DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Internet/E-mail Communication
In order to permit communication regarding the instant application via email, Applicant is invited to file form PTO/SB/439 (Authorization for Internet Communications) or include the following statement in a separately filed document (see MPEP 502.03 II):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
If such authorization is provided, please include an email address in the remarks of a filed response. The examiner’s e-mail address is CHRISTOPHER.LEGENDRE@USPTO.GOV.
Response to Remarks/Arguments
Applicant's remarks/arguments filed 04 June 2026 stating that the amendments to the independent claims overcome the previous prior art rejections have been fully considered and they are persuasive. Accordingly, the previous prior art rejections are withdrawn.
New rejections not necessitated by Applicant’s amendments are set forth below. The finality of this Office action is withheld. The Office regrets any inconvenience to Applicant.
Specification
The disclosure is objected to because of the following informalities:
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
-addition of the limitations of claim 3 to the specification;
-addition of the limitations of claim 4 to the specification;
-addition of the limitations of claim 5 to the specification;
-addition of “sensor” (claim 11) to the specification such that the “sensor” is described in a manner that allows sensing of the “object” of claim 30 - e.g., “a sensor that can sense a magnet or a radio transponder / receiver / transmitter”;
-addition of the limitations of claim 16 to the specification;
-addition of “handle” of claim 17 to the specification;
-addition of the limitations of claim 18 to the specification;
-addition of the limitations of claim 19 to the specification;
-addition of the limitations of claim 20 to the specification;
-addition of the limitations of claim 21 to the specification;
-addition of the limitations of claim 22 to the specification;
-addition of “storage device” of claim 23 to the specification and explicit identification of the corresponding structure of this 112(f) limitation;
-addition of the limitations of claim 30 to the specification.
No new matter should be entered.
Appropriate correction is required.
Claim Objections
Claims 11, 18, and 30 are objected to because of the following informalities:
In claim 11, line 3, --with-- should be added after “transmit mechanism” (for grammatical purposes).
In claim 11, line 5, “the other” should be changed to --another end-- (to imbue proper antecedent basis practice).
In claim 18, last two lines, “one or more” should be deleted (to imbue number agreement with “solid objects” in claim 11).
In claim 18, last line, --by the sensor-- should be added after “sensed” (for clarity purposes and/or to imbue proper antecedent basis practice).
In claim 30, lines 2-3, “/ receiver / transmitter” should be changed to --, radio receiver, radio transmitter--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action.
Claim limitation “locking means” (claim 17) has been interpreted under 35 U.S.C. 112(f) because it uses “means” / “step for” with functional language “locking” without reciting sufficient structure to achieve the function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “automatic mechanism which allows solid object to enter the toy animal at one end and exit the toy animal at the other” (claim 11), “manual backup mechanism” (claim 17), “storage device for storing one or more solid objects representing food” (claim 23).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claims 3-5, 9, 10, 16, and 19-22 are rejected under 35 U.S.C. 112(a) for failing the written description requirement.
In claim 3, the limitation recited as “controlling with a remote control limbs of the toy animal to allow for walking the toy animal” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that Applicant, at the time the application was filed, had possession of the claimed invention. According to MPEP 2163.03 (V), an original claim may lack written description support when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed. According to MPEP 2163 (I)(A), issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing. The originally filed disclosure is silent as to any components that are capable of achieving the function “walking the toy animal” via a remote control. Due to dependency, this rejection also applies to claims 4 and 5.
In claim 9, the limitation recited as “the internal conduit… that winds similar to intestines” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that Applicant, at the time the application was filed, had possession of the claimed invention. The originally filed disclosure is silent as to any such winding. Due to an identical instance, this rejection also applies to claim 16.
In claim 10, the limitation recited as “automatically tracking the appearance of growth” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that Applicant, at the time the application was filed, had possession of the claimed invention. According to MPEP 2163.03 (V), an original claim may lack written description support when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed. According to MPEP 2163 (I)(A), issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing. The originally filed disclosure is silent as to any components that are capable of “automatically tracking the appearance of growth” and/or what parameters represent “appearance of growth”.
In claim 19, the limitation recited as “data related to said progression” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that Applicant, at the time the application was filed, had possession of the claimed invention. According to MPEP 2163.03 (V), an original claim may lack written description support when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed. According to MPEP 2163 (I)(A), issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing. The originally filed disclosure is silent as to any components that are capable of producing “data related to said progression” and/or what parameters constitute such “data related to progression”. Due to dependency and/or furtherance of this limitation/issue, this rejection also applies to claims 20-22.
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.
Claims 4, 5, 27, and 30 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 4, the recitation “such as” is unclear as to whether the subsequent listed element(s) is/are a limitation, thereby rendering indefinite the scope of the claim (see MPEP 2173.05(d)). Due to an identical instance, this rejection also applies to claim 30. Due to dependency, this rejection also applies to claim 5.
In claim 27, the limitation recited as “a dish for holding the one or more solid objects during play” renders the claim indefinite since it is unclear if it is referring to the antecedent limitation “a storage device for storing one or more solid objects representing food” or introducing a new limitation (note: the disclosure does not explicitly identify the corresponding structure of the 112(f) limitation “storage device…”).
Examiner’s Comment / Allowable Subject Matter
Claims 1, 2, 17, 23, 28, and 29 are allowed.
Claims 11 and 18 would be allowable if amended to overcome the objection(s) set forth above.
Although claims 3-5, 9, 10, 16, 19-22, 27, and 30 are not rejected over prior art, patentability cannot be determined in light of the 35 U.S.C. 112 issues described above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER RYAN LEGENDRE whose telephone is (571)270-3364 and email is christopher.legendre@uspto.gov. The examiner can normally be reached M-F 9AM-5PM ET.
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/CHRISTOPHER R LEGENDRE/Primary Examiner, Art Unit 3711
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