DETAILED ACTION
Drawings
The drawings filed 12/9/25 are accepted.
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 3 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 3 claims that “the textured region is formed in a region of at least 1/4 of the spherical surface” (emphasis added). This means that the textured surface can cover the entire or whole surface. However, claim 1 requires that the textured surface “does not overlap the parting line”. The Examiner fails to see how the textured surface can potentially cover the entire or whole surface and still not overlap with the parting line? Furthermore, the specification also fails to explain how this can occur.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai (herein “Sakai ‘961”; US Pub. No. 2019/0192961 A1) in view of Murch (US Pat. No. 4,393,619).
Regarding claim 1, Sakai discloses a fusible toy bead (abstract) formed by blending a pigment serving as a colorant into a water-soluble resin (pars. [0021], and [0023]-[0024]; noting “colored” makes obvious that a “pigment” is used to provide the “opaque color”; or alternatively, this language does not breathe life and meaning into the claim), the fusible toy bead comprising: a spherical surface (Figs. 2 and 3, item 22), a parting line formed on the spherical surface (Figs. 2 and 3, item 22; noting under a broadest reasonable interpretation, the “parting line” can simply be an imaginary line created by the process of molding the bead using two mating half shells, and noting this is simply a product-by-process limitation; emphasis added; and noting if applicant is attempting to claim that the parting line “forms” the structure of a protruding flash line, they should specifically claim that), a textured region having a textured surface with irregularities (Fig. 8A, items 12E-12E5, see Fig. 3, items 22 and 10, see also Fig. 4; noting under Boston Scientific Scimed, Inc. v. Cordis Corp., 683 F.3d 1347 (Fed. Cir. 2011), combining side by side embodiments does not require a "leap of inventiveness"; so it would have been obvious to a POSA to use some irregularities on a mostly spherical bead of Figs. 2 and 3); and a smooth region having a smooth surface (Fig. 8B, item 15E; noting that fact that Fig. 8B combines a quasi-spherical surface with irregularities makes even more obvious the combination of spherical bead of Fig. 2 with some irregularities of Fig. 8B or Fig. 4); wherein the textured region has a texturing depth (Fig. 8A, noting some depth is inherent) such that the textured surface is smoothed when the irregularities dissolve in water (par. [0028]; noting this is functional language that is possible given the structure and prior art disclosure). The above is given under a 103 rejection as it would have been obvious to a POSA that making the bead to have an “opaque color” would involve adding a pigment to the resin material in order to make the bead appear as a certain colored opaqueness. In the alternative, assuming arguendo that the mold parting line does impart some structure, Murch discloses a somewhat spherical object with an irregularity wherein the object has a mold parting line (Fig. 2, item 25 being the mold parting line, and item 28 being the irregularity, see col. 2, lines 39-45). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the Sakai bead could be to have a mold parting line because doing so would be combing prior art elements (a spherical object having irregularities and a spherical object having a irregularity and made with a mold parting line) according to known methods (making the bead with irregularities, the bead having a mold parting line) to yield predictable results (the continued ability to make a spherical object with irregularities, the spherical object having a mold parting line). Finally, it is noted that the combined Sakai and Murch do not specifically disclose that the textured region formed at a portion not overlapping the parting line. However, Murch discloses a single irregularity that does not overlap with the parting line (Fig. 2, item 28 being the irregularity and item 25 being the mold parting line). In addition, regarding limiting the textured portion to a region not overlapping the parting line, it has been held that the rearrangement of parts is not patentable unless it modifies the operation of the device. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)(see applicant’s specification, par. [0022]; applicant specifically stating that “the textured surface may be formed…substantially half or more of the surface”; so there appears to be no criticality to having textured region not overlap with the parting line; emphasis added). Furthermore, Sakai specifically states that the irregularities allow the light reflect in various fashions to enhance the decoration effect of the bead (par. [0055]). Thus, it would have been obvious to make the irregularities not overlapping the mold parting line as taught and suggested by Murch because doing so would be applying a known technique (molding a spherical object, the irregularity made at the pole away from the mold parting line) to a known product (a spherical bead that can have irregularities) ready for improvement to yield predictable results (molding the spherical object so that the irregularities occur at the pole away from the mold parting line, the location of the irregularities making it easier to mold the spherical object). Alternatively, it would have been obvious to a person of ordinary skill in the art at the time of filing that the limiting the textured region so as to not overlap with the parting line would not change the operation of the device: that is, the irregularities would allow light to be reflected regardless of their exact placement as compared to the mold parting line. Finally, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact placement or position of the irregularities could be optimized in order to elicit the desired light reflection caused by the irregularities.
Regarding claim 2, it is noted that the combined Sakai and Murch do not specifically disclose that the texturing depth in the textured region is within a range of 35 to 45 µm. However, Sakai discloses that the texturing would having some inherent depth (Fig. 8A, noting the depth of each irregularity or projection, i.e. from 12E-5 to 13E-5 being exemplary in Fig. 8A). In addition, regarding the actual depth, it has been held that if a change in the relative dimensions over the prior does not make the claimed invention perform differently, the claimed device is not patentably distinct from the prior art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)(see applicant’s spec, par. [0013], stating the exact dimension helps the bead “dissolve in water”, but see Sakai: par. [0028] specifically stating that the beads melt or dissolve when water is applied, regardless of the exact depth). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact depth would not make the claimed invention perform differently: that is, the bead would melt or dissolve when exposed to water regardless of the exact texturing depth.
Regarding claim 3, the combined Sakai and Murch disclose that the textured region is formed in a region of at least 1/4 of the spherical surface (Sakai: Figs. 8A-8C; noting it is at least ½ or half).
Response to Arguments
Applicant's arguments filed 12/9/25 have been fully considered but they are not persuasive.
The Examiner has modified his rejection above, but still uses Sakai as the primary reference. In that reference, Sakai: Fig. 3 specifically discloses spherical beads, and beads with irregular shapes. It would have been obvious to a POSA that attributes of both beads could be combined; especially given the embodiment of Figs. 8A-8C (see Boston Scientific citation above).
In addition, as noted above, the Examiner does not import any structure associated with the mold parting line. The mold parting line can simply be an imaginary line created around the bead with molded. Applicant’s, original Fig. 1 appears to show a protruding flash line extending out away from the surface at the mold parting line, but the Examiner declines to import that structure into the limitations of claim 1.
Furthermore, respectfully submitted, the specification appears to be contradictory in nature. On the one hand, par. [0022] states that the textured surface may “formed in substantially half or more of the surface” (emphasis added). This passage makes it obvious to a POSA that the textured surface may cover the entire surface of the bead (i.e. half or more makes obvious a whole). On the other hand, par. [0014] states that “the textured region is formed at a portion not overlapping the parting line PL”. However, if the textured region may cover the entire surface, it appears that it must overlapping a parting line. In essence, applicant negates any criticality for the textured region “not overlapping the parting line” when par. [0022] essentially states that the textured surface may cover the entire surface.
Based on the above analysis, the Examiner does not find any criticality for the limitation “the textured region formed at a portion not overlapping the parting line”. As per par. [0022], it would appear that the textured region may cover the entire surface and thus would inherently overlap the mold parting line.
However, assuming arguendo that the mold parting line does impart some structure and the placement of the irregularities as compared to the mold parting line is critical, Murch makes obvious the ability to use an irregularity at the pole and not crossing the mold parting line in order to make molding of the spherical object easier (see Fig. 2).
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
1/23/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711