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 .
Information Disclosure Statement
The submission of Foreign Patent Documents and Non-Patent Literature Documents in the information disclosure statement filed 07 November 2022 fail to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-11) in the reply filed on 14 January 2026 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 January 2026.
Claim Rejections - 35 USC § 112
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.
Claim 11 is 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 line 2, “the first sleeve opening” lacks a proper antecedent basis. For the purposes of applying the prior art, it is assumed that the claim depends from claim 10.
Claim Rejections - 35 USC §§ 102 and 103
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.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication Number 2005/0054465 (Schultz).
Regarding claims 1, 2, 4 and 5, Figures 1 and 9 of Schultz show an elongated tube canister 2 having an open top that is configured to receive at least two tennis balls. Figure 9 of Schultz also shows a sleeve 46 including a pocket that receives canister 2 and is considered to be inherently capable of being secured along an inside length of a tennis player’s forearm via strap 4.
Regarding claim 3, Figure 8 of Schultz shows an embodiment where there are a plurality of straps 45.
Claims 6, 7, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Schultz as applied above.
Regarding claim 6, Schultz does not explicitly disclose the length of the elongated canister. It was commonly known to those skilled in the art that a longer canister would allow a player to store more balls. It would have been an obvious matter of design choice to make the length of the Schultz canister between six and twelve inches, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See In re Rose, 105 USPQ 237.
Regarding claim 7, although Schultz does not explicitly describe the diameter of his tennis ball canister, one of ordinary skill in the art would know that a regulation tennis ball is approximately two and one-half inches in diameter. As such, it would have been an obvious matter of design choice to make the Schultz canister between two and one-half to four inches in diameter, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See In re Rose, 105 USPQ 237.
Regarding claims 10 and 11, Schultz does not disclose the sleeve openings. However, the problem of providing lightening holes in sleeves and fabrics is generally well known in the art. It was commonly known to those skilled in the art that providing holes in elements would minimize the total weight of the sleeve. It would have been obvious at the time the invention was made for a person having ordinary skill in the art to provide holes to the Schultz sleeve for the purposes of reducing the overall weight of the sleeve. Further, it would have been obvious to place the openings at the distal end of the sleeve, since it has generally been recognized that the shifting the location of elements involves only routine skill in the art. See In re Japikse, 86 USPQ 70. Even further, one of ordinary skill in the art would recognize that the reducing the total weight of the sleeve is directly related to the size of the holes. It would have been obvious to a person having ordinary skill in this art, by routine experimentation, to provide Schultz with any reasonably-sized holes, including ones with the diameter of a thumb, in order to obtain the desired final weight of the sleeve. It is noted here that it is not necessary that the prior suggest the combination to achieve the same advantage or result discovered by applicant. See In re Kahn, 78 USPQ2d 1329.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Schultz as applied above in view of U.S. Patent Application Number 2021/0237942 (Collins et al., hereinafter Collins).
Schultz does not disclose a canister outer rim formed of metal. However, Collins discloses tennis ball cans are well-known in the tennis art to be pressurized and sealed with a metal seal 22. See Collins, Figure 6; paragraph [0021]. Upon removing seal 22 via tab 24, a metal rim remains. The manner of providing a metal rim on a tennis ball canister was made part of the ordinary capabilities of one skilled in the art base upon the teaching of such an improvement in Collins. Accordingly, one of ordinary skill in the art would have been capable of applying this known technique in the same manner to the Schultz tennis ball canister and the results would have been predictable to one of ordinary skill in the art, namely, one skilled in the art would have readily recognized that a metal rim results when a new tennis ball canister is opened.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Raleigh Chiu whose telephone number is (571) 272-4408. The examiner can normally be reached on Monday-Tuesday.
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 number for the organization where this application or proceeding is assigned is (571) 273-8300.
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It is noted that all practice before the Office is in writing (see 37 C.F.R. § 1.2) and the proper authority for action on any matter in this regard are the statutes (35 U.S.C.), regulations (37 C.F.R.) and the commentary on policy (MPEP). Therefore, no telephone discussion may be controlling or considered authority of Petitioner’s/Caller’s action(s).
/RALEIGH W CHIU/ Primary Examiner, Art Unit 3711