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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a method of organizing human activity without significantly more. The claim(s) recite(s) a method of causing a ball carrier to lose control of a ball, the method comprising the steps of: a defender first striking the upper body of the ball carrier with the hypothenar eminence of his hand; and (b) the defender: (i) forcing the ball-carrying elbow outward away from the ball carrier; and (ii) forcing the ball-carrying hand downward. The recited method involves managing personal behavior or relationships or interactions between people and includes following rules or instructions.
There are no improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a); there is no application or use of the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition – see Vanda Memo; there is no application of the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b); there is no transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and there is no application or use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to the sports training environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception , as discussed in MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
This judicial exception is not integrated into a practical application because there are no additional elements. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as stated in MPEP 2106.05, I.:
An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 573 U.S. at 21-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d at 1968 (after determining that a claim is directed to a judicial exception, "we then ask, ‘[w]hat else is there in the claims before us?") (emphasis added)); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"). Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).
Lacking any additional elements, there can be no practical application.
Claims 3-6 likewise contain no additional elements and are drawn solely to methods of managing personal behavior or relationships or interactions between people and include following rules or instructions.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over “101 Defensive
Line Drills, by Mark Snyder” hereinafter (Snyder).
Claims 1-6, Snyder clearly demonstrates in both figures on page 108, a method which appears to be substantially identical to that claimed here for diminishing a ball carrier’s hand and arm grip on a football so as to cause a fumble. The Examiner takes official notice of the following: It is well known in sports to target any week point of the anatomy, which in the present instance are the hands, in order to attack the opponent. Furthermore, it is well known in sports such as in football to tackle the opponent in order to get control of the football, the object being to score a goal. It would have been obvious especially in view of “101 Defensive Line Drills”, in order to gain control of the football from the opponent, to weaken the grip on the ball which would release the fingers, hence freeing the football. The figures and description on page 108 of “101 Defensive Line Drills” clearly show placing a first hand on one or more fingers of the ball carrying hand and adducting the one or more fingers of the ball carrying hand from a first position to a second position. Although the claimed invention may not be identically disclosed, such as in also using a second hand, the differences between the subject matter sought are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made. A method of releasing the hand grip from the ball is old and well known in sports and the martial arts and it is generally recognized as being within the level of ordinary skill in the art to utilize the various steps claimed by the applicant based on suitability for the intended use as a matter of obvious coaching choice.
It is noted:
The common knowledge or well-known in the art statement is taken to be admitted prior art because applicant has failed to traverse the examiner’s assertion of Official Notice.
Response to Arguments
Applicant's arguments filed 14 August 2025 have been fully considered but they are not persuasive.
Regarding the rejection of claims under §101, the applicant argues that the claims do not fall into the judicially enumerated category of organizing human activity. It is asserted that the claims involve a specific physical process of applying force to a tangible object (e.g., a football) and does not merely invoke generic processes or machinery. The applicant argues that because the ball carrier is not cooperative and the method involves manipulating a person against their will, the claims do not manage human activity.
This is not found to be convincing because the MPEP specifically characterizes methods of organizing human activity to include “...managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions,” (MPEP 2106.04(a)(2), II). The present claims are directed to interactions between players where the defender is provided with instructions on how to cause a ball carrier to lose control of a ball. The mere presence of a tangible object such as a generic football does not automatically convey eligibility. The claims, in fact, do not even require the presence of a football, but merely a defender and the body of a player designated as “ball carrier.” All recited forces are applied, not to the ball, but to the body of the ball carrier (e.g., the elbow, hand, arm, wrist, etc.). There are further no requirements that said interactions be voluntarily agreed upon by all parties involved in order to qualify as an abstract idea under the methods of organizing human activity category.
The applicant further asserts that the claims do not merely recite a result or effect, but instead specify a method that allegedly achieves a concrete and practical outcome, and even if arguendo the claims were found to be directed to an abstract idea, they contain an inventive concept sufficient to transform the abstract idea into a patent-eligible application due to the integration of a practical application.
The examiner argues that mere assertions of concrete and practical outcomes are insufficient. The claims recite an intended use (i.e., causing a ball carrier to lose control of a ball), but the claim body simply requires one person to manipulate the elbow/hand/arm/wrist of the other person. In any event, the search for the inventive concept must be furnished by an element in addition to or beyond the judicial exception itself. MPEP 2106.05, I states:
An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 573 U.S. at 21-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d at 1968 (after determining that a claim is directed to a judicial exception, "we then ask, ‘[w]hat else is there in the claims before us?") (emphasis added)); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"). Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).
The claims of the present invention lack any additional elements. As such, the applicant appears to be relying solely upon the abstract idea itself for any practical application in contrast to the requirement quoted above. Any assertions of practical application cannot be supported when there are no additional elements present. Whether or not the method is novel and unobvious or specifies a unique and innovative approach to achieving a desired outcome, is immaterial to the question of eligibility under §101 (see MPEP 2106.05, I.).
The applicant’s argument that the recited steps are inseparably tied to the physical manipulation of a tangible article in the real world (e.g., a football) is further insufficient to impart eligibility. The simple presence of a tangible article and the manipulation of said article without its integration into a practical application cannot serve as a basis for eligibility under §101. As explained in MPEP 2106.04(d):
It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point"). See also Genetic Technologies Ltd. v. Merial LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1547 (Fed. Cir. 2016) (steps of DNA amplification and analysis are not "sufficient" to render claim 1 patent eligible merely because they are physical steps). Conversely, the presence of a non-physical or intangible additional element does not doom the claims, because tangibility is not necessary for eligibility under the Alice/Mayo test. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016) ("that the improvement is not defined by reference to ‘physical’ components does not doom the claims"). See also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), (holding that a process producing an intangible result (a sequence of synchronized, animated characters) was eligible because it improved an existing technological process).
Further, as already argued above, the claims do not even require a tangible object, but only the bodies of players.
The applicant additionally argues that the examiner’s reliance upon MPEP 2106.05(a) is misplaced because the claims at issue do not involve a computer or software-based invention.
The examiner responds that this section was merely discussed for completeness to consider all possible factors that may be taken into account when determining whether or not an invention involves a practical application. It was not meant to imply that the applicant’s invention was directed to a computer technology, but instead the examiner was, in fact, emphasizing that the applicant’s invention does not involve any improvement in computer technology or any other technical field. The examiner is in agreeance with the applicant that no computer or software based invention is recited, therefore, there can be no improvement to the functioning of any computer.
Lacking any integration of a practical application into the abstract idea of organizing human activity, the rejection under §101 must remain.
It is noted that while the previous Office Action did not include claim 1 in the rejection statement under §101, the claim was nonetheless included in the rejection as evidenced by the word-for-word recitation of the claim language within the rejection. The examiner apologizes for any confusion caused by the obvious typographical error.
With regards to the 103 rejection in view of the Snyder reference:
Claim 1, merely recites a defender first striking the upper body of the ball carrier with his hand. the recited step does not recite criticality as to the position of the defender with respect to the ball carrier. next claim 1 recites the defender forcing the ball carrying elbow outward and forcing the ball-carrying hand downward. Again, the claim does not place criticality in the position of the defender with respect to the ball carrier. The step can be achieved irrespective of the defender’s physical position.
Claim 2, recites forcing the ball carrying arm, wrist, elbow or combination in a direction of upward, downward etc. Again the claim places no criticality in the position of the defender with respect to the ball carrier. The step can be achieved irrespective of the defender’s physical position.
Claim 3 is dependent on claim 2 and further recites contacting the ball carrier with a touch, tap etc. or by placing a hand anteriorly on the body of the ball carrier. Again the claim does not place criticality with respect to the position of the defender. The step can be achieved irrespective of the defender’s physical position.
Claim 4, merely recites forcing the ball carrying hand downward. As noted above no criticality has been placed in the claim in the position of the defender with respect to the ball carrier. The step can be achieved irrespective of the defender’s physical position.
Claim 5 recites forcing the ball-carrying wrist downward and forcing the ball carrying hand upward. As noted above no criticality has been placed in the position of the defender with respect to the ball carrier. The step can be achieved irrespective of the defender’s physical position.
Claim 6 recites a defender placing a hand anteriorly on the body of the ball carrier and urging the ball-carrying arm toward the direction selected from upward, downward, etc. The claim merely requires the defender to place a hand in front of the ball carrier body and urging the arm in the direction of upward, downward etc. Again as noted above no criticality has been placed in the claims in the position of the defender with respect to the ball carrier. The step can be achieved irrespective of the defender’s physical position.
As noted above, the claims do not actually recite the ball-carrier holding a ball/football as applicant appears to be asserting. The claims merely require the defender to force/manipulate various body parts of the ball carrier. So the ball carrier could be holding an imaginary ball or a real ball, either way such is not part of the recited steps. Additionally, the claims do not recite or place criticality in the claims to the position of the defender with respect to the ball carrier. So, the defender can be standing in front, behind, or to the sides of the ball carrier and still be able to achieve the recites steps. Applicant is arguing features which have not been claimed.
With regards to claim 6, applicant asserts because the defender is standing behind the ball carrier, the step cannot be done in Snyder. It is respectfully asserted that the defender is capable of placing his hand anteriorly i.e. the front of the ball carrier body irrespective of where the defender is physically positioned. Therefore, applicant’s assertions are not found persuasive since it is speculative and is not supported by any objective evidence.
Lastly, applicant asserts that Snyder teaches away from the claimed subject matter (page 7 of remarks) In re Gurley is applicable here, because the asserted reference address the problems to be solved by instructing the defender to stand behind the ball carrier and use one of his hands to grasp the “
In conclusion applicant’s arguments are not found persuasive. The claim rejections are maintained.
Conclusion
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 MITRA ARYANPOUR whose telephone number is (571) 272-4405. The examiner can normally be reached on Mon, Thurs, Fri 8:00am to 4:00pm, Wed 8:00-2:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on 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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/MITRA ARYANPOUR/Primary Examiner, Art Unit 3711
/ma/
13 May 2026
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