DETAILED ACTION
Drawings/Specification
The drawing and specification is objected to because the “toy item” of claim 4 does not have a corresponding identification reference number in the specification, and because that corresponding reference number is not shown in the drawings. Restated, the “toy item” of claim 4 appears to be shown as a booklet in Fig. 1 attached to the right hand of the doll. This “toy item” should be given a reference number in the specification and also labeled in the drawing. Also, as a “boy” doll is also claimed as an alternative, this “boy” doll should also be shown in the drawings.
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 1-4 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. For purposes of examination, the Examiner will construe that claims 2-4 depend from claim 1; although this dependency is not specifically stated. Also, the term “fully” in claim 3 is a relative term and the neither the claim or the specification define its scope. As such, it is also indefinite. For the limitations of claim 4, the Examiner construes the “toy item” to be an instructional booklet. This appears to be shown in Fig. 1 and attached to the right hand of the doll. If this is not the “toy item”, then the toy item needs to be shown in the drawings and given a correct reference label and corresponding reference label in the drawings (see objection above).
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable Blackwell (US Pub. No. 2023/0201730 A1) in view of Arad et al. (herein “Arad”; US Pat. No. 5,376,038).
Regarding claims 1, Blackwell discloses a (boy or girl) doll (Fig. 1; noting a girl) (a) by switch activated voice recording (Fig. 3 and par. [0008]; noting a “unit emits an audible alert”) (b) by button activated voice recording: "bottom", "penis", "mouth" on the boy doll (noting this latter italicized language is not needed as the limitation “or” is used for a “boy” doll). It is noted that Blackwell does not specifically disclose that the doll describes the basic anatomy of the human body, the use of a button activated doll, or a button at the mouth. However, Arad discloses a similar doll wherein the doll describes the basic anatomy of the human body (col. 7, lines 48-60; noting the response listed for “Level I Speech”), switches may be in the form of push buttons (Fig. 3, item 51 and col. 5, lines 58-61) and the use of a button at the mouth (Fig. 3, item 51 and col. 5, lines 43-45). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Blackwell to use button activation, a button at the mouth, and an audio response stating the location of the push button to describe the basic anatomy as taught by Arad because doing so would be combining prior art elements (using a button for activation, a button at the mouth in a doll, and the button when pressed describing the various basic anatomy of the human body and using a switch for activation, and switches at various erogenous zones in a doll giving an audio alert) according to known methods (substituting the buttons for switches and a button at the mouth into the latter doll, the buttons allowing the doll to give an audio alert for the basic anatomy associated with the button) to yield predictable results (the continued ability for the latter doll to give audio feedback based on a push button at erogenous zones, the erogenous zones including a button at the mouth, and all the buttons giving an audio alert for the basic anatomy wherein the button is located). Finally, it is noted that the combined Blackwell and Arad do not specifically disclose, including for a girl "bottom", "breast", "vagina", "mouth" on the girl doll. However, the Examiner takes multiple positions with regards to this limitation. First and foremost, Arad specifically discloses giving audio feedback for the body part in which the button is housed (col. 7, lines 48-60). The combined structure clearly discloses the ability to have sensors at all of the claimed locations (Blackwell: Figs. 3 and 4, showing “bottom”, “breast”, “vagina”, and Arad: 3, item 51; showing “mouth”). As such, based on the combination and the teachings of Arad, it would have been obvious to a POSA to have the buttons give an audio location of the location of each push button consistent with the teachings in Arad. Second, the exact audio response is not a patentable structure, and thus it is not given patentable weight (emphasis added). Third, Blackwell clearly discloses the ability to give an audio alert based on activation of the switch at the erogenous location (pars. [0008] and [0021]). As such, the exact content of the audio feedback would be a design choice or preference. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact content of the audible alert would 1) not be structural in nature and thus would not warrant patentable weight, or 2) the exact content of the audio alert would be a design choice.
Regarding claim 2, the combined Blackwell and Arad disclose that the sound recorder buttons within the (boy or girl) doll are placed in the respective anatomic parts within the doll (see rejection 1 above; noting for a girl). It is noted that Blackwell and Arad do not specifically disclose that when pressed say the remarks listed below. (a) "No-No" this is my bottom! You can't touch! I will tell mommy and daddy! (b) "No-No" this is my breast! You can't touch! I will tell mommy and daddy! (c) "No-No" this is my vagina! You can't touch! I will tell mommy and daddy! (d) "No-No" this is my penis! You can't touch! I will tell mommy and daddy! (e) "No-No" this is my mouth! You can't touch! I will tell mommy and daddy! However, Blackwell discloses language that is very similar to the exact claimed language (par. [0021]; noting Blackwell makes obvious the use of any phrase “protesting an inappropriate touch”). In addition, consistent with the rejection of claim 1 above, the Examiner again notes that 1) the exact content of the audio feedback is not a patentable structure and thus is not given patentable weight, and 2) the exact content of audio feedback is a design choice. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact content of the audible alert would 1) not be structural in nature and thus would not warrant patentable weight, or 2) the exact content of the audio alert would be a design choice.
Regarding claim 3, the combined Blackwell and Arad disclose that he (boy or girl) "No-No Doll" is fully clothed (Blackwell, Fig. 1 and par. [0022]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable Blackwell (US Pub. No. 2023/0201730 A1) in view of Arad et al. (herein “Arad”; US Pat. No. 5,376,038) and in further view of Favilli et al. (herein “Favilli”; US Pat. No. 3,977,292).
Regarding claim 4, it is noted that the combined Blackwell and Arad do not specifically disclose that the doll described above will provide holders with a toy item which describes body parts and instructs on what to say in the event that the body part is touched. However, Favilli discloses a similar sound producing doll wherein the doll provide holders with a toy item which gives instructions (col. 2, lines 53-56; noting an instructional book). In addition, regarding the exact content of the instruction book (i.e. the language which describes body parts and instructs on what to say in the event that the body part is touched), it has been held that no patentable weight is given to printed matter absent a functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Blackwell and Arad to include an instruction book with the doll as taught by Favilli because doing so would be combining prior art elements (a doll with audio output having an instruction book, and a doll with audio output associate with erogenous zones) according to known methods (using an instructional book with the latter doll) to yield predictable results (the continued ability to have a doll with audio output for erogenous zones, the doll coming with an instruction manual). Finally, regarding the exact content of the instructional book, the content would not have a functional relationship to the substrate of a book (emphasis added). As such, the exact content would not be given patentable weight.
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.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
2/9/26