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 .
This action is in response to applicant’s remarks and amendments dated 05/19/2026. Claims 1, 11, and 20 have been amended. Claims 1-21 are currently pending.
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 1-21 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.
Claims 1, 11, and 20 now recite that the resin and ingredient item are configured to attach / cure to the container. However, applicant’s specification indicates that these items are configured to attach / cure to a “base item” and that the “container” is a separate item, intended to house kit items, as well as to potentially be a mold from which the cured product is released / extracted. Therefore, as currently claimed these recitations are now confusing. Further evidence of this confusion is dependent claims 8, 9, 18, 19, and 21. See below for further discussion. It is unclear if this “container” is intended to be the “base item” from the specification or not.
As currently amended, claims 8, 9, 18, 19, and 21 now conflict with their independent claims 1, 11, and 20. Claims 1, 11, and 20 have been amended to recite that the resin and ingredient item are intended to be attached / cured to the container. However, claims 8, 9, 18, 19, and 21 recite that the container is intended to be a mold designed to expel the cured item. The container cannot both simultaneously be attached / cured to the resin and ingredient item and also expel the resin and ingredient item. These recitations are in conflict. Appropriate correction is required.
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.
Claims 1-5, 7-15, and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Eisenhut et al. (US Patent No. 8,465,337 B2) in view of Kim (US PGPub. 2021/0187408) and further in view of Pompey (US Patent No. 8,460,005 B1).
In Reference to Claims 1-5 and 7-10
Eisenhut teaches (Claim 1) A miniature replica kit of a [toy item] comprising a plurality of miniature replica items including at least one non-curable element (item 20 or 30, fig’s 1-3 and 9) and at least one curable element (item 24, fig’s 1-3 and 9), wherein the plurality of miniature replica items comprises: at least one miniature container being clear or translucent configured to let ultraviolet light pass therethrough (item 20, fig’s 1-3 and 9, and column 5 lines 1-5); at least one curable viscous resin contained within a resin container (items 22 and 24, fig’s 1-3 and 9), wherein the curable viscous resin is an ultraviolet light curable viscous resin (column 4 lines 6-9); wherein the at least one curable viscous resin is configured to be dispensed from the resin container to within the at least one miniature container (fig’s 1-3); wherein the at least one curable viscous resin is a first miniature replica [] item (fig’s 1-3); at least one miniature replica ingredient item (item 30, fig 9, column 4 lines 16-17, and column 5 line 24); wherein the at least one miniature replica ingredient item is a second miniature replica food item (item 30, food coloring is a food item); wherein the at least one non-curable item comprises the at least one miniature replica ingredient item (item 30, food coloring is non-curable); wherein the at least one curable element comprises the at least one curable viscous resin (item 24, fig’s 1-3 and 9); and wherein the at least one curable viscous resin and the at least one miniature replica ingredient item are configured to be disposed in the at least one miniature container and thereafter solidify when exposed to ultraviolet light attaching [] the at least one curable viscous resin and the at least one miniature replica ingredient item forming a cured composite miniature replica [] item (column 3 lines 57-59, column 4 lines 16-17, and 5 line 21-28);
(Claim 2) wherein the at least one miniature replica container is concave (fig’s 1-3 items 20 are concave);
(Claim 3) wherein the at least one miniature replica container is a bowl, a dish or a cup (item 20 is a dish);
(Claim 4) including at least one miniature serving dish configured to receive the cured composite miniature replica [] item (fig’s 1-3, item 24 fits in item 20).
(Claim 5) wherein the at least one miniature replica ingredient item is separately packaged within a miniature replica ingredient item container (item 30 is in container shown in fig. 9);
(Claim 7) wherein the miniature replica ingredient item container is openable configured to allow removal of the at least one miniature replica ingredient item disposed within (item 30 is inherently openable to be able to add coloring to the molds);
(Claim 8) wherein the at least one miniature container comprises a mold that is designed to expel the cured composite miniature replica food item to produce the cured composite miniature replica [] item (item 20, fig’s 1-3);
(Claim 9) wherein the cured composite miniature replica [] item is designed to be separated from the at least one miniature container and does not adhere to the at least one miniature container (fig’s 1-3, column 1 line 48 – column 4 line 5).
Eisenhut fails to teach the resin / composite is a replica food item, specifically; and, the resin being configured to attach to the container.
However, Eisenhut teaches that the resin can be molded into a wide variety of shapes / items / elements as desired by a user (column 3 line 48 – column 4 line 6).
Kim teaches (Claim 1) a miniature replica item is a food item (paragraph 0042, and fig’s 1 and 4; miniature play items include foods);
(Claim 10) [a] miniature replica food item is a piece of a fruit (paragraph 0042, and fig’s 1 and 4; miniature play items include fruit).
Pompey teaches attaching / curing items to [a] at least one miniature container (item 200, fig. 2, column 1 lines 36-51).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the play kit of Eisenhut with the feature of miniature fruit items as taught by the play kit of Kim for the purpose of providing a specific theme to the kit, allowing users to perform pretend cooking operations as taught by Kim (paragraph 0010), making the kit more interesting and attractive to the users.
Further, the examiner notes that it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Merely claiming the specific ornamental features of the items or containers provides no mechanical function and are simply aesthetic design elements that are not patentable distinctions.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the kit of Eisenhut with the feature of a container that can be cured / attached to as taught by the kit of Pompey for the purpose of providing additional decorative elements into the kit, allowing for a wider range of interesting items to be created, making the kit more versatile, and more interesting and attractive to the users.
In Reference to Claims 11-15 and 17-19
Eisenhut teaches (Claim 11) A miniature replica kit of a [toy item] comprising a plurality of miniature replica items including at least one non-curable element (item 20 or 30, fig’s 1-3 and 9) and at least one curable element (item 24, fig’s 1-3 and 9), wherein the plurality of miniature replica items comprises: at least one miniature container (item 20, fig’s 1-3 and 9, and column 5 lines 1-5); at least one curable viscous resin contained within a resin container (items 22 and 24, fig’s 1-3 and 9); wherein the at least one curable viscous resin is configured to be dispensed from the resin container to within the at least one miniature container (fig’s 1-3); wherein the at least one curable viscous resin is a first miniature replica [] item (fig’s 1-3); at least one miniature replica ingredient item (item 30, fig 9, column 4 lines 16-17, and column 5 line 24); wherein the at least one miniature replica ingredient item is a second miniature replica food item (item 30, food coloring is a food item); wherein the at least one non-curable item comprises the at least one miniature replica ingredient item (item 30); wherein the at least one curable element comprises the at least one curable viscous resin (item 24, fig’s 1-3 and 9); and wherein the at least one curable viscous resin and the at least one miniature replica ingredient item are configured to be disposed in the at least one miniature container and thereafter solidify attaching [] the at least one curable viscous resin and the at least one miniature replica ingredient item forming a cured composite miniature replica [] item (column 3 lines 57-59, column 4 lines 16-17, and 5 line 21-28);
(Claim 12) wherein the at least one miniature replica container is a concave bowl, a concave dish or a concave cup and is clear or translucent and is configured to let light pass therethrough (item 20 is a clear concave dish, column 5 lines 1-5);
(Claim 13) wherein the curable viscous resin is an ultraviolet light curable viscous resin that cures when exposed to ultraviolet light (column 4 lines 6-9);
(Claim 14) including at least one miniature serving dish configured to receive the cured composite miniature replica [] item (column 3 lines 56-57, a plurality of molds are disclosed, a second item 20 could be considered a serving dish);
(Claim 15) wherein the at least one miniature replica ingredient item is separately packaged within a miniature replica ingredient item container (item 30, fig. 9);
(Claim 17) wherein the miniature replica ingredient item container is openable configured to allow removal of the at least one miniature replica ingredient item disposed within (item 30 is inherently openable to be able to add coloring or additives to the molds);
(Claim 18) wherein the at least one miniature container comprises a mold that is designed to expel the cured composite miniature replica food item to produce the cured composite miniature replica food item (item 20, fig’s 1-3);
(Claim 19) wherein the cured composite miniature replica [] item is designed to be separated from the at least one miniature container and does not adhere to the at least one miniature container (fig’s 1-3, column 1 line 48 – column 4 line 5).
Eisenhut fails to teach the resin / composite is a replica food item, specifically; and, the resin being configured to attach to the container..
However, Eisenhut teaches that the resin can be molded into a wide variety of shapes / items / elements as desired by a user (column 3 line 48 – column 4 line 6).
Kim teaches (Claim 11) a miniature replica item is a food item (paragraph 0042, and fig’s 1 and 4; miniature play items include foods).
Pompey teaches attaching / curing items to [a] at least one miniature container (item 200, fig. 2, column 1 lines 36-51).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the play kit of Eisenhut with the feature of miniature fruit items as taught by the play kit of Kim for the purpose of providing a specific theme to the kit, allowing users to perform pretend cooking operations as taught by Kim (paragraph 0010), making the kit more interesting and attractive to the users.
Further, the examiner notes that it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Merely claiming the specific ornamental features of the items or containers provides no mechanical function and are simply aesthetic design elements that are not patentable distinctions.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the kit of Eisenhut with the feature of a container that can be cured / attached to as taught by the kit of Pompey for the purpose of providing additional decorative elements into the kit, allowing for a wider range of interesting items to be created, making the kit more versatile, and more interesting and attractive to the users.
In Reference to Claims 20-21
Eisenhut teaches (Claim 20) A miniature replica kit of a food serving comprising a plurality of non-edible miniature replica items including at least one non-curable element (item 20 and additives, fig’s 1-3 and 9, column 5 lines 16-17, column 5 lines 21-23) and at least one curable element (item 24, fig’s 1-3 and 9), wherein the plurality of miniature non-edible replica items comprises: at least one miniature container being concave and being clear or translucent and configured to let ultraviolet light pass therethrough (item 20, fig’s 1-3 and 9, and column 5 lines 1-5); at least one curable viscous resin contained within a resin container (items 22 and 24, fig’s 1-3 and 9), wherein the curable viscous resin is an ultraviolet light curable viscous resin (column 4 lines 6-9) []; wherein the at least one curable viscous resin is configured to be dispensed from the resin container to within the at least one miniature container (fig’s 1-3); wherein the at least one curable viscous resin is a first miniature replica [] item (fig’s 1-3); at least one miniature replica ingredient item (fig 9, column 4 lines 16-17, and column 5 line 24, non-food coloring additives disclosed, dies pigments, fillers, etc.); wherein the at least one miniature replica ingredient item is a second miniature [] item (fig 9, column 4 lines 16-17, and column 5 line 24, non-food coloring additives disclosed, dies pigments, fillers, etc.); wherein the at least one non-curable item comprises the at least one miniature [] item (fig 9, column 4 lines 16-17, and column 5 line 24, non-food coloring additives disclosed, dies pigments, fillers, etc.); wherein the at least one curable element comprises the at least one curable viscous resin (item 24, fig’s 1-3 and 9); wherein the at least one curable viscous resin and the at least one miniature replica ingredient item are configured to be disposed in the at least one miniature container and thereafter solidify when exposed to ultraviolet light attaching [] the at least one curable viscous resin and the at least one miniature replica ingredient item forming a cured composite miniature replica [] item (column 3 lines 57-59, column 4 lines 16-17, and 5 line 21-28); at least one miniature serving dish configured to receive the cured composite miniature replica food item (column 3 lines 56-57, a plurality of molds are disclosed, a second item 20 could be considered a serving dish); wherein the at least one miniature replica ingredient item is separately packaged within a miniature replica ingredient item container (item 30, fig. 9);
(Claim 21) wherein the at least one miniature container comprises a mold that is designed to expel the cured composite miniature replica food item to produce the cured composite miniature replica food item, wherein the cured composite miniature replica food item is designed to be separated from the at least one miniature container and does not adhere to the at least one miniature container (fig’s 1-3, column 1 line 48 – column 4 line 5).
Eisenhut fails to teach the resin / composite is a replica food item, specifically, and the resin container being opaque; and, the resin being configured to attach to the container.
However, Eisenhut teaches that the resin can be molded into a wide variety of shapes / items / elements as desired by a user (column 3 line 48 – column 4 line 6).
Kim teaches (Claim 20) a miniature replica item is a food item (paragraph 0042, and fig’s 1 and 4; miniature play items include foods).
Pompey teaches attaching / curing items to [a] at least one miniature container (item 200, fig. 2column 1 lines 36-51).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the play kit of Eisenhut with the feature of miniature fruit items as taught by the play kit of Kim for the purpose of providing a specific theme to the kit, allowing users to perform pretend cooking operations as taught by Kim (paragraph 0010), making the kit more interesting and attractive to the users.
Further, the examiner notes that it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Merely claiming the specific ornamental features of the items or containers provides no mechanical function and are simply aesthetic design elements that are not patentable distinctions.
It is noted that although the resin container is not specifically discussed as either opaque or transparent / translucent, since the resin container contains a light curable substance, it would seem that the container would necessarily need to be non-light transmissive, otherwise the system of Eisenhut would not operate since any light that reached the container would cure the resin and destroy the kit.
However, since this is not explicit in Eisenhut, the examiner notes that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the resin container opaque for the purpose of protecting the curable substance, making the kit more reliable, and more attractive to the users.
Additionally, the examiner notes that item 30 is shown in fig. 9 as the additive ingredient, and described in column 5 line 24 as “food coloring,” however, alternate sections of Eisenhut, as discussed above, disclose other colorants, mixtures, dies, pigments, fillers etc., which would presumably be provided in container 30, or in an additional container. However, in the view that item 30 is only the food coloring, it would also have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided additional containers for the additional ingredients listed in Eisenhut simply as a matter of engineering design choice, since it has been held that duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Since Eisenhut teaches a variety of different colorants and additives, and at least one container for colorant, it would be obvious to add additional containers for additional additives simply as a matter of engineering design choice. No new or unexpected result would be produced by simply providing more containers with additional colors or ingredients, therefore, this minor distinction is not a patentable advance.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the kit of Eisenhut with the feature of a container that can be cured / attached to as taught by the kit of Pompey for the purpose of providing additional decorative elements into the kit, allowing for a wider range of interesting items to be created, making the kit more versatile, and more interesting and attractive to the users.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Eisenhut et al. in view of Kim, and further in view of Tremblay et al. (US PGPub. 2007/0102308 A1).
In Reference to Claim 6
The modified kit of Eisenhut teaches all of claims 1 and 5 as discussed above.
Eisenhut fails to teach the feature of claim 6.
Tremblay teaches (Claim 6) wherein [a] miniature replica ingredient item container is at least partially clear configured to view the at least one miniature replica ingredient item disposed within (item 335, fig. 7).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy kit of Eisenhut with the feature of a clear container for ingredient items as taught by the toy kit of Tremblay for the purpose of housing, shipping, viewing, or storing the components of the kit, making the kit easier to use, and more attractive to the users.
The examiner further notes that the ingredient container of Eisenhut is for storing a variety of coloring additives for the device, therefore, it would also have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the container clear for the purpose of allowing a user to easily see and select a particular color, as desired by the user, making the kit easier to use and more attractive to the users.
In Reference to Claim 16
The modified kit of Eisenhut teaches all of claims 11 and 15 as discussed above.
Eisenhut fails to teach the feature of claim 16.
Tremblay teaches (Claim 16) wherein [a] miniature replica ingredient item container is at least partially clear configured to view the at least one miniature replica ingredient item disposed within (item 335, fig. 7).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy kit of Eisenhut with the feature of a clear container for ingredient items as taught by the toy kit of Tremblay for the purpose of housing, shipping, viewing, or storing the components of the kit, making the kit easier to use, and more attractive to the users.
The examiner further notes that the ingredient container of Eisenhut is for storing a variety of coloring additives for the device, therefore, it would also have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the container clear for the purpose of allowing a user to easily see and select a particular color, as desired by the user, making the kit easier to use and more attractive to the users.
Response to Arguments
Applicant's remaining arguments filed 05/19/2026 have been fully considered but they are not persuasive.
Applicant’s argument that food coloring is not a “non-curable element” is not persuasive. Food coloring is not curable, and is an element used in the cured final product. This meets all of applicant’s claimed limitations. The examiner notes here that USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim should not be read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily). In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969). See also In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). It is unclear what the applicant believes is not taught here, however, the broadest reasonable interpretation of a “non-curable element” includes food coloring.
Applicant argues regarding the newly added limitation of the resin attaching to the container. The examiner notes that this is largely confusing, as applicant’s dependent claims expressly state that the container is intended to be a mold that releases the cured elements. Further, the element attached to as a container in applicant’s specification appears to be a “base object” and not the container. As this recitation is unclear, the arguments are also unclear.
Applicant argues that the examiner has improperly mapped the container 20 as both a non-curable element and a miniature container. However, the preamble of the claim, as written, recites that there are miniature replica items, wherein there is a subset of curable and non-curable elements. The body of the claim then recites that the miniature replica items include a miniature container. The miniature container, item 20, is a non-curable element and is one of the miniature replica items. Applicant has not claimed these separately, but as subsets of overarching categories in the preamble. If applicant intends to claim these elements as separate elements, they should be listed in the body of the claim as separate elements.
In response to applicant's arguments against the references individually, specifically regarding what Kim does not teach, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant argues features that Kim does not teach that were already taught in Eisenhut. This is not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, motivation directly from the references as well as knowledge generally available to one of ordinary skill in the art were used.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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