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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 15 September 2025 has been entered.
Priority
Acknowledgement is made of Applicant’s claim for priority to PCT/IB2019/058049 filed 23 September 2019. Acknowledgement is also made of Applicant’s claim for foreign priority to CONC2018/0010563 filed 02 October 2018. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
Claims 1-24, 26-30, and 34-40 have been canceled.
New claims 41-56 have been added.
Claims 25, 31-33, and 41-56 are still pending. An action on the merits follows.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
“device length midpoint” and “device weight midpoint” in claims 31 and 45 lack antecedent basis in the specification.
Claim Objections
Claims 42, 46, and 51 are objected to because of the following informalities:
Claim 42, line 3, “a lightest weight piece” should read --the lightest weight piece--
Claim 46, line 2, “has” should read --having--
Claim 46, line 3, “has” should read --having--
Claim 51, line 2, “the length” should read --a length--
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a coupling mechanism” in claims 25 and 47 is interpreted as “a mechanical coupling mechanism, a magnetic coupling mechanism and/or combinations of these. The magnetic coupling mechanism refers to any type of coupling that uses magnets for coupling the pieces. The mechanical coupling mechanism refers to those that use any type of coupling by pression, threaded parts, QUICKLOC coupling, hermetic coupling, adhesion, vacuum adhesion and/or velcro, amongst others” as described in the paragraph at the end of page 11 to the top of page 12 of the specification. The limitation meets the three-prong test as follows:
the generic place holder is “mechanism;”
the functional language is “coupling;” and
the generic place holder of “mechanism” is not modified by sufficient structure, material, or acts for performing the claimed function.
“a magnetic coupling mechanism” in claims 31-32, 44, and 56 is interpreted as “any type of coupling that uses magnets for coupling the pieces” as described at the top of page 12 of the specification. The limitation meets the three-prong test as follows:
the generic place holder is “mechanism;”
the functional language is “coupling;” and
the generic place holder of “mechanism” is not modified by sufficient structure, material, or acts for performing the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 25, 41-52, and 54-56 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.
Claim 25 recites the limitation “each of the couplable pieces being a single, unitary, indivisible body” in lines 1-2. This limitation was not properly described in the original disclosure and is considered new matter. In particular, the couplable pieces were not originally described to be “indivisible.” For example, the drawings show wherein each of the couplable pieces can be “divided” into various sections or wherein the magnets of the magnetic coupling mechanisms are separate structures.
Claim 47 recites the limitation “wherein the first terminal end does not have a coupling mechanism; and the second terminal end does not have a coupling mechanism” in lines 1-2. This limitation was not properly described in the original disclosure and is considered new matter. The original disclosure does not describe the terminal ends as not having a coupling mechanism. The terminal ends of the system shown in the Figures could have auxiliary pieces coupled to their ends which would require some sort of coupling mechanism, such as magnets or press-fit connections.
Claim 48 recites the limitation “wherein the first terminal end and the second terminal end are configured to allow the system to stand in a stable, vertical position on a flat surface” in lines 1-2. This limitation was not properly described in the original disclosure and is considered new matter. The original disclosure does not describe that the terminal ends of the system allow the system to stand in a stable, vertical position on a flat surface.
Claim 52 recites the limitation “wherein the first end piece, the at least one intermediate piece, and the second end piece each comprises a single, unitary, indivisible body” in lines 1-2. This limitation was not properly described in the original disclosure and is considered new matter. In particular, the couplable pieces were not originally described to be “indivisible.”
Claim 54 recites the limitation “the intermediate piece being a single, unitary, indivisible body” in lines 1-2. This limitation was not properly described in the original disclosure and is considered new matter. In particular, the couplable pieces were not originally described to be “indivisible.”
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 44 and 46 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 44 recites the limitations “a threaded coupling mechanism” in line 1 and “a magnetic coupling mechanism” in lines 2-3. It is unclear if these coupling mechanisms are referring to the same “coupling mechanism” recited previously in claim 25, upon which claim 44 depends, or to threaded and magnetic coupling mechanisms that are separate from the coupling mechanisms at the ends of each of the couplable pieces.
Claim 46 recites the limitations “a female end” in line 2 and “a male end” in line 3. It is unclear if these ends are referring to the same “female configuration” and “male configuration” recited in claim 25, upon which claim 46 depends, or to female and male ends that are separate from the female and male configurations.
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 25, 41-42, and 45-51 are rejected under 35 U.S.C. 103 as being unpatentable over Holy (US 4,682,774) in view of Larson (US 6,196,921).
Regarding claim 25, Holy teaches a system of pieces comprising: couplable pieces (components 12, 14, 16, 24), each of the couplable pieces being a single, unitary, indivisible body having two ends (Figs. 1A-1C show each of the components 12, 14, 16, and 24 being single units that are indivisible in as much as Applicant has shown or described the couplable pieces to be indivisible.), wherein each of the couplable pieces has at one or both ends either a male configuration (coupling elements 16’, 18, 24’) or female configuration (coupling elements 14’, 20) of a coupling mechanism;
wherein by joining the male configuration with the female configuration of at least two of the couplable pieces, the couplable pieces couple at their respective ends (Figs. 1A-1C);
wherein each of the couplable pieces has a fixed weight (Figs. 1A-1C: The components 12, 14, 16, 24 each have a fixed weight.); and
wherein each of the couplable pieces are cylindrical and have an equal diameter (Fig. 1A shows each of the components 12, 14, 16, 24 having an equal diameter such that the staff is a cylinder with a single diameter.).
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Holy teaches wherein each of the couplable pieces are a single, unitary, indivisible body in as much as Applicant has shown or described the couplable pieces as indivisible bodies. That is, the components 12, 14, 16, and 24 of Holy are indivisible in as much as the couplable pieces A, B, C, D, E, F, and G of Applicant’s invention are indivisible. Even if Applicant is not convinced that this is the case, it has been held that the use of a one piece construction would be merely a matter of obvious engineering choice (see MPEP 2144.04 V). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the components of Holy to be integral, indivisible pieces, because the device of Holy would still be reconfigurable into various martial arts weapons, as desired by Holy. Such modifications involve merely making components integral which fails to distinguish the invention over the prior art (see MPEP 2144.04).
Holy does not expressly teach wherein each of the couplable pieces are completely solid throughout an interior.
However, in a similar field of endeavor, Larson teaches an interchangeable staff comprised of one or more couplable pieces (elements 2) configured to be joined together to form a device (Fig. 2), wherein each of the one or more couplable pieces is completely solid throughout an interior (Col. 5, lines 38-42: “The long tube element 1, short tube element 2 and T-handle 4 can be either solid or hollow.”.
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Holy by specifying each of the couplable pieces be solid, as taught by Larson, with the predicted result of providing a durable martial arts staff that can withstand repeated contact during martial arts training (see MPEP 2141(III)).
Regarding claim 41, Holy in view of Larson teaches the system of pieces of claim 25, wherein at least one piece of the couplable pieces has a weight that is different from another piece of the couplable pieces (Holy: Fig. 1B: The components 24 are smaller than the other components and are therefore a different weight.).
Regarding claim 42, Holy in view of Larson teaches the system of pieces of claim 41, wherein the couplable pieces include a lightest weight piece (Holy: Fig. 1B: Component 24 is the smallest and therefore lightest weight piece.).
Holy does not expressly teach wherein the weight of each other piece of the couplable pieces is a 0.5 multiple of the weight of a lightest weight piece. However, it would have been obvious to one having ordinary skill in the art to cause the components of Holy to be 0.5 multiples of the lightest weight piece, because the device of Holy would not operate differently and would function appropriately as a martial arts weapon, as desired by Holy. Such modifications involve merely a change in proportion or relative dimension which fails to distinguish the invention over the prior art (see MPEP 2144.04IV).
Regarding claim 45, Holy in view of Larson teaches the system of pieces of claim 25, wherein two or more of the couplable pieces form one or more formed exercise devices, and wherein for each of the one or more formed exercise devices, a device length midpoint corresponds to a device weight midpoint (Holy: Fig. 1A: The length midpoint of the device 10 corresponds to its weight midpoint.).
Regarding claim 46, Holy in view of Larson teaches the system of pieces of claim 25, wherein the couplable pieces comprise at least one intermediate piece (components 12, 14, 16), a first end piece (leftmost component 24) has a first terminal end, and a second end piece (rightmost component 24) has a second terminal end and a male end (Holy: Fig. 1B).
Holy does not teach wherein the first end piece (leftmost component 24) has a female end. However, it would have been obvious to one having ordinary skill in the art to reverse the coupling mechanism between the leftmost component 24 and the component 14, such that the leftmost component 24 has a terminal end and a female end and the component 14 has a male end and a female end, because the device of Holy would not operate differently and would function appropriately as a reconfigurable martial arts weapons, as desired. Such a modification involves a mere reversal of parts which fails to distinguish the invention over the prior art (see MPEP 2144.04VI).
Regarding claim 47, Holy in view of Larson teaches the system of pieces of claim 46, wherein the first terminal end does not have a coupling mechanism; and the second terminal end does not have a coupling mechanism (Holy: Figs. 1A-1C: The terminal ends of the components 24 do not have coupling mechanisms in as much as Applicant has shown the couplable pieces not having coupling mechanisms.).
Regarding claim 48, Holy in view of Larson teaches the system of pieces of claim 46, wherein the first terminal end and the second terminal end are configured to allow the system to stand in a stable, vertical position on a flat surface (Holy: Figs. 1A-1C: The terminal ends of the components 24 are flat which would allow them to stand vertically on a flat surface.).
Regarding claim 49, Holy in view of Larson teaches the system of pieces of claim 46, wherein the at least one intermediate piece comprises two or more intermediate pieces (components 12, 14, 16), and wherein the male end of one of the two or more intermediate pieces is removably couplable to the female end of any other of the two or more intermediate pieces (Holy: Fig. 1B).
Regarding claim 50, Holy in view of Larson teaches the system of pieces of claim 46, wherein the first end piece and the second end piece have an identical weight (Holy: Fig. 1B: The components 24 are the same and therefore have the same weight.).
Regarding claim 51, Holy in view of Larson teaches the system of pieces of claim 46, wherein the first end piece and the second end piece each have a length that is less than the length of the at least one intermediate piece (Holy: Fig. 1B: The components 24 are smaller than the components 12, 14, 16.).
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Holy (US 4,682,774) in view of Larson (US 6,196,921) as applied to claim 25 above, and further in view of Levy (US 2,859,992).
Regarding claim 43, Holy in view of Larson teaches the system of pieces of claim 25.
Holy in view of Larson does not teach wherein: the female configuration of the couplable pieces comprises one or more concentric tubular bodies; and the male configuration of the couplable pieces comprises one or more concentric grooves configured to mate with the one or more concentric tubular bodies of the female configuration.
However, in a similar field of endeavor, Levy teaches a threaded coupling mechanism comprising a female configuration (bore 14) and a male configuration (core 16), wherein: the female configuration of the couplable pieces comprises one or more concentric tubular bodies (part 12) (Figs. 2, 4 show the part 12 being a concentric tubular body around the bore 14.); and the male configuration of the couplable pieces comprises one or more concentric grooves (channel 15) configured to mate with the one or more concentric tubular bodies of the female configuration (Figs. 3, 5 show the channel 15 being a concentric groove around the core 16. Col. 2, lines 8-15: “Formed within the opposing end of the section 11 is an annular channel 15 which may be produced by means of a hollow drill. The major diameter of the channel 15 is such as to fit closely over the reduced portion 12 of the section 10. The minor diameter of the channel 14 provides a core 16 externally screw threaded as shown in Fig. 3, which is adapted to have secure engagement with the threads in the bore 14.”).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the threaded coupling mechanisms of Holy by including the concentric tubular bodies and grooves of Levy. One of ordinary skill in the art would have been motivated to make this modification in order to “lend strength to a screw joint,” as suggested by Levy (Col. 1, lines 32-33).
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Holy (US 4,682,774) in view of Larson (US 6,196,921) as applied to claim 25 above, and further in view of Molinelli et al. (US 9,579,557, hereinafter Molinelli).
Regarding claim 44, Holy in view of Larson teaches the system of pieces of claim 25.
Holy does not teach wherein a threaded coupling mechanism of at least one of the couplable pieces is configured to removably couple with a magnetic coupling mechanism of at least one of a different one of the couplable pieces.
However, in a similar field of endeavor, Molinelli teaches an exercise device comprised of couplable pieces (end cap 16 and tube 15), wherein a threaded coupling mechanism of at least one of the couplable pieces is configured to removably couple with a magnetic coupling mechanism of at least one of a different one of the couplable pieces (Fig. 1. Col. 6, lines 22-27: “magnetized end cap 16 is constructed so that it can threadably engage tube 15 at threaded connection 17 so that magnetized end cap 16 can be removed from tube 15/attached to tube 15 by unscrewing/screwing magnetized end cap 16 out of/into tube 15 at threaded connection 17.” The threaded coupling mechanism of the tube 15 is configured to removably couple with the magnetic threaded coupling mechanism of the end cap 16.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Holy by magnetizing the threaded coupling mechanisms of the couplable pieces as taught by the magnetized and threaded end cap of Molinelli, with the predicted result of providing a more secure connection between the couplable pieces (see MPEP 2141(III)).
Claims 31-32 and 52-53 are rejected under 35 U.S.C. 103 as being unpatentable over Holy (US 4,682,774) in view of Larson (US 6,196,921).
Regarding claim 31, Holy teaches a kit for a variable weight system configured for use during physical activity, the kit comprising:
a first end piece (leftmost component 24) having a terminal end;
at least one intermediate piece (components 12, 16) having a male end and a female end; and
a second end piece (rightmost component 24) having a terminal end and a male end (Figs. 1A-1C);
wherein the male end of the second end piece is removably connectable to the female end of the at least one intermediate piece (Figs. 1A-1C: Each of the components 12, 14, 16, 24 are configurable such that they can be coupled to each other in various configurations. The threaded couplers at either end of the components can be coupled to each other.);
wherein each of the first end piece, the at least one intermediate piece, and the second end piece is removably connected by either a threaded coupling mechanism, a magnetic coupling mechanism, or a combination thereof (Figs. 1A-1C show the coupling mechanisms being threaded couplers between the various components. Col. 3, lines 36-45.);
wherein each of the first end piece, the at least one intermediate piece, and the second end piece have an equal cylindrical diameter and have a predefined, fixed length and a predefined, fixed weight (Figs. 1A-1C show each of the components having equal cylindrical diameters, fixed lengths, and fixed weights.);
wherein the predefined, fixed weight of the first end piece and the predefined, fixed weight of the second end piece are each less than the predefined, fixed weight of the at least one intermediate piece (Figs. 1A-1C: The end components 24 are each smaller than the other components 12, 14, 16 and therefore have a lighter weight.); and
wherein one or more of the first end piece, the at least one intermediate piece, and the second end piece form one or more formed exercise devices having a device length midpoint and a device weight midpoint (Fig. 1A shows the components coupled together to form a staff type exercise device.), and
wherein for each of the one or more formed exercise devices, the device length midpoint corresponds to the device weight midpoint (Fig. 1A shows the device formed by the various components. The weight of the staff/device is the sum of the weights of each of the components. The length of the staff/device is the sum of the lengths of each of the components. The middle of the length of the staff/device would also be the weight midpoint of the staff/device.).
Holy does not teach wherein the first end piece (leftmost component 24) has a female end. However, it would have been obvious to one having ordinary skill in the art to reverse the coupling mechanism between the leftmost component 24 and the component 14, such that the leftmost component 24 has a terminal end and a female end and the component 14 has a male end and a female end, because the device of Holy would not operate differently and would function appropriately as a reconfigurable martial arts weapons, as desired. Such a modification involves a mere reversal of parts which fails to distinguish the invention over the prior art (see MPEP 2144.04VI). By reversing the coupling mechanism between the leftmost component 24 and the component 14, Holy teaches wherein in a first configuration the female end of the first end piece is removably connectable to the male end of the at least one intermediate piece and in a second configuration the female end of the first end piece is removably connectable to the male end of the second end piece.
Holy does not expressly teach wherein each of the first end piece, the at least one intermediate piece, and the second end piece have a fully solid construction.
However, in a similar field of endeavor, Larson teaches an interchangeable staff comprised of one or more couplable pieces (elements 2) configured to be joined together to form a device (Fig. 2), wherein each of the one or more couplable pieces is completely solid throughout an interior (Col. 5, lines 38-42: “The long tube element 1, short tube element 2 and T-handle 4 can be either solid or hollow.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Holy by specifying each of the couplable pieces be solid, as taught by Larson, with the predicted result of providing a durable martial arts staff that can withstand repeated contact during martial arts training (see MPEP 2141(III)).
Regarding claim 32, Holy in view of Larson- teaches the kit of claim 31, wherein:
the at least one intermediate piece comprises two or more intermediate pieces (components 12, 14, 16) (Holy: Fig. 1B); and
each of the female ends of the two or more intermediate pieces is removably connectable to the male end of any other of the two or more intermediate pieces and the male end of the second end piece by either the threaded coupling mechanism, the magnetic coupling mechanism, or the combination thereof; and
each of the male ends of the two or more intermediate pieces is removably connectable to the female end of any other of the two or more intermediate pieces and the female end of the first end piece by either the threaded coupling mechanism, the magnetic coupling mechanism, or the combination thereof (Holy: Figs. 1A-1C: Each of the components 12, 14, 16, 24 are configurable such that they can be coupled to each other in various configurations. The threaded couplers at either end of the components can be coupled to each other.).
Regarding claim 52, Holy in view of Larson teaches the kit of claim 31. Holy teaches wherein each of the first end piece, the at least one intermediate piece, and the second end piece each comprises a single, unitary, indivisible body having two ends in as much as Applicant has shown or described the couplable pieces as indivisible bodies. That is, the components 12, 14, 16, and 24 of Holy are indivisible in as much as the couplable pieces A, B, C, D, E, F, and G of Applicant’s invention are indivisible. Even if Applicant is not convinced that this is the case, it has been held that the use of a one piece construction would be merely a matter of obvious engineering choice (see MPEP 2144.04 V). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the components of Holy to be integral, indivisible pieces, because the device of Holy would still be reconfigurable into various martial arts weapons, as desired by Holy. Such modifications involve merely making components integral which fails to distinguish the invention over the prior art (see MPEP 2144.04).
Regarding claim 53, Holy in view of Larson teaches the kit of claim 31, wherein the first end piece and the second end piece each have a length that is less than the length of the at least one intermediate piece (Holy: Fig. 1B).
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Holy (US 4,682,774) in view of Larson (US 6,196,921) as applied to claim 31 above, and further in view of Levy (US 2,859,992).
Regarding claim 33, Holy in view of Larson teaches the kit of claim 31.
Holy in view of Larson does not teach wherein: the female end of the first end piece and the female end of the at least one intermediate piece further comprises one or more concentric tubular bodies; the male end of the second end piece and the male end of the at least one intermediate piece further comprises one or more concentric grooves; and the one or more concentric grooves and the one or more concentric tubular bodies are configured to mate when the female end and the male end of each of the first end piece, the at least one intermediate piece, and the second end piece are removably coupled.
However, in a similar field of endeavor, Levy teaches a threaded coupling mechanism comprising a female end (bore 14) and a male end (core 16), wherein the female end comprises one or more concentric tubular bodies (part 12) (Figs. 2, 4 show the part 12 being a concentric tubular body around the bore 14.), the male end comprises one or more concentric grooves (channel 15) (Figs. 3, 5 show the channel 15 being a concentric groove around the core 16.); and the one or more concentric grooves and the one or more concentric tubular bodies are configured to mate when the female end and the male end of the pieces are removably coupled (Col. 2, lines 8-15: “Formed within the opposing end of the section 11 is an annular channel 15 which may be produced by means of a hollow drill. The major diameter of the channel 15 is such as to fit closely over the reduced portion 12 of the section 10. The minor diameter of the channel 14 provides a core 16 externally screw threaded as shown in Fig. 3, which is adapted to have secure engagement with the threads in the bore 14.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the threaded coupling mechanisms of Holy in view of Larson by including the concentric tubular bodies and grooves of Levy. One of ordinary skill in the art would have been motivated to make this modification in order to “lend strength to a screw joint,” as suggested by Levy (Col. 1, lines 32-33).
The combination of Holy, Larson, and Levy teaches wherein the female end of each of the first end piece and the at least one intermediate piece comprise one or more concentric tubular bodies and the male end of each of the second end piece and the at least one intermediate piece comprise one or more concentric grooves. That is, by modifying the threaded coupling mechanisms of each of the first end piece, at least one intermediate piece, and second end piece of Holy in view of Larson with the concentric grooves and tubular bodies of Levy, each of the female ends would comprise one or more concentric tubular bodies and each of the male ends would comprise one or more concentric grooves.
Claims 54 and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Holy (US 4,682,774) in view of Larson (US 6,196,921).
Regarding claim 54, Holy teaches an intermediate piece for a modular weight system, the intermediate piece (component 12) being a single, unitary, indivisible body having a male end (coupling element 18) and a female end (coupling element 20) (Figs. 1A-1C show component 12 being a single unit that is indivisible in as much as Applicant has shown or described the couplable pieces to be indivisible.); wherein the male end and the female end are configured for removable coupling; and wherein the intermediate piece is a cylinder of uniform diameter (Figs. 1A-1C: The coupling elements 18 are threaded coupling mechanisms configured for removable coupling and the intermediate component 12 is a cylinder.).
Holy teaches wherein each of the couplable pieces are a single, unitary, indivisible body in as much as Applicant has shown or described the couplable pieces as indivisible bodies. That is, the components 12, 14, 16, and 24 of Holy are indivisible in as much as the couplable pieces A, B, C, D, E, F, and G of Applicant’s invention are indivisible. Even if Applicant is not convinced that this is the case, it has been held that the use of a one piece construction would be merely a matter of obvious engineering choice (see MPEP 2144.04 V). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the components of Holy to be integral, indivisible pieces, because the device of Holy would still be reconfigurable into various martial arts weapons, as desired by Holy. Such modifications involve merely making components integral which fails to distinguish the invention over the prior art (see MPEP 2144.04).
Holy does not expressly teach wherein each of the couplable pieces are completely solid throughout an interior.
However, in a similar field of endeavor, Larson teaches an interchangeable staff comprised of one or more couplable pieces (elements 2) configured to be joined together to form a device (Fig. 2), wherein each of the one or more couplable pieces is completely solid throughout an interior (Col. 5, lines 38-42: “The long tube element 1, short tube element 2 and T-handle 4 can be either solid or hollow.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Holy by specifying each of the couplable pieces be solid, as taught by Larson, with the predicted result of providing a durable martial arts staff that can withstand repeated contact during martial arts training (see MPEP 2141(III)).
Regarding claim 56, Holy in view of Larson teaches the intermediate piece of claim 54.
Holy teaches wherein the coupling elements are made preferably of metal (Col. 4, lines 22-23), but does not expressly teach wherein at least one of the male or female ends comprises a threaded coupling mechanism having a surface made of a material that is susceptible to magnetic attraction, thereby being configured to couple with both a threaded coupling mechanism and a magnetic coupling mechanism.
However, in a similar field of endeavor, Larson teaches an interchangeable staff comprised of one or more couplable pieces configured to be joined together to form a device (Fig. 2), wherein the couplable pieces (long tube element 1, short tube element 2) are made from a material that is susceptible to magnetic attraction (Col. 5, lines 38-42: “The long tube element 1, short tube element 2 and T-handle 4 can be either solid or hollow and can be manufactured from a variety of materials, suitable examples of which include … steel.” Steel is a magnetic material.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Holy by specifying the metal be steel as taught by Larson. One of ordinary skill in the art would have been motivated to make this modification in order to provide a “rigid material of relatively light weight,” as suggested by Larson (Col. 5, lines 38-42).
The combination of Holy and Larson would teach wherein at least one of the male or female ends comprises a threaded coupling mechanism having a surface made of a material that is susceptible to magnetic attraction, thereby being configured to couple with both a threaded coupling mechanism and a magnetic coupling mechanism. That is, by modifying the threaded coupling mechanisms of Holy to be made of steel, the threaded coupling mechanisms would have a surface that is susceptible to magnetic attraction which would allow the threaded coupling mechanisms to be coupled with magnetic coupling mechanisms.
Claim 55 is rejected under 35 U.S.C. 103 as being unpatentable over Holy (US 4,682,774) in view of Larson (US 6,196,921) as applied to claim 54 above, and further in view of Levy (US 2,859,992).
Regarding claim 55, Holy in view of Larson teaches the intermediate piece of claim 54.
Holy in view of Larson does not teach wherein the female end comprises one or more concentric tubular bodies, and wherein the male end comprises one or more concentric grooves configured to mate with the one or more concentric tubular bodies.
However, in a similar field of endeavor, Levy teaches a threaded coupling mechanism comprising a female configuration (bore 14) and a male configuration (core 16), wherein the female end comprises one or more concentric tubular bodies (part 12), and wherein the male end comprises one or more concentric grooves (channel 15) configured to mate with the one or more concentric tubular bodies (Figs. 2-5. Col. 2, lines 8-15: “Formed within the opposing end of the section 11 is an annular channel 15 which may be produced by means of a hollow drill. The major diameter of the channel 15 is such as to fit closely over the reduced portion 12 of the section 10. The minor diameter of the channel 14 provides a core 16 externally screw threaded as shown in Fig. 3, which is adapted to have secure engagement with the threads in the bore 14.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the threaded coupling mechanisms of Holy by including the concentric tubular bodies and grooves of Levy. One of ordinary skill in the art would have been motivated to make this modification in order to “lend strength to a screw joint,” as suggested by Levy (Col. 1, lines 32-33).
Response to Arguments
Applicant's arguments filed 15 September 2025 have been fully considered but they are not persuasive.
Applicant disagrees with the interview summary mailed 17 July 2025 and argues that the original disclosure provides support for the first and second terminal ends not having a coupling mechanism, as claimed in claim 47. The Office respectfully disagrees. The original disclosure does not describe the terminal ends as not having coupling mechanisms. Instead, in view of the 35 U.S.C. 112(f) interpretation of “a coupling mechanism” made above, the specification describes that a coupling mechanism can include any type of coupling that uses magnets, coupling by pression, or adhesion, among others. The terminal ends of the end pieces shown in the drawings could be magnetic, coupled by pression or pressure, or coupled to another structure by adhesion.
In response to the interview summary, Applicant further argues that the components 14 and 24 of Holy cannot be interpreted as an end piece. Applicant’s amendments have resulted in the rejections made above wherein the end components 24 of Holy are interpreted as end pieces, rendering this argument moot.
Regarding the 35 U.S.C. 112(f) claim interpretations, Applicant disagrees that any claim limitations are properly interpreted under 112(f), but does not provide specific arguments. The 112(f) interpretations made above are maintained.
Regarding claim 25, Applicant argues that Holy does not teach wherein each couplable piece is a single, unitary, indivisible body. The Office respectfully disagrees. Firstly, the limitation of the couplable pieces being “indivisible” is not supported in the original disclosure and is considered new matter. The original specification does not describe the couplable pieces as being indivisible and “indivisible” is not defined in the disclosure. Looking at the drawings, the couplable pieces are comprised of sections that can be “divided” into different parts and in at least some of the magnetic coupling mechanisms, there are magnets that are “divisible” from the pieces that they are attached to. Sufficient support is not found for this limitation in the original disclosure and it is unclear what is required for the couplable pieces to be “indivisible.” In view of this, the components of Holy are shown to be “indivisible” in as much as it is shown or described in Applicant’s disclosure. The components of Holy are pieces that are formed into single units that are “indivisible.” If Applicant is not convinced, it has been held that the use of a one piece construction would be merely a matter of obvious engineering. Such modifications involve merely making components integral which fails to distinguish the invention over the prior art (see MPEP 2144.04).
Regarding claim 31, Applicant argues that the combination of Holy and Larson do not teach or suggest a kit as claimed with a first end piece having a terminal end and a female end, at least one intermediate piece having a male end and a female end, and a second end piece having a terminal end and a male end, wherein the predefined, fixed weight of the first end piece and the predefined, fixed weight of the second end piece are each less than the predefined, fixed weight of the at least one intermediate piece. The Office respectfully disagrees. Applicant’s amendments have resulted in the rejections made above wherein the components 24 are interpreted as the first end piece and the second end piece. As discussed above with regards to the 35 U.S.C. 103 rejection of claim 31, a modification of the device of Holy can be made such that the male end of the leftmost component 24 and the corresponding female end of the component 14 can be reversed. Such a modification involves a mere reversal of parts which fails to distinguish the invention over the prior art (see MPEP 2144.04VI). With this modification, Holy in view of Larson teaches a kit as claimed with a first end piece having a terminal end and a female end, at least one intermediate piece having a male end and a female end, and a second end piece having a terminal end and a male end, wherein the predefined, fixed weight of the first end piece and the predefined, fixed weight of the second end piece are each less than the predefined, fixed weight of the at least one intermediate piece.
Regarding claim 33, Applicant argues that Levy is not relevant and is not analogous art. The Office respectfully disagrees. Levy is directed to a screw joint for “handle sections of rods or bars forming the handles of fishermen’s dip nets and other similar devices” (Col. 1, lines 15-20). The handle section shown in Fig. 1 shows a cylindrical bar structure comprised of one or more couplable pieces that are configured to attach together via a threaded coupling mechanism. The rod of Levy has a similar structure to the rods of Holy and Larson, and the coupling mechanism of Levy has a similar structure and function to the coupling mechanisms of Holy and Larson. Levy is analogous art in the same field of endeavor as Holy and Larson.
Regarding claim 42, Applicant argues that Holy does not disclose a defined mathematical relationship among the pieces. The Office agrees that Holy does not expressly disclose a mathematical relationship of the weights of the components, but it would have been obvious to one having ordinary skill in the art to modify the device of Holy to have the claimed dimensions, because such a modification involves a mere change in proportion or relative dimensions which fails to distinguish the invention over the prior art (see MPEP 2144.04IV). See above with regards to the 35 U.S.C. 103 rejection of claim 42. Further, these limitations lack criticality.
Regarding claim 44, Applicant argues that the prior art does not teach a hybrid coupling involving a threaded coupling mechanism and a magnetic coupling mechanism. The Office agrees, but Applicant’s amendments have resulted in the 103 rejection in view of Molinelli of the claim made above.
Regarding claims 46 and 50, Applicant argues that the end components 24 of Holy have the same weight but include male couplers. The 103 rejection of claim 31 made above modifies the leftmost end component 24 to have a female coupler.
Regarding claim 48, Applicant argues that Holy does not teach wherein the terminal ends are configured to allow the system to stand in a stable, vertical position on a flat surface. The Office respectfully disagrees. The flat ends of the components 24 of Holy would be configured such that