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 .
Applicant’s response to the Final Rejection of 9/29/2025 and filing of RCE is acknowledged on 12/29/2025.
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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.
Information Disclosure Statement
The reference provided in the IDS of 2/12/2026 is not relied upon because the publication date is not available or cannot be verified. Accordingly, the reference cannot be relied upon as prior art and is not considered in this office action.
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 2, 12 and 20 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 claims contain 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. Regarding claim 2, the expression “the internal ball structure bounces at a height when the ball structure is struck against a surface at a perpendicular angle”; regarding claim 12, the expression “when the plush bouncing toy strikes the surface perpendicularly”; and regarding claim 20, the expression “the internal low density foam ball strikes a surface perpendicularly” are not present in the specification as originally filed.
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 2, 12 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The phrase “bounces at a height” and “bounce height” are indefinite because it is unclear what reference point is used to measure the “height” of the bounce. It is not clear whether “height” refers to the maximum rebound height, the average height after multiple bounces, or some other measurement. The term “perpendicular angle” or “strikes the surface perpendicularly” is indefinite because it is ambiguous whether it refers to the angle of incidence of the ball’s trajectory relative to the surface, the orientation of the surface, or some other relationship. In addition, in claim 2, the claim inconsistently refers to “internal ball structure” and “ball structure,” which renders the scope of the claim unclear as it is uncertain whether these terms refer to the same or different structures. As such, the metes and bounds of the claims cannot be reasonably determined.
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 2, 12 and 20 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 claims contains “maximum rebound” phrase that is a 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 as originally filed does not describe, define, or otherwise provide support for the term “maximum rebound”, nor does it disclose any structure, parameter, measurement, or description that would indicate the claimed concept of a maximum rebound characteristic or condition. The introduction of this limitation in the claims therefore constitutes new matter not supported by the originally filed disclosure.
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 2, 12 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims recite the term “maximum rebound.” The specification as originally filed does not provide a definition or explanation of what constitutes “maximum rebound,” nor does it disclose how such a parameter is determined, measured, or calculated. Accordingly, it is unclear whether “maximum rebound” refers to a specific measurable value, a performance characteristic, a physical condition, or another parameter. As a result, one of ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention. Therefore, the metes and bounds of the claims cannot be determined with reasonable certainty, rendering the claims indefinite.
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 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 1-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Stillinger (US Patent No. 5,413,331) in view of You Tube, “Ready to ship pet toys bouncing ball stuffed plush chewing toys” (https://www.youtube.com/watch?v=SgueVfyE4Z0).
Regarding claim 1, Stillinger discloses a toy (see Figures 1-3) comprising: an internal ball structure (22) comprising a compressible low-density foam (see column 2 lines 44-46 discloses that the internal ball structure as being a low density polyurethane foam); and a fabric covering configured to fit tightly over the internal ball structure (column 2 lines 65-67 and see all figures). Morgan does not disclose the fabric covering as comprising fabric extremity and at least one facial feature. However, a ball with fabric covering with extremity and facial feature is not a new concept and the You Tube video (“Ready to ship pet toys bouncing ball stuffed plush chewing toys”), is one reference that teaches a ball structure that discloses the fabric covering comprising at least one fabric extremity and at least one facial feature (see the 50 second video clip and the couple of screen shots of device as shown below that discloses a bouncing ball covered with plush that has extremity as ears and facial feature). It would have been obvious to modify the low-density foam amusement ball of the Stillinger reference with the fabric covering and protruding extremities as disclosed by the secondary You Tube reference. The You Tube reference teaches that a fabric exterior with facial and extremity features are known features and are not a new concept. A person of ordinary skill in the art would have been motivated to incorporate these features into the foam ball of the primary reference to enhance tactile interaction and visual appeal while maintaining the lightweight, compressible characteristics of the foam core. Such a modification represents a predictable use of known elements to improve user interaction with the ball and also to allow the Stillinger device to have multiple use.
In addition, it should be noted that the Stillinger device is disclosed as “a soft skin ball which has a pleasing texture and feel and is inexpensive to produce…the present invention provides an amusement ball with both a soft exterior and good rebound characteristics” as stated in column 1 lines 29-36), the device can be considered or is capable of being used as a stress relief toy if one wishes to use it as such.
In addition, the device being a stress relief toy as disclosed in the first line of the claim, it does not necessary be given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structures onto depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951).
It should be noted that examiner is giving the broadest reasonable interpretation of the claims as set forth in MPEP 904.01(a). The examiner notes that apparatus claims must be structurally distinguishable from the prior art. SEE MPEP 2114.
See images of the secondary You Tube reference below:
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Regarding claim 2, the references as combined do not disclose if the toy bounces at a height of 50-75% as recited. As best understood, since Stillinger is made of low-density foam and discloses as being capable of bouncing, it is considered that the recited feature could be obviously meet. In addition, the You Tube secondary reference video also teaches the device bouncing at different heights. In addition, it would have been obvious to one having ordinary skill in the art at the time the invention was made to for the ball of Morgan to bounce in the range recited, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 3, the reference as used in claim 1 do not explicitly disclose the
plush fabric exterior with a pile length of 3 mm to 50 mm. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a pile length range as recited, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, the fabric covering is a solid color (this is an obvious feature of a plush toy), and Solders as shown in Figures 1-2, it is configured to resemble an animal.
Regarding claim 5, the toy of Weiss does not explicitly disclose the device as having a diameter of 5 centimeters to 25 centimeters. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the Weiss device with the size range as recited, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, the references as combined and discussed in claim 1 are considered to meet the recited features of the claim.
Regarding claim 7, Sonders discloses the facial feature comprises eyes, a nose, a mouth. But does not explicitly disclose freckles, eyelashes, eyebrows, embroidered into the fabric. However, it would have been obvious to one having ordinary skill in art at the time the invention was made to provide these features and embroider these features since it was known in the art that to use these features to make the device more real looking and have great esthetic with the embroidered method of making the features. In addition, using embroidery for facial features on plush toys is an obvious choice due to its safety, durability, ease of manufacturing and widespread industry use.
Regarding claim 8, wherein the extremity comprises an arm, leg, ear, horn, wing, antenna, or tail, or any combination thereof and wherein the plush extremities do not impact the bounce height of the toy (as shown in Figures 1-4 of the Sonders references extremities 12 and 28 are disclosed).
Regarding claim 9, the references used above do not explicitly disclose wherein the extremity comprises a fabric with a shorter pile than the plush fabric. It would have been an obvious matter of design choice to make the fabric with shorter pile as recited, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 10, wherein the low-density foam comprises a formulation that is compressible by a child's hand (since the device of Weiss discloses the use of foamed polyurethane as discussed in claim 1 above, the device is considered as being capable of being compressed by a child’s hand).
Regarding claim 11, the references used do not disclose wherein the low-density foam comprises polyether polyols, silicone oil, catalyzer, methylene diphenyl diisocyanate, and a polymer of adipic acid with 1,4-butanediol, 1,2-ethylene glycol, and 1,2-methylenebis (4-isocynanatobenzene). It would have been obvious to one having ordinary skill in the art at the time of the invention was made to use the combination of the materials as recited, since 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.
Regarding claim 12, see rejection of claim 1 above. Stillinger discloses that the ball could be made of plurality of panels separated by seam lines (14) that are stitched (sewn) as shown in Figure 1 and as disclosed in column 2 lines 19-26. The inside of the panels where the ball is placed is considered as a pocket and as shown in Figures 1 and 3, the fabric covering (12) covers the ball (22) completely.
Regarding the pile length of 3 mm -50mm and bounce of 60%-75% of maximum rebound, as best understood, it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the Morgan in view of the YouTube device with the size range and bounce range as recited, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. The Morgan reference teaches that the cover is to be sewn onto the ball as shown in its Figures 3-3A.
Regarding claim 13, the YouTube reference as shown in the above screen shot is configured to resemble an animal as recited.
Regarding claim 15, see rejection of claim 11 above.
Regarding claim 16, see rejection of claim 5 above.
Regarding claims 17-18, as shown in Figure provided above for the YouTube reference, the plush toys disclose extremity and facial feature as recited.
Regarding claim 19, using embroidery for facial features on plush toys is an obvious choice due to its safety, durability, ease of manufacturing and widespread industry use.
Regarding claim 20, see rejections of claims 1, 2, 7 and 8 above. Regarding the plush fabric having a pile length of at least 3mm, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the pile length to be at least 3mm, since 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).
Response to Arguments
Applicant’s arguments with respect to claims 1-13 and 15-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s argument that the Morgan reference used in the Final rejection of 9/29/2025 fails to disclose a low-density foam is noted. The primary reference in the current office action discloses the use of a low-density foam as discussed in the office action above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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 J. 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.
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/NINI F LEGESSE/Primary Examiner, Art Unit 3711