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 .
Status of Claims
In an amendment filed 7/20/2026, applicant amended claims 4-8. This amendment is acknowledged. Claims 1-8 are pending and are currently being examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/20/2026 was filed after the mailing date of the non-final rejection on 4/20/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bandai JP 7397579 as in view of Kim US Pub. No. 2010/0003890.
In Reference to Claim 1
Bandai teaches:
A fluid responsive toy kit (fluid responsive toy kit, Fig. 1-16), comprising:
a container that includes an at least partially transparent portion through which an interior of the container is visible from an exterior of the container (container 11 being transparent in the central section to allow view of the interior parts therein, such as 12/13 which are visible therein ex. Fig. 1, 16, and described in the first three paragraphs of “Structure of ornamental toys” section);
a dissolvable member that is positioned within the interior of the container, a storage region being defined between the dissolvable member and at least one surface of the interior of the container (information part 12 is soluble in liquid DW and solubility promoting portion 17 that defines an end of the storage area dissolves by producing gas (formed of carbonate, last three paragraphs of “Structure of ornamental toys” section) and positioned between the visible chamber and the toy storage chamber at the bottom of the container within the shielding member 14, Fig. 1c, 4, 8-11); and
at least one expandable toy that is structured for expanding from a first state to a second, expanded state when contacted by a fluid (toy 13 is held at the bottom of the container in first disassembled and contracted state, ex. Fig. 1c, 8-10, and expands to a second assembled or uncontracted larger state after engaging with the fluid and being released from the shielding section 14 through hole 14a (Fig. 11), Fig. 1a, 11-12, 14-16);
wherein the at least toy is held in the first state within the storage region (the toy 13 is initially held at the bottom of the container in a storage region 14 under solubility promoting portion 17 in the first disassembled and contracted state, ex. Fig. 1c, 8-9);
wherein the storage region is defined within the container such that the at least one toy is concealed from view from the exterior of the container when in the storage region (the toy 13 is initially held at the bottom of the container in a storage region 14 under solubility promoting portion 17 in the first disassembled and contracted state and hidden from view from the exterior of the container, ex. Fig. 1c, 8-9); and
wherein the dissolvable member is structured such that when the container is at least partially filled with fluid and fluid contacts the dissolvable member, the dissolvable member dissolves and the fluid is absorbed by the fluid absorbing toy for driving an expansion of the toy from the first state to the second, expanded state, the toy being visible through the at least partially transparent portion of the container when in the second, expanded state (dissolvable members 12/17 dissolve when fluid DW is introduced into the container, which allow the toy 13 to move from the first hidden contracted state to the second uncontracted/assembled state visible through the container, wherein the toy may move from the hidden stored position to the visible container portion by passing through large central hole 14a in the shielding part 14 (Fig. 11), Fig. 1a-c, 8-16).
Bandai fails to teach:
The toy specifically expanded to the second state by absorbing fluid, the fluid is absorbed by the fluid absorbing toy for driving an expansion of the fluid absorbing toy from the first state to the second, expanded state.
Further, Kim teaches:
A fluid responsive toy (fluid responsive toy, Fig. 1-5), comprising:
at least one expandable, fluid absorbing toy that is structured for expanding from a first state to a second, expanded state when absorbing fluid (expandable fluid absorbing toy 1, Fig. 1, which expands after absorbing a volume of liquid from a first state (Fig. 3C) to a second expanded state (Fig. 3a));
the fluid is absorbed by the fluid absorbing toy for driving an expansion of the fluid absorbing toy from the first state to the second, expanded state, the fluid absorbing toy being visible when in the second, expanded state (expandable fluid absorbing toy 1, Fig. 1, which expands after absorbing a volume of liquid from a first state (Fig. 3C) to a second expanded state (Fig. 3a)).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Bandai to have formed the toy of fluid absorbing material that allowed the toy to expand by absorbing fluid, as expandable toys formed of fluid absorbing material, such as super absorbent polymers, are known and commonly used in expanding and/or revealable toys in the art and may allow for quick change in appearance and shape of the toy and allow for plush coverings to be used in wet bacteria free environments as taught by Kim ([0003]-[0021], [0035]-[0037], [0056]-[0061]). Further, 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 USQP 416). In this case, using a known absorbent material, such as super absorbent polymer, for the toy would have been obvious to one having ordinary skill in the art as this material is commonly known in fluid interactive toy figures in the art and allow the toy to change size when interacting with fluids, which is a known and common benefit of making the toy more fun to play with by imitating growth as is known and common in the art as taught by Kim and other cited references.
In Reference to Claim 2
Bandai as modified by Kim teaches:
The fluid responsive toy kit of claim 1, wherein the container includes a base and lid that is removably attachable to the base; and wherein the at least one surface of the interior of the container includes at least one lower surface of the lid (Bandai: both portions 15 and 14 may be considered “lids” and are removably attachable via inner surfaces to respective ends/bases of the container 11, Fig. 1-16).
Further, it would have been obvious to have formed the bottom of the container and pedestal to have been formed as a removable lid as another way to introduce and remove the toy and parts of the container and as it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art (Nerwin v. Erlichman, 168 USPQ 177, 179) and it has been held that mere reversal of the essential working parts of a device involves only routine skill in the art (In re Einstein, 8 USPQ 167) and it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70). In this case allowing the pedestal to have been removably coupled to the container and formed as a lid would have been obvious to one having ordinary skill in the art to allow access into the bottom of the container/storage area by the user.
In Reference to Claim 3
Bandai as modified by Kim teaches:
The fluid responsive toy kit of claim 2, wherein the dissolvable member is connected to the lid such that the storage region is defined between the dissolvable member and the at least one lower surface on the lid (Bandai: the toy 13 is held in the storage region 14 at the bottom of the container at the inner surface of the lid/pedestal 16 and below the dissolvable member 17, Fig. 8-10, as modified and discussed above).
In Reference to Claim 4
Bandai as modified by Kim teaches:
The fluid responsive toy kit of claim 3, wherein the base defines the at least partially transparent portion of the container (Bandai: the base/end of the container 11 is transparent, ex. Fig. 1, 16, and described in the first three paragraphs of “Structure of ornamental toys” section).
In Reference to Claim 5
Bandai as modified by Kim teaches:
The fluid responsive toy kit of claim 1, wherein the at least one fluid absorbing toy comprises:
at least one fluid permeable layer that forms a body of the fluid absorbing toy, the body of the fluid absorbing toy including at least one cavity defined therewithin (Kim: stuffed toy 1 has an outer fluid permeable fabric layer 10 and an inner permeable fabric layer 20 and an inner cavity space S. Fig. 4, [0034]-[0041]); and
a fluid absorbing material that is contained within the at least one cavity of the body of the fluid absorbing toy for absorbing a volume of fluid (Kim: super absorbent polymer material 30 (formed of pellets/beads 31) is contained within the inner cavity space S, Fig. 2, 4-5, [0036]-[0061])),
wherein the fluid absorbing material has sufficient fluid absorbing capacity such that when the volume of fluid is absorbed by the fluid absorbing material, the fluid absorbing material expands in size within the at least one cavity, which in turn drives an expansion of the fluid absorbing toy from the first state to the second, expanded state (Kim: super absorbent polymer material 30 (formed of pellets/beads 31) is contained within the inner cavity space S and expands when absorbing fluid from a first state (Fig. 3c) to the second expanded state (Fig. 3a), Fig. 2, 4-5, [0036]-[0061])).
In Reference to Claim 6
Bandai as modified by Kim teaches:
The fluid responsive toy kit of claim 5, wherein the fluid absorbing material comprises at least one super-absorbent polymer (Kim: fluid absorbing material 30 is super absorbent polymer, [0036], [0041]-[0043], [0045]-[0053]).
In Reference to Claim 7
Bandai as modified by Kim teaches:
The fluid responsive toy kit of claim 6, wherein a composition of the at least one super-absorbent polymer is such that a volume of fluid which can be absorbed by a volume of the at least one super-absorbent polymer is greater than another volume of fluid which can be absorbed by the at least one fluid permeable layer for thereby allowing the at least one super-absorbent polymer to absorb excess fluid from the at least one fluid permeable layer (Kim: the super-absorbent polymer material is capable of absorbing more fluid than a volume of fluid absorbable through the fabric layer (therefore drying the layer), [0050], [0059], Fig. 2-4).
In Reference to Claim 8
Bandai as modified by Kim teaches:
The fluid responsive toy kit of claim 7, wherein the at least one super-absorbent polymer has a maximum volume that is associated with a maximum amount of fluid that can be absorbed by the at least one super-absorbent polymer; and wherein a volume of the at least one cavity of the body is less than the maximum volume of the at least one super-absorbent polymer such that the at least one super-absorbent polymer can substantially fill the at least one cavity even when the maximum amount of fluid has not been absorbed by the at least one super absorbent polymer (Kim: the super-absorbent polymer has a max volume that is more than the space S of volume that a liquid may be placed in, where the fabric holds the super-absorbent polymer within the filled cavity as the SAP expands to fill the entire space within the toy larger than the initial S space (Fig. 4), Fig. 2-4, [0050], [0059], [0036]-[0052]).
Response to Arguments
Applicant’s arguments, see pages 5-6, filed 7/20/2026, with respect to the rejection(s) of claim(s) 6-8 under 35 USC 112 and the objections of claims 4-8 have been fully considered and are persuasive. Therefore, these objections and rejections have been withdrawn in light of the amendments.
Applicant's arguments filed 7/20/2026 have been fully considered but they are not persuasive.
Regarding applicant’s arguments that the shielding part of Bandai (14) is insoluble and therefore would not allow the toy to expand into the visible part of the container during use. Bandai does teach that the shielding part itself 14 is not soluble and therefore does not dissolve during use, however the shielding part 14 has a large hole 14a therein that the dissolvable material 17 is placed in that forms the storage chamber, that when this dissolvable material contacts the liquid, dissolves to allow the toy to pass through the aperture and move into the visible part of the container. This is specifically shown in Fig. 11 of Bandai and therefore it is not found persuasive that the toy would remain within the storage compartment during use as it clearly may expand and move out into the visible part of the container by moving through the large hole 14a in the shielding part as shown in Fig. 4 and 11 of Bandai.
In response to applicant's argument that the references are not structurally compatible and the proposed modification would render the primary reference inoperable, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the use of fluid interactive toys that change states and/or appearances within containers is a very well-known and common toy feature in the art and fluid absorbing toys used with similar containers are also well-known and commonly used toys in the art and one having ordinary skill in the art would be capable of using the teachings of a prior art growable toy using fluid absorbing material in place of a standard toy as these types of material toys, such as that of Kim, as very well-known and used in the art and one having ordinary skill in the art would understand the size, shapes, and amount of material that could be used to have a toy expand within the container while not becoming too large or different in shape that it would not be usable with the container of Bandai. These types of super absorbent growing toys that absorb fluid and expand but are still usable within the size of a container are very well-known in the art and one having ordinary skill in the art would understand how these toys and materials work as many of the cited relevant prior art references show this very well-known growth concept (ex. Boone (6,409,569), Spector 5,897,418), Grossman (GB2448856), (JP S60149693, S60149692).
Further, it is further noted that even if the applicant’s argument about the combination of references was found persuasive, numerous other similar prior art references may be alternatively introduced or used in a similar manner, some of which could theoretically form clearer or more obvious combinations than presented above and therefore the claims as presented would not be considered allowable at this time.
For example, alternatively, Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Bandai JP 7397579 as in view of Grossman GB US Pat. No. 2,448,856.
In Reference to Claim 1
Bandai teaches:
A fluid responsive toy kit (fluid responsive toy kit, Fig. 1-16), comprising:
a container that includes an at least partially transparent portion through which an interior of the container is visible from an exterior of the container (container 11 being transparent in the central section to allow view of the interior parts therein, such as 12/13 which are visible therein ex. Fig. 1, 16, and described in the first three paragraphs of “Structure of ornamental toys” section);
a dissolvable member that is positioned within the interior of the container, a storage region being defined between the dissolvable member and at least one surface of the interior of the container (information part 12 is soluble in liquid DW and solubility promoting portion 17 that defines an end of the storage area dissolves by producing gas (formed of carbonate, last three paragraphs of “Structure of ornamental toys” section) and positioned between the visible chamber and the toy storage chamber at the bottom of the container within the shielding member 14, Fig. 1c, 4, 8-11); and
at least one expandable toy that is structured for expanding from a first state to a second, expanded state when contacted by a fluid (toy 13 is held at the bottom of the container in first disassembled and contracted state, ex. Fig. 1c, 8-10, and expands to a second assembled or uncontracted larger state after engaging with the fluid and being released from the shielding section 14 through hole 14a (Fig. 11), Fig. 1a, 11-12, 14-16);
wherein the at least toy is held in the first state within the storage region (the toy 13 is initially held at the bottom of the container in a storage region 14 under solubility promoting portion 17 in the first disassembled and contracted state, ex. Fig. 1c, 8-9);
wherein the storage region is defined within the container such that the at least one toy is concealed from view from the exterior of the container when in the storage region (the toy 13 is initially held at the bottom of the container in a storage region 14 under solubility promoting portion 17 in the first disassembled and contracted state and hidden from view from the exterior of the container, ex. Fig. 1c, 8-9); and
wherein the dissolvable member is structured such that when the container is at least partially filled with fluid and fluid contacts the dissolvable member, the dissolvable member dissolves and the fluid is absorbed by the fluid absorbing toy for driving an expansion of the toy from the first state to the second, expanded state, the toy being visible through the at least partially transparent portion of the container when in the second, expanded state (dissolvable members 12/17 dissolve when fluid DW is introduced into the container, which allow the toy 13 to move from the first hidden contracted state to the second uncontracted/assembled state visible through the container, wherein the toy may move from the hidden stored position to the visible container portion by passing through large central hole 14a in the shielding part 14 (Fig. 11), Fig. 1a-c, 8-16).
Bandai fails to teach:
The toy specifically expanded to the second state by absorbing fluid, the fluid is absorbed by the fluid absorbing toy for driving an expansion of the fluid absorbing toy from the first state to the second, expanded state.
Further, Grossman teaches:
A fluid responsive toy (fluid responsive kit, Fig. 1a-10b), comprising:
a container that includes an at least partially transparent portion through which an interior of the container is visible from an exterior of the container (container 10a with main body portion 15a and a lid 20a, wherein the container may be at least partially or substantially wholly transparent (ex. Fig. 1a, page 3, lines 6-12, page 12, lines 10-17));
a dissolvable member that is positioned within the interior of the container (a shell/cocoon member, such as 45j may be positioned within an interior of a container 10j that a toy body is container therein, Fig. 10a, page 21 line 9 – page 23 line 5); and
at least one expandable, fluid absorbing toy that is structured for expanding from a first state to a second, expanded state when absorbing fluid (fluid absorbing and expanding toy body 15a/b/c/etc. formed of super absorbent polymer that absorbs liquid to move between a first small state, ex. Fig. 1a, to a second expanded state, ex. Fig 1b, page 11 lines 15-25, page 13 line 5 – page 18 line 10);
wherein the at least one fluid absorbing toy is held in the first state within the container (ex. Fig. 1a, 2a, etc. and may include positioning means, ex. 41b);
wherein the dissolvable member is structured such that when the container is at least partially filled with fluid and fluid contacts the dissolvable member, the dissolvable member dissolves and the fluid is absorbed by the fluid absorbing toy for driving an expansion of the fluid absorbing toy from the first state to the second, expanded state, the fluid absorbing toy being visible through the at least partially transparent portion of the container when in the second, expanded state (the toy absorbs fluid through contact through the dissolvable member/shell 45j in the container in the same way as 10a/b/c/etc. and is visible through the transparent container surface as it expands to the second expanded state, Fig. 1a-10b, page 11 lines 15-25, page 13 line 5 – page 18 line 10, page 21 line 9 – page 23 line 5).
It would have been obvious to one having ordinary skill in the art to have modified the invention of Bandai to have formed the toy of fluid absorbing material that allowed the toy to expand by absorbing fluid, as expandable toys formed of fluid absorbing material, such as super absorbent polymers, are known and commonly used in expanding and/or revealable toys in the art and may allow for interesting and quick change in appearance (ex. growth or a frog/cocoon to a prince, etc.) and shape of the toy as taught by Grossman (page 1 lines 5-24, page 21 line 9 – page 23 line 5). Further, 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 USQP 416). In this case, using a known absorbent material, such as super absorbent polymer, for the toy would have been obvious to one having ordinary skill in the art as this material is commonly known in fluid interactive toy figures in the art and allow the toy to change size when interacting with fluids, which is a known and common benefit of making the toy more fun to play with by imitating growth as is known and common in the art as taught by Grossman and other similar cited prior art references.
Brief Discussion of Other Prior Art References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the references cited page for publications that are noted for containing similar subject matter as the applicant. For example, Medwed (11,311,814), Simpson (2008/0009220), Boone (6,409,569), Spector (5,897,418), Dorfman (5,133,683), Liaw (4,881,915), Palau (4,529,569), and Planin (2,952,462).
Conclusion
If the applicant or applicant’s representation has any questions or concerns regarding this office action or the application they are welcome to contact the examiner at the phone number listed below and schedule and interview to discuss the outstanding issues and possible amendments to expedite prosecution of this application.
THIS ACTION IS MADE FINAL. 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 ALEXANDER R NICONOVICH whose telephone number is (571)270-7419. The examiner can normally be reached Mon - Fri 8-6 MST.
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711
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