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 8/21/2026, Applicant amended the abstract, amended claims 21, 24, 28, 31-32, 34, and canceled claims 1-20, 37. This amendment is acknowledged. Claims 21-36 and 38-40 are pending and are currently being examined.
Terminal Disclaimer
The terminal disclaimer filed on 8/21/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 12,179,127 has been reviewed and is NOT accepted. As noted by the review decision on 8/31/2026, “The incorrect TD form was submitted. Please resubmit on PTO/AIA /25 (04-13) for pending reference or PTO/AIA /26 (04-14) for prior patent. No additional fee is required with the resubmission.”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-36 and 38-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 17-20, and 22-25 of U.S. Patent No. 12,179,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim anticipate the presented claims.
Presented Claim 21
A toy comprising:
a housing comprising a first exterior surface, and a second exterior surface comprising a feature; and
a light pipe mounted to the housing and comprising:
a collector portion proximate the first exterior surface of the housing,
a transmitter portion, and
an output portion proximate the feature of the housing;
the light pipe configured to transmit light incident on the first exterior surface of the housing to the output portion, illuminating the feature of the housing,
wherein the toy lacks any batteries.
Presented Claim 24
The toy of claim 21, wherein the collector portion has a first surface area and the output portion has a second surface area, wherein the first surface area is greater than or equal to twice the second surface area.
Claim 1 of 12,179,127 (identical mapped language in bold)
A toy comprising:
a housing comprising a first exterior surface, a second exterior surface, and a feature at the second exterior surface (equivalent language as the second exterior surface comprising a feature); and
a unitary thermoplastic light pipe mounted to the housing and comprising:
a collector portion comprising a surface area proximate the first exterior surface of the housing,
a transmitter portion, and
an output portion comprising a surface area proximate the feature of the housing, wherein the surface area of the collector portion is greater than or equal to twice the surface area of the output portion,
the unitary thermoplastic light pipe configured to transmit light incident on the first exterior surface of the housing to the output portion, illuminating the feature of the housing,
wherein the unitary thermoplastic light pipe provides a maximum angle of deflection of about 35-45 degrees, wherein the toy lacks any batteries (the toy lacks batteries).
Presented Claim 22
The toy of claim 21, the light pipe comprising at least one curve comprising an angle that is less than or equal to a maximum angle of deflection, the light pipe further comprising PMMA.
Claim 2 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, the unitary thermoplastic light pipe comprising at least one curve that is less than or equal to the maximum angle of deflection.
Claim 4 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, the unitary thermoplastic light pipe being formed of PMMA (being formed of and comprising is equivalent language).
Presented Claim 23
The toy of claim 22, wherein the maximum angle of deflection is about 41 degrees.
Claim 3 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, wherein the maximum angle of deflection is about 41 degrees.
Presented Claim 25
The toy of claim 21, the light pipe comprising two or more collector portions and two or more output portions.
Claim 5 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, the unitary thermoplastic light pipe comprising two or more collector portions.
Claim 6 of 12,179,127 (mapped identical language in bold)
The toy of claim 5, the unitary thermoplastic light pipe comprising two or more output portions.
Presented Claim 26
The toy of claim 21, wherein the light pipe is only attached to the housing at one or more of the collector portion and the output portion and wherein the collector portion comprises a truncated conical shape.
Claim 7 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, wherein the unitary thermoplastic light pipe is only attached to the housing at one or both of the collector portion and the output portion.
Claim 8 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, wherein the collector portion comprises a truncated conical shape.
Presented Claim 27
The toy of claim 21 further comprising a base, the base comprising the collector portion, and the feature comprising the output portion, wherein the feature is selected from at least one of a head, eyes, hands, clothing, and a weapon, wherein the toy does not comprise a light source and wherein the feature is disposed at the second exterior surface (mapped to patented claim 1 above).
Claim 9 of 12,179,127
The toy of claim 1, the collector portion provided in a portion of a base of the toy (equivalent language).
Claim 10 of 12,179,127
The toy of claim 1, the output portion mounted in one or more of a head, eyes, hands, clothing, and weapon of the toy (equivalent language).
Claim 11 of 12,179,127
The toy of claim 1, wherein the toy does not comprise a light source.
Presented Claim 28
A toy system, comprising:
an electronic device comprising:
an electronic display screen comprising a light source, and
at least one non-transitory computer-readable medium storing software configured to control the light source (inherent in electronic devices to execute the lighting feature); and
a toy comprising:
a base located above the electronic display screen,
a housing comprising a first exterior surface, and a second exterior surface comprising a feature, and
a light pipe mounted to the housing comprising:
a collector portion,
an output portion,
the light pipe configured to transmit light from the light source to the output portion, illuminating the feature of the housing;
wherein the electronic display screen is external to the housing and configured to display a placement area comprising an outline of the base of the toy to facilitate positioning of the toy on the electronic display screen, and further wherein the light source is configured to illuminate a portion of the base of the toy when the base of the toy is located in the placement area; and
wherein the placement area is illuminated differently than other areas of the electronic display screen (any illuminated area would appear different than a non-illuminated area).
Presented Claim 33
The toy system of claim 28, wherein the collector portion is proximate a first exterior surface of the housing, and the light pipe further comprises a transmitter portion and an output portion proximate the feature.
Claim 17 of 12,179,127
A toy system, comprising:
a mount;
a light source, the light source not comprised within the mount; and
a toy comprising:
a base sized to support the toy on the mount, a housing comprising a first exterior surface, a second exterior surface, and a feature at the second exterior surface, and
a light pipe mounted to the housing and comprising:
a collector portion proximate a first exterior surface of the housing,
a transmitter portion, and
an output portion proximate the feature of the housing, the light pipe configured to transmit light from the light source to the output portion, illuminating the feature of the housing (equivalent language).
Claim 22 of 12,179,127
The toy system of claim 17, wherein the light source comprises a display (screen) of an electronic device, the display configured to show: an outline of a base of said toy defining a placement area, an illumination area corresponding to a collector portion of the light pipe, and an activation button.
Claim 23 of 12,179,127
The toy system of claim 17, further comprising an electronic device comprising the mount (screen) and the light source.
Presented Claim 29
The toy system of claim 28, the light pipe comprising at least one curve comprising an angle less than or equal to a maximum angle of deflection of about 35 - 45 degrees.
Claim 18 of 12,179,127 (mapped identical language in bold)
The toy system of claim 17, the light pipe comprising at least one curve that is less than or equal to a maximum angle of deflection, wherein the maximum angle of deflection is about 35-45 degrees.
Presented Claim 30
The toy system of claim 28, further comprising a mount, wherein the screen is configured to display two or more placement areas corresponding to two or more toys comprising different features, and the light source is configured to output a different color light to each of the two or more toys and an activation button.
Claim 19 of 12,179,127
The toy system of claim 17, the mount comprising a predetermined placement area for the base of the toy, wherein the light source is configured to illuminate a portion of the base of the toy when the base of the toy is located in the placement area of the mount.
Claim 20 of 12,179,127
The toy system of claim 19, the mount comprising two or more predetermined placement areas corresponding to two or more toys comprising different features.
Claim 24 of 12,179,127
The toy system of claim 17, the toy comprising two or more toys, the light source configured to output a different color light to each of the two or more toys.
Presented Claim 31
The toy system of claim 30, wherein a first placement area is configured to illuminate the collector portion of a first toy of the two or more toys and to not illuminate the collector portion of a second toy of the two or more toys, and
wherein the second placement area is configured to illuminate the collector portion of the second toy and to not illuminate the collector portion of the first toy.
Claim 25 of 12,179,127
The toy system of claim 17, further comprising: the toy comprising a first toy and a second toy comprising different features; the mount comprising a first placement area corresponding to the base of the first toy and a second placement area of the second toy; and the light source comprising a first light source corresponding to the first placement area of the mount and a second light source corresponding to the second placement area of the mount, wherein the first light source is configured to illuminate the collector portion of the light pipe at the base of the first toy and to not illuminate a collector portion of a light pipe at a base of the second toy, and wherein the second light source is configured to illuminate the collector portion at the base of the second toy and to not illuminate the collector portion at the base of the first toy.
Presented Claim 32
The toy system of claim 31, wherein the first toy and the second toy comprise different features; the first toy having a first base; the second toy having a second base;
the mount further comprises a first placement area corresponding to the first base and a second placement area corresponding to the second base; and
the light source further comprises a first light source corresponding to the first placement area of the mount and a second light source corresponding to the second placement area of the mount.
Claim 25 of 12,179,127
The toy system of claim 17, further comprising: the toy comprising a first toy and a second toy comprising different features; the mount comprising a first placement area corresponding to the base of the first toy and a second placement area of the second toy; and the light source comprising a first light source corresponding to the first placement area of the mount and a second light source corresponding to the second placement area of the mount, wherein the first light source is configured to illuminate the collector portion of the light pipe at the base of the first toy and to not illuminate a collector portion of a light pipe at a base of the second toy, and wherein the second light source is configured to illuminate the collector portion at the base of the second toy and to not illuminate the collector portion at the base of the first toy.
Presented Claim 34
A toy comprising:
a housing comprising a first exterior surface, a second exterior comprising a feature; and
a light pipe mounted to the housing and comprising:
a collector portion proximate the first exterior surface of the housing and comprising a surface area,
a transmitter portion, and
an output portion proximate the feature of the housing and comprising a surface area, wherein the surface area of the collector portion is greater than or equal to twice the surface area of the output portion; and
the light pipe configured to transmit light incident on the first exterior surface of the housing to the output portion, illuminating the feature of the housing,
wherein the toy lacks any batteries.
Claim 1 of 12,179,127
A toy comprising:
a housing comprising a first exterior surface, a second exterior surface, and a feature at the second exterior surface; and
a unitary thermoplastic light pipe mounted to the housing and comprising:
a collector portion comprising a surface area proximate the first exterior surface of the housing,
a transmitter portion, and
an output portion comprising a surface area proximate the feature of the housing, wherein the surface area of the collector portion is greater than or equal to twice the surface area of the output portion, the unitary thermoplastic light pipe configured to transmit light incident on the first exterior surface of the housing to the output portion, illuminating the feature of the housing, wherein the unitary thermoplastic light pipe provides a maximum angle of deflection of about 35-45 degrees, wherein the toy lacks any batteries (the toy lacks batteries).
Presented Claim 35
The toy of claim 34, the light pipe comprising at least one curve comprising an angle that is less than or equal to a maximum angle of deflection, the light pipe further comprising PMMA.
Claim 2 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, the unitary thermoplastic light pipe comprising at least one curve that is less than or equal to the maximum angle of deflection (equivalent to comprising an angle).
Claim 4 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, the unitary thermoplastic light pipe being formed of PMMA (being formed of and comprising is equivalent language).
Presented Claim 36
The toy of claim 35, wherein the maximum angle of deflection is about 41 degrees.
Claim 3 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, wherein the maximum angle of deflection is about 41 degrees.
Presented Claim 38
The toy of claim 34, the light pipe comprising two or more collector portions and two or more output portions.
Claim 5 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, the unitary thermoplastic light pipe comprising two or more collector portions.
Claim 6 of 12,179,127 (mapped identical language in bold)
The toy of claim 5, the unitary thermoplastic light pipe comprising two or more output portions.
Presented Claim 39
The toy of claim 34, wherein the light pipe is only attached to the housing at at least one of the collector portion and the output portion, and wherein the collector portion comprises a truncated conical shape.
Claim 7 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, wherein the unitary thermoplastic light pipe is only attached to the housing at one or both of the collector portion and the output portion.
Claim 8 of 12,179,127 (mapped identical language in bold)
The toy of claim 1, wherein the collector portion comprises a truncated conical shape.
Presented Claim 40
The toy of claim 34 further comprising a base, the base comprising the collector portion, and the feature comprising the output portion, wherein the feature is selected from at least one of a head, eyes, hands, clothing, and a weapon, wherein the toy does not comprise a light source and wherein the feature is disposed at the second exterior surface (disclosed in patented claim 1).
Claim 9 of 12,179,127
The toy of claim 1, the collector portion provided in a portion of a base of the toy (equivalent language).
Claim 10 of 12,179,127
The toy of claim 1, the output portion mounted in one or more of a head, eyes, hands, clothing, and weapon of the toy (equivalent language).
Claim 11 of 12,179,127
The toy of claim 1, wherein the toy does not comprise a light source.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 21-27, 34-36, and 38-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or 35 U.S.C. 103 as obvious over Spector US Pat. No. 4,521,205.
In Reference to Claim 21
Spector teaches:
A toy (toy 11 connectable to a mount 10/13, Fig. 1-4) comprising:
a housing (character housing 11) comprising a first exterior surface (bottom surface, clear plastic plate 22), and a second exterior surface (11F front portion) comprising a feature (eye elements 18, mouth 19 on 11F); and
a light pipe mounted to the housing (light pipes 20/21 formed of flexible fiber optic cables or molded plastic light guides (thermoplastic), Col. 2 lines 30-46) and comprising:
a collector portion proximate the first exterior surface of the housing (clear plastic plate/inlet 22 collects light for the light pipes),
a transmitter portion (the light pipe bodies 20/21 acts as light transmitters), and
an output portion proximate the feature of the housing (eyes 18 are the light output features of the housing);
the light pipe configured to transmit light incident on the first exterior surface of the housing to the output portion, illuminating the feature of the housing (light enters and transmits through clear plate 22, through the pipes 20/21, and out of the eye outlets 18 or 19 to illuminate the eye and mouth features),
wherein the toy lacks any batteries (toy does not have any batteries, Fig. 1, as the batteries are only present in the base element 13, which is a separate part that is different from the toy 11, Fig. 1-2).
In Reference to Claim 22
Spector teaches:
The toy of claim 21, the light pipe comprising at least one curve comprising an angle that is less than or equal to a maximum angle of deflection (light pipes 20/21 are curved along their length at a maximum angle of deflection as shown in Fig. 1-2), the light pipe further comprising PMMA (light pipes 20/21 formed of flexible fiber optic cables or molded plastic light guides (thermoplastic), Col. 2 lines 30-46).
Though Spector is silent to the light tube material being specifically thermoplastic such as PMMA (though molded plastic light guides or flexible fiber optic cables would likely be considered thermoplastic by those of ordinary skill in the art), it would have been obvious to have formed the light tubes specifically of PMMA thermoplastic material as this is common and known in the art and equivalent to the disclosed materials in the prior art and 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 Reference to Claim 23
Spector teaches:
The toy of claim 22, wherein the maximum angle of deflection is about 41 degrees (light pipes 20/21 bend at approximately 35-45 degrees along their length).
Though Spector is silent to the exact bend angle measurement, it would have been obvious to one having ordinary skill in the art to have formed the light tube bend angle to have been specifically 35-45 or 41 degrees as it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)).
In Reference to Claim 24
Spector teaches:
The toy of claim 21, wherein the collector portion has a first surface area and the output portion has a second surface area, wherein the first surface area is greater than or equal to twice the second surface area (the diameter and surface area of collectors/plate 22 is wider/greater than that of the ends of the light tubes at 18/19, Fig. 2).
Though Spector is silent to the exact relative surface areas, it would have been obvious to one having ordinary skill in the art to have formed the relative surface area of the collector to have been greater than or equal to twice the surface area of the output as it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)).
In Reference to Claim 25
Spector teaches:
The toy of claim 21, the light pipe comprising two or more collector portions (pipes 20/21 each have collector portions at plate 22) and two or more output portions (18/19).
In Reference to Claim 26
Spector teaches:
The toy of claim 21, wherein the light pipe is only attached to the housing at one or more of the collector portion and the output portion (the light tubes are placed within a hole in the housing and is attached to the housing at each end) and wherein the collector portion comprises a truncated conical shape (the collector 22 is slightly larger in shape than the tubes 20/21, Fig. 2).
Though Spector doesn’t specifically teach the collector portion being a truncated conical shape, the shape of the collector appears to be slightly enlarged at the collector end and similar to a truncated conical shape (the collector 22 is slightly larger in shape than the tubes 20/21, Fig. 2). Further, it would have been obvious to one having ordinary skill in the art to have changed the shape of the collector in order to allow the pipe to potentially collect more light during use and as 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 of the claimed product is significant (n re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). Further, the applicant discloses that the shape of the collector isn’t significant and may be modified to different shapes as desired ([0064]).
In Reference to Claim 27
Spector teaches:
The toy of claim 21 further comprising a base, the base comprising the collector portion (the collectors (bottoms of the tubes) are positioned in plate 22 of a base/bottom of the toy, Fig. 2), and the feature comprising the output portion, wherein the feature is selected from at least one of a head, eyes, hands, clothing, and a weapon (eyes 18 and mouth 19 are provided at a head of the toy at the output, Fig. 1-2), wherein the toy does not comprise a light source and wherein the feature is disposed at the second exterior surface (the mount 10/13 includes the light source 23, and not the toy upper portion 11, Fig. 1-2).
In Reference to Claim 34
Spector teaches:
A toy (toy 11 connectable to a mount 10/13, Fig. 1-4) comprising:
a housing (character housing 11) comprising a first exterior surface (bottom surface, clear plastic plate 22), a second exterior (11F front portion) comprising a feature (eye elements 18, mouth 19 on 11F); and
a light pipe mounted to the housing (light pipes 20/21 formed of flexible fiber optic cables or molded plastic light guides (thermoplastic), Col. 2 lines 30-46) and comprising:
a collector portion proximate the first exterior surface of the housing and comprising a surface area (clear plastic plate/inlet 22 collects light for the light pipes and has a surface area),
a transmitter portion (the light pipe bodies 20/21 acts as light transmitters), and
an output portion proximate the feature of the housing (eyes 18 are the light output features of the housing) and comprising a surface area, wherein the surface area of the collector portion is greater than or equal to twice the surface area of the output portion (the diameter and surface area of collectors/plate 22 is wider/greater than that of the ends of the light tubes at 18/19, Fig. 2); and
the light pipe configured to transmit light incident on the first exterior surface of the housing to the output portion, illuminating the feature of the housing (light enters and transmits through clear plate 22, through the pipes 20/21, and out of the eye outlets 18 or 19 to illuminate the eye and mouth features),
wherein the toy lacks any batteries (toy 11 itself does not have any batteries, Fig. 1, as the batteries are only present in the base element 13, which is a separate part that is different from the toy 11, Fig. 1-2).
Though Spector is silent to the exact bend angle measurement, relative surface areas, or the light tube material being specifically thermoplastic (though molded plastic light guides or flexible fiber optic cables would likely be considered thermoplastic by those of ordinary skill in the art), it would have been obvious to one having ordinary skill in the art to have formed the light tube bend angle to have been specifically 35-45 or 41 degrees and the plate surface area to be at least double the output surface area as it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) and it would have been obvious to have formed the light tubes specifically of thermoplastic material as this is common and known in the art and equivalent to the disclosed materials in the prior art and 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 Reference to Claim 35
Spector teaches:
The toy of claim 34, the light pipe comprising at least one curve comprising an angle that is less than or equal to a maximum angle of deflection (light pipes 20/21 are curved along their length at a maximum angle of deflection as shown in Fig. 1-2), the light pipe further comprising PMMA (light pipes 20/21 formed of flexible fiber optic cables or molded plastic light guides (thermoplastic), Col. 2 lines 30-46).
Though Spector is silent to the light tube material being specifically thermoplastic such as PMMA (though molded plastic light guides or flexible fiber optic cables would likely be considered thermoplastic by those of ordinary skill in the art), it would have been obvious to have formed the light tubes specifically of PMMA thermoplastic material as this is common and known in the art and equivalent to the disclosed materials in the prior art and 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 Reference to Claim 36
Spector teaches:
The toy of claim 35, wherein the maximum angle of deflection is about 41 degrees (light pipes 20/21 bend at approximately 35-45 degrees along their length).
Though Spector is silent to the exact bend angle measurement, it would have been obvious to one having ordinary skill in the art to have formed the light tube bend angle to have been specifically 35-45 or 41 degrees as it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)).
In Reference to Claim 38
Spector teaches:
The toy of claim 34, the light pipe comprising two or more collector portions (pipes 20/21 each have collector portions at plate 22) and two or more output portions (18/19).
In Reference to Claim 39
Spector teaches:
The toy of claim 34, wherein the light pipe is only attached to the housing at at least one of the collector portion and the output portion (the light tubes are placed within a hole in the housing and is attached to the housing at each end), and wherein the collector portion comprises a truncated conical shape (the collector 22 is slightly larger in shape than the tubes 20/21, Fig. 2).
Though Spector doesn’t specifically teach the collector portion being a truncated conical shape, the shape of the collector appears to be slightly enlarged at the collector end and similar to a truncated conical shape (the collector 22 is slightly larger in shape than the tubes 20/21, Fig. 2). Further, it would have been obvious to one having ordinary skill in the art to have changed the shape of the collector in order to allow the pipe to potentially collect more light during use and as 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 of the claimed product is significant (n re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). Further, the applicant discloses that the shape of the collector isn’t significant and may be modified to different shapes as desired ([0064]).
In Reference to Claim 40
Spector teaches:
The toy of claim 34 further comprising a base, the base comprising the collector portion (the collectors (bottoms of the tubes) are positioned in plate 22 of a base/bottom of the toy, Fig. 2), and the feature comprising the output portion, wherein the feature is selected from at least one of a head, eyes, hands, clothing, and a weapon (eyes 18 and mouth 19 are provided at a head of the toy at the output, Fig. 1-2), wherein the toy does not comprise a light source and wherein the feature is disposed at the second exterior surface (the mount 10/13 includes the light source 23, and not the toy upper portion 11, Fig. 1-2).
Response to Arguments
Applicant’s arguments, see pages 8-10, filed 8/21/2026, with respect to the specification objection, 112 rejections, and 103 prior art rejections of claims 28-33 have been fully considered and are persuasive. These objections and rejections of the abstract and 103 rejections of claims 28-33 have been withdrawn in light of the amendments.
However, Applicant's arguments regarding the 102/103 rejections of claims 21-27, 34-36, and 38-40 and the double patenting rejections (see terminal disclaimer not being approved above) have been fully considered but they are not persuasive. The amended claim limitations are taught by the prior art as updated in the rejection. The arguments that the “toy lacks batteries” is not found persuasive as the toy cited in the rejection (11) is only the top toy housing part having light transmissive tubes therein. This top part is all that forms the claimed “toy” and does not have any powered or electronic features, it merely transmits the light from the electronic base. The top toy part that acts as the light transmissive toy and the parts cited in the rejections above do not include the lighted base which includes the electronic elements (light source, batteries, tape player, speakers, etc.) and therefore the claimed toy does not include batteries as defined and shown by the prior art as cited.
The examiner agrees with the applicant’s arguments that claims of 28-33 as amended would be allowable over the cited prior art when a proper terminal disclaimer is filed.
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, Kelly (2016/0018083), Kelly (5,876,262), Jones (5,391,105), Gertzfeld (4,891,030), Von Kohorn (4,630,177, 4,729,069), Loomis (4,655,721), McCaslin (4,097,917), Wall (3,624,385), Glass (3,634,678), Glass (3,589,056), Withams (3,181,271), and Seibel (2,432,632) are similar light conducting features.
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.
THIS ACTION IS MADE FINAL. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711
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