DETAILED ACTION
Election/Restrictions
Claims 3, 8-10, 12, and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/18/25.
In addition, claim 21 is also withdrawn from prosecution based on the specific election. In the response, dated 12/18/25, applicant specifically elected that the member was species M (slender and deformable) as opposed to species O (rigid) (emphasis added). Applicant appears to now attempt to reintroduce the “rigid member” in new claim 21. That is, the Examiner does not see anywhere in the specification or drawings that applicant is using a separate and distinct removal tool as the “rigid member” of claim 21. Rather, it appears that applicant simply uses another member in the form of a “rigid” member to remove a deformable member. However, the claiming of this limitation is not consistent with the specific election.
It could also be argued that claim 21 in general lacks written support and/or depiction in the drawings (i.e. language like “bulk”, “disposable”, “proximate”, “transmit”, and “removal force” are never used in the specification and the actual sequence of claim 21 is never shown). In any event, if applicant believes that claim 21 should be examined on the merits, they should provide direct support for the limitation for the written specification and/or drawings and state why the inclusion of the claim does not violate their specific election. Applicant should also include a drawing specifically showing claim 21. Finally, it should be noted that claim 21 also contains 112(b) issues because it references two distinct “members”, but then further discuses a single “the member” in the remainder of the claim (i.e. the language is unclear).
IDS
US Pat. No. 616,765 is not considered under the IDS. The patent is listed under “Non-patent Literature”. However, although it may be old, it is still a US patent and should be listed as such under the appropriate section “U.S. Patents”. Furthermore, applicant does not even submit it as a NPL for proper consideration.
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 (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 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.
Claim 1, 2, 4, 7, 11, 13, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (herein “Lee”; US Pub. No. 2013/0000089 A1).
Regarding claim 1, Lee discloses a toy comprising a platform (Fig. 23(b), item 610 or Fig. 14, item 100) defined by at least a surface (Fig. 23(b), item 610), a first channel, and a second channel, each of the first channel and the second channel formed by a first protrusion extending from the surface (Fig. 23(b) below), a second protrusion extending from the surface (Fig. 23(b) below), wherein optionally the first protrusion or the second protrusion of the first channel corresponds to the one of the first protrusion or the second protrusion of the second channel (Fig. 23(b) below; noting this is “optional” and is not required, but the below figure clearly shows it), a flexible member having a thickness such that the flexible member is releasably securable along at least a partial length thereof within the first channel or the second channel such that at least a portion of the flexible member is curvilinear (Figs. 24 and 25, item 623a being the “member” which shows a curved outer, lower edge meeting the “curvilinear” requirement, and par. [0104]; noting an object that is “elastic” would inherently be “flexible”; noting dictionary.com specifically defines “elastic” as “flexible”).
PNG
media_image1.png
507
666
media_image1.png
Greyscale
Regarding claim 2, Lee discloses that the first channel and the second channel are parallel (Fig. 23(b) above).
Regarding claim 4, Lee discloses a toy comprising a platform (Fig. 23(b), item 610 or Fig. 14, item 100) defined by at least a surface (Fig. 23(b), item 610)), and a first channel formed by a first protrusion (Fig. 23b above; noting the first protrusion for the first channel), a member having a thickness (Fig. 24; noting a thickness is inherent) such that the member is releasably securable along at least a partial length thereof within the first channel (Figs. 24 and 25, item 623a being the “member”, par. [0035] stating that it is attachable and removable).
Regarding claim 7, Lee discloses that the surface is planar (Fig. 23(b) above, item 610 and pars. [0198]).
Regarding claim 11, Lee discloses further comprising a second channel, wherein the first channel and the second channel are parallel (Fig. 23(b) above).
Regarding claim 13, Lee discloses that the member is slender and deformable (Fig. 24, item 623a and par. [0104]; noting as per Fig. 24, the actual width of the of the member 623a is small compared to its length, meeting the term “slender”, and as per par. [0104], a material that is “elastic” is both “flexible” and “deformable”).
Regarding claim 25, Lee discloses that the member is discrete (Fig. 24, item 623a being the member; noting the plain meaning of the word “discrete” is “apart from others” or “distinct”, and under a broadest reasonable interpretation, item 623a is separate and distinct from the adjacent member item 623a; even if attached via a common base plate).
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 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 5, 22,and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (herein “Lee”; US Pub. No. 2013/0000089 A1).
Regarding claim 5, Lee discloses a rigid back plate having a platform disposed the platform disposed thereon (Fig. 29(b), item 810 and par. [00235]; noting this is obvious, while Lee does not specifically disclose that the “base plate” is “rigid”, it would be obvious to a POSA because the base plate would need to support the “platform” onto which puzzle pieces are attached, see also Fig. 34, 38, 39; also making obvious “rigid” base or backing plates). The Examiner also notes that this is a different embodiment. However, the Court in Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009) found that combining two embodiments in the same disclosure does not “require a leap of inventiveness”. Thus, the combination of two embodiments within a single prior art is obvious.
Regarding claim 22, Lee discloses that the surface and the first protrusion are elastically deformable (see Fig. 23(b) and pars. [0195]-[0201]; noting this would be obvious to a POSA; that is, Lee specifically discloses that the rails/protrusion are “elastic”, Fig. 23(b) shows that the rails/protrusion are continuous/integral with the base plate, in fact, par. [0200] specifically states that the rails/protrusion and base are “integrally formed”; as such, a POSA would understand that the protrusions and the surface are made from the same elastic material; see also par. [0224] essentially stating that the rail and plate can be made from the same material).
Regarding claim 23, Lee discloses that the surface and the first protrusion comprise a flexible material (see Fig. 23(b) and pars. [0195]-[0201]; noting this would be obvious to a POSA; that is, Lee specifically discloses that the rails/protrusion are “elastic”, Fig. 23(b) shows that the rails/protrusion are continuous/integral with the base plate, in fact, par. [0200] specifically states that the rails/protrusion and base are “integrally formed”; as such, a POSA would understand that the protrusions and the surface are made from the same elastic material; again noting if something is “elastic”, it is by definition “flexible”; see also par. [0224] essentially stating that the rail and plate can be made from the same material).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (herein “Lee”; US Pub. No. 2013/0000089 A1) in view of Arboleda (US Pub. No. 2017/0232354 A1).
Regarding claim 6, it is noted that Lee does not specifically disclose the platform includes an interconnect configured to connect with a further platform of a further toy. However, Lee discloses a platform (Fig. 29(b), item 810). In addition, Arboleda discloses a platform that includes an interconnect configured to connect it to another platform (Fig. 5, item 46 and par. [0040]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Lee to make the platform include an interconnect configured to connect it with another platform as taught by Arboleda because doing so would be use of a known technique (using an interconnect on a platform) to improve a similar product (a platform for a display) in the same way (using an interconnect on a platform for display, the interconnect creating the ability to connect multiple platforms to further create “a singular display”).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (herein “Lee”; US Pub. No. 2013/0000089 A1) in view of/as evidenced by Cochella et al. (herein “Cochella”; US Pub. No. 2018/0021689 A1).
Regarding claim 24, Lee discloses that the flexible material is a synthetic resin (par. [0224]; specifically stating it can be “polypropylene (PP)”). It is noted that Lee does not specifically disclose that the flexible material is silicone. However, regarding using silicone as the material, it has been held that the selection of a known material based on its suitability for its intended use is obvious. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(see applicant’s spec, par. [0060], applicant giving no criticality to the use of silicone; see also as evidence, Cochella, par. [0064], specifically stating that “silicone” is a known substitute for PP). Thus, it would have been obvious to a person of ordinary person skill in the art at the time of filing to modify Lee to make the material silicone as taught and evidenced by Cochella because doing so would be a simple substitution of one element (silicone) for another (PP) to obtain predictable results (the continued ability to use a flexible material, the specific material being silicone; a known substitute for PP).
Conclusion
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, Nicholas Weiss can be reached on (571)270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
1/14/26
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711