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 .
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 information disclosure statement filed 11/18/2025 and 2/17/2026 fail to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the publication dates are missing. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Election/Restrictions
Applicant’s election without traverse of claims 1-6 and 8-21 in the reply filed on 12/29/2025 is acknowledged. Claims 10-19 are withdrawn.
Claim Rejections - 35 USC § 112
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 1-6, 8, 9, 20 and 21 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.
Claim 1 discloses the phrase “a first side”; claim 3 discloses “a second side”; and claim 20 discloses the phrases “a first side” and “a second side”. However, the specification and drawings fail to identify or describe these sides or otherwise provide antecedent or structural context that would allow one of ordinary skill in the art to determine what structures correspond to the “first side” and the “second side”. Accordingly, the meets and bounds of the claimed subject matter cannot be determined with reasonable certainty.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first side as disclosed in claim 1; the second side as disclosed in claim 3; and the first side and the second side as recited in claim 20 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-6, 8, 9, 20 and 21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tube video, “Ready to ship pet toys bouncing ball stuffed plush chewing toys” (https://www.youtube.com/watch?v=SgueVfyE4Z0). From here on the You Tube video is identified as “You Tube” in the instant office action.
Regarding claim 1, You tube discloses a device (see the entire You Tube video content from 0-50 seconds and see the screen shot figures examiner attached below) comprising: an internal structure comprising a durable material capable of bouncing off of a surface when dropped from a first height (the bouncing ball as disclosed in the title of the video is considered as a durable material since it is capable of bouncing off the ground surface as recited); a first fabric (the plush cover of the ball as disclosed in the title of the You Tube video and as the toys shown in the video). Clearly the video discloses the fabric having a first side comprising a pile configured to completely cover the internal structure (see the title of the video and the images of the toy as shown in the video. The outside of the toy is shown as being plush surface that has obviously have piles); one or more extremities comprising a second fabric (for example as shown in the screen shot Figure provided below, the right side toy that is in the middle with red color is disclosed as having ears/extremities that is made of a second fabric that is different from the fabric that is used from the mouth area fabric), the one or more extremities comprising an arm, a leg, a tail, or a wing; and one or more facial features sewn onto the first fabric (as shown in the Video Figures below, the eyes and nose are shown as being sewn. Some of the toys also disclose extremities as recited in the claim), wherein the device is configured to bounce at a second height that is between 55% to 70% of the first height (as shown in section of the video (for example, see the two figures that show the two screen shots of the toy bouncing at two different heights), the toy is capable of bouncing at different heights that can be considered as including the height of 50%-70% as recited).
If applicant argues that the device of the You Tube does not teach the height of 50%-70% range, 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.
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Regarding claim 2, wherein the one or more facial features comprise an embroidered or stuffed eye, nose, snout, whisker, eyebrow, eyelash, or mouth and wherein the facial features are sewn onto the first fabric such that the one or more facial features lay flat against the first side of the first fabric to prevent damping when the device bounces (see rejection of claim 1 above and figures provided above including the entire You Tube video).
Regarding claim 3, wherein the first fabric further comprises a second side, the second side comprises a pile surface or a smooth surface (since the You Tube toy is disclosed as plush bouncing toy, the plush cover obviously or inherently will have a pile or smooth surface as recited).
Regarding claim 6, wherein the one or more extremities are sewn onto the first fabric (the toys show seams and it is inherent or obvious that the extremities are sewn as recited).
Regarding claim 8, the You Tube video does 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 9, wherein the first fabric is sewn over the internal structure tightly such that the first fabric does not bunch or shift over the internal structure when the device bounces (see claim 1 above and the You Tube video of the toys).
Regarding claim 20, bouncing device (see the entire You Tube video content from 0-50 seconds and see the screen shot figures examiner attached above) comprising: an internal structure comprising a highly durable material capable of bouncing off of a surface at a certain height (the bouncing ball as disclosed in the title of the video is considered as a durable material since it is capable of bouncing off the ground surface as recited); a fabric covering comprising a first side and a second side (the plush cover of the ball as disclosed in the title of the You Tube video and as the toys shown in the video), wherein the first side comprises a fluffy pile (see the outside cover of the toys as shown in the Video), wherein the second side is configured to abut the internal structure (clearly and obviously the second side of the fabric abuts to the surface of the inside ball element), and wherein the fabric covering is configured to tightly and completely cover the internal structure such that the fabric does not bunch or move when the bouncing device bounces off of the surface (see the toy in the You Tube video and the above attached figures); at least one external extremity, wherein the at least one external extremity comprises a fabric material and wherein the at least one external extremity is configured such that when the bouncing device bounces the at least one extremity does not dampen the bounce (see rejection of claims 1-2 above); and at least one embroidered facial feature, wherein the at least one embroidered facial feature is embroidered or attached to the fabric covering such that the at least one embroidered facial feature does not dampen the bounce of the bouncing device when the device bounces off the surface (see rejection of claims 1-2 above and figures provided above including the entire You Tube video).
Regarding claim 21, the You Tube video does not explicitly disclose wherein the first height is approximately 3 feet. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make a toy that is capable of reaching any height including 3 feet, 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).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over You tube in view of Stillinger (US Patent No. 5,413,331).
The toy in the You Tube video does not explicitly disclose the device comprising polyurethane and the polyurethane comprising toluene diisocyantate, polyether polyol, tin octoate, silicone oil, and a color. Stillinger on the other hand discloses an amusement ball that has a cover and the inside ball containing a durable material that comprises a polyurethane material (see column 4 lines 34-35). It would have been obvious to one of ordinary skill in the art to make the device of the You Tube device out of polyurethane material so that the balls could have good rebound ability character as disclosed in column 1 line 10. In addition, it is well known that polyurethane material since it has excellent bounce and tear resistance. The references as used above disclose the use of polyurethane as discussed above but fail to teach the polyurethane to comprise toluene diisocyantate, polyether polyol, tin octoate, silicone oil, and a color as recited. It would have been obvious to person having ordinary skill in the art at the time the invention to incorporate known formulation compounds and colorants into the polyurethane as taught by the secondary reference, Stillinger. Polyurethane materials are conventionally formulated with various additives (e.g., stabilizers, fillers, plasticizers, pigments, or dyes and so on) depending on desired properties and appearance. The selection of particular additives from known compounds and the addition of color to polyurethane would have been a matter of routine optimization and design choice, since such modifications merely involve selecting known components for their known functions and would have yielded predictable results, namely a polyurethane bouncing ball with the desired composition and appearance. Therefore, the claimed invention would have been obvious over the references as combined.
Conclusion
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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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/NINI F LEGESSE/Primary Examiner, Art Unit 3711