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 .
Election/Restrictions
Applicant’s election without traverse of group I (claims 1-7) in the reply filed on 11/19/2025 is acknowledged. As the applicant has deleted the remaining non-elected claims 8-15, the previously applied restriction requirement mailed on 9/24/2025 is rendered moot.
Status of Claims
In an amendment filed 11/19/2025, Applicant cancelled nonelected claims 8-15. This amendment is acknowledged. Claims 1-7 are pending and are currently being examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/21/2025 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. A few of the cited references are struck through and should not be cited on the record as they are not particularly relevant to the presented invention.
Claim Objections
Claims 2-7 are objected to because of the following informalities: in line 1, the claim should preferably begin with “The” instead of “A”. 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 6-7 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 pre-AIA the applicant regards as the invention.
Claim 6 recites the limitation “the form” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation “the egg” in line 2/3. There is insufficient antecedent basis for this limitation in the claim
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Spector US Pat. No. 4,521,205 in view of Sagi-Dolev US Pat. No. 6,231,346.
In Reference to Claim 1
Spector teaches:
A toy assembly (toy assembly, Fig. 1-4), comprising:
a housing, wherein the housing includes a first housing member and a second housing member (a housing is formed with a first upper portion 11/12 and a second lower portion 13), wherein the first housing member is light transmissive to an exterior of the housing (the first housing portion 11 includes light transmissive lenses 18/19), and a light transfer member having a light inlet and a light outlet, wherein the light outlet is positioned to direct light into the first housing member so as to render the light visible from the exterior of the housing (light is visible from the exterior of the toy through lenses 18/19 that is passed out of light outlet ends of light transmitting tubes 20/21, Fig. 2, Col. 3 line 30-52, Col. 3 line 66 – Col. 4 line 22);
an inner object inside the housing, wherein the inner object is removable from the housing (removable object 10 is inserted into the interior of the housing between first and second housing portions 11/12/13, Fig. 2);
at least one sensor that detects interaction by a user with the housing (when the object 10 is inserted fully into the housing, the receiving member 16 senses the presence of the inserted cartridge that may then be activated to begin the playing of sounds and/or lights as programmed and therefor acts as an inherent sensor means that detects interaction (insertion of the tape cartridge) by the user with the housing, Col. 3 lines 21-65);
at least one light emitting element positioned on the inner object and which is not visible from the exterior of the housing (light source 23 positioned within the lower housing out of visibility from the exterior, Fig. 2), wherein the at least one light emitting element is positioned to direct light at the light inlet of the light transfer member so as to transmit the light through the light transfer member into the first housing member and through the first housing member so as to be visible from the exterior of the housing (the light source 23 directs light into the inlet of the light tubes 20/21 to transmit the light to the outlet of the light tubes and onto the first upper housing portion 11/18/19 for externally viewed light effects); and
a control system that includes a processor and a memory connected to the processor, wherein the processor is programmed to execute instructions stored in the memory, to determine whether a selected condition has been met based on signals from the at least one sensor, and to operate the at least one light emitting element if the condition is met (the inherent control system of the device is a simple switch control circuit having an amplifier connected to the electronic components that are activated/switched on/sensed by insertion of the tape cartridge into the receiving portion of the player 16 within the housing, which in the art would usually include at least a basic electronic circuit that usually would include a power source, processor, and memory in order to execute the instructions of operating the device according to the inserted tape).
Further, it is noted that anyone of ordinary skill in the art would understand that any relatively modern electric device would include the claimed basic components of a control system having a processor, memory, sensor, and stored instructions executed when the sensor is activated (power button, selection button, inserted cartridge, etc.).
Further, Sagi-Dolev teaches:
A similar interactive toy (Fig. 1-6) having an egg-shaped housing with at least two portions (12/14) and a revealable interactive inner toy (90), and light and sound producing means (54/58) electronically connected to a control system having a processor and memory (programmed controller 34 being a microprocessor or the like, Col. 1 lines 24-50, Fig. 4-6) to execute instructions when activated by a sensor (38/52) to provide illumination and sound to the toy device when a selected condition is met (touch sensor activated, Col. 3 lines 28-67, Col. 4 line 37 – Col. 5 line 4).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Spector to have further included basic interactive electronic control means that are commonly known and used in the art to allow the toy to be selectively activated by a user as desired with standard user activation means and electronic controller means to provide the electronic functions of the interactive toy as taught by Sagi-Dolev (Col. 3 lines 28-67, Col. 4 line 37 – Col. 5 line 4).
In Reference to Claim 2
Spector as modified by Sagi-Dolev teaches:
A toy assembly as claimed in claim 1, wherein the light transfer member is arcuate between the light inlet and the light outlet, such that the light inlet is oriented to direct the light in a first direction into the light transfer member and the light outlet is oriented to direct the light in a second direction that is different than the first direction (Spector: light tubes 20/21 are curved such that the inlet and outlet ends are directed in two different directions, Fig. 2).
In Reference to Claim 3
Spector as modified by Sagi-Dolev teaches:
A toy assembly as claimed in claim 1, wherein the at least one light emitting element is a plurality of light emitting elements (Sagi-Dolev: at least 2 lighting elements (plurality) are shown 54, Fig. 2, and more than one may be used, Col. 3 lines 50-57).
Though Spector doesn’t specifically teach the light emitting element being a plurality of light emitting elements, the use of multiple light emitting elements, such as multiple LEDs, in order to produce different colors and/or light effects is well-known and common in the art as taught by Sagi-Dolev (Col. 3 lines 50-57) and further it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
In Reference to Claim 4
Spector as modified by Sagi-Dolev teaches:
A toy assembly as claimed in claim 1, wherein the light transfer member is made from a light transfer material with a selected index of refraction and which is shaped to transmit light therethrough from the light inlet to the light outlet using total internal reflection (Spector: light transfer members 20/21 are formed of fiber optic cables or molded plastic light guides having light conducting properties to totally internally reflect the absorbed light from the inlet and direct it out the outlet, Col. 3 lines 36-46).
In Reference to Claim 5
Spector as modified by Sagi-Dolev teaches:
A toy assembly as claimed in claim 4, wherein the light inlet of the light transfer member has a first surface area and the light outlet of the light transfer member has a second surface area that is larger than the first surface area, and the light transfer member is shaped to permit the light to diverge between the light inlet and the light outlet (Spector: the light inlet 22 appears to be slightly smaller in size compared to the light outlets 19/18 (larger eye and mouth features are larger than the relatively small inlet 22 at the light source 23 allowing light to diverge through the larger outlet features)).
Further, the relative sized of the inlets and outlets may be modified as desired by the user to change the design of the features (larger outlet may illuminate a larger character feature or a smaller outlet may illuminate a smaller feature) or create a wider or thinner lighting of the desired portion of the device), wherein the inlet may be larger to absorb more light and smaller at the outlet to intensify the light, or the outlet may be sized even larger to create a wider lighting effect as desired as this only changes the aesthetics of the device, which is an obvious modification to one or ordinary skill in the art and is known and common in the art. Further, the shape or configuration of the relative sizes of the light tube portions is merely a matter of obvious design choice and 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 changing of the light tube shape merely modifies the aesthetics of the lighting feature and does not materially change the function or operation of the device.
In Reference to Claim 6
Spector as modified by Sagi-Dolev teaches:
A toy assembly as claimed in claim 1, wherein the housing is in the form of an egg (Spector: the respective housing portions approximate the shape of the housing 11/12 come together in upper and lower halves to hold the inner object therein in the same way as an egg-like housing (Fig. 2-3) and the housing may take different shapes or forms as desired (Col. 1 lines 38-56) and Sagi-Dolev clearly teaches an egg shaped housing that is common in the art, Fig. 1-6).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Spector to have been in the shape of an egg as Spector teaches that the shape of the device may be modified as desired and would allow the sound device to be used with an egg or hatching animal like character and Sagi-Dolev teaches that egg-shaped interactive housings are known and common in the art (Col. 1 lines 24-26, Col. 3 lines 5-13). Further, the shape or configuration of the housing is merely a matter of obvious design choice and 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 Reference to Claim 7
Spector as modified by Sagi-Dolev teaches:
A toy assembly as claimed in claim 1, wherein the second housing member is a base of the egg which is opaque, and the first housing member is an upper portion of the egg that extends above the second housing member (Spector and Sagi-Dolev both teach generally opaque lower base portions (Spector Fig. 3 shows the internal components cannot be seen through the bottom housing) with lighted or lighted features on the upper portions extending above the lower portions of the base (Sagi-Dolev: shell sections 12/14 are molded thermoplastic with at least a portion of the upper section somewhat translucent (Col. 3 lines 10-13, Col. 3 lines 50-57))).
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, Kronberger (12,179,127), Kelly (2023/0277954, 2023/0111031), McDonald (9,643,096), Sui (6,210,250), Colon (6,036,576), Newman (5,597,230), Paniaguas (5,091,833), Spector (4,828,527), and McCaslin (4,097,917) teach similar lighted toys with housings and lighting features.
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.
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711