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 information disclosure statement filed 05 December 2022 fails 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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: reference character 132 (Figure 1). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 25 and 28 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.
Regarding claim 25, the recitation of a “second telescoping mechanism” is confusing when a first telescoping mechanism has not been claimed.
Regarding claim 28, it is not clear how the ball holder can be attached to both a pole and the first side portion.
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 1-3 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Number 5,282,615 (Green et al., hereinafter Green).
Regarding claims 1 and 3, Figures 1 and 2 of Green show a training device including a first target (ball 26) positioned in a vertical swing plane. Retaining member 44 corresponds to the recited second target that is approximately 90 degrees from the ball. As Green discloses that the retaining member can be made from metal or plastic tubes, hitting retaining member 44 is considered to inherently cause an audible feedback. See Green, bridging paragraph between columns 6-7.
Regarding claim 2, spindle 22 is positioned approximately 180 from ball 26 and broadly corresponds to the recited third target.
Regarding claim 7, Figure 2 shows a rubber band 28 that corresponds to the recited holder.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Green as applied above.
Regarding claims 4 and 5, Green discusses the use of using metal or plastic to construct the tubes but he does not explicitly disclose them to be flexible. However, one of ordinary skill in the art would recognize that the Green hitting practice device would be potentially hit by errant swings. As such, it would have been obvious at the time the invention was made for a person having ordinary skill in the art to make the device from a flexible material in order to be able to absorb the impact generated from any mis-swings by the user.
Regarding claim 6, the Green hollow tubes are broadly considered to be straws.
Claims 8, 9, 11, 12 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 4,049,266 (Feiler).
Regarding claims 8 and 9, Figure 1 of Feiler shows a tennis training device with a vertical support member 3 and an arc-shaped body 5 that forms the shape of a U. Figure 1 of Feiler further shows a hollow tube 16 made of plastic that corresponds to the recited first flexible tube and is considered to be inherently capable of producing an audible feedback when struck. Also, see the bridging paragraph between columns 3-4. To the extent that not every plastic can be considered to be inherently flexible, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the plastic flexible, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416. Further, Feiler discloses a sideways-U alignment to practice forehand and backhand strokes. It would have been an obvious matter of design choice to make the Feiler U in an inverted-U alignment to practice serves, since such a modification would have involved a mere change in the orientation of the body. A change in form is generally recognized as being within the level of ordinary skill in the art. See In re Dailey, 149 USPQ 47.
Regarding claim 11, a hollow tube is broadly considered to be a straw.
Regarding claim 12, a flexible tube as described above is further considered to be deformable.
Regarding claim 25, Feiler discloses that the height of the arc-shaped body can be slid up and down via fastening members 4 but does not explicitly use telescoping members. See Feiler, column 3, lines 25-29. It would have been obvious to make the Feiler vertical support member with telescoping parts since the examiner takes Official Notice of the equivalence of sliding members and telescoping members for their use in adjusting the length or height of an element and the selection of any of these known adjusters to from the vertical support member of Feiler would be within the level of ordinary skill in the art.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2003/0153411 (Obidiegwu).
Figure 1 of Obidiegwu shows an arc-shaped body formed from lower legs 30 and is attached to a vertical support member 82 in an inverted U-alignment. Rails 16 correspond to the recited first attachment mechanism disposed on the arc-shaped body 30. Mount device 100 corresponds to the recited ball holder. Figure 1 of Obidiegwu further shows flexible and detachable members 18 but does not explicitly show them to be tubular. It would have been an obvious matter of design choice to make the Obidiegwu members tubular since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. See In re Dailey, 149 USPQ 47.
Allowable Subject Matter
Claims 10, 13-24, 26 and 27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 28 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
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