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 § 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 1, 4, 7-11 and 13-16 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 1 recites “attaching a protruding ridge to the footboard” and further recites “configuring the protruding ridge”. However, there is no disclosure of how a ridge attached to the footboard is thereafter further configured.
Claim 1 recites “the step of attaching applying a protruding ridge to the footboard”. Paragraph [0024] of the published application reads, in part “The protruding ridge … either attaches or is molded/machined into the top surface of the footboard 304.” Therefore, in light of the specification, attaching the ridge is understood to be distinct from applying the ridge by molding foam. Because claim 14 recites “is achieved using a custom metal applicator having grates for applying slow-hardening foam”, it is clear claim 14 is drawn to the applying of the ridge by molding foam. However, claim 14 also requires the protruding ridge to be attached. The original specification does not provide support for an embodiment in which the ridge is both attached (i.e. a pre-manufactured ridge is attached to the footboard) and is also applied by shaping foam.
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 1, 4, 7-11 and 13-16 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.
In claim 1, the language “configuring the protruding ridge for increasing certainty that the user can maintain the hand-grip on the footboard despite being in mid-air and also being occupied with numerous other physical tasks and in an atmosphere of constantly shifting center of gravity of their body thus in a highly kinetic and uncertain environment” renders the claim indefinite, because it is unclear what falls within the scope of this limitation. How is the protruding ridge configured to achieve the claimed benefits? The claims do not recite a particular shape or other structural feature.
The language “intentionally contouring the protruding ridge to be unlikely to become an accidental weapon in event of a collision with the user” renders the claim indefinite because the phrase “unlikely to become an accidental weapon” is subjective, and does not have a fixed, quantifiable meaning. Moreover, how is the protruding ridge contoured to achieve this function? The claim does not recite a particular shape or other structural feature to achieve this function.
In claim 1, “line 16, “the suitably-grippable protruding ridge” lacks proper antecedent basis. Additionally, the language “potentially being critical in whether someone cab properly grip and hold into the footboard or not during execution of a board-trick” renders the claim indefinite, because the phrase “potentially being critical” is vague and refers to something that is not positively required in the claim, and is not quantifiable in any way.
In claim 14, line 2, the limitation “the step of attaching applying the protruding ridge” renders the claim indefinite, as it is unclear what is meant by “attaching applying”.
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.
Claim(s) 1, 4, 7-8, 13 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goss (WO2007/014357A2) in view of Dolecki (US2015/0371529A1) and North (North Grab-It grab rail).
Goss discloses incorporating a media device 100 into a sports board making boards with audio and/or visual capability, for sports such as, among others, kite surfing (i.e., kiteboarding). See [0001] and [0037]. Goss discloses forming apertures for the media device, into the board. See [0095]-[0097]. With respect to claimed features disclosed in separate embodiments in Goss, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to combine claimed features from various embodiments, as it is readily apparent from the overall disclosure of Goss that the various disclosed features can be combined as desired, to implement the teachings of Goss with respect to any of the types of boards, such as with kiteboards, for example, with predictable results.
Claim 1. A method of manufacturing a footboard for use in a kiteboard system, comprising:
locating a first aperture (see [0095]-[0097]) within a footboard, the aperture having a predetermined contour;
Claim 4. The method of Claim 1, further comprising: the footboard being custom-manufactured with the first aperture already positioned therein prior to sale. This is understood to be the case in [0095]-[0097], which appear to describe the manufacturing of a board.
Claim 7. The method of Claim 1, further comprising:
Claim 8. The method of Claim 1, further comprising:
Claim 9. The method of Claim 1, further comprising:
Claim 10. The method of Claim 9, further comprising: providing one or more user-wearable mechanisms within the kiteboard system. See [0088] and [0090].
Claim 11. The method of Claim 1, further comprising:
Claim 13. The method of Claim 1, further comprising
Although Goss mentions that the various components of the media device 100 can communicate with each other via Bluetooth (see [0082], [0093]), and also mentions an embodiment in which a user-wearable device can be used to control various functions of the media device (see [0088]), there is no disclosure of the media device 100 components inserted within apertures of a board comprising a BTLE grain.
Goss discloses the channel 2 for connecting the input component 110 and storage component 112, the control component 116 and the output component 114, such as Bluetooth or other wireless communication means (see [0082]).
Dolecki discloses an audio playback device 110 (Fig. 7C and Fig. 1) including a BTLE chip (i.e., grain) 738 (see Fig. 7C and [0123]) for wireless communication with a wearable wireless remote control device 130c (Fig. 1 and [0063]). Therefore, one of ordinary skill in the art understands from Dolecki that BTLE is suitable for implementing wireless communication between a media player device and a wearable control device.
In view of the teachings of Dolecki, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to implement the communication between the media device 100 of Goss and the user-wearable control component by means of BTLE wireless communication, as a matter of choosing from conventional techniques for effecting communication between the control device and the media device, with predictable results. As evident from Dolecki, in order to implement such BTLE connectivity, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide a BTLE grain within the media device 100, to implement the BTLE functionality. Since the media device is situated within one or more apertures within the board, the BTLE grain would also be within an aperture in the board.
Regarding the protruding ridge, North discloses an EVA grab rail having an undercut profile for fingertips. The grab rail has adhesive bonding tape for attaching to kiteboards. The grab rail has a with a tapered angle, tapered toward a top of the footboard when attached to the board.
One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the kiteboard of Goss by adhering such a grab rail thereto, with predictable results, for the purpose of adding grab rail functionality to a board not having such a grab rail.
Regarding claim 4, Goss does not explicitly mention the board having the first aperture already formed therein prior to sale. However, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to implement the teachings of Goss as part of manufacturing a kiteboard having a media device as, prior to sale with predictable results. Goss already discloses the possibility of modifying an existing board by the board owner. It is deemed obvious to alternatively manufacture a board to already include a media device.
Regarding claim 7, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to attach the grab rail at any desired location on the board other than over the data output component 114, since the apertures are covered after inserting media device components therein. See [0086].
Regarding claim 8, in Fig. 8D, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the BTLE grain separate from (i.e. exterior to) the protruding ridge, since the protruding ridge is an output device such as a speaker of display.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goss in view of Dolecki and further in view of Sandin (US2016/0050519A1).
Goss in view of Dolecki renders obvious the claimed invention, except for the limitations of claim 9. Sandin discloses embedding a GPS locator tag (301; see Fig. 4A and 4B, and [0045]) within a sports equipment, such as a snowboard or watersports equipment (see abstract), which facilitates locating the equipment if lost or stolen (see [0021]). The tag is capable of determining its location and continually reporting this location over a wireless data network to a server for use by the owner of the sports equipment (see abstract). The GPS tag 301 can be embedded within the board 302 during manufacturing, or could be added retroactively.
In view of the teachings of Sandin, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the footboard of modified Goss with a further aperture into which a GPS locator tag (i.e., beacon) is inserted and sealed, to allow for locating the footboard by the user.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Dolecki, Applicant argues:
Dolecki is strictly focused on audio playback via wearable remote control. Again, Applicant’s kiteboarder is unlikely to be interested in music or audible material, instead focused on doing complex tricks a while engaged in highly kinetic activity, and focused mainly on achieving this while avoiding injury. Again, Applicant’s kiteboarder is unlikely to operate their wearable while riding the board.
Respectfully, this argument is not relevant to the rationale of the rejection. The claims require a BTLE grain inserted into an aperture. The rejection provides a rationale for providing such a BTLE grain.
Applicant further argues:
Next, Dolecki’s use of “swim lane diagrams” is misleading. Dolecki never mentions “waters, “swim”, “swimming”, pool, lake, or “waterproof”. Swim lanes are accidental usage. The implication is that Dolecki is related in some way to water-sports, when in fact it is not. Dolecki’s use of the expression “swim lane diagrams” is an unfortunate and accidental coincidence.
Dolecki overtly mentions home network 150 and desktop computers, paras59-60, and overtly limits itself to music playback, para63, kitchen dining room basement para65. These combine to act as a teach-away under MPEP 2143.01(V), along with Dolecki’s para149 “wake me at 6AM” which is a totally non-conforming usage.
Respectfully, the rejection does not rely on Dolecki as somehow being related to water sports. One of ordinary skill in the art understands from Dolecki that BTLE is suitable for implementing wireless communication to use a wearable device as a remote control.
Since Goss mentions an embodiment in which a user-wearable device can be used to control various functions of the media device, one of ordinary skill in the art before the effective filing date of the claimed invention would have found obvious the suitability of BTLE to allow a user-wearable device to control the media device of Goss.
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.
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/LIVIUS R. CAZAN/Primary Examiner, Art Unit 3729