DETAILED ACTION
This Office action is in response to amendments received 5 May 2026.
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 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 15 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.
Regarding claim 15, line 3, it is unclear if “a connector” is the same connector recited in line 7 of claim 1.
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 17-18 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 previously provided; hereinafter CurliGirls) in view of Zhu et al. (US 2021/0404093 A1).
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 reversable 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; and 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 the 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 straightening tool are both presses).
Allowable Subject Matter
Claims 1-13 and 16 are allowed.
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 1, the combination including each of one or more of the elastic copolymer materials being detachably coupled to the connector for attaching to one of the building blocks in the invention as claimed is neither disclosed nor rendered obvious by the prior art.
Response to Arguments
Applicant's arguments filed 5 May 2025 have been fully considered but they are not persuasive. Regarding pages 9-10 of the Remarks, the applicant argued that the examiner’s characterization of the hair accessories in CurliGirls as “artwork tools” represents a significant misinterpretation of the prior art since CurliGirls is directed to cosmetic styling, not creative production, defining an artwork tool kit specifically for diverse creative projects such as clothing, household items, or product surface designs. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., diverse creative projects such as clothing, household items, or product surface designs) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, the examiner maintains that CurliGirls disclose an artwork tool kit comprising one or more artwork tools. CurliGirls discloses styling doll hair by creating curls to create limitless hairstyles (transcript 2:43-2:52, 4:52-4:54, and frame 3:27). Hairstyling is widely considered an expressive and visual art form. Styling doll hair qualifies as art because it demands creativity, technical mastery, intentional expression, and the ability to transform an ordinary object into something evocative and unique. Therefore, the curling tool and straightening tool which are used to create the hairstyles anticipate the claimed “one or more artwork tools.”
Regarding page 10 of the Remarks, the applicant argued that a doll’s hairbrush or styling wand in CurliGirls is structurally and mechanically incapable of performing extruding or pressing functions to create new, self-supporting artistic structures from raw filaments. There is no suggestion in CurliGirls to provide any tool or mechanism that can fundamentally alter the structural form of the filaments for manufacturing purposes. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., creating new, self-supporting artistic structures from raw filaments and altering the structural form of the filaments for manufacturing purposes) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). CurliGirls discloses a curling tool which pinches (i.e., presses) the end of the hair strand and a straightening tool which clamps (i.e., presses) the hair strand (transcript 0:49, 2:52, 3:13-4:33, and frames 3:27, 3:43, and 4:10). Both the curling tool and the straightening tool are presses (i.e., an apparatus by which pressure is applied to a body). As such, the examiner maintains that CurliGirls in view of Zhu renders obvious claims 17-18 as outlined above.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
Prosecution Insights