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 .
Status of Claims
Claims 1-13, filed 9/28/2023, are pending and are currently being examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/18/2024 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.
Specification
The abstract of the disclosure is objected to because it contains implied language (ex. “The present disclosure…”). Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claim 12 is objected to because of the following informalities: it appears that this claim is likely intended to depend on claim 10 and not claim 9 as presented. Notably, claim 12 further defines the primary figure shape being of a group, however claim 12 depends on claim 9, which previously defines the primary figure as a different shape (turtle) from the group of claim 12. 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 11-12 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 12 recites the limitation “the back” in line 4. There is insufficient antecedent basis for this limitation in the claim. Further, it is unclear how the primary figure can both be a shape of the listed group in claim 12 and also of the shape defined in claim 9, of which claim 12 depends.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Towne US Pub. No. 2022/0105437.
Towne teaches:
In Reference to Claim 1
A doll toy (toy doll 10, Fig. 1-41), the doll toy comprising:
a body defining an exterior surface (body 11 having an exterior surface forming the doll shape, Fig. 1);
at least one internal cavity formed in the body and in communication with the exterior surface through at least one opening (internal cavity 20 in communication with the outer surface through a closable opening via door 28, [0079], Fig. 1-3); and
a plurality of interchangeable costumes (costume elements 22, wherein the costume element is generally shown as a mermaid tale/fluke 24/26, but may be interchangeable with other costume elements, such as “a tail, wings, an outfit, pants, a shirt, a head piece, a swimsuit, a jacket, a backpack, a hat, a cap, a halo, a tiara, ears, a mask, or any other type of costume”, [0079]), each of the plurality of interchangeable costumes including at least one first edge portion and at least one second panel portion, with each of the at least one first edge portions being secured within the at least one internal cavity (the first end of each changeable costume 22 is held within the cavity 20 via retaining mechanisms 30, [0080], Fig. 1-3) and each of the at least one second panel portions configured to extend outward through the at least one opening to cover at least a portion of the body of the doll toy (costume 22 including panel portions (fluke 24 and tail 26) being extendable out of the opening/cavity 20 to cover a portion of the doll body, such as the legs, Fig. 3),
wherein the at least one internal cavity is operable to receive both the at least one first edge portion and the second at least one panel portion of one of the plurality of interchangeable costumes while the at least one second panel portion of another of the plurality of interchangeable costumes is operable to extend from the at least one opening to cover at least a portion of the body of the doll toy (costume(s) 22 are placed and held at a first proximal edge in the cavity by retaining mechanisms 30 through respective opening(s) 20, wherein multiple openings may be used to secure multiple costume portions therein and extendable therefrom (ex. costume portions 22 may extend from the at least one cavities formed in the head (hat, cap, tiara, etc.), torso (tail/fluke, jacket, etc.), arms, and/or legs (pants, etc.)), and each cavity would be capable of holding multiple costumes therein in the same manner via respective retaining mechanism 30, [0079]-[0080]).
In Reference to Claim 2
The doll toy of claim 1, wherein the plurality of interchangeable costumes includes a first costume and a second costume, wherein the first costume is interchangeable with the second costume (costume elements 22, wherein the costume element is generally shown as a mermaid tale/fluke 24/26, but may be interchangeable with other costume elements, such as “a tail, wings, an outfit, pants, a shirt, a head piece, a swimsuit, a jacket, a backpack, a hat, a cap, a halo, a tiara, ears, a mask, or any other type of costume”, [0079], wherein any of the second costumes may be interchanged with the first mermaid tail costume as shown).
In Reference to Claim 3
The doll toy of claim 2, wherein the plurality of interchangeable costumes further includes a third costume, the third costume being interchangeable with the first costume and the second costume (costume elements 22, wherein the costume element is generally shown as a mermaid tale/fluke 24/26, but may be interchangeable with other costume elements, such as “a tail, wings, an outfit, pants, a shirt, a head piece, a swimsuit, a jacket, a backpack, a hat, a cap, a halo, a tiara, ears, a mask, or any other type of costume”, [0079], wherein any of the other costumes may be considered a third costume that may be interchanged with the first mermaid tail costume as shown and the selected second costume above).
In Reference to Claim 10
The doll toy of claim 1, wherein the body of the doll toy further comprises a primary figure defining the at least one internal cavity (primary doll figure 11 having internal cavity 20, Fig. 1-3).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Towne as applied to claim 2 above.
In Reference to Claim 4
Towne teaches:
The doll toy of claim 2, further comprising a hat operable to removably couple to the doll toy, the hat having a first configuration and a second hat having a second configuration, wherein the first configuration corresponds to the first costume and the second configuration corresponds to the second costume (the costume element may include a hat capable of removably coupling to retaining elements 30 of the toy doll, [0079], and different hats are mentioned (ex. hat, cap, halo, tiara, etc. in [0079]) which may be used to correspond to respective different costumes (ex. tiara and mermaid, shirt and cap, jacket and hat, or any other reasonable combination)).
Though Towne doesn’t specifically teach the hat being reversible to different hats corresponding to different costumes, Towne teaches different hats and head accessories may be used capable of corresponding to different costumes, and it would have been obvious to one having ordinary skill in the art to have formed the hat to have been reversible (one piece) vs changeable between two different hats (two pieces) as the resulting costume is achieved by replacing one hat with another hat in a similar resulting manner and further as it has been held that constructing a formerly integral structure in various elements involves only routine skill it the art (Nerwin v. Erlichman, 168 USPQ 177, 179) and it has been held that forming in one piece an article which has formerly been formed in two pieces involves only routine skill in the art (Howard v. Detroit Stove Works, 150 U.S. 164 (1893)). In this case one of ordinary skill in the art would find forming a singular reversible/connected hat having two different hat types/configurations vs. two different changeable hats is merely a matter of obvious design choice.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Towne as applied to claim 1 above, and further in view of Starner US Pat. No. 6,676,478.
In Reference to Claim 5
Towne teaches:
The doll toy of claim 1, wherein the body of the doll further comprises a primary figure (primary figure body 11) and a secondary container defining the at least one internal cavity (any part of the figure body (torso, back, head, limbs, etc.) may include at least one of the internal cavities 20 for holding accessories/costumes 22 therein, Fig. 1-41, [0079]), and wherein each of the at least one second panel portions is configured to extend outward through the at least one opening of the secondary container to cover at least a portion of the primary figure of the body of the doll.
Towne fails to teach:
Wherein the secondary container is operable to removably couple to the primary figure
Further, Starner teaches:
A similar plush doll toy system (Fig. 1-9) having a primary body resembling an animal figure (main animal figure 20) and a secondary container having an internal storage cavity (secondary container 30) for removably receiving accessories therein (secondary container 30 having an internal cavity for holding accessories 50 therein and includes fastening means 70 to removably attach to the primary figure body, Fig. 1-9, Col. 3 lines 28-54).
Though Towne doesn’t specifically teach the doll body having a secondary container removable from the primary body and defining the at least one internal cavity, it would have been obvious to one having ordinary skill in the art to have formed the body with a secondary container having the internal cavity separable from the primary body as separate containers on primary doll bodies are known and commonly used in the art as taught by Starner (Col. 3 lines 28-54) or to allow the toy body to be used separately as just a plush doll without a secondary container as taught by Starner (Col. 4 lines 5-10) and further it would have been obvious to have formed the internal cavity as a removable portion of the doll body as it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art (Nerwin v. Erlichman, 168 USPQ 177, 179).
In Reference to Claim 6
Towne as modified by Starner teaches:
The doll toy of claim 5, wherein each of the plurality of interchangeable costumes further comprises an opposing pair of first edge portions combined with second panel portions (Towne: the first end of each changeable costume 22 is held within the cavity 20 via retaining mechanisms 30 coupled to respective edge portions on the first edge of the costume (ex. left and right edges at the first end), [0080], Fig. 1-3, with extending panel portions (first panel fluke 24 and second panel tail 26) being extendable out of the opening/cavity 20 to cover a portion of the doll body, such as the legs, Fig. 3).
Further, it would have been obvious to one having ordinary skill in the art to have formed the costumes with separately defined opposed pairs of opposed first edge portions and second panel portions as the costumes may be formed to take any desired shape as the shape is merely a matter of obvious design choice and Towne teaches that the costumes may be modified in shape, size, and design as desired ([0079]). Further it has been held that duplication of the essential working parts of a device involves only routine skill in the art, constructing a formerly integral structure in various elements involves only routine skill in the art (Nerwin v. Erlichman, 168 USPQ 177, 179), 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 of the claimed product is significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). In this case, the exact number and positioning of fasteners, edges, panels, shapes, sizes, designs, etc. are merely a matter of obvious design choice to one having ordinary skill in the art.
In Reference to Claim 7-8
Towne as modified by Starner teaches:
The doll toy of claim 6, wherein the secondary container is removably coupled to the primary figure with an opposing pair of second panel portions of at least one of the plurality of interchangeable costumes, The doll toy of claim 7, wherein outer edges of the opposing pair of second panel portions are configured for coupling together around the primary figure with a fabric fastener to removably couple the secondary container to the primary figure (the panel portions of the costumes 22 of Towne are removably secured to portions of the primary doll body using retaining mechanisms 30 (Fig. 1-18), which when the panels extend out of the secondary container as modified above, would aid in holding the secondary container to the primary body during use).
Further, though Towne doesn’t specifically teach the removable coupling between the costumes and primary figure using a fabric fastener along panel portions of the costumes, Towne teaches the retaining mechanism being strategically placed on the panels of the costumes to secure to the primary doll (hook and loop fabric fasteners 30/36 secure to the panel portions 24/26 to secure to the body 11, [0080], [0082]-[0083) and Starner teaches fabric fastening means (Velcro (hook and loop fabric) 70) securing the secondary container to the primary body and the accessories being removably secure to the to primary and secondary bodies using fabric fasteners (50/60) and it would have been obvious to one having ordinary skill in the art to have used an equivalent fastening means, such as fabric fasteners, to secure the costume panels at opposing outer edges to removably secure to the primary body as this is merely a matter of rearranging the disclosed parts of the prior art and the exact placement or equivalent fastening means is merely a matter of obvious design choice to one having ordinary skill in the art and it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Towne as modified by Starner as applied to claim 5 above, and further in view of Badie US Pat. No. 10,786,746.
In Reference to Claim 9
Towne as modified by Starner teaches:
The doll toy of claim 5, wherein the primary figure is a human (Towne: Fig. 1) or bear (Starner, Fig. 1-8) and a secondary container having a related design (Starner, bee hive 30, Fig. 1-8).
Towne fails to teach:
Wherein the primary figure is a turtle and the secondary container is a turtle shell.
Further, Badie teaches:
A similar toy doll having a character shaped outer surface and appendages and an inner cavity, the body capable of being formed in numerous shapes, including a turtle (turtles have shells), Col. 8 lines 46-67),
It would have been obvious to one having ordinary skill in the art to have modified the invention of Towne and Starner to have formed the doll toy body and container in the shape of a turtle and a shell as Towne teaches that the toy may be formed in different aesthetic shapes and configurations ([0010]) and Starner (Col. 3 lines 50-54) and as turtle shaped bodies are known and common shapes in the art as taught by Badie (Col. 8 lines 46-67).
In Reference to Claim 11
Towne as modified by Starner and Badie teaches:
The doll toy of claim 9, wherein each of the plurality of interchangeable costumes further comprises a single first edge portion combined with a single second panel portion (Towne: the first edge/end of each changeable costume 22 is held within the cavity 20 via retaining mechanisms 30, line 1 of [0080], Fig. 1-3, and each costume 22 including at least one panel portion (fluke 24 and tail 26) being extendable out of the opening/cavity 20 to cover a portion of the doll body, such as the legs, Fig. 3, wherein the first costume is generally shown as a mermaid tale/fluke 24/26, but may be interchangeable with other similar structured costume elements (having a connection edge and a panel extending therefrom), such as “a tail, wings, an outfit, pants, a shirt, a head piece, a swimsuit, a jacket, a backpack, a hat, a cap, a halo, a tiara, ears, a mask, or any other type of costume”, [0079], wherein any of the second costumes may be interchanged with the first mermaid tail costume as shown).
In Reference to Claim 12
Towne as modified by Starner and Badie teaches:
The doll toy of claim 9, wherein the primary figure is selected from a group consisting of a rabbit, a mouse, a cow, a bear, an elephant, and a human, and wherein the at least one opening extends along the back of the primary figure (Towne: Fig. 1 shows the doll body resembling a human, wherein the opening 20 may be on the back of the primary figure (the opening may be placed on any part of the body, “The cavity 20 may be disposed anywhere on the body including the torso, head, legs, arms, etc., [0079], and is shown in the torso/back area of the body)).
Further, it would have been obvious to one having ordinary skill in the art to have formed the opening in the back area of the toy body as this is a commonly known and used position of a cavity on a doll toy with a storage cavity in the art and Towne teaches that the cavity may be located anywhere on the body and further as it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Towne as applied to claim 1 above.
In Reference to Claim 13
Towne teaches:
The doll toy of claim 1, wherein at least one of the plurality of interchangeable costumes is a reversible costume (the costume element may include different configurations capable of removably coupling to retaining elements 30 of the toy doll, [0079], and different costume parts are mentioned (ex. wings, outfit, jacket, shirt, etc. in [0079]) which may be used to correspond to respective different costumes covering the same area of the doll toy).
Though Towne doesn’t specifically teach the costume being reversible to different costumes, Towne teaches different costume clothing pieces and accessories may be used capable of corresponding to different looks, and it would have been obvious to one having ordinary skill in the art to have formed the costume to have been reversible (one piece) vs changeable between two different costumes (two pieces) as the resulting costume is achieved by replacing one with another in a similar resulting manner and further as it has been held that constructing a formerly integral structure in various elements involves only routine skill it the art (Nerwin v. Erlichman, 168 USPQ 177, 179) and it has been held that forming in one piece an article which has formerly been formed in two pieces involves only routine skill in the art (Howard v. Detroit Stove Works, 150 U.S. 164 (1893)). In this case one of ordinary skill in the art would find forming a singular reversible/connected costume having two different types/configurations vs. two different changeable costumes/outfits is merely a matter of obvious design choice.
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, Reynolds (5,328,399), Morris (6,755,712), Shamah (2007/0232186), Sutton (10,201,762), and Bagla (2014/0227933) teach similar plush doll toys having internal cavities holding accessories, costumes, clothing elements, or the like.
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 EST.
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711