DETAILED 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 .
Status of Claims
In an amendment filed 4/21/2026, Applicant amended claims 1 and 4 and canceled claim 3. This amendment is acknowledged. Claims 1-2 and 4-5 are pending and are currently being examined.
It is noted that the examiner has changed since the last office action and the previously indicated allowability of claims 3-5 is withdrawn in view of the newly discovered reference(s). Rejections based on the newly cited reference(s) follow.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/16/2024 was filed before the mailing date of the first office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to because some of the figures are presented in a horizontal/landscape orientation instead of the preferred vertical/portrait orientation and the nature of the drawings does not appear to require the landscape/horizontal orientation used (37 CFR 1.84(h)-(i)). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spielberger US Pub. No. 2006/0014472.
Spielberger teaches:
In Reference to Claim 1
A toy for figure play (playset 20 with packaging 100, Fig. 1-16) comprising:
a base member (box 102); and
an elongated shape portion provided on the base member (elongate cutout/shape 104),
wherein the elongated shape portion comprises a detachable member detachably provided so as to correspond to a storage portion provided on the base member (detachable member 28 removably positioned within a storage portion),
wherein the elongated shape portion comprises a fixing member, the fixing member being fixed to the base member and connectable to the detachable member (module 28 is frictionally retained in the window 104 via means provided in the window with support 105, Fig. 12, 15-16), and
wherein the base member is provided with a concealing member that is provided corresponding to a connecting portion between the fixing member and the detachable member and that covers the connecting portion between the fixing member and the detachable member (window 108 is sized and positioned to conceal/cover the module 28 within cutout to hold and retain the module within the window by fastening the module to the cutout, Fig. 12-16, [0049]).
In Reference to Claim 2
The toy for figure play according to claim 1, wherein the detachable member is provided at an end portion of the elongated shape portion (detachable module 28 is positioned at each end (left and right) of the cutout 104, Fig. 12-16).
Alternatively, and/or additionally, Claims 1-2 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yokoyama CN 116059649.
Yokoyama teaches:
In Reference to Claim 1
A toy for figure play (playset 10, Fig. 1-6) comprising:
a base member (30); and
an elongated shape portion provided on the base member (the upper side of base is elongate to receive inner cover 60 therein),
wherein the elongated shape portion comprises a detachable member detachably provided so as to correspond to a storage portion provided on the base member (detachable inner cover 60 is removably placed within base 30 removable via handles 61),
wherein the elongated shape portion comprises a fixing member, the fixing member being fixed to the base member and connectable to the detachable member (elongate shape of base 30 includes a fixing cutout 32 on each side to removably receive the handles/inner cover 60/61 therein), and
wherein the base member is provided with a concealing member that is provided corresponding to a connecting portion between the fixing member and the detachable member and that covers the connecting portion between the fixing member and the detachable member (cover 20 is pivotal to conceal and hold the inner cover and handles 60/61 in the cutouts 32 using latch 50 which covers and locks the inner cover, handles, and cutouts in place, Fig. 3 to Fig. 1 shows the base being closed so that the elongate shape and inner cover are concealed within the playset via connecting and fixing portions, Fig. 3-5 shows the exposed inner member that is removable from the base along with other removable parts).
In Reference to Claim 2
The toy for figure play according to claim 1, wherein the detachable member is provided at an end portion of the elongated shape portion (detachable module 60 has handles and extends to each end (left and right) of the elongate base cutout, Fig. 1-6).
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.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Spielberger as applied to claim 1 above.
In Reference to Claim 4
Spielberger teaches:
The toy for figure play according to claim 1, wherein the elongated shape portion is formed to imitate a river such that the fixing member and the detachable member are transparent, and wherein the concealing member is formed to imitate a double-leaf bascule bridge over the elongated shape portion (the elongate base 104/105 is transparent to show the toy parts inside and may be imagined as a river and the concealing member 108 may be imagined as a bridge as it covers over the elongate cutout shape portion and detachable member).
Though Spielberger doesn’t specifically show the elongate shape portion specifically aesthetically forming a transparent river and the concealing member aesthetically forming a double-leaf bascule bridge over the elongate shape portion, in the broadest reasonable interpretation, a user may simply imagine or pretend that the elongate shape portion aesthetically resembles a transparent river and the concealing member may aesthetically represent or resemble a bridge while using their imagination during play with the toy. Further, it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)) and it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). In this case, the claim language does not actually require the portions to actually be in the shape of the claimed river and bridge, only that they are “formed to imitate” which in the broadest reasonable interpretation does not actually require these parts to be in these shapes, only that they may be imitated by a user, which essentially any toy part could reasonably imitate these features during imaginative play with a child.
Claim 4 is rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yokoyama as applied to claim 1 above.
In Reference to Claim 4
Yokoyama teaches:
The toy for figure play according to claim 1, wherein the elongated shape portion is formed to imitate a river such that the fixing member and the detachable member are transparent, and wherein the concealing member is formed to imitate a double-leaf bascule bridge over the elongated shape portion (elongate shape cutout may be considered to imitate a river with detachable member 60, wherein the concealing member may be considered to imitate a bridge over the elongate shape portion as it passes over the top of the elongate cutout of the base at at least two ends).
Though Yokoyama doesn’t specifically show the elongate shape portion specifically aesthetically forming a transparent river and the concealing member aesthetically forming a double-leaf bascule bridge over the elongate shape portion, in the broadest reasonable interpretation, a user may simply imagine or pretend that the elongate shape portion aesthetically resembles a transparent river and the concealing member may aesthetically represent or resemble a bridge while using their imagination during play with the toy. Further, it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)) and it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). In this case, the claim language does not actually require the portions to actually be in the shape of the claimed river and bridge, only that they are “formed to imitate” which in the broadest reasonable interpretation does not actually require these parts to be in these shapes, only that they may be imitated by a user, which essentially any toy part could reasonably imitate these features during imaginative play with a child.
Response to Arguments
Applicant's arguments filed 4/21/2026 have been fully considered, however after further search and consideration, the claims are no longer deemed allowable as assumed under the last presented rejection. In the interest of compact prosecution, the examiner reached out the applicant’s representative to propose an amendment to include the limitations of claim 5 into the independent claim to more clearly define over the cited prior art. The applicant denied this proposal at this point in examination.
Applicant’s arguments with respect to claim(s) 1-2 and 4-5 have been considered but are 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.
Potentially Allowable Subject Matter
Claim 5 is 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.
The following is a statement of reasons for the indication of allowable subject matter: in addition to the other claim limitations, the specific limitations of a waterfall-shaped portion imitating a waterfall, standing on the base member, and connected to the elongated shape portion imitating a river at a lower end thereof; a castle-shaped portion provided adjacent to the waterfall-shaped portion and comprising a double door to imitate a castle; and a treasure box portion that is provided on a back side of the castle-shaped portion corresponding to the double door and that is provided with a treasure box-shaped portion imitating a treasure box such that the treasure box-shaped portion is allowed to appear and to be retracted, wherein the storage portion stores a key-shaped member imitating a key corresponding to the treasure box portion is not anticipated by or found obvious by the cited prior art. Further, the examiner drafted a combined claim that would be in condition for allowance over the cited prior art.
The following claim is drafted by the examiner and considered to distinguish patentably over the art of record in this application, is presented to applicant for consideration:
Proposed Claim 1
A toy for figure play comprising:
a base member; and
an elongated shape portion provided on the base member,
wherein the elongated shape portion comprises a detachable member detachably provided so as to correspond to a storage portion provided on the base member,
wherein the elongated shape portion comprises a fixing member, the fixing member being fixed to the base member and connectable to the detachable member, and
wherein the base member is provided with a concealing member that is provided corresponding to a connecting portion between the fixing member and the detachable member and that covers the connecting portion between the fixing member and the detachable member,
wherein the elongated shape portion is formed as a river such that the fixing member and the detachable member are transparent, and wherein the concealing member is formed to as a double-leaf bascule bridge over the elongated shape portion,
a waterfall-shaped portion forming a waterfall, standing on the base member, and connected to the elongated shape portion forming a river at a lower end thereof;
a castle-shaped portion provided adjacent to the waterfall-shaped portion and comprising a double door to form a castle;
a treasure box portion provided on a back side of the castle-shaped portion corresponding to the double door and that is provided with a treasure box-shaped portion forming a treasure box such that the treasure box-shaped portion is allowed to appear and to be retracted, and
wherein the storage portion stores a key-shaped member forming a key corresponding to the treasure box portion.
Brief Discussion of Other Prior Art References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the references cited page for publications that are noted for containing similar subject matter as the applicant. For example, Dixon (5,013,278), Polinger (6,283,819), Lee (6,852,000), Payne (7,753,753), Zhou (2012/0045965), Dubois (8,591,284), Yeung (9,138,655), and Kamiyama (2024/0238684) teach similar toy playsets.
Conclusion
If the applicant or applicant’s representation has any questions or concerns regarding this office action or the application they are welcome to contact the examiner at the phone number listed below and schedule and interview to discuss the outstanding issues and possible amendments to expedite prosecution of this application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R NICONOVICH whose telephone number is (571)270-7419. The examiner can normally be reached Mon - Fri 8-6 MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (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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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711
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