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 Objections
Claim 2 is objected to because of the following informalities: the claim recites the tailgate football game according to claim 2. It is understood by the examiner that the applicant intended to recite according to claim 1, as a dependent claim can’t further depend on itself. The further limitations of claim 2 are understood to be dependent on claim 1. Appropriate correction is required as follows: the tailgate football game according to claim 1.
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 18-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Determining enablement is a question of law based on underlying factual findings, in re Vaeck 947, F.2d 488,495 (Fed. Cir. 1991). The determination that “undue experimentation” would have been needed to make/and or use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached from weighing some or all of the following non-exhaustive list of factual considerations: A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The claim states a plurality of lockable hinges (line 3). The specification states “The playing field board shown in FIG. 4 has a lockable hinge 405, with, for example, an "L-shaped" lock 410, so that the targets remain stationary in an upright” in [0034]. However, applicant’s specification does not describe how item 405 is used differently than the hinge in claims 1 and 15 in its function of keeping the target upright. It's unclear what the "L-shaped" lock does to the hinge. Is it an Allen key (or hex key) to turn something on the hinge to lock it? Is it just a structure placed behind the target to support it in a position?
Thus, the specification provides no direction or working examples (factual considerations F and G, above) with respect to how to achieve an upright function. Therefore, based on the disclosure of the applicant, one of ordinary skill in the art would not be able to make or use the invention without undue experimentation. The examiner, therefore concludes that the specification does not enable, in combination with the other limitations of the claim, how to make or use the claimed invention.
Claims 19 and 20 are also rejected as they inherit the deficiencies thereof.
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 1-20 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.
Claims 1 and 15 recite a first portion and connection to a second position of a respective hinge. Examiner suggests a change to –connection to a second portion of a respective hinge—.
Claims 2-14 and 16-17 are also rejected as they inherit the deficiencies thereof.
Claim 18 recites connection to a locked second position of a respective hinge, but should read –connection to a locked second portion of a respective hinge—.
Claims 19 and 20 are also rejected as they inherit the deficiencies thereof (the respective dependent claim of claim 18) inherit the deficiencies of claim 18, resulting in a U.S.C 112(b) rejection.
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, 2, 4-7, and 15-17 are rejected under U.S.C. 102 (a)(2) as being unpatentable over Dunlop (US 20150069707 A1). Regarding claim 1, Dunlop teaches a tailgate football game (The target apparatus may also be used for practicing bowling in cricket, for throwing footballs or handballs, or kicking soccer balls [0034]), comprising: at least one playing field board (14), a plurality of hinges (30) having a first portion attached to the playing field board (top part of the bolt is the first portion); a plurality of targets (16), each target is pivotally attached to the playing field board by connection to a second position of a respective hinge of the plurality of hinges (the targets (16) are attached to the playing field board (14) via the bolts (30) at the bottom part of the bolt); and wherein each target of the plurality of targets is configured to pivot from a first position to a second position by movement of the hinge (see Fig 4, where the target is moving from a first position to a second position) Regarding claim 2, Dunlop further teaches further comprising at least one ball ([0034] The target apparatus may also be used for practicing bowling in cricket, for throwing footballs or handballs, or kicking soccer balls); wherein the first position of the target is substantially perpendicular to a top surface of the playing field board, and the second position is substantially parallel to the top surface of the play field board (The target, as shown in Fig 4 moves through a plurality of positions. A second position, interpreted as 90 degrees from the first position, is inherently parallel to the top surface.
Regarding claims 4 and 5, Dunlop further teaches wherein the at least one ball is comprised of foam and is football-shaped; and wherein each one of the plurality of targets are set in the first position, and a particular one respective hinge of the hinges is configured to pivot from the first position to the second position upon the football-shaped foam ball striking a particular one target of the plurality of targets ([0009] When struck by a puck, ball or other object, the target paddle rotates from one side to the other side, thereby automatically resetting itself to be targeted again). As the target apparatus can be used for practicing throwing footballs, it is obvious to use one that is comprised of foam and is football-shaped as this is related to ornamentation only, which have no mechanical function and cannot be relied upon to patentably distinguish the claimed invention from the prior art; see MPEP 2144.04 I. This further appreciates claim 5, wherein the target is configured to pivot from the first position toward the second position upon the football-shaped foam ball striking the target (as shown by Dunlop above in the rejection of claim 4).
Regarding claims 6 and 7, Dunlop teaches wherein a plurality of targets are marked with a particular type of offensive action and a point value; and wherein at least one target is a defensive target that if struck by the football-shaped foam ball from the offense earns a point for a team on defense (claim 6), and wherein at least one of the plurality of targets is marked with a penalty indication (claim 7). Both of these claims are in regards to printed matter on the plurality of targets. There is no functional relationship between the targets and the marking placed on them, therefore the claims lack patentable weight; see MPEP 2111.05 I.
Regarding claim 15, Dunlop teaches a tailgate football game (The target apparatus may also be used for practicing bowling in cricket, for throwing footballs or handballs, or kicking soccer balls [0034]), the kit comprising: at least one playing field board (12), a plurality of hinges having a first portion attached to the playing field board (top part of the bolt is the first portion); a plurality of targets (16), each target is pivotally attached to the playing field board by connection to a second position of a respective hinge of the plurality of hinges (the targets (16) are attached to the playing field board (14) via the bolts (30) at the bottom part of the bolt, and the bottom part of the bolt serves as the second position); and wherein each target of the plurality of targets is configured to pivot from a first position to a second position by movement of the hinge (see Fig 4, where the target is moving from a first position to a second position) . The bolts 30 are analogous to the hinges of the claim, as it serves to allow for the pivoting motion to occur.
Regarding claim 16, Dunlop teaches comprising at least one ball configured to strike the targets (When struck by a puck, ball or other object, the target paddle rotates from one side to the other side, thereby automatically resetting itself to be targeted again[0009]) and at least one target of the plurality of targets is marked with a penalty indication: this is the same as claim 7, where it printed matter on the plurality of targets. There is no functional relationship between the targets and the marking placed on them, therefore the claims lack patentable weight.
Regarding claim 17, Dunlop teaches wherein the at least one ball is comprised of foam and is football-shaped; As the target apparatus can be used for practicing throwing footballs, it is obvious to use one ball that is comprised of foam and is football-shaped as this is related to ornamentation only, which have no mechanical function and cannot be relied upon to patentably distinguish the claimed invention from the prior art; see MPEP 2144.04 I. Dunlop also teaches wherein at least some of the plurality of targets are marked with a particular type of offensive action and a point value; and wherein at least one target of a remainder of the plurality of targets is marked with a particular type of defensive action that if struck by the football-shaped foam ball from the offense earns a point for a team on defense; There is no functional relationship between the targets and the marking placed on them, therefore the claim lacks patentable weight; see MPEP 2111.05 I.
Claim Rejections - 35 USC § 103
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 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 1,3 are rejected under 35 U.S.C 103 as being unpatentable over Dorfman (US 4116443 A). Regarding claim 1, Dorfman teaches at least one playing field board (11); a plurality of hinges (support shaft 20) having a first portion (R.sub.1 of the upper portion of support shaft 20) attached to the playing field board; a plurality of targets (12), each target is pivotally attached to the playing field board by connection to a second position (R.sub.3) of a respective hinge of the plurality of hinges (plurality of short shafts 20); and wherein each target of the plurality of targets is configured to pivot from a first position to a second position by movement of the hinge (The player then tosses a bean bag 40, and as it strikes a display element 12, the latter is freely rotatable about its associated support shaft 20, and rotates until such time as the upper portion of radius R.sub.1 of the shaft 20 lodges in one of the correspondingly shaped angles of the associated triangular-shaped aperture 30). While Dorfman doesn’t explicitly teach a tailgate football game, it would have been obvious to use the game apparatus 10 in a tailgate setting as this is related merely to the intended use of the device; see MPEP 2144.07.
Regarding claim 3, Dorfman further teaches wherein the playing field board has a plurality recesses (The top wall 13 contains longitudinally extending ribs 16 and cross-ribs 18 which sub-divide the top wall 13 into a plurality of openings, nine of which are shown in the display apparatus in FIG. 1), each one recess is sized to receive a respective target biased in the second position (when a tossed bag hits against any paddle of a display element, the display element is rotated, and the openings are sized to receive said display elements, see Abstract).
2. Claims 8-11, 14, and 18-20 are rejected under U.S.C 103 as being unpatentable over Dunlop in view of Rempel (US 20230235996 A1). Regarding claim 8, the modified game of Dunlop teaches each one sensor is respectively arranged on the playing field board or on at least some of the plurality of the targets and is configured to sense a motion of one respective target of the plurality of targets away from the first position (the target shooting game 100 may include a plurality of electrical switches and/or a plurality of other sensors located underneath each target 120 when in the lowered position 122. In some embodiments, these electrical switches and/or other sensors may be configured to detect a force at which the target 120 is knocked down or may only be triggered if the force exceeds a certain threshold, ensuring that the controller means 140 only adds a point to the score total 161 when the target 120 is hit with the projectile, Rempel [0036]).
With regards to claim 9, the modified Dunlop further discloses wherein each one sensor outputs a signal when the motion of one respective target is sensed (For example, when a raised target 120 is hit by a projectile (shot at), the at least one sensor 170 may detect the contact, send a signal to the controller means 140 and the controller means 140 may then trigger the actuator means 130 to lower the raised target 120: Rempel, [0034]).
For claim 10, the modified Dunlop further discloses comprising a display attached to the score keeping circuit (For example, the at least one frame 110 may include a display for displaying the score total 161; Rempel, [0049]).
For claim 11, the further modified Dunlop further discloses wherein the score keeping circuit includes a wireless transmitter that communicates via one of WiFi or Bluetooth with a mobile phone having an open application for the tailgate football game: referring specifically to FIGS. 11-14, preferably, the target shooting game 100 may include a software application 160 useable on an external device 5 and configured for communication with the controller means 140. For example, the external device 5 may be a smartphone, a tablet computer, a desktop computer, a laptop computer, or the like. Preferably, the target shooting game 100 may include a BLUETOOTH® transceiver and the controller means 140 may be configured to communicate with the software application 160 via BLUETOOTH® connection (Rempel, [0046])
Regarding claim 14, Dunlop, as discussed above in the prior claims, discloses the tailgate football game but fails to disclose further comprising instructions. This is functional language (or an intended use) that the prior art is fully capable of performing (or being used in such a manner): Rempel teaches this as follows: Referring now to FIG. 15 showing a flow diagram illustrating a method of using a target shooting game 200, according to an embodiment of the present disclosure. In particular, the method 200 may include one or more components or features of the target shooting game 100 as described above. As illustrated, the method 200 may include the steps of: step one 201, providing the target shooting game as above; step two 202, triggering the actuator means via at least one of the controller means and the software application to begin selectively moving each of the plurality of targets between the raised position and the lowered position at least one at a time; and step three 203, shooting at least one target in the raised position, the at least one target being automatically moved into the lowered position once a predetermined condition is met and another at least one target then being moved into the raised position (Rempel, [0051]). For the rest of the claim specifying a game is played between two teams in two halves, with each team switching playing field boards following the first half of the two halves; and wherein 4 consecutive throws of the foam ball comprises a series for each playing, and wherein a non-throwing team is the defense, it has been held that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. Simply claiming the content of instructions is not a patentable advance. See In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining "[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.").
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to have modified the game of Dunlop with the steps of Rempel (achieving the same function as the instructions of the claim) in order to best explain how to use the game.
Regarding claim 18, while Dunlop teaches at least one playing field board; a plurality of lockable hinges having a first portion attached to the playing field board; a plurality of targets, each target is attached to the playing field board by connection to a locked second position of a respective hinge of the plurality of hinges (all the same structural limitations as claim 1 and appreciated in the same manner), Dunlop fails to teach the sensor is configured to sense when a target is struck and output a signal. Rempel teaches this as follows, as above in claim 9: For example, when a raised target 120 is hit by a projectile (shot at), the at least one sensor 170 may detect the contact, send a signal to the controller means 140 and the controller means 140 may then trigger the actuator means 130 to lower the raised target 120 [0034].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to have modified the game of Dunlop with the sensor of Rempel to ensure that a scoring signal can most accurately be recorded when a target is struck.
Regarding claim 19, the modified Dunlop teaches further comprising a scoreboard display that receives an output from the sensor that a target has been struck and updates a display based on a value assigned to each particular target: For example, when a raised target 120 is hit by a projectile (shot at), the at least one sensor 170 may detect the contact, send a signal to the controller means 140 and the controller means 140 may then trigger the actuator means 130 to lower the raised target 120. Further, in some embodiments, the controller means 140 may be configured to add a point to a score total 161 when projectile contact is detected (Rempel, [0034]).
For claim 20, the modified Dunlop teaches the scoreboard display comprises a smart device configured with a scorekeeping application: The score total 161 may be displayed on the software application 160. The software application 160 may receive the score total 161 from the controller means 140 and display the score total 161 on the external device 5. In further embodiments, the score total 161 may be displayed on the at least one frame 110. For example, the at least one frame 110 may include a display for displaying the score total 161 (Rempel, [0034]).
3. Claims 12 and 13 are rejected under U.S.C 103 as being unpatentable over Dunlop in view of Cooper (US 12544637 B2). Regarding claim 12, while Dunlop teaches the tailgate football game, it lacks a teaching of two playing field boards. Cooper teaches this as follows: wherein the first plurality of offensive game targets are arranged on a playing field by a first team, and the second plurality of defensive game targets are arranged on a playing field by a neutral party or by a second team (col 4, lines 24-27).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to have further modified the modified game of Dunlop with Cooper’s pair of playing fields such that the game can be played with the teams not being limited to one playing field, but rather a playing field per team.
Regarding claim 13, Dunlop teaches the plurality of targets, however fails to teach that it comprises 10 targets. While imaged are four targets in Fig 6. of Dunlop, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the number of targets of Dunlop from 4 to 10 as applicant appears to have placed no criticality on the claimed range and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RIA SHARMA whose telephone number (571) 345-5811. The examiner can normally be reached 8:00am- 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.S./Examiner, Art Unit 3711
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711