DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 now claims “the elongated tube is co-frustrated such that different segments of the tube collapse under different forces” (emphasis added). The specification never discusses “co-frustrated”, and never discusses “different segments collapsing under different forces”. Claim 1 also claims that “subsequently releasing it cause the tube to selectively collapse non-uniformly in random or posed stable configurations rather than biassing toward a single contracted state” (emphasis added). The language “non-uniformly”, “stable configuration”, and “biasing toward a single contracted state” is never used in the specification. Finally, claim 1 also claims “wherein the plurality of stable equilibrium conditions include both purposeful poses manually created by the user and emergent random configurations resulting from the release of the elongated tube after stretching” (emphasis added). The language “purposeful poses” and “emergent random configurations” is never used in the specification. The Examiner fails to find this language present int the specification. In addition, applicant has failed to point to any specific citations in the specifications or portions of the drawings that show these limitations. In the event that this rejection is in error, applicant would need to at least add the language to the specification to have proper antecedent basis (i.e. there is a specification objection if this is not considered new matter).
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 1-4 and 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 now claims that the elongated tube is “co-frustrated”. The Examiner has no idea what this limitation entails as the word is not used in the specification and has no common accepted language (i.e. no plain language or dictionary definition). In addition, claim 1 now claims that stretching and releasing the elongated tube causes the tube “to selectively collapse non-uniformly into random or posed stable configurations rather than biasing toward a single contracted state bend” (emphasis added). The language is a negative limitation. However, MPEP 2173.05(i) states that “silence will not generally suffect to support a negative limitation”. In this particular case, applicant has not specifically stated that negative limitation in the specification (i.e. the spec is silent) and merely adds the negative limitation in an attempt to overcome what they interpret in the prior art.
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 (i.e., changing from AIA to pre-AIA ) 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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 1-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable Tsuda (JP Pub. No. 2008-126041; as cited in applicant’s IDS) in view of Dickhut (US Pat. No. 5,395,278).
Regarding claim 1, Tsuda discloses a manually manipulatable flexible toy (Fig. 1 and 8), comprising: an elongated tube (Fig. 1 below), the elongated tube having a one-piece structure unitarily fabricated of semi-rigid material (Fig. 1 below and par. [0008] of the machine translation; noting this is obvious given the drawing an subsequent description), the elongated tube constructed with a plurality of larger diameter rings and a plurality of smaller diameter rings joined in an alternating array lengthwise of the elongated tube by a plurality of frusto-conical walls (Fig. 1, below), wherein a pair of frusto-conical walls diverge radially inwardly from any given larger diameter ring to any adjacent pair of smaller diameter rings when in an extended condition of the elongated tube (see Fig. 8 showing extension; noting this is obvious), and each pair of radially inwardly diverging walls extends radially inwardly offset to both sides of any given larger diameter ring when the elongated tube is in a retracted condition (Fig. 1 below), and the elongated tube is co-frustrated (noting it is entirely unclear what structure this denotes) such that different segments of the tube collapse under different forces, whereby the tube maintains a plurality of stable equilibrium conditions when manually manipulatable thereto (Fig. 9 and par. [0003] of machine translation; noting this language is functionally possible given the structure; noting this is also common sense if the tube was completely elongated, and a smaller force was applied as compared to a larger force, different portions or segments of the tube would collapse); opposite end caps, the end caps secured to the elongated tube (Fig. 1 below, items 6; see also Fig. 4, items 6;); and an elastic member secured within the elongated tube at the end caps (Fig. 1 below, item 9 and par. [0009] of machine translation), the elastic member being stretchable from a normal resting configuration and having a tendency to return to its normal resting configuration (see specifically par. [0009] of the machine translation; also noting that this is functionally possible given the structure), wherein stretching the elongated tube with the elastic member and subsequently releasing it causes the elongated tube to bend into a posed stable configuration (Fig. 1 and par. [0009] of machine translation; and entire disclosure, noting this latter language is functional language that is possible given an almost identically claimed structure); wherein the plurality of stable equilibrium conditions include purposeful poses manually created by the user (Fig. 9; again noting that this is functionally possible given the structure). It is noted that Tsuda does not disclose that the diverging walls are offset to one side of any given larger diameter ring, stretching and releasing the tube causes it to selectively collapse non-uniformly into random configurations rather than biasing toward a single contracted state, wherein the plurality of stable equilibrium conditions include emergent random configurations resulting from release of the elongated tube after stretching. However, with regards to this limitation, the Examiner takes three different positions. First, regarding the diverging walls offset to one side, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [16] giving no criticality to the tube having diverging walls offset to one side; also noting that the applicant does not list any specific structure in the elongated tube that causes the random configuration after stretching and actually goes so far as to state that the elongated tube is “well-known in the industry”). Second, applicant admits on the record that “The Tube 102 is well known in the industry as a collapsible flexible tubing” (see applicant’s spec, par. [16]; emphasis added; again noting applicant gives no deviation from the typical elongated tube structure to provide the random configuration). Finally, Dickhut discloses a similar flexible tubing wherein the diverging walls extend radially inwardly offset to one side of any given larger diameter ring (Fig. 3). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the tube would not be significant: that is, the tube could collapse and expand regardless of how the diverging walls are oriented or offset with respect to the larger ring. Alternatively, it would have been obvious to a person of ordinary skill in the art at the time of filing that a tube with diverging walls offset to one side of any larger diameter ring could be used because the tube is “well known in the industry as a collapsible flexible tubing” much like the tubing shown in Tsuda: Fig. 1. It would have been obvious to a person of ordinary skill in the art at the time of filing to modify Tsuda to use diverging walls that are offset to one side of any larger ring as taught by Dickhut because doing so would be a simple substitution of one element (a collapsible and expandable tube that has diverging walls offset to one side of any larger ring) for another (a collapsible and expandable tube that has diverging walls offset to both sides of any larger ring) to obtain predictable results (the continued ability to use a collapsible and expandable tube, the tube having diverging walls offset to one side of any larger ring). Finally, regarding the claimed functional language regarding random configurations after stretching, applicant does not disclose any deviation in structure from the “well-known in the industry” elongated tube. As such, the functional language would be possible at least given the combined Tsuda and Dickhut structure.
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Regarding claim 2, the combined Tsuda and Dickhut disclose that the tube is capable of being manually manipulated into various configurations, including being twisted, turned, stretched, and compressed (Dickhut: Figs. 1-6 making this obvious; also noting that this if functional language that is possible given both structures in Tsuda and Dickhut).
Regarding claim 3, the combined Tsuda and Dickhut disclose that the elastic member is an elastic band, a rubber band, an o-ring, or an elastic fiber (Tsuda: Fig. 3 above, item 9 and pars. [0012]; noting “elastic band” is made obvious from the figure and the description).
Regarding claim 4, the combined Tsuda and Dickhut disclose that the tube can be twisted upon itself or wrapped around objects. (Dickhut: Figs. 5 and 6 making obvious the former limitation; also noting that this if functional language that is possible given both structures in Tsuda and Dickhut).
Regarding claim 7, the combined Tsuda and Dickhut disclose that two tubes are connected together using a coupler (Tsuda: Fig. 5, item 10 being the coupler as seen in Fig. 7).
Response to Arguments
Applicant's arguments filed 9/10/25 have been fully considered but they are not generally persuasive.
Applicant is kindly reminded that they should provide specific support from the specification or drawings for all claim amendments. No such support has been provided.
With regards to “co-frustrated”, the word never appears int the specification. The Examiner does not import any meaning to the limitation based on applicant’s arguments (see Remarks, page 9). In addition, the word has no plain meaning (i.e. dictionary meaning). As such, the word is considered both new matter and indefinite.
On page 9 of the Remarks, applicant argues that (emphasis added):
The claimed “co-frustrated” tube geometry is engineered so that the folds
and frustal walls create non-uniform resistance to collapse. Contraction does not occur
uniformly across the structure; instead, individual segments collapse selectively
depending on local geometry and applied force.
However, the Examiner notes that applicant does not disclose any special structure for the elongated tube to create this feature (noting this could potentially create a 112(a) enablement issue as well). In fact, in par. [16], applicant states that “The Tube 102 is well known in the industry as a collapsible flexible tube” (emphasis added). As such, the combined Tsuda and Dickhut would make obvious the functional limitations of claim 1 because 1) at least Dickhut discloses a tube similar in shape to applicant and 2) applicant readily admits that the tube is “well known” in the art.
Applicant argues “This difference in structure (claimed by Applicant) causes substantially different outcomes” (see Remarks, page 9). To what structure is applicant referring? Co-frustrated? The issue with that particular word has been addressed above. Other than that word, all the amendments to claim 1 are not structural limitations, they are functional limitations.
Moving on, applicant argues that Tsuda is directed toward a toy that “returns the bellows to a uniform contracted state” (see Remarks, pages 9-10, i.e. not random configurations). Applicant even goes on to cite to Tsuda for a teaching away (noting the exact citation is unknown, because applicant never gives it; but noting after review, it appears applicant is specifically referring to Tsuda: par. [0010] of the machine translation). With all due respect, Tsuda is disclosing subtle movement between a stretched position (Fig. 9) and a straight position (Fig. 10). The Examiner assumes that applicant’s functional language in claim 1 is created by a more violent “snap back” of the toy from a more elongated condition (see Figs. 2a-2c). This is in contrast to the more subtle movements disclosed an discussed by Tsuda. As such, the Examiner does not see Tsuda: par. [0010] as a teaching away from the functional language of claim 1 (emphasis added). Furthermore, the Examiner believes that the functional language can be accomplished by at least the combined Tsuda and Dickhut based on the combined structure.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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, Eugene Kim can be reached on (571)272-4463. 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
9/15/25
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711