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
In an amendment filed 5/5/2026, Applicant amended the abstract, amended claims 1, 16-17, 20, cancelled claims 13-15, and added new claim 21. This amendment is acknowledged. Claims 1-12 and 16-21 are pending and are currently being examined.
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 1-8, 12, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Chianese US Pat. No. 6,174,216 in view of Hillis et al. US Pat. No. 9,259,658.
In Reference to Claim 1
Chianese teaches:
A children's toy (toy 10, Fig. 1-3) comprising:
a shell defining a hollow interior space (body/shell 11), the shell comprising a frontal lobe (front lobe 40), a rear lobe (30), and an elongated generally cylindrical body segment coupling the frontal lobe to the rear lobe (main body lobe 12 coupled to the front lobe 40 at one end and the rear lobe 30 at a second end, Fig. 1-3);
a filling housed by the shell, the filling situated within the hollow interior space (filling 26 situated within the hollow interior 14 of the shell, Fig. 1, 3); and
a band extending through the hollow interior space from a first longitudinal end of the shell to a second longitudinal end of the shell that is opposite the first longitudinal end (band 35 extends through the hollow interior space 14 from a first longitudinal end of the shell in lobe 40 at 37/43 to a second opposite end of the shell in lobe 30 at 33/36), the band coupled at a first end to a first interior surface on an inner side of the frontal lobe (band 35 has a first end 37 coupled to an inner side/surface at anchor 43 of the front lobe 40, Fig. 1), and coupled at a second end to a second interior surface on an inner side of the rear lobe (band 35 has a second end 36 is coupled to an inner surface on the interior of lobe 30 at anchor 33, Fig. 1),
wherein the shell and the band are configured to stretch from a contracted state (Fig. 1) to an expanded state in at least a first direction (Fig. 2), the first direction being generally parallel with a direction in which the band longitudinally extends through the hollow interior space (the shell and band both are stretchable along the longitudinal axis of the shell, Fig. 1-2),
in the contracted state, a length of the shell is less than a length of the shell in the expanded state (Fig. 1 shows the body length being less in the contracted state than the expanded state of Fig. 2), and
the band being biased to the contracted state and the band biasing the shell to the contracted state (the band is resilient and therefore is biased to return to the natural unstretched state of Fig. 1 after being stretched, Col. 4 line 58 – Col. 5 line 10).
Chianese fails to teach:
The shell having a plurality of generally spherical segments coupling the frontal lobe to the rear lobe.
Further, Hillis teaches:
A similar child’s toy having a resilient body having a plurality of generally spherical segments/lobes coupled between a front and rear lobe and an elastic member extending through a length of the body (the body 12 has a plurality of connected lobes/body portions 16a-f along a length of the body between a head/front lobe 18 and a rear lobe 20, and a central band 34 having a first end connected to the front lobe and a rear end connected to the rear lobe and extending along the longitudinal length of the body in the hollow interior of the body, and filler material within the hollow interior body to form a desired animal shape, Fig. 1-20, Col. 3 lines 41-54, Col. 3 line 65 – Col. 4 line 2).
Though Chianese doesn’t specifically teach the body having a plurality of generally spherical lobes (instead teaches an elongate cylindrical section similar in shape to a plurality of connected spherical lobes), it would have been obvious to one having ordinary skill in the art to have formed the body as a plurality of lobes in order to allow the body to deform and take different shapes more easily as is known in the art or to allow the toy to take the shape of essentially any desired animal (including a generally linear longitudinally extended shape, ex. caterpillar/glow worm) as taught by Hillis (Col. 3 lines 41-54) and as Chianese teaches that other animal shapes may be used (body 11 generally resembles a four-legged animal and lobes 30/40 generally resemble a cat and a dog, however other animals or creatures are obvious modifications, Col. 3 line 65 – Col. 4 line 57). Further, modification of the shape of the body portions or orientation of the body portions is merely a matter of obvious design choice and it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70), 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)), 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)). In this case, body being formed of longitudinally/linearly connected lobes is known in the art as taught by Hillis, Hillis further teaches that the shape or animal shape is an obvious modification, and the shape/design of the body does not materially change the function of the toy (resiliently movable and biased to the rest state) and each of these shapes/orientations are commonly known and used in the art and therefore the selection of any of these orientations/shapes is merely a matter of obvious design choice.
In Reference to Claim 2
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the shell comprises a material selected from the group consisting of long pile polyester, short pile polyester, velvet, velboa, shag, animal fur, artificial fur, cotton, silk, wool, bamboo, nylon, rayon, spandex, acrylic, and combinations thereof (Chianese: shell 11 is formed of resilient stretchable materials such as plastic or rubber or the like (abstract, col. 3 lines 60-65), of which numerous of the listed materials would apply to meet and are known resilient, flexible, plastic, rubber, and/or similar materials (ex. spandex, nylon, rayon, polyester, etc.)).
Though Chianese doesn’t recite specific filler materials listed explicitly, numerous of the claimed materials would be suitably used as the described shell material of Chianese and Chianese teaches that other known and similar materials may be used. Further, it would have been obvious to one having ordinary skill in the art to have modified the selection of a material used for portions of the toy to have been any of the listed commonly known materials in the art as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). In this case, the listed materials are commonly known and used materials in the plush toy art and therefore the selection of any of these materials is merely a matter of obvious design choice.
In Reference to Claim 3
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the filling comprises a material selected from the group consisting of polyester, polyethylene, polypropylene, cotton, bamboo, wool, polyethylene foam, polyurethane foam, polystyrene foam, and combinations thereof (Chianese: filler 26 is generally small particular or granular elements, small plastic spheres, liquid or viscous material, or any other known similar material, Col. 4 lines 3-14, of which numerous of the claimed materials would apply. Hillis: filling 15 may include cotton, polyester, foam rubber, or other similar materials, Col. 3 lines 51-53).
Though Chianese doesn’t recite specific filler materials, numerous of the claimed materials would be suitably used as the described filler material of Chianese and Chianese teaches that other known and similar materials may be used and Hillis teaches that these materials are known and used in the art as filling (Col. 3 lines 51-53). Further, it would have been obvious to one having ordinary skill in the art to have modified the selection of a material used for portions of the toy to have been any of the listed commonly known materials in the art as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). In this case, the listed materials are commonly known and used materials in the plush toy art and therefore the selection of any of these materials is merely a matter of obvious design choice.
In Reference to Claim 4
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the band comprises an elastic material (Chianese: resilient band 35 is fabricated of elastic material to stretch and return to shape during use, Col. 5 lines 19-30).
In Reference to Claim 5
Chianese as modified by Hillis teaches:
The children's toy of claim 4, wherein the elastic material is flat braid elastic or round elastic cord (Chianese: elastic cord 35 appears to be shown as round elastic cord, Fig. 1-3).
Further, it would have been obvious to one having ordinary skill in the art to have modified the exact shape of elastic band of the toy to have been a flat braid or round cord as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416) 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)) 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)). In this case, elastic bands being flat, rounded, or flat braids does not change the function of the toy and each of these shapes/materials are commonly known and used in the art and therefore the selection of any of these materials/shapes is merely a matter of obvious design choice.
In Reference to Claim 6
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the filling is configured to stretch along with the band and the shell from the contracted state to the expanded state (Chianese: filler 26 moves with the shell and band between the contracted and elongated states of Fig. 1-2, Col. 5 lines 1-41).
In Reference to Claim 7
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the first end is mechanically coupled to the first interior surface (Chianese: band 35 has a first end 37 mechanically coupled to an inner side/surface of the front lobe 40 at anchor 43, Fig. 1, 3, Col. 4 lines 32-49, Col. 5 line 42 – Col. 6 line 34).
In Reference to Claim 8
Chianese as modified by Hillis teaches:
The children's toy of claim 7, wherein the second end is mechanically coupled to the second interior surface (Chianese: band 35 has a second end 36 mechanically coupled to an inner surface on the interior of lobe 30 via anchor 33, Fig. 1, Col. 4 lines 24-49, Col. 5 line 42 – Col. 6 line 34).
In Reference to Claim 12
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the shell comprises a plurality of lobes ordered longitudinally along the shell (Hillis: lobes 16a-f are longitudinally ordered along the length of the shell body to resemble a caterpillar, Fig. 1, Col. 3 lines 41-54).
In Reference to Claim 16
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the frontal lobe and the rear lobe maintain their shape when the children's toy transitions from the contracted state to the expanded state (Chianese: the front and rear lobes 30/40 maintain their shape between the contracted state (Fig. 1) and the expanded state (Fig. 2), Col. 6 lines 35-44).
In Reference to Claim 17
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the frontal lobe comprises an appendage extending from the frontal lobe (Hillis: frontal lobe 18 has two appendages extending therefrom to resemble a caterpillar as is known and commonly used in the art, Fig. 1).
Though Chianese doesn’t specifically teach the front lobe/head portion having an extended bulbous member aesthetically representing a caterpillar, it would have been obvious to one having ordinary skill in the art to have formed the head with features of a caterpillar (as taught by Hillis), such as bulbous appendages extending from the head, or any other similar aesthetic design in order to mimic the shape of another known and similar animal, such as a caterpillar, as this shape of animal design is known and common in the art as taught by Hillis (Col. 3 lines 41-54) and as Chianese teaches that other animal shapes may be used (body 11 generally resembles a four-legged animal and lobes 30/40 generally resemble a cat and a dog, however other animals or creatures are obvious modifications, Col. 3 line 65 – Col. 4 line 57). Further, 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)), 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)). In this case, body being formed with bulbous appendages extending from the head of the toy is known in the art as taught by Hillis, Hillis teaches that the shape of the animal toy is an obvious modification, and the shape/design of the body does not materially change the function of the toy and the claimed shapes/animal aesthetic features are commonly known and used in the art and therefore the selection of any of these orientations/shapes is merely a matter of obvious design choice.
In Reference to Claim 18
Chianese as modified by Hillis teaches:
The children's toy of claim 17, wherein the appendage comprises a stem coupled to the frontal lobe at a first end of the appendage, and a bulb situated at a second end of the appendage, the second end of the appendage opposite the first end of the appendage (Hillis: unlabeled thin stems extend from the front lobe/head 18 to a second end having a bulbous end portion, Fig. 1).
In Reference to Claim 19
Chianese as modified by Hillis teaches:
The children's toy of claim 18, wherein the bulb comprises a diameter greater than a diameter of the stem (Hillis: the bulbous end of the appendage is wider and greater in diameter than the thinner stem member to mimic a caterpillar shape, Fig. 1).
In Reference to Claim 20
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein each generally spherical segment is mechanically coupled to an adjacent segment at a seam (Hillis: Fig. 1 shows each adjacent segment integrally or mechanically sewn into shape together).
Further, though Hillis doesn’t explicitly recite that the spherical segments are mechanically coupled to an adjacent segment at a seam (via sewing), Hillis appears to show that the segments are most likely connected to one another using seams to create the generally spherical shapes of the generally spherical segments shown (16a-f appear to be formed by sewing adjacent segments to one another at a seam), it would have been obvious to one having ordinary skill in the art to have modified the method of joining adjacent segments to form the same body shape as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416), it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art (Nerwin v. Erlichman, 168 UPSQ 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)). In this case the adjacent segments being formed using a seam does not change the resulting body shape or function of the toy in any way and each of these joining materials/methods are commonly known and used in the art and therefore the selection of any of these materials/shapes is merely a matter of obvious design choice.
In Reference to Claim 21
Chianese as modified by Hillis teaches:
The children's toy of claim 1, wherein the band extends generally along a longitudinal axis of the children's toy through a central portion of the hollow interior space (Chianese: band 35 extends generally along the longitudinal axis of the toy through the center of the hollow interior space 14, Fig. 2. Hillis: band 34 also extends generally along the longitudinal axis of the toy through the center of the hollow interior space, Fig. 1).
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Chianese and Hillis as applied to claim 1 above, and further in view of Cabrera US Pat. No. 8,628,372.
In Reference to Claims 9-11
Chianese as modified by Hillis teaches:
The children’s toy of claim 1, wherein the first end is mechanically coupled to the first interior surface and wherein the second end is mechanically coupled to the second interior surface (Chianese: the band 35 is mechanically coupled to the interior surface of the body at its first and second end via mechanical coupling at anchors 33/43, Fig. 1-3, Col. 4 lines 32-49, Col. 5 line 42 – Col. 6 line 34).
Chianese fails to teach:
The ends being chemically coupled or head bond coupled to the interior surfaces.
Further, Cabrera teaches:
A similar child’s toy having a stuffed plush body and a movable actuated wire (toy body 10 with substrate/inner surface 14 and movable wire(s) 14 coupled at ends 16a/b to the substrate, Fig. 1-10) therein to cause movement of the toy during use, the wire being coupled to the substrate using mechanical coupling/thread, thermal/head bonding, chemical bonding, or any other similar known means, Col. 8 lines 22-32).
Though Chianese doesn’t specifically teach the band being coupled to the first and second ends of the body using chemical or head bonding couplings, it would have been obvious to one having ordinary skill in the art to have used a different known coupling means, such as thermal/heat bonding or chemical bonding as these are known and commonly used equivalent coupling means in the art as taught by Cabrera (Col. 8 lines 22-32), and further the selection of a coupling material or means used to couple the band to the body of the toy to have been any of the commonly known means or materials in the art is obvious as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). In this case, the band coupling means being heat-bonding, chemical, or mechanically bonding does not change the function of the toy and each of these types/materials are commonly known and used in the art as taught by Cabrera and therefore the selection of any of these couplings/materials is merely a matter of obvious design choice.
Response to Arguments
Applicant’s arguments, see pages 7-12, filed 5/5/2026, with respect to the rejection(s) of claim(s) 1-20 under 102/103 (Munro) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Chianese and Hillis.
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, Kazakoff (2008/0305712), Wright (5,194,033), Hodes (3,557,436), Bischoff (2,853,831), Delhome (FR2663555), Janas (2,224,456), O’Neill (1,644,027), and Bradish (1,355,799) teach similar resilient/stretchable toys and Hollands (1,436,258), Summers (2016/0158112), and Cogliano (6,074,212) teach similarly shaped animal body toys.
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.
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 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
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