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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/8/25 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 39, 41 and 51-57 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification and figures as originally filed while separately disclosing three different embodiments for a display support, the box with opening configuration does not include magnets as required by the claims as now presented and vague disclosures as on page 19 that the elements 10 and 12 of the application can have features combined does not provide adequate disclose for combining features of the display supports nor does it make clear to one of ordinary skill in the art what features and how they could be combined to show that applicant possessed a particular combination of elements.
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.
Claim(s) 38-39, 41-42, 44-45, 48-50, 52 and 55-57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano (GB2107200A), McKenna (4722712) and Philipp (1535035). Asano discloses a puzzle toy (abstract) having six first toy members formed as tetrahedrons with first, second, third and fourth faces and six edges (Fig. 8, upper members) and six second toy members formed as tetrahedrons substantially identical with the first toy members with first, second, third and fourth faces and six edges (Fig. 8, lower members), wherein each first toy member is movably coupled to another first toy member by a first hinged connection at respective first edges thereof (15), each second toy member is movably coupled to another second toy member by a second hinged connection at respective second edges thereof (15) and each first toy member is movably coupled to one of the second toy members by a third hinged connection (15) at respective second and first edges of the respective first and second members to connect the twelve toy members into a continuous loop (Fig. 9) such that each member has two edges each connected to an edge of another so as to be movable about the hinged connections to form a first cubic parallelepiped configuration (Fig. 1), a second configuration where each tetrahedral body contacts only one other tetrahedral body (Fig. 11), a third configuration (Fig. 12), a fourth configuration (Fig. 13), a fifth configuration (Fig. 14), a sixth configuration (Fig. 15) and a seventh configuration (Fig. 16). The flexible hinges are formed from a flexible adhesive (page 2 lines 77-82). Asano discloses the basic inventive concept, with the exception of each of the toy members having three or more magnets coupled to the tetrahedral bodies for stabilizing the puzzle in each of the seven configurations and further including a display support. McKenna discloses a puzzle toy having a plurality of bodies with faces hinged together at edges thereof for placement in over seven different stable configurations (Figs. 4-16), wherein bodies hingedly connected to two different bodies can be configured with magnets (166) positioned and configured relative to faces adjacent to the respective hinges and as such be provided with four magnets that enable the configurations to be stable since faces adjacent the hinges are configured with the magnets such that the magnets only magnetically attract when the faces abut one another (Fig. 3 & 3a, column 3 line 49- column 4 line 32). It would have been obvious to one of ordinary skill in the art from the teaching of McKenna to include at least three magnets to each of the toy members of Asano for the predictable result of configuring the puzzle to be maintained in desired configurations until acted upon by a user thereby providing stable constructions with enhanced utility and functionality. The combination creates a stabilized first cubic configuration in which some faces and their respective magnets of the hingedly connected first and second toy members are in contact and magnetically coupled together while the faces are in abutment and a second configuration in which each of the bodies is only magnetically coupled to one other body due to only one face of each body being in abutment. Philipp discloses a display support for toy elements in the form of a display support box that can be affixed to a surface and further having an opening for receiving toy elements configured to include at least one magnet for storing and displaying the toy elements (Figs. 2 & 13). It would have been obvious to one of ordinary skill in the art from the teaching of Philipp to include a display support with the puzzle toy of Asano and McKenna for the predictable result of providing enhanced utility by providing a means to provide both storage and display of the puzzle toy in an interesting manner.
Claims 40, 46-47, 51 and 53-54 are rejected under 35 U.S.C. 103 as being unpatentable over Asano, McKenna and Philipp as applied above. Asano, McKenna and Philipp disclose the basic inventive concept with the exception of the six edges being configured such that first and second edges each have a length of one unit, a third edge has a length of √2 units and fourth, fifth and sixth edges all have a length of √3/2 units. It would have been obvious to one of ordinary skill in the art to configure the tetrahedron members of the references with the above dimensions since changes in size and shape have been held to be an obvious matter of design choice absent persuasive evidence that a claimed configuration is significant. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano, McKenna and Philipp as applied for claim 38 above and further in view of Dorsett (3095668). Asano, McKenna and Philipp disclose the basic inventive concept with the exception of the magnets coupled to an outer surface of the bodies. Dorsett discloses connectable magnetic toy bodies having edges and faces wherein the faces have magnets coupled to outer surfaces thereof (Fig. 7). It would have been obvious to one of ordinary skill in the art from the teaching of Dorsett to place the magnets on the outside surfaces of toy bodies for the predictable result of positioning the magnets in a known manner to achieve magnetic attraction between toy bodies. Furthermore, such a modification would have involved a mere rearrangement of parts which has been held to be obvious absent persuasive evidence that the claimed configuration is significant. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Response to Arguments
Applicant’s arguments with respect to claim(s) 38-57 have been considered but are mostly moot because the new ground of rejection does not rely references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In regard to applicant’s argument that the specification supports combining features of the display supports because of language in the third paragraph on page 19, the examiner notes that the language only applies to the elements 10 and 12 of the specification not the display supports and furthermore the vague language that features can be combined does not provide adequate disclosure to make it clear to one of ordinary skill in the art what features and how they could be combined to show that applicant possessed a particular combination of elements.
In response to applicant’s argument that the particular claimed geometry is not a matter of design choice since it allows the toy to take a cube configuration and an additional six configurations, the examiner notes that the tetrahedral bodies of Asano while not disclosing the specific geometries also makes a cube configuration and six additional configurations as required by the claims and as such since a device having the claimed dimensions would not have performed differently than the prior art, the claimed device is not patentably distinct. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Conclusion
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711