DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in response to applicant’s remarks and amendments dated 07/12/2026. Claims 1, 10, and 11 have been amended. Claim 2 has been withdrawn. Claims 15 and 16 have been cancelled. Claims 1-14, 17, and 18 are currently pending.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-5, 10, and 11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Crowley et al. (US Patent No. 8,517,870 B2).
In Reference to Claims 1, 3-5, 10, and 11
Crowley teaches (Claim 1) A ball comprising: a bladder having an interior surface (item 304, fig. 7); a component holder (item 100, fig’s 1-4) having a proximal portion defined by a skirt to the interior surface of the bladder (portions of item 100 including item 102 and item 106), and a frustum having a wide end connected to the skirt and proximal to the bladder (rightmost portion of item 100, adjacent bladder, fig. 1, at flare that meets item 102, flare directly adjacent item 124, not separately labeled), and a narrow end opposite the wide end of the frustrum (going leftward along item 100, including portion of item 104), and a distal portion distal to the bladder and directly adjacent to the narrow end of the proximal portion (leftmost end portion of item 104, fig. 1), wherein the distal portion is no wider than the narrow end of the proximal portion (left end of item 104 is narrowest, and gets wider in the direction toward portion 102 / bladder); a component secured within the distal portion of the component holder (item 110/112, fig. 1); and a cap (item 120, fully secured within uppermost portion of item 100, note portion 106 of item 100 is flush with item 120), wherein a middle section is defined between the cap and the component within the component holder, and the frustrum of the proximal portion surrounds the cap and the middle section between the wide end of the frustrum and the narrow end of the frustrum (area 116, fig. 1, frustrum from flared portion mating to skirt 102 leftward to end of item 116, this section surrounds item 116 and at least a portion of / most of the cap);
(Claim 3) wherein the distal portion of the component holder is form fitting to the component (left portion / interior of item 100 form fits with items 110 / 112, fig. 1);
(Claim 4) wherein the cap has a protrusion and an interior surface of the proximal portion of the component holder has a corresponding depression (at 121, fig. 1);
(Claim 5) wherein the cap has a hollowed out core (122, fig. 2);
(Claim 10) wherein the middle section is filled with air (item 116, fig. 1, space / gap shown);
(Claim 11) wherein the middle section is filled with foam (column 6 lines 50-52, this space is optionally disclosed to be filled with foam);
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 6, 8, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Crowley.
In Reference to Claims 6 and 8
Crowley teaches all of claim 1 as discussed above.
Crowley fails to teach the features of claims 6 and 8.
Crowley further teaches (Claim 6) further comprising a [] pad placed over the cap and having an outer surface level with an outer surface of the [device] (item 312, fig. 5, column 12 lines 14-24);
(Claim 8) further comprising a [] pad placed over the cap and having an outer surface level with an [] surface of the [device](item 312, fig. 5, column 12 lines 14-24).
Crowley fails to teach the cap is foam and being flush with various other surfaces of the bladder.
However, Crowley also teaches that a cap can be flush or nearly flush along an outer surface of the object, or, flush or nearly flush with an outer surface of the inner bladder (column 6 lines 59 – 63, and column 7 lines 57-63); and that it can be made of foam (column 6 line 67 – column 7 line 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the additional cap pad of foam as taught by alternate components of Crowley simply as a matter of engineering design choice, since, it has been held that selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice, and is not a patentable advance. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Since Crowley teaches that a variety of materials are suitable for the various caps (column 6 line 67 – column 7 line 2 and column 12 line 37-39), including foam, merely selecting foam for the additional pad cap is an obvious matter of engineering design choice, and is not a patentable advance.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the additional pad cap flush with the inner or outer surface of the bladder simply as a matter of engineering design choice, since, it has been held that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). And, that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Crowley teaches the general conditions of locating caps flush with various surfaces of the device, including being flush with the outer surface of the device, or, flush with the outer surface of the bladder (column 6 lines 59 – 63, and column 7 lines 57-63), merely claiming that the pad cap is flush with any desired surface would not change the operation of the device, but would simply be a matter of optimizing a surface characteristic that is already generally taught in the art. Since making the cap flush with a surface is taught, merely claiming a particular flush surface that would work well with a particular bladder setup or sports object is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 14
Crowley teaches all of claims 1 and 11 as discussed above.
Crowley fails to teach the specific thickness of the foam of claim 14.
However, as discussed above, Crowley teaches a space that is located within the internal cavity that may be filled with foam which is intended to be customized to provide a snug fit for the battery and circuit board (column 6 lines 51-58). Therefore, the dimensions of this foam filled cavity are result effective variables, i.e. a variable which achieves a recognized result. Note MPEP 2144.05(II)(B). It has also been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have, therefore, been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the claimed thickness simply as a matter of engineering design choice, in order to properly secure the battery and circuit board in place within the internal cavity, and, since the general conditions of a foam filled cavity which is customized to secure components is taught in Crowley. Since there is no claimed criticality or new and unexpected result produced from simply claiming a suitable dimension for foam within a cavity that secures components, these specific dimensions are not patentable advances.
Claims 7, 9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Crowley in view of Glowinski (US PGPub. No. 2008/0234077 A1).
In Reference to Claims 7 and 9
Crowley teaches all of claims 1, 6, and 8, as discussed above.
Crowley fails to teach the specific foam of claims 7 and 9.
Glowinski teaches (Claim 7) wherein [a] foam [] comprises an open cell, low
density polyurethane (paragraph 0013, note open cell is low density);
(Claim 9) wherein [a] foam [] comprises an open cell, low density polyurethane (paragraph 0013, note open cell is low density).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the sports ball device material of Crowley with the feature of using open cell foam as taught by the sports ball device material of Glowinski for the purpose of using a lightweight known material with good resiliency characteristics as taught by Glowinski (paragraph 0013), making the device more durable, and more attractive to the users.
Further, the examiner notes that it has been held that selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice, and is not a patentable advance. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Merely selecting a known type of foam or rubber for a sports ball element that is suitable for such a purpose is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 12
Crowley teaches all of claims 1 and 11 as discussed above.
Crowley fails to teach the specific foam of claim 12.
Glowinski teaches (Claim 12) wherein [a] foam is an open cell, low density
polyurethane (paragraph 0013, note open cell is low density).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the sports ball device material of Crowley with the feature of using open cell foam as taught by the sports ball device material of Glowinski for the purpose of using a lightweight known material with good resiliency characteristics as taught by Glowinski (paragraph 0013), making the device more durable, and more attractive to the users.
Further, the examiner notes that it has been held that selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice, and is not a patentable advance. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Merely selecting a known type of foam or rubber for a sports ball element that is suitable for such a purpose is an obvious matter of engineering design choice, and is not a patentable advance.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Crowley in view of Willner et al. (US Patent No. 5,810,685).
In Reference to Claim 13
Crowley teaches all of claims 1 and 11 as discussed above.
Crowley fails to teach the specific density of claim 13.
Willner teaches (Claim 13) [a] foam has a density between 1 and 20
lbs/cubic feet (column 4 lines 12-23, 3.5 lbs/cubic feet).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the sports ball material of Crowley with the feature of a specific foam density as taught by the sports ball material of Willner for the purpose of providing a known and durable material that is capable of use in sports balls as well as, more specifically, capable of securing electronic components within sports balls, making the device more reliable, more durable, and more attractive to the users.
Further, the examiner notes that it has been held that selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice, and is not a patentable advance. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Merely selecting a known type of foam or rubber for a sports ball element that is suitable for such a purpose is an obvious matter of engineering design choice, and is not a patentable advance.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Crowley in view of Krysiak et al. (US PGPub. No. 2016/0074714 A1).
In Reference to Claims 17 and 18
Crowley teaches all of claim 1 as discussed above.
Crowley fails to specify rebound height characteristics.
Krysiak teaches (Claim 17) wherein when [a] ball is dropped from a height of 72 inches, the ball rebounds within a range of 50-56 inches, and further wherein the maximum difference in rebound for any location on the ball is 3 inches (fig. 29, paragraph 0110, and table 1);
(Claim 18) wherein when [a] ball is dropped from a height of 72 inches, the ball rebounds within a range of 50-56 inches, and further wherein the maximum difference in rebound for any location on the ball is 1 inch (fig. 29, paragraph 0110, and table 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the basketball of Crowley with the rebound characteristics claimed as taught by the basketball of Krysiak for the purpose of providing a basketball that performs within the consistent ranges as specified by various basketball rules as taught by Krysiak (paragraph 0110), providing a basketball that is usable in a wider range of official basketball games, making the ball more reliable, and more attractive to a wider range of users.
Response to Arguments
Applicant's arguments filed 07/12/2026 have been fully considered but they are not persuasive.
Applicant argues that the frustrum of Crowley does not surround within it both the cap and the middle section. This argument is not persuasive for multiple reasons.
First, applicant’s annotated drawing of Crowley on page 6 of “Remarks” at the bottom provides an interpretation of the frustrum not used in the rejection. The examiner has pointed to the lip portion extending from the skirt and then going down along item 104 to a point at the bottom of the middle section. While this does include the indent section 124 of Crowley, as applicant notes, there is no claim language preventing such a feature from being included in a “frustrum” section. Further, the largest area of this frustrum section is at the skirt, and tapers to a smaller section towards the bottom of the middle section, and an even smaller portion at the distal portion, meeting all of the claim limitations.
Second, applicant has now defined the proximal portion as including, separately, a skirt, and a frustrum, the frustrum connected to the skirt and extending from it. However, applicant’s annotated figure 3 at the top of page 6 of “Remarks” labels the skirt and frustrum as part of the same element. This is not how the claim defines these features. The claim lists the skirt as separate with the frustrum being attached to the skirt. This means that the frustrum portion does not entirely surround the cap from top to bottom, as the frustrum section does not extend to the top of the skirt.
Regardless of this conflict, the frustrum section pointed to in Crowley surrounds the entirety of the middle section, and surrounds the cap, meeting the claimed limitations in either interpretation of what portion the “frustrum” is. There are no claim limitations indicating that the frustrum portion surrounds the cap “along a length of a cap from the top to the bottom of the cap” or similar. Therefore, only a portion of the cap must be entirely surrounded to meet the claim limitations, which it is in both the examiners interpretation of the frustrum section, and even in applicant’s annotated drawing. All of the current claim limitations are met in Crowley.
Finally, applicant’s claim language, as discussed above, defines the frustrum portion as separate from the skirt portion, meaning that applicants defined frustrum also does not extend to the top of the cap. In an attempt to show a distinction here, the annotated drawing of applicant’s fig. 3 at the top of “Remarks” page 6 improperly includes the skirt as a part of the frustrum, contrary to the claim language. Therefore, if the intent of the argument is that the frustrum does not extend to the top of the cap, which is not claimed, as discussed above, applicant’s defined frustrum also does not extend to the top of the cap, therefore, there can be no distinction even using this definition of “surround.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/ Primary Examiner, Art Unit 3711
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