circular conical shape. TERAJIMA, in an invention of a toy set for forming decoration toys formed from a cream resin (Abstract), teaches the use of a base containing a variety of different shapes including circles and annulus shapes (Figure 3) as well as forming a number of very complex shapes for making food shaped articles (Figures 5-8) including cakes (Abstract) and circular thick-walled cakes ([0041]). TERAJIMA teaches that this allows for the formation of decorative toys that are more complex and visually attractive ([0047]), but TERAJIMA does not specifically teach forming annular-shaped cakes formed on conical-shaped supports. LAW, in an invention of an angel food cake tin remover (Title) teaches that angel food cakes are formed with an annular shape using an central cone support (Figure 1; Col 2: 13-19). It would be obvious one of ordinary skill in the art to modify the invention of TAKAKUTA with the teachings of TERAJIMA for the purpose of creating decorative toys such as cakes and to further modify the invention of TAKAKUTA based on the teachings of LAW that angel food cakes, specifically, have a shape that is annular shaped and are formed using a central conical support. One would be motivated to make these modifications for the purpose of forming complex and visually attractive toys in the shape of angel food cakes. This satisfies the requirement that the support portion protrudes in a substantially right conical shape.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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