DETAILED ACTION
This final action is in response to the amendment filed on 01 July 2026.
Status of Claims
Claims 1-20 are pending.
Claims 11-20 were added.
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 .
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.
Claims 1-4 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (KR 20200076422 A).
Regarding claim 1, Kim discloses an AI conversational system (see fig 1 and the abstract of the machine translation), comprising: a three-dimensional figure representing a character (200), having an interior pocket (220) accessible through a closure (250) that is selectively opened or closed (see page 8 of the machine translation); a voice box (100) removably disposed within the interior pocket, wherein the voice box has a housing enclosing a microcontroller unit (150) operationally connected to a wireless antenna (140), a speaker (20), a microphone (10), and a battery (160); wherein the microcontroller unit is configured to wirelessly access an internet-based artificial intelligence GPT engine and produce interactive and responsive conversation representative of the character represented by the three-dimensional figure (see at least last paragraph on page 4 of the machine translation).
Regarding claim 2, Kim discloses the AI conversational system of claim 1, wherein the three-dimensional figure is selected from the group consisting of a plush toy, a stuffed toy (see at least fig 1 and the last full paragraph on page 7 of the machine translation), an action figure, an instrument, and a conversational model.
Regarding claim 3, Kim discloses the AI conversational system of claim 1, wherein the wireless antenna of the voice box is configured for wireless connectivity through a WLAN protocol or a WPAN protocol (see third full paragraph on page 3 of the machine translation).
Regarding claim 4, Kim discloses the AI conversational system of claim 3, wherein the WLAN protocol corresponds to a Wi-Fi connection and the WPAN protocol corresponds to a Bluetooth connection (see third full paragraph on page 3 of the machine translation).
Claims 10-14 are rejected as applied to claims 1-4 above, respectively.
Claim Rejections - 35 USC § 103
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 5-10 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR 20200076422 A), in view of Soudek et al. (US 20180272240 A1), herein referred to as Soudek.
Regarding claim 5, Kim discloses the AI conversational system of claim 1, but does not explicitly disclose wherein the voice box further comprises a near-field sensor enclosed in the housing and operationally connected to the microcontroller unit.
Soudek, however, discloses that it is known in the art of interactive toys to include a near-field sensor enclosed in the housing of a modular interactive device which is operationally connected to a control unit and a near-field tag disposed in a pocket of a three-dimensional figure (see at least the abstract and paragraphs 0014, 0018, and 0019). The purpose for including the sensor and tag is to facilitate interactive experiences with a variety of toys (see at least paragraphs 0013-0014). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the AI conversational system of Kim with near-field sensors and tags as taught by Soudek in order to facilitate interactive experiences with a variety of toys.
Regarding claim 6, Kim (in view of Soudek) discloses the AI conversational system of claim 5, further comprising a near-field tag disposed in the interior pocket of the three-dimensional figure proximate to near-field sensor when the voice box is disposed in the interior pocket (see rejection of claim 5 above).
Regarding claim 7, Kim (in view of Soudek) discloses the AI conversational system of claim 6, wherein the near-field tag is programmed to identify a particular character and the near-field sensor is programmed to communicate the particular character identified by the near-field tag to the microcontroller unit (see rejection of claim 5).
Regarding claim 8, Kim (in view of Soudek) discloses the AI conversational system of claim 7, wherein the microcontroller unit is programmed to communicate the particular character identified by the near-field tag to the artificial intelligence GPT engine so as to produce interactive and responsive conversation representative of the particular character identified by the near-field tag (per the combination of Kim and Soudek).
Regarding claim 9, Kim discloses the AI conversational system of claim 1, but does not explicitly disclose wherein the microcontroller unit is wirelessly connected to a persistent long-term memory database whereby a history of past interactive and responsive conversations is stored.
Soudek, however, discloses that it is known in the art of interactive toys to wireless connect a control unit of the interactive toy with a long-term memory database (see at least paragraphs 0032, 0049, and 0054-0056). The purpose for including the long-term memory database is to provide stored information to the interactive toy to facilitate conversations. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the AI conversational system disclosed by Kim with a wireless connection to a long-term memory database as taught by Soudek in order to provide stored information to the interactive toy to facilitate conversations.
Regarding claim 10, Kim (in view of Soudek) discloses the AI conversational system of claim 1, wherein the microcontroller unit is wirelessly connected to a persistent contact and entity database whereby a list of contacts and entities associated with the character (i.e., “character profile”) represented by the three-dimensional figure is stored (see at least Soudek abstract and paragraphs 0018, 0038, and 0039).
Claims 15-18 are rejected as applied to claims 5-8 above, respectively.
Claim 19 is rejected as applied to claims 1 and 9 above.
Claim 20 is rejected as applied to claim 10 above.
Response to Arguments
Applicant's arguments filed 01 July 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument that “Kim fails to disclose at least the limitation of claim 1 requiring the microcontroller unit to be configured to wirelessly access an ‘internet-based artificial intelligence GPT engine’ to produce interactive and responsive conversation,” the examiner respectfully disagrees. As written, the claim requires a microcontroller unit which is “configured to” wirelessly access an internet-based artificial intelligence GPT engine. In other words, the “internet-based artificial intelligence GPT engine” is not a positive limitation of the claim; instead, the prior art must teach a microcontroller unit which is structurally capable of wirelessly accessing such an AI engine without modification to the microcontroller unit of the prior art. Kim explicitly and repeatedly discusses a microcontroller unit which is capable of wirelessly accessing the internet (see at least lines 3-5 on page 3 and lines 13-19 on page 6 of the machine translation). Therefore, it is the position of the examiner that the microcontroller unit of Kim is structurally capable of accessing any number of internet-based AI engines, including a GPT engine, without modification to the microcontroller unit. The rejection is maintained.
Regarding applicant’s argument that “the conversation produced by Kim’s system is not representative of any particular character portrayed by the doll,” the examiner respectfully disagrees. The independent claims currently require the following with respect to this argument:
“a three-dimensional figure representing a character” (claims 1, 11, and 19)
“wherein the microcontroller is configured to…produce interactive and responsive conversation representative of the character represented by the three-dimensional figure” (claim 1); “wherein the microcontroller is configured to…produce interactive and responsive conversation in the voice and persona of, and representative of, the character represented by the three-dimensional figure” (claims 11 and 19)
With regard to (a), the examiner submits that Kim discloses a three-dimensional figure and that figure necessarily represents a “character” – whether that “character” be an animal, a human, or otherwise, the three-dimensional figure inherently is a “character.” Please note that the claims do not require the character to be known or famous. With regard to (b), the examiner further submits that the voice, persona, and conversation produced by the character of (a) is necessarily representative of that character by the sheer fact that it is the voice and persona given to the character by the system. The rejection is maintained.
Regarding applicant’s argument that the rejection of claim 9 is in error because “[t]he cited paragraphs of Soudek do not disclose a persistent long-term memory database storing a history of past interactive and responsive conversations,” the examiner respectfully disagrees. Claim 9 is interpreted as requiring the structure of the microcontroller unit being wirelessly connected to a persistent long-term memory database. The “whereby” clause does not limit the apparatus claim to a particular structure; in other words, the “whereby” clause of claim 9 is interpreted as an intended use of the persistent long-term memory database which is required by the claim. See MPEP 2111.04. Since Soudek explicitly teaches a microcontroller unit being wirelessly connected to “a variety of data stores and other memory and storage media” (see at least paragraph 0054) including both temporary and long-term memory (see at least paragraph 0026), the rejection is maintained.
Regarding applicant’s argument that “the cited portions of Soudek do not disclose a persistent contact and entity database storing contacts and entities associated with the character represented by the three-dimensional figure,” the examiner points to the discussion above regarding the “whereby” clause of claim 9. Additionally, regarding applicant’s assertions that Soudek teaches “a simple audio customization feature, not a structured database of contacts and entities associated with a character’s identity and relationships,” the examiner respectfully disagrees. Soudek doesn’t simply disclose a customization feature, Soudek discloses a database which allows for each unique character profile to inform responses of the system based on specifics related to the character, including relationships with associated characters (see at least paragraphs 0027 and 0039). Therefore, the rejection is maintained.
Regarding applicant’s argument that the rationale used to reject claims 5-8 “does not support the rejection because it fundamentally mischaracterizes the purpose and function of the near-field sensor/tag system as claimed in the present application relative to the system disclosed in Soudek,” the examiner notes that the prior art teaches the structure of the near-field sensor and near-field tag as required by the claims. Whether or not applicant has a different intended use of the sensor and tag is not given patentable weight to the apparatus claims in question. See MPEP 2114. Additionally, regarding applicant’s arguments that the combination used to reject claims 5-8 “requires that features be imported from Soudek that are central to Soudek's own inventive concept - namely, the ability of a single modular device to serve multiple toys via NFC identification - and graft them onto Kim's system, which is architecturally configured differently” and that “[t]he Examiner has not adequately established that a person of ordinary skill in the art would have had a specific motivation to modify Kim's system with Soudek's NFC architecture, or that such a modification would have been predictable and straightforward rather than requiring substantial redesign,” the examiner notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Therefore, the rejection is maintained.
Regarding applicant’s arguments directed to the newly added claims, the examiner points to the responses above.
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 Christine M Mills whose telephone number is (571) 272-8322. The examiner can normally be reached from Monday - Thursday, 7:30 - 5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Namrata Boveja, can be reached on (571) 272-8105. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
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