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 office action of 3/19/2026 is acknowledged on 6/22/2026.
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 § 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, 4-6, 8, 9 and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Hartelius (US Patent No. 11,925,838) in view of the YouTube reference, “Ready to ship pet toys bouncing ball stuffed plush chewing toys” (https://www.youtube.com/watch7v=SqueV/VE4Z0).
Regarding claim 1, Hartelius discloses a child’s toy comprising an internal ball structure formed of a resilient durable material capable of bouncing from a surface (Figs. 1-6; col. 4, ll. 43-48) and a plush fabric covering completely surrounding the internal ball structure (col. 3, ll. 45-47). Hartelius further teaches that the plush covering closely fits over the internal ball so that the plush covering does not substantially interfere with the bouncing characteristics of the internal ball. However, Hartelius does not expressly disclose one or more plush extremities comprising an arm, leg, tail, or wing formed from a second fabric selected to prevent the toy from caroming or ricocheting from the extremities, facial features sewn onto the plush covering, or the toy rebounding to between about 55% and 70% of the drop height. The YouTube reference teaches plush-covered bouncing ball toys having soft sewn extremities, including ears, limbs, tails, and wings, facial features sewn onto 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 significantly interfere with the bounce or cause undesirable ricochet (see figures shown below). It would have been obvious to modify the toy of Hartelius to include the sewn plush extremities and sewn facial features taught by the YouTube reference because such features improve realism, consumer appeal, durability, and play value while predictably maintaining the intended bouncing performance. Further, achieving a rebound height between approximately 55% and 70% of the drop height would have been the result of routine optimization of the resiliency of the internal ball and the plush covering.
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Regarding claim 2, the YouTube reference teaches plush toys having facial features including eyes, noses, snouts, mouths, whiskers, eyebrows, and eyelashes. Such facial features are conventionally embroidered or sewn onto plush toys so that they lie substantially flat against the plush surface to improve durability, safety, appearance, and to avoid interfering with the bounce of the toy. Therefore, it would have been obvious to embroider or sew the recited facial features onto the first fabric such that they lay flat to minimize bounce dampening.
Regarding claim 4, Hartelius discloses that the internal ball structure comprises a resilient polymeric material capable of repeatedly bouncing from a hard surface (Figs. 1-6; col. 4, paragraphs 43-48). Polyurethane foam is a well-known resilient material commonly used in bouncing balls because of its resilience, durability, compressibility, and rebound characteristics. Therefore, it would have been obvious to one of ordinary skill in the art to form the durable material of Hartelius from polyurethane as a matter of routine material selection to obtain the desired bounce performance and durability.
Regarding claim 5, Hartelius, as modified above, teaches a bouncing toy having a polyurethane internal ball. The recited polyurethane formulation comprising toluene diisocyanate, polyether polyol, tin octoate, silicone oil, and a color merely specifies known constituents conventionally used in the manufacture of polyurethane foams for resilient toy balls. It would have been obvious to one of ordinary skill in the art to utilize the recited formulation because selecting known polyurethane components to obtain the desired resiliency, density, durability, and rebound characteristics constitutes routine material selection and optimization.
Regarding claim 6, the YouTube reference teaches plush extremities sewn onto the plush exterior of the bouncing toy. Accordingly, it would have been obvious to sew the one or more extremities onto the first fabric because sewing provides a secure attachment that improves durability and safety while maintaining the intended bouncing performance of the toy.
Regarding claim 8, the YouTube reference teaches plush fabrics having a pile suitable for plush toy construction. Selecting a pile length between 3 mm and 50 mm would have been an obvious matter of routine optimization based upon the desired softness, appearance, durability, and manufacturability of the plush covering while maintaining the intended bouncing characteristics of the toy.
Regarding claim 9, Hartelius teaches a plush covering closely surrounding the internal ball. The YouTube reference further demonstrates a close-fitting sewn plush covering that maintains good bounce performance. It would have been obvious to sew the first fabric tightly over the internal structure so that the fabric does not bunch or shift during bouncing because a tight fit improves durability, maintains the intended shape of the toy, prevents movement of the covering relative to the internal ball, and predictably preserves the bouncing characteristics of the toy.
Regarding claims 20-21, Hartelius teaches a plush-covered bouncing toy comprising an internal resilient foam ball enclosed within a closely fitted plush fabric covering that substantially maintains the bouncing characteristics of the internal ball (see abstract and claim 1 that discloses the use of a felt cover). However, Hartelius does not expressly disclose a plush exterior having a pile length of at least 3 mm, the ball to bounce approximately 3 feet, sewn plush extremities attached by sewing rather than adhesive, facial features sewn onto the plush exterior using stiff fabrics, or a tightly sewn closing seam corresponding to the diameter of the internal ball. The YouTube reference teaches plush bouncing ball toys having soft sewn extremities, sewn facial features, and demonstrates that the plush-covered toy exhibits a good bounce function, thereby showing that the sewn decorative features do not materially interfere with the intended bouncing performance. Further, tightly sewn seams and plush fabrics having conventional pile lengths are well-known plush toy manufacturing techniques used to securely enclose the internal ball while maintaining a close fit. It would have been obvious to modify Hartelius to include the sewn extremities, sewn facial features, tightly sewn seam, and conventional plush fabric construction taught by the YouTube reference because such modifications improve durability, structural integrity, appearance, safety, and play value while predictably preserving the intended bouncing performance of the internal ball. Selecting a rebound height of approximately 55%-70% or a bounce of approximately 3 feet of the rebound height of the uncovered ball likewise represents routine optimization of a known result-effective variable.
Regarding claim 22, Hartelius discloses a toy comprising an internal ball structure formed of a resilient material capable of bouncing from a hard surface (see figures 1-6; column 4 paragraphs 43-48) and a plush/felt fabric skin completely surrounding the internal structure (see column 3 paragraphs 45-47). Hartelius further teaches that the plush fabric skin closely conforms to the internal ball so that the plush covering does not substantially impact or dampen the bouncing characteristics of the internal ball. Hartelius as disclosed in its abstract teaches the use of a resilient foam and close-fitting exterior (see all Figures), however, does not expressly disclose that the internal ball comprising polyurethane, stiff rubber, or another highly resilient polymer, that the plush fabric comprises a pile having a pile length of 3-50 mm, that the plush fabric skin includes soft and pliable fabric extremities sewn onto the plush exterior rather than attached by adhesive, facial features sewn onto the plush exterior, or that the plush fabric skin is secured by a tightly sewn closing seam providing a wrinkle-free. The YouTube reference teaches plush-covered bouncing ball toys having a soft plush exterior, soft sewn extremities including ears, tails, wings, and limbs, sewn facial features, and demonstrates that the completed plush-covered toy retains a good bounce function (see the figures above), thereby showing that the sewn decorative components and plush covering do not significantly interfere with the bouncing performance of the internal ball. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the toy of Hartelius to incorporate the sewn plush extremities and sewn facial features taught by the YouTube refence because these are well-known plush toy construction techniques that improve durability, realism, safety, and consumer appeal while predicably preserving the intended bouncing characteristics of the toy. Further, selecting a polyurethane foam, stiff rubber, or other resilient polymer for the internal ball, selecting a pile length within the claimed range, and employing a tightly sewn closing seam to obtain a close-fitting plush covering would have been obvious matter of routine material selection and manufacturing optimization to achiever the desired balance of resilience, softness, durability, and bounce performance. Likewise, achieving a rebound height would have been an obvious optimization of the resiliency of the internal ball and the characteristics of the plush covering to obtain the desired play characteristics.
Regarding claim 23, Hertelius teaches enclosing the internal resilient ball within a plush covering that is wrapped around the ball and secured by a seam to provide a close-fitting plush exterior (see all Figures). The YouTube reference likewise teaches a sewn plush covering enclosing an internal bouncing ball. Although neither references expressly describes the specific manufacturing sequence of forming a spherical plush skin having an opening that defines a pocket for receiving the internal ball, one of ordinary skill in the plush toy manufacturing art would have recognized that a plush covering must necessarily be formed with an opening through which the internal ball is inserted before the opening is sewn closed, as this is a conventional and well-known method of manufacturing enclosed plush toys. Accordingly, it would have been obvious to configure the plush fabric skin as a generally spherical pocket for receiving the internal ball through an open seam that is subsequently sewn closed after insertion of the ball. Further, configuring the closing seam to have substantially the same length as the diameter of the internal ball would have been an obvious matter of routine manufacturing optimization because such a seam provides sufficient access for insertion of the ball while permitting the finished plush covering to be tightly sewn around the ball to minimize wrinkles, prevent shifting of the covering, and maintain the intended bouncing performance of the toy.
Response to Arguments
Applicant’s arguments with respect to claims 1, 2, 4-6, 8, 9 and 20-23 have been considered but are moot because the new ground of rejection does not rely only on the reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments have been fully considered but are not persuasive. The rejection does not rely on the YouTube reference alone, but on the combined teachings of Hartelius and the YouTube reference. Hartelius provides the structural bouncing toy, while the YouTube reference evidences well-known plush toy construction techniques, including sewn extremities, sewn facial features, close-fitting plush coverings, and that such features do not materially impair the bouncing function. The fact that the YouTube reference depicts a pet toy rather than a child’s toy does not preclude its consideration as analogous prior art, as it addresses the same problem of providing a plush-covered bouncing ball with securely attached decorative features while maintaining bounce performance. It should also be noted that the primary reference teaches the toy as a dog bouncing toy (see paragraph 2 line 52) and the YouTube also discloses that the toy is a dog toy. Both toy devices used to reject the claims are capable of being used as a child toy if one wishes to use them for that purpose. Applicant is not claiming a process. Further, Applicant’s arguments are directed to individual references in isolation rather than the teachings of the references as a whole. The proposed combination merely applies known plush toy construction techniques to a known bouncing toy to achieve the predictable result of a durable plush-covered bouncing toy, consistent with KSR. Applicant has not provided persuasive evidence of criticality, unexpected results, or teaching away sufficient to overcome the prima facie case of obviousness.
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) 207-1775. 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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