DETAILED ACTION
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).
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 smooth region having a smooth surface (Figs. 2 and 3, item 22; noting the entire region is smooth). For the specific embodiment that is Fig. 2 and 3, item 22, it is noted that Sakai does not specifically a textured region having a textured surface with irregularities and wherein the textured region of the fusible toy bead is smoothed to a same smoothness as the smooth region by dissolving the irregularities in water. However, in a different embodiment Figs. 2 and 3, item 10, Sakai clearly shows a bead that can have irregularities along the surface of the bead. In addition, embodiment Figs. 8A-8C, specifically envision combining a spherical shape of a bead with irregularities. Furthermore, under Boston Scientific Scimed, Inc. v. Cordis Corp., 683 F.3d 1347 (Fed. Cir. 2011), combining side by side embodiments (i.e. using the irregularities of Fig. 2, item 10 with the smooth sphere of Fig. 2, item 22) does not require a "leap of inventiveness". Finally, regarding the latter language with regards to smoothness, Sakai: par. [0028] specifically states that “When water is sprayed, surfaces of the fusible bead melt”. As such, the ability for the irregularities to be “smoothed to a same smoothness as the smooth region by dissolving the irregularities in water” is functionally possible given the structure. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sakai to use irregularities on the surface of a smooth bead because: 1) doing so would be combining side-by-side embodiments which would not take a “leap of inventiveness”, 2) Saki specifically envisions doing so in the embodiment of Figs. 8A-8C, and 3) the use of irregularities on the top surface of a spherical bead would allow the beads to produce “high-luminance light beams” prior to being sprayed with water (see Sakai: par. [0021]), allow the bead to have “increased bonding strength” over a conventional spherical bead when melted (see Sakai: pars. [0028], [0042], and [0049]), and be easier to manufacture (see Sakai: par. [0051]).
Regarding claim 2, it is noted that Sakai does 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. 2, item 10 and/or 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, Sakai discloses 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; noting a different embodiment, but still obvious).
Response to Arguments
Applicant's arguments filed 4/22/25 have been fully considered but they are not persuasive.
112(b) Rejection
The previous 112(b) has been overcome by way of amendment to claim 1.
103 Rejection
Applicant argues that bead shown in Sakai: Fig. 2, item 10 is separate and distinct from bead shown in Fig. 2, item 22. The Examiner agrees. To avoid any confusion with regards to the rejection, the Examiner has rewritten the rejection of claim 1 above to make it crystal clear as to his position. With that said, the amendment to the claim is still obvious.
That is, the Court in Boston Scientific found that combining side-by-side embodiments does not take a “leap of inventiveness”. In Sakai: Figs. 2 and 3, items 10 and 22, the two embodiments are literally side-by-side embodiments. It would have been obvious to a POSA to take features from one bead and apply it to the other bead. In this case, it would have been obvious to take irregularities from the bead referred to as item 10 and apply it to spherical bead referred to as item 22.
However, not only does the Examiner rely on the finding in Boston Scientific, the Examiner also pulls from motivation in Sakai. First, the embodiment in Figs. 8A-8C shows a sort of hybrid bead (half spherical and half irregular), so it is obvious that Sakai contemplates a combination of elements/shapes used on a bead. Figs. 8A-8C is clearly the “fifth embodiment” (par. [0016]). This hybrid bead is easier to manufacture as compared to other disclosed shapes (par. [0051]; i.e. another motivation to combine). In addition, the use of irregularities on the top of the bead allow for “high-luminance light beams” prior to dissolving (par. [0021]). These irregularities also allow for increased strength after dissolving (par. [0028]). As such, the disclosure of Sakai makes obvious the limitations (i.e. the combination as set forth by the Examiner) of claim 1.
Applicant argues that “Sakai’s protrusion 12E-1 to 12E-5 would not be smoothed even if water is sprayed thereon”. The Examiner does not find the argument compelling and applicant does not cite to any portion in Sakai to support this position. Sakai clearly discloses that the upper surface of the beads is literally “melted” (par. [0028]). The surfaces “melt” so much that the melted portions of the beads “contact” other beads to provide “increased bonding strength”. It also seems logical that the amount of “melt” is functionally related to the amount of water sprayed. As such, more “melting” would be created by adding more water.
No other arguments are advanced. That is, Murch is no longer used in the rejection of the claims so any arguments directed toward it are moot.
Conclusion
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
5/4/26
Prosecution Insights