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 Non-Final Rejection of 3/13/2026 is acknowledged on 06/09/2026.
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.
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 12, 13, 15, 16 and 19 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. Independent claim 12 discloses the expressions “solid core”, “the fabric covering is one piece” and “sewn shut with a single tightly sewn closing seam” and the originally filed disclosure does not reasonably convey to one of ordinary skill int her art that the inventor had possession of these specifically claimed features at the time the application was filed. Since claims 13, 15, 16, and 19 depend on rejected claim 12, they are all rejected under 112(a).
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 2-5, 7-13, 15, 16 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hartelius (US Patent No. 11,925,838) 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 21, A child's toy (see all figures and abstract) comprising: an internal ball structure comprising a foam ball (2) capable of bouncing off a hard surface; a plush fabric skin having a plush fabric exterior (8,8’) configured to completely cover (column 3 lines 45-47 discloses that “the entire surface of the unitary member are then wrapped in conventional fashion around respective half shells to extend over the other half shell and a polymer tape 9 adhered along a seam 10 between the felt pieces in known manner” the internal ball structure (see figures 1-6), such that the plush fabric exterior does not significantly impact or dampen the ability of the internal ball structure to bounce when impacting a surface (column 1 lines 43-48 discloses “One object of the invention is to provide a play ball of equivalent bounce to traditional, pressurized balls but with increased bounce duration and effective life without significant increase in weight, by filling the traditional rubber shell with resiliently compressible foam which is attached to the entire inside surface of the shell”, that teaches that the ball is capable of bouncing). Hartelius also discloses the plush fabric skin (8,8’) tightly fits over the internal ball structure and the plush fabric exterior completely covers the interior ball structure in a manner that does not significantly affect bounce as the plush fabric skin has a size and shape that corresponds with the diameter of the internal ball (see Figures 1-6). Hartelius therefore teaches a plush-covered bouncing toy configured for use by a child ((Regarding the intended use set forth in the preamble disclosing the toy to be “ a child’s toy” and the device is capable of being used to entertain a child if so desired. Applicant is not claiming a process. Please note that the 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).
Hartelius does not expressly disclose the toy to have extremities comprising a soft and pliable fabric sewn on the plush fabric exterior of the plush fabric skin, wherein the extremities are sewn on and not attached to the plush fabric exterior via glue or other adhesives; and facial features sewn on the plush fabric exterior of the plush fabric exterior, wherein the facial features are formed using stiff fabrics, a tightly sewn closing seam to ensure a tight fit without any hinderances between an external surface of the internal ball structure and the plush fabric exterior. The YouTube refence (“Ready to ship pet toys bouncing ball stuffed plush chewing toys”) teaches plush-covered bouncing ball toys having soft plush extremities (for example, ears, tails, horns, and limbs) and facial features integrated into the plush exterior while demonstrating that the completed plush toy retains a good bounce function, thereby evidencing that the plush covering and decorative features do not significantly interfere with the bouncing performance of the internal ball. Further, it was well known in the plush toy manufacturing art to form tightly sew seams and securely sew plush appendages and facial features onto a plush exterior to maintain structural integrity, prevent separation of the components during repeated impacts and normal play, provide a close-fitting plush cover around the internal ball, and improve durability and safety. Employing tightly sewn seam represents nothing more than the application of a known manufacturing technique to secure the plush covering and decorative features to Hartelius’ bouncing plush toy.
See images of the secondary You Tube reference below:
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Regarding claim 2, Hartelius discloses a resilient foam ball capable of repeatedly bouncing from a hard surface as discussed in claim 21 above. The YouTube reference further demonstrates that the completed plush-covered toy retains a good bounce function after impact with a surface (see the screen shot above and see entire video). The YouTube reference further demonstrates that the completed plush-covered toy retains a good bounce function after impact with a surface. It would have been obvious to configure the toy to rebound to about 50-75% of the drop height, as the rebound height is a result-effective variable that depends upon the resiliency of the foam and is routinely optimized to achiever the desired play performance.
Regarding claim 3, the reference as used in claim 21 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. In addition, it would have been obvious to select a pile length within the claimed range as a matter of routine optimization based on the desired softness, appearance, durability, and manufacturability of the plush toy while predictably maintaining the toy’s bouncing characteristics.
Regarding claim 4, the YouTube refence teaches plush toys configured to resemble various animals and cartoon characters having different colors and decorative appearances. It would have been obvious to provide the plush fabric skin as a solid color, patterned, tie-dyed, or any combination thereof, because selecting the color or pattern of a plush fabric constitutes a well-known aesthetic design choice for improving the toy’s visual appeal without affecting its intended function.
Regarding claim 5, the combination of the references do 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 Hartelius 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. In addition, it would have been an obvious matter of routine optimization depending on the intended user, desired bounce characteristics, portability, and manufacturing considerations. Dimensioning a known toy within a recognized size range is a result-effective variable that would have been routinely optimized by one of ordinary skill in the art.
Regarding claim 7, the references as combined and discussed in claim 21 disclose 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, the YouTube reference teaches plush toys having various extremities, including ears, horns, tails, limbs, and wings, while demonstrating that the completed plush-covered toy maintains a good bounce function. It would have been obvious to provide one or more of the recited extremities, including an arm, leg, ear, horn, wing, antenna, or tail, because such decorative appendages were well known for enhancing the toy’s realism, visual appeal, and play value while predictably maintaining the intended bouncing performance.
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, Hartelius discloses a resilient foam ball that is compressed during impact and rebounds upon release, thereby inherently requiring a foam material that is compressible by a child’s hand. Alternatively, selecting a foam having a compressibility suitable for a child’s grasp would have been an obvious matter of routine material selection to improve tactile feel and playability while preserving the toy’s resilience and bounce.
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, Hartelius discloses a plush bouncing child’s toy comprising an internal resilient low-density foam ball configured to bounce upon striking a surface ((column 1 lines 43-48 discloses “One object of the invention is to provide a play ball of equivalent bounce to traditional, pressurized balls but with increased bounce duration and effective life without significant increase in weight, by filling the traditional rubber shell with resiliently compressible foam which is attached to the entire inside surface of the shell”, that teaches that the ball is capable of bouncing), and a one-piece plush fabric covering that completely surrounds the ball (see all Figures). Hatelius further teaches that the plush covering is wrapped around the ball and secured along a seam (see column 3 lines 45-47), wherein the covering closely conforms to the ball such that the bouncing characteristics of the internal ball are substantially maintained. However, Hartelius does not expressly disclose that the plush covering is configured to receive the ball into an internal pocket and is sewn closing seam, that the plush fabric has a pile length of 3 mm to 50 mm, that the plush toy rebounds to 60%-75% of the rebound height of the uncovered ball, or the at the plush covering includes at least one sewn extremity comprising an arm, leg, wing, antenna, fin, or combination thereof and at least one facial feature configured such that the extremity and facial feature do not significantly dampen the bounce or cause the toy to carom or ricochet. The YouTube reference (“Ready to ship pet toys bouncing ball stuffed plush chewing toys”) teaches plush-covered bouncing ball toys having soft sewn extremities, including ears, tails, horns, wings, and limbs, facial features formed on the plush exterior, and demonstrates that the completed plush toy retains a good bounce function, thereby evidencing that the sewn extremities and facial features do not materially interfere with the bouncing performance of the internal ball. The YouTube reference also demonstrates a close-fitting plush covering surrounding the internal bouncing ball. Additionally, forming a plush covering from a single piece that is closed with a tightly sewn seam and selecting a conventional plush pile length are well-known manufacturing techniques used to securely enclose plush toys, provide a wrinkle-free close fit, improve durability, and prevent separation of the covering during repeated impacts. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the plush bouncing toy of Hartelius to incorporate the sewn extremities, facial features, clos-fitting one-piece plush covering having a tightly sewn closing seam, and conventional plush fabric construction taught or unsuggested by the YouTube reference and well-known plush toy manufacturing techniques because doing so improves the toy’s durability, structural integrity, safety, realism, and aesthetic appeal while predictably maintaining the intended bouncing performance of the internal foam ball. Furthermore, selecting a rebound height of 60%-75% of the uncovered foam ball and a pile length of 3 mm to 50 mm represents nothing more than routine optimization of known result-effective variables to obtain the desired balance of softness, appearance, and bounce characteristics.
Regarding claim 13, the YouTube refence teaches plush toys configured to resemble various animals and cartoon characters having different colors and decorative appearances. It would have been obvious to provide the plush fabric skin as a solid color, patterned, tie-dyed, or any combination thereof, because selecting the color or pattern of a plush fabric constitutes a well-known aesthetic design choice for improving the toy’s visual appeal without affecting its intended function.
Regarding claim 15, 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 16, the combination of the references do 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 Hartelius 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. In addition, it would have been an obvious matter of routine optimization depending on the intended user, desired bounce characteristics, portability, and manufacturing considerations. Dimensioning a known toy within a recognized size range is a result-effective variable that would have been routinely optimized by one of ordinary skill in the art.
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. It would have been obvious to embroider the facial features onto the exterior side of the plush fabric covering to improve durability, safety, appearance, and resistance to repeated impacts while maintaining the intended bouncing performance of the toy.
Regarding claim 20, Hartelius discloses a plush bouncing toy comprising an internal resilient low-density foam ball capable of bouncing from a surface and a plush fabric covering surrounding the ball. Hartelius further teaches that the plush covering completely surrounds the ball and is closely fitted so that the bouncing characteristics are substantially maintained (see rejection of claim 21 above). However, Hartelius does not expressly disclose a plush fabric casing having a pile length of at least 3 mm, a tightly sewn closing seam corresponding to the diameter of the foam ball, decorative fabric extremities including an arm, leg, ear, antenna, horn, tail, fin or wing, facial features affixed to the plush exterior, or that the toy rebounds to 55-75% of the rebound height of the uncovered foam ball. The YouTube reference teaches plush-covered bouncing ball toys having soft sewn extremities, facial features on the plush exterior, and demonstrates that the completed plush toy maintains a good bounce function despite the plush covering and decorative appendages. Additionally, tightly sewn seams and plush fabrics having conventional pile length are well-known manufacturing techniques for securely enclosing plush toys while maintaining a close fit around the internal ball. It would have been obvious to modify Hartelius to incorporate the sewn extremities, facial features, tightly sewn closing seam, and conventional plush toy manufacturing techniques improve durability, securely retain the decorative components during repeated impacts, provide an aesthetically pleasing plush character, and maintain the close fit necessary to preserve the bouncing characteristics of the internal ball. Furthermore, achieving a rebound height of about 55-75% of the uncovered foam ball represents routine optimization of a result-effective variable to obtain the desired play performance.
Regarding claim 22, see rejection of claim 12 above.
Response to Arguments
Applicant’s arguments with respect to claims 2-5, 7-13, 15, 16 and 19-22 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.
See also the Examiner’s Interview of 7/7/2026.
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 NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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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
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