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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "162", “164”, “160” have both been used to designate axis “120” as well as “alignment features” (Fig. 3) and “460”, “464”, “462” (alignment features”) and axis “120” (Fig. 5). Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
The drawings are objected to because Figs. 5 and 6, are murky pictures that the elements intended to be shown are unclear. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 § 102
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.
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.
Claim(s) 10-15, 19-21 and 23-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Swartz et al US 8,092,315 (“Swartz”).
As per claim 10, Swartz discloses a sheet for identifying a minimal vibration region of a sports implement (indicator 100 for indicating ball hitting thereof for sport implements, as golf clubs, baseball bats, tennis, and etc.)(Figs. 1-11; 1:63-7:33), comprising: a sheet having a first edge (top edge), second edge (bottom edge), third edge (right edge), and a fourth edge (left edge) (Figs. 1-4; 1:63-2:12); a first indicia disposed on the sheet; (any indicia 140)(Figs. 1-4; 2:65-3:10) and a second indicia disposed on the sheet (any indicia 140 that is not construed as “a first indicia”)(Figs. 1-4; 2:65-3:10), proximate the first edge of the sheet (Figs. 1-4).
As per claim 11, further comprising a third indicia disposed proximate the second edge opposite the second indicia (any indicia 140 that is not construed as “a first indicia”, or “second indicia” )(Figs. 1-4; 2:65-3:10) .
As per claim 12, Swartz discloses further comprising a sheet axis disposed through at least two of the first indicia, the second indicia, or the third indicia (Fig. 1; note the examiner’s markings hereinafter).
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As per claim 13, with respect to wherein the sheet axis is disposed perpendicular to at least a portion of the first edge or the second edge, although Swartz is not specific regarding the sheet axis (as marked above, as the axis through the indicia), Swartz explicitly suggested that the indicia can be located anywhere upon the indicator sheet 100 in 3:1+” The graphical representation(s) 140 may be located in various areas of the impact indicator 100 (e.g., sides, top, bottom, center, upper-right corner, lower-right corner, upper-left corner, and/or lower-left corner of the impact indicator 100).” In that regard, i.e., the location of the axis in relation to the first indicia and second indicia , amount to mere printed matter of the indicia upon the sheet, that does not given any patentability weight. Per MPEP 2111.05, if a new and unobvious functional relationship between the printed matter and the substrate does not exist, USPTO personnel need not give patentable weight to printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). In Miller (In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969).). Unlike the fact situations in Miller and Gulack, the substrate (sheet surface) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique position with respect to the substrate. There is not a new and unobvious functional relationship therebetween. Instead, the printed matter is akin to the images on a card which as discussed above was not determined to establish a new and unobvious functional relationship with the substrate. As such, no patentable weight is given to the claimed printed matter.
As per claim 14, Swartz discloses wherein the second indicia and the third indicia each comprises a marking disposed on the sheet (indicia 140)( Figs. 1-4; 2:65-3:10).
As per claim 15, Swartz discloses wherein the first indicia is centrally disposed on the sheet (any indicia 140)(Figs. 1-4; 2:65-3:10) .
As per claim 19, Swartz discloses wherein the sheet includes an adhesive (adhesive layer 1060)(Figs. 10-11; 6:49-7:33).
As per claim 20, Swartz discloses wherein the adhesive selectively secures the sheet to the bat (indicator 100 adhere to sport implement)(3:11-26; 6:49-53).
As per claim 21, Swartz discloses a sheet for identifying contact with minimal vibration region of a sports implement, (indicator 100 for indicating ball hitting thereof for sport implements, as golf clubs, baseball bats, tennis, and etc.)(Figs. 1-11; 1:63-7:33) comprising: a sheet having a first edge (top edge), second edge (bottom edge), third edge (right edge), and a fourth edge (left edge) (Figs. 1-4; 1:63-2:12); a first positioning feature disposed on the sheet (construed as any indicia 140)(Figs. 1-4; 2:65-3:10); a first alignment feature disposed on the sheet, proximate the first edge of the sheet (construed as any indicia 140 that is not “the first positioning feature”)(Figs. 1-4; 2:65-3:10); and a pressure sensitive material configured to change coloration when subjected to an external pressure (Figs. 1-4 regarding markings 210-310-410-420-430-440-450 as changing color upon impact of a ball thereof; 2:13-64; Fig. 5 and 3:26-4:40).
As per claim 23, Swartz discloses wherein the pressure sensitive material is disposed proximate the first positioning feature between the third edge and the fourth edge (Figs. 2-5; 3:26-4:40).
As per claim 24, Swartz discloses further comprising a second alignment feature disposed proximate the second edge opposite the second marking feature (construed as any indicia 140 that is not construed as “a first positioning” or “a first alignment”)(Figs. 1-4; 2:65-3:10).
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.
Claim(s) 16-18 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swartz.
As per claim 16, with respect to wherein the first edge has a first curvature and the second edge has a second curvature, the examiner construed the edges, as marked hereinafter (Swartz’ Fig .1) as having such curvature as claimed.
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However, if there is any doubt regarding the examiner’s interpretations, such “curvatures configurations” would have been a matter of a design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product was significant; See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Therefore, 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 to form Swartz’s first edge has a first curvature and the second edge has a second curvature as an obvious design choice, without any more.
As per claim 17, Swartz discloses wherein the first curvature is different than the second curvature, in Fig. 1 in conjunction to the above marking (e.g., claim 16). In addition, the examiner maintains his position that such configuration would have been an obvious user choice, as set forth above with respect to claim 16.
As per claim 18, Swartz discloses wherein the first curvature is greater than the second curvature, in Fig. 1 in conjunction to the above marking (e.g., claim 16). In addition, the examiner maintains his position that such configuration would have been an obvious user choice, as set forth above with respect to claim 16.
As per claim 22, with respect to wherein the pressure sensitive material is a mechanochromic polymer, the examiner construed Swartz’s thermochromic compound layer 530, which changes color based upon temperature changes due to a ball impact (3:26-4:40), as the claimed material, according to applicant’s disclosure in at least
[0045] ”…may include a mechanochromatic material or polymer. A mechanochromatic material (alternatively referred to as a piezochromatic material) is a material that changes color and/or other visual characteristic when subjected to mechanical stress.”. Accordingly, Swartz’s thermochromic compound layer is such material that changes color/s.
If there is any doubt as to the examiner’s interpretation, it is noted that it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, 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 to form Swartz’s with the claimed material for the reason that a skilled artisan would have been motivated in utilizing known material suitable for its intended use as a material capable to change color to indicate a ball impact upon the indicator sheet.
Claim(s) 1-3, 5-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki US 2012/0142456 (“Suzuki“) in view of Swartz.
As per claim 1, Suzuki discloses a marking system for a baseball bat (swing aid element 3 connected to bat/element 2)(Figs. 1-2 and 4A-6; [0028]-[035]), comprising: a bat including a barrel extending along a central longitudinal axis (Figs. 1, 2 and 5; [0028], [0029], and [0034]), the barrel defining a minimal vibration region (Figs. 4A and 4B; [0032] and [0033]); a sheet (wing aid 3) having a first edge (top edge), second edge (bottom edge), third edge (right edge), and a fourth edge (left edge) (Figs. 1 and 2) , the sheet (swing aid 3) adapted to at least partially encircle a portion of the barrel of the bat (Figs. 1, 2, 4A and 5; [0034]-[0035]).
Suzuki is not specific regarding the first edge having a first curvature and the second edge having a second curvature.
Suzuki is not specific regarding a first positioning feature disposed on the sheet; and a first alignment feature disposed proximate the first edge of the sheet, wherein the first positioning feature is configured to be positioned adjacent to at least a portion of the minimal vibration region.
However, Swartz discloses a sheet, indicator 100 for marking system for placing upon bats for marking ball impact thereof the sweet spot (i.e., minimal vibration region), with a first edge having a first curvature and a second edge having a second curvature (Figs. 1-4; also as marked above with respect to claim 16); and a first positioning feature disposed on the sheet (construed as any indicia 140)(Figs. 1-4; 2:65-3:10); and a first alignment feature disposed on the sheet, proximate the first edge of the sheet (construed as any indicia 140 that is not “the first positioning feature”)(Figs. 1-4; 2:65-3:10); wherein the first positioning feature is configured to be positioned adjacent to at least a portion of the minimal vibration region (the indicator configure to be adhere to a bat sweet-spot, to include the indicia 140, i.e., positioning feature) (indicator 100 adhere to sport implement)(3:11-26; 6:49-53).
Therefore, 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 to form Suzuki’s first edge having a first curvature and the second edge having a second curvature; a first positioning feature disposed on the sheet; and a first alignment feature disposed proximate the first edge of the sheet, wherein the first positioning feature is configured to be positioned adjacent to at least a portion of the minimal vibration region as taught by Swartz for the reason that a skilled artisan would have been motivated in using known marking technique to properly aligned the sheet upon the sport implement to visualize the impact of the balls relative to the “sweet-spot/minimal vibration region” to train a batter in enhance swinging.
With respect to “the first edge having a first curvature and the second edge having a second curvature”, once again if there is any doubt as Swartz indicator 100 includes such edges (e.g., as marked above with respect to claim 16) the examiner maintains his position that such “curvatures configurations” would have been a matter of a design choice, as set forth above in claim 16.
As per claim 2, Swartz discloses further comprising a second alignment feature disposed proximate the second edge opposite the first alignment feature (construed as any indicia 140 that is not construed as “a first positioning” or “a first alignment”)(Figs. 1-4; 2:65-3:10).
As per claim 3, Swartz discloses further comprising a sheet axis disposed through at least two of the first positioning feature, the first alignment feature, or the second alignment feature, the sheet axis being positioned parallel to the central longitudinal axis of the barrel upon at least partially encircling a portion thereof, Fig. 1; note the examiner’s markings above with respect to claim 12. The sheet’s axis would have been in such position relative to the central’s axis of the barrel, while the device position upon the bat’s barrel. In addition, as discussed above with respect to claim 13, the location of the indicia-to-sheet axis would have been printed matter that is not given patentability weight as set forth above.
As per claim 5, Swartz discloses wherein the first curvature is different than the second curvature, in Fig. 1 in conjunction to the above marking (e.g., claim 16). In addition, the examiner maintains his position that such configuration would have been an obvious user choice, as set forth above with respect to claim 16.
As per claim 6, Swartz discloses wherein the first curvature is greater than the second curvature, in Fig. 1 in conjunction to the above marking (e.g., claim 16). In addition, the examiner maintains his position that such configuration would have been an obvious user choice, as set forth above with respect to claim 16.
As per claim 7, Suzuki discloses wherein the sheet includes an adhesive to secure the sheet to the bat (element 8 means of attaching and securing swing element to the bat)(Figs. 1 and 2; [0035]; also note Swartz’s adhesive layer 1060 (Figs. 10-11; 6:49-7:33).
As per claim 9, Swartz discloses wherein the first positioning feature is centrally disposed on the sheet (plus “+” marking thereof the indicator 100)(Figs. 1-4).
Claim(s) 4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki and Swartz as applied to claim 1 above, and further in view of Flynn US 2019/0162510 (“Flynn”).
As per claim 4, Suzuki- Swartz is not specific regarding wherein the first alignment feature and the second alignment feature are die cut in the sheet.
However, the use of a die-cut alignment/position means within a markings system of a sheet suitable to indicate impact thereof, is well known as taught by Flynn (Figs. 3 and 7; [0043]). Therefore, 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 to form Suzuki- Swartz’s alignment means as a die-cut using known technique to provide alignment means to properly position the sheet upon a surface while the sheet used for marking impact/s thereof.
As per claim 8, Suzuki- Swartz is not specific regarding wherein the first positioning feature is die-cut in the sheet. However, such die-cut means is well known as taught by Flynn (Figs. 3 and 7; 0043]). Therefore, 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 to form Suzuki- Swartz’s wherein the first positioning feature is die-cut in the sheet as taught by Flynn for the same reasons discussed above with respect to claim 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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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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/A.A.K/Examiner, Art Unit 3711 10/23/2025 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711