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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and 35 U.S.C. 1120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed applications, Application No. 16/404,701 and 17/344,929, and provisional applications 62/762,815, 62/702,337, and 63/102,630, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Regarding claim 1, none of the prior filed applications provide support or enablement for a game kit or an instruction manual comprising one or more use instructions specifying rules of one or more games as required by the claim. Regarding claim 17, none of the prior filed applications provide support of enablement for an artwork tool kit, wherein at least one of the elastic copolymer filaments have a color different from another one of elastic copolymer filaments, or one or more artwork tools as required by the claim. As such, the effective filing date of the present application is 26 January 2024.
Claim Objections
Claims 1-18 are objected to because of the following informalities:
Regarding claim 1, line 3, “manipulate able” should be changed to manipulatable.
Regarding claim 1, line 4, “reverse” should be changed to reversable.
Regarding claim 6, line 2, “are higher” should be changed to is higher.
Regarding claim 6, line 6, refer to MPEP 608.01(m) which states that “[e]ach claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.”
Regarding claim 12, lines 2-3, “the thermal fluid” lacks antecedent basis and thus should be changed to the medium.
Regarding claim 13, line 3 and line 4, “the thermo fluid” lacks antecedent basis and thus should be changed to the medium.
Regarding claim 13, line 3, “protecting” should be changed to protect.
Regarding claim 17, line 5, “reverse” should be changed to reversable.
Regarding claim 17, line 8, the should be added before “elastic copolymer filaments.”
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.
Claims 4-6 and 14 are 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.
The term “approximately” in claims 4, 5, and 6 is a relative term which renders the claims indefinite. The term “approximately” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This renders the shape recovery temperature and the elongation of the plurality of elastic copolymer materials indefinite.
Regarding claim 14, lines 4-5, it is unclear if “a connector” is the same connector recited in line 3 of the claim.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over “Express Your Curl Power! Best Dolls Ever?! | CurliGirls” uploaded to YouTube 5 September 2020 (https://www.youtube.com/watch?v=EDsYMyEFQfA using transcript and annotated screenshots; hereinafter CurliGirls) in view of Zhu et al. (US 2021/0404093 A1).
Regarding claim 1, CurliGirls discloses a shape memory polymer-based game kit (see “game kit” at frame 0:33), comprising: a plurality of elastic polymer materials (see “hair strand” at frame 3:02; wherein hair strands are elastomeric and thus polymers), wherein each of the elastic polymer materials (see “hair strand” at frame 3:02) being mechanically manipulate able from its original shape (see “straight” at frame 3:27) into one or more three-dimensional structures (see “curl” at frame 3:27), and reverse back to its original shape (see “straight” at frame 3:27) by being subjected to a stimulus (see “warm water” at frame 4:32); an instruction manual (see “instructions” at frame 0:44) comprising one or more user instructions specifying rules of one or more games; wherein the one or more three dimensional structures (see “curl” at frame 3:27) include one or more of curls, spirals, ringlets, waves, and coils; and wherein the stimulus (see “warm water” at frame 4:32) is a thermal energy having a temperature at or above the shape recovery temperature, the thermal energy is carried and radiated by a medium (water) selected from one or more of air, water, and other fluid (see transcript and frames 0:32, 0:44, 0:52, 3:02, 3:06, 3:22, 3:27, 3:43, and 4:32). Regarding the recitation that the instruction manual comprises one or more user instructions specifying rules of one or more games, although taught by CurliGirls, the examiner would like to point out that, such instructions, descriptions, or indicia only serve to communicate the rules of the game to the users. These rules merely describe those elements in a manner that conveys intelligence to the users. They are instructions or indications of how to play the game and one cannot continue patenting a product indefinitely provided that they associate a new set of rules with known games and toys. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product. See MPEP 2112.01. The indicia on the instruction manual are functional limitations, rules, or instructions that have no physical tie to the substrate. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter. No patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. See MPEP 2111.05. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the examiner does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying information to the users of the game in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter. CurliGirls discloses an elastomeric material (i.e., a polymer) for the hair strands but does not specifically disclose a copolymer. Zhu, however, teaches a similar shape memory polymer which can be stretched to form a curly shape (see “Curly shape” in Figure 2 and “Curled” in Figure 3), comprising a plurality of elastic copolymer materials (paragraph 0033: “multi-component threads, fibers, tubes, or tapes”) (paragraphs 0025, 0033-0034, 0037-0041, 0046, and Figures 1-3). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure the plurality of elastic polymer materials of CurliGirls as a plurality of elastic copolymer materials because Zhu teaches that elastic copolymers can be used in toys, can be easily formed and controlled, and can handle being repeatedly coiled and straightened (paragraphs 0024-0025 and 0041).
Regarding claim 2, Zhu discloses in the modified CurliGirls, the shape memory polymer-based game kit of claim 1, wherein the plurality of elastic copolymer materials (paragraph 0033: “multi-component threads, fibers, tubes, or tapes”) comprise multi-component shape memory threads, fibers, tubes, or tapes (paragraphs 0033-0034 and Figures 2-3; also see “hair strand” at frame 3:02 of CurliGirls).
Regarding claim 3, Zhu discloses in the modified CurliGirls, the shape memory polymer-based game kit of claim 1, wherein the plurality of elastic copolymer materials (paragraph 0033: “multi-component threads, fibers, tubes, or tapes) are made of at least two shape-memory polymeric (SMP-N) components [SMP-1, SMP-2], each of the at least two SMP-N components [SMP-1, SMP-2] is of at least 1% of the total weight, and N is a positive integer starting from 1 (paragraphs 0034, 0046, and Figure 1).
Regarding claim 4, Zhu discloses in the modified CurliGirls, the shape memory polymer-based game kit of claim 3, wherein the SMP-N components [SMP-1, SMP-2] have a selectively engineered shape recovery temperature (Tr) [Tr] between approximately −50 and 100° C (0 - 130°C, which overlaps the claimed range; specifically 35 or 40°C and 60°C), and the recovery temperature of two or more different components can be represented by TrN [Tr1] and TrN+1 [Tr2] respectively (paragraphs 0035-0036 and 0046).
Regarding claim 5, Zhu discloses in the modfied CurliGirls, the shape memory polymer-based game kit of claim 4, when TrN [Tr1=35 or 40°C] and TrN+1 [Tr2=60°C] are higher than room temperature (~20-22°C) and wherein TrN+1 [Tr2=60°C] is greater than TrN [Tr1=35 or 40°C], the plurality of elastic copolymer materials (paragraph 0033: “multi-component threads, fibers, tubes, or tapes) is configured to assume a first shape change from an original shape (see “Original shape” in Figure 2) to a straight, elongated shape (see “Elongated shape”) in response to an elongation of the plurality of elastic copolymer materials (paragraph 0033: “multi-component threads, fibers, tubes, or tapes) to approximately 30% to approximately 300% of an original length and are configured to assume a second shape change to a substantially helical shape (see “Curly shape” in Figure 2) upon heating (see “Heating above T, of SMP-1” in Figure 2) to a temperature above the TrN [Tr1=35 or 40°C] and lower than the TrN+1 [Tr2=60°C] and to assume a third shape change substantially back to the original shape (see “Original shape” in Figure 2) upon heating to a temperature above TrN+1 [Tr2=60°C] (see “Heating above T, of SMP-2” in Figure 2) (paragraphs 0039-0041, 0046, and Figures 2-3; also see transcript 2:47-3:33 and “curl” and “straight” at frame 3:27 of CurliGirls).
Regarding claim 6, Zhu discloses in the modified CurliGirls, the shape memory polymer-based game kit of claim 4, when TrN [Tr1] (see paragraph 0035; wherein Tr can be as low as 0°C) is lower than room temperature (~20-22°C) and TrN+1 [Tr2=60°C] are higher than room temperature (~20-22°C) and wherein TrN+1 [Tr2=60°C] is greater than TrN [Tr1], the plurality of elastic copolymer materials (paragraph 0033: “multi-component threads, fibers, tubes, or tapes) is configured to assume the shape change from a first straight shape (see “Original shape” in Figure 2) to a second helical shape (see “Curly shape” in Figure 2) in response to an elongation of the plurality of elastic copolymer materials (paragraph 0033: “multi-component threads, fibers, tubes, or tapes) to approximately 30% to approximately 300% of an original length. The shape change from helical shape (see “Curly shape” in Figure 2) back to the original straight shape (see “Original shape” in Figure 2) upon heating to a temperature above the TrN+1 [Tr2=60°C] (see “Heating above T, of SMP-2” in Figure 2) (paragraphs 0039-0041, 0046, and Figures 2-3; also see transcript 2:47-3:33 and “curl” and “straight” at frame 3:27 of CurliGirls).
Regarding claim 7, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 1, wherein the one or more three dimensional structures (see “curl” at frame 3:27) of the plurality of elastic copolymer materials (see “hair strand” at frame 3:02) change by adjusting an elongation length or a stretching time of the plurality of elastic copolymer materials (see “hair strand” at frame 3:02) (transcript 2:47-3:33; wherein the longer you pull on the strand of hair and the further you stretch it, the curlier it becomes; also see paragraphs 0024 and 0042 of Zhu).
Regarding claim 8, Zhu discloses in the modified CurliGirls, the shape memory polymer-based game kit of claim 1, wherein the one or more of curls, spirals, ringlets, waves, or coils have a coil diameter from 0.5 to 10 mm and a number of the turns per cm from 5 to 30 (paragraph 0015; also see transcript 2:47-3:33 and frame 3:27 of CurliGirls wherein coil diameter and number of turns can be controlled by the user).
Regarding claim 9, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 7, wherein the elongation length (see “elongation length” at frames 3:06 and 3:22) is in a range of 0.5-50 cm (transcript 2:47-3:33 and frames 3:06 and 3:22).
Regarding claim 10, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 7, wherein the stretching time (transcript 3:03: “hold it for a little while”) is in a range of 0.1-60 s (transcript 2:47-3:33 and frames 3:06 and 3:22; wherein the demonstrator stretches the hair strand between 4 and 7 seconds).
Regarding claim 11, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 1, further comprising one or more challenge cards (see “temperature gauge” at frame 3:43), wherein each of the challenge cards comprises at least a task prompting a user to manipulate the plurality of elastic copolymer materials into a specified structure (transcript 0:45 and 3:41-3:54 and frame 3:43; wherein the temperature gauge is card shaped). Regarding the recitation that the challenge card comprises at least a task prompting a user to manipulate the plurality of elastic copolymer materials into a specified structure, this amounts to printed matter which is not given patentable weight. See paragraph 11 above.
Regarding claim 12, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 1, wherein the shape memory polymer-based game kit further comprises a container (see “container” at frame 4:32) to hold the thermal fluid (water) (transcript 3:33-4:33 and frame 4:32).
Regarding claim 13, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 12, wherein the shape memory polymer-based game kit further comprises a thermometer (see “temperature gauge” at frame 3:43) for measuring the thermo fluid temperature that helps protecting the user and allow the user to adjust the temperature of the thermo fluid (water) (transcript 0:45 and 3:41-3:54 and frame 3:43).
Regarding claim 14, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 1, further comprising one or more building blocks (see “doll” and “doll stand” at frame 0:52) with various shapes, wherein each of the building blocks (see “doll” and “doll stand” at frame 0:52) is configured to be attachable to another one of the building blocks (see “doll” and “doll stand” at frame 0:52) via a connector (see “connector” at frame 0:52); wherein each of one or more of the elastic copolymer materials (see “hair strand” at frame 3:02) is coupled to a connector (see frame 3:02; wherein it is inherent that the hair strand has a connection device which attaches it to the doll body) for attaching to one of the building blocks (see “doll” and “doll stand” at frame 0:52) (transcript 0:52 and frames 0:52, 3:02, 3:27, and 4:32).
Regarding claim 15, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 1, further comprising one or more building plates (see “doll stand” at frame 0:52), wherein each of one or more of the elastic copolymer materials (see “hair strand” at frame 3:02) is coupled to a connector (see “doll” at frame 0:52) for attaching to one of the building plates (transcript 0:52 and frame 0:52, 3:02, and 4:32).
Regarding claim 16, the modified CurliGirls discloses the shape memory polymer-based game kit of claim 1, wherein the one or more user instructions are printed on cards, papers (see “instructions” at frame 0:44), or a link provided to an interactive online, or downloadable video guide for games, or a combination thereof (transcript 0:45 and frame 0:44). Additionally, although disclosed by CurliGirls, the recitation that game kit includes printed user instructions amounts to printed matter which is not given patentable weight. See paragraph 11 above.
Regarding claim 17, CurliGirls discloses a shape memory polymer-based artwork tool kit (see “game kit” at frame 0:33), comprising: a plurality of elastic polymer filaments (see “hair strand” at frame 3:02); wherein each of the elastic polymer filaments (see “hair strand” at frame 3:02) being mechanically manipulatable from its original shape (see “straight” at frame 3:27) into one or more three-dimensional structures (see “curl” at frame 3:27), and reverse back to its original shape (see “straight” at frame 3:27) by being subjected to a stimulus (see “warm water” at frame 4:32) having a shape recovery temperature; wherein at least one of the elastic polymer filaments (see “hair strand” at frame 3:02) having a color different (transcript 1:04: “one pink and one orange ponytail,” transcript 1:31: “her hair is pink and orange,” transcript 1:40: “a single pink and purple ponytail,” and transcript 2:02: “one blue and pink ponytail”) from another one of elastic polymer filaments (see “hair strand” at frame 3:02); and one or more artwork tools (see “tool” at frames 3:27 and 4:10) (see transcript and frames 0:32, 0:44, 0:52, 3:02, 3:06, 3:22, 3:27, 3:43, 4:10, and 4:32). CurliGirls discloses an elastomeric material (i.e., a polymer) for the hair strands but does not specifically disclose a copolymer. Zhu, however, teaches a similar shape memory polymer which can be stretched to form a curly shape (see “Curly shape” in Figure 2 and “Curled” in Figure 3), comprising a plurality of elastic copolymer filaments (paragraph 0033: “multi-component threads, fibers, tubes, or tapes”) (paragraphs 0025, 0033-0034, 0037-0041, 0046, and Figures 1-3). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure the plurality of elastic polymer filaments of CurliGirls as a plurality of elastic copolymer filaments because Zhu teaches that elastic copolymers can be used in toys, can be easily formed and controlled, and can handle being repeatedly coiled and straightened (paragraphs 0024-0025 and 0041).
Regarding claim 18, the modified CurliGirls discloses the shape memory polymer-based artwork tool kit of claim 17, wherein the artwork tools (see “tool” at frames 3:27 and 4:10) comprise one or more brushes, rollers, molds, presses, extruders, blades, cutters, printers, or tubes (transcript 0:49, 2:52, 3:13-4:33, and frames 3:27, 3:43, and 4:10; wherein the curling tool and straighten tool are both presses).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Choi et al. (US 2020/0023284 A1) and Ishimura (US 2008/0293326 A1) which both disclose similar shape memory materials for doll hair.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
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, Eugene Kim can be reached at (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUDREY B. WALTER/Primary Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711