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 .
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.
3. Claims 1, 5, 15-16, 20 have been amended and claims 1-20 are pending as amended on 10/24/25.
4. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy filed in parent Application SWEDEN 2151094-6 09/02/2021 dated 10/27/25.
Response to Amendment
7. Applicant's amendment filed on 10/24/25, has been fully considered and entered.
Response to Arguments
8. Applicant's arguments with respect to rejection of claims 1-2, 8 under 35 U.S.C. 102(a)(1) as being anticipated by Miller (US 2019/0001236), claims 3, 7, 9-13, 17-19 under 35 U.S.C. 103 as being unpatentable over Miller, and claims 4-6, 14-16, 20 under 35 U.S.C. 103 as being unpatentable over Miller in view of Axelrod (US 2007/0212456) filed on 10/24/25, have been fully considered but are not persuasive. Applicants arguments regarding second material does not enclose the first material in any manner or location whatsoever is respectfully considered but are not persuasive. In fact, Miller expressly discloses “The disc 1 comprises a first portion 10 (e.g., a central portion) and a second portion 12 (e.g., a rim portion). In some embodiments, the first portion 10 can comprise a first material and the second portion 12 can comprise a second material” (para [0034]) and “In some embodiments, the first portion 10 and the second portion 12 may be bonded together in an injection molding process” (para [0034]). Examiner’s interpretation: In the injection molding process, the second material is deposited such that it forms a coating on first material and encloses it to some degree and to some extent. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004). MPEP 2111.01. Applicants mention of fig. 4 have been fully considered but are not persuasive. As such, nothing shows in this figure “in blue” or “in yellow” (pl See remarks). Figures clearly shows the 12 encloses 10 to some degree and to some extent. Specifically, fig. 4 is either another orientation or embodiments; even in fig. 4, 12 encloses 10 to some degree and to some extent . Accordingly, previous rejections have been maintained.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller (US 2019/0001236).
(Elements of this rejection are set forth in the action dated 06/24/25, reiterated below in its entirety)
Regarding claim 1, Miller discloses a sports flying disc frisbee (read on disc for disc golf) comprising a central plate portion and a rim surrounding the central plate portion and extending from the plate portion in an axial direction of the disc, wherein the central plate portion comprises a core of a first polymer-based material, at least in the region of the rim, there is provided a second polymer-based material, which is chemically bonded to the first polymer-based material and which forms an outer surface of the disc, wherein the first polymer-based material has a higher tensile strength than the second polymer-based material, the second polymer-based material is softer than the first polymer-based material, and wherein the first polymer-based material forms a core of the rim and the second polymer-based material forms a coating on top of the first polymer-based material and encloses the core of the rim (para [0002]-[0004], [0010], [0033]-[0036], fig 1-2), meeting the requirement of claim 1.
Regarding claim 2, Miller discloses the thickness of the coating of the second
polymer-based material that encloses the core of the rim is 1.2-3 mm (para [0019], fall into instant claim range of 1.0-7.0 mm.
Regarding claim 8, Miller discloses the first material has hardness which is at least 40 Shore S (para [0015]), fall into instant claim range of at least 30 shore D.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 3, 7, 9-13, 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Miller, as applied to claim 1 above.
(Elements of this rejection are set forth in the action dated 06/24/25, reiterated below in its entirety)
Miller includes the features of claim 1 above.
Regarding claim 3, Miller discloses the thickness of the coating of the second
polymer-based material that encloses the core of the rim is 1.2-3 mm (para [0019]), which is close to instant claimed range of 0.005-1.0 mm. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 7, Miller discloses the second material has hardness which is at least 30 Shore A (para [0015] measured for soft material), overlapping instant claim range of below 50 shore D. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004). MPEP 2111.01.
Regarding claims 9-12, Miller discloses the schematic view of the flying disc in figures 1-3, which represent the diameter (2x of radius) from the outermost portion of the rim of the disc to another outermost portion that passes through the center of the disc, wherein the flying disc has top side and bottom side and contains surfaces at each side (para [0036), encompasses at least 0.25r or at least 0.75r of claims 9-12 features. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004). MPEP 2111.01.
Regarding claim 13, Miller discloses the second material forms a coating which fully covers the outer surface area of a core formed by the first material (para [0043]), encompasses claimed at least 95%. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 17, Miller discloses the disc diameter in the range of 250 mm (25 cm) to 290 mm (29 cm) (para [0036]) close enough to claimed range of 20-23 cm, central plate portion thickness in the range of 1.2 mm to 1.8 mm (para [0039]), fall into instant claim range of 1.5-3.0 mm, maximum thickness in the radial direction in the range of 20 mm (2 cm) to 24 mm (2.4 cm) (para [0042]), fall into instant claim range of 0.5-3.0 cm, and heigh in the axial direction in the range of 25 mm (2.5 cm) to 2.9 mm (2.9 mm) (para [0042]), fall into instant claim range of 1.0-3.0 cm. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claims 18-19, Miller does not disclose claimed coating thickness in the region of central part as well as region of the rim or adjacent to the rim. However, Miller discloses: in use, a user may grip a portion to throw the disc, for example, in a backhand throwing technique, the user's thumb can apply gripping force to a portion of the top surface while the user's fingers may wrap around at least a portion of the second portion and apply gripping force to an inner portion of the disc, wherein the user's palm can rest ergonomically upon an outer surface of the disc, which may partially conform to a part of the palm as a result of, for example, deformation of a relatively soft second material, wherein a specific thickness of the second portion can provide the user's hand with improved leverage and control relative to a conventional thickness, due to, for example, the achievement of relatively optimal sarcomere length of the user's upper limb musculature (e.g., forearm muscles, hand muscles, etc.) as the user's hand grips the specific thickness of the second portion, wherein the improved leverage may also increase a maximum thrust the user may impart to the disc using certain throwing techniques (para [0035]). In the present case the discovery of a workable thickness for the coating material is not the result of the invention but of ordinary skill and routine experimentation. One of ordinary skill in the art at the time of the invention would have found it obvious to adjust the particle coating thickness in order for the achievement of the user's hand grips of the disc.
Claims 4-6, 14-16, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Miller as applied to claim 1 above, and further in view of Axelrod (US 2007/0212456).
(Elements of this rejection are set forth in the action dated 06/24/25, reiterated below in its entirety)
Miller includes the features of claim 1 above.
Regarding claims 4-6, 14-16, 20, Miller does not disclose the first material has a tensile strength which is at least 5 MPa or 10 MPa higher than a tensile strength of the second material or wherein the tensile strength of the first material is above 15 MPa, wherein the first material or the second material comprises any of a thermoplastic urethane or a thermoplastic elastomer material, wherein the thermoplastic elastomer material comprises any one from the group consisting of thermoplastic olefins, thermoplastic block copolymers, thermoplastic vulcanized polypropylene-EPDM-mixtures, thermoplastic polyester mixtures, copolyester, or thermoplastic urethanes thermoplastic polyamides.
However, Axelrod discloses flying disc comprising a first material and a second material, wherein the first material being surrounded by the second material, wherein the first material form a central element and include a plurality of projections extending from the central element, wherein a first material have a first hardness and the second material have a second hardness, less than the first hardness, wherein the first material, second material, or both formed of thermoplastic such as polyurethane, polyamide, or natural rubber, wherein the tensile strength of the first material is about or greater than 10,000 psi (69 Mpa), and the tensile strength of second material is less than about 10,000 psi (69 Mpa) (read on claim 6 of above 15 Mpa, and encompassing the subject matter of claims 4-5), wherein the first material provides suitable rigidity to support the outer body section made of the second material of the flying disc (para [0002], [0018], [0019], [0024], [0038], [0039]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify miller with the first material, second material, or both formed of thermoplastic such as polyurethane, polyamide, or natural rubber, wherein the tensile strength of the first material is about or greater than 10,000 psi (69 Mpa), and the tensile strength of second material is less than about 10,000 psi (69 Mpa), as taught by Axelrod. The rationale to do so would have been motivation provided by of Axelrod that to do so would provide the first material having suitable rigidity to support the outer body section made of the second material of the flying disc. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Conclusion
References Kenner (US 2007/0207883) and Richardson (US 2012/0322336) were cumulative in nature to the above rejection and thus not set forth.
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 KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766