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 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 14-16 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.
Claim 14 recites the limitation "wherein each slot" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the slot" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the slots" in line 1 and “the slot” line 4. There is insufficient antecedent basis for these limitations in the claim.
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(s) 1-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mcerlean et al US 2018/0304137 (“Mcerlean”) in view of Meyer US 3,302,258 (“Meyer”)
As per claim 1, Mcerlean discloses a basketball target system (training device 10)(Figs. 1-4; paragraphs [0021]-[0029]), comprising:
a basketball backboard (inherent within the basketball goal)(note also [0011], [0012] and [0023]); a rim mounted to the backboard and having a center point (rim 15)(Figs. 2 and 3; [0022]-[0024]); a net attached to and hanging downwardly from the rim, and having upper and lower ends defining a height for the net (inherent within the basketball goal)(note also [0012]);
an elongated body positioned inside the net (elongated body 11)(Fig. 1; [0021]), adjacent the rim (Figs. 2 and 3; [0022]-[0024]), the body having a height shorter than the net height so as to reside above the lower end of the net (the device’s 10 height is shorter than the length of the conventional netting of the basketball goal) (Figs. 1-3 in conjunction to [0011]-[0012], and [0022]-[0026]);
a plurality of slots in the body through which to mount the body to the rim with the body extending horizontally and curving to follow the curvature of the rim to provide a visual target adjacent the rim and spaced behind the center point of the rim from a perspective of a basketball shooter (the device includes attachment points 13 to attached the device to rim 15(Fig. 1 and [0021] regarding the attachment means; note Figs. 2-4 in conjunction to [0022]-[0026] regarding the position of the device relative to the rim 15 to practice shooting); the body having a longitudinal axis (Fig. 1).
Mcerlean is not specific regarding a plurality of spaced apart straps extending upwardly from the body and over the rim, with each strap having an end with an enlarged head and an elongated narrowed neck for connecting to the body.
Mcerlean is not specific regarding the plurality of slots in the body through which the heads of the straps extend to slidably capture the necks in the slots so as to mount the body to the rim with the body extending horizontally; the necks moving within the slots to absorb impact forces when a ball hits the body; the straps having longitudinal axes extending in the same direction to one another and perpendicular to the body longitudinal axis; and the body and straps being formed as one piece.
With respect to a plurality straps means, in a field of utilizing attachment means, Meyer discloses a plurality of spaced apart straps extending upwardly from a body, with each strap having an end with an enlarged head and an elongated narrowed neck for connecting to the body (body (pate 16) with flexible straps 48 extending therefrom; each includes an enlarged head (cross arm/s 50) and narrow neck (between the arms)(Fig. 1; 2:10-71). 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 Mcerlean’s with a plurality of spaced apart straps extending upwardly from the body, with each strap having an end with an enlarged head and an elongated narrowed neck for connecting to the body for the reason that a skilled artisan would have been motivated by Mcerlean’s suggestions to use any conventional fasteners through slots 13 to attached the device to the basketball rim ([0021]). In addition, such modification to Mcerlean 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 as using known fastening means to firmly attached the device onto the basketball rim.
Within the modified Mcerlean and Meyer, a plurality of slots in the body (as taught by Mcerlean and/or Meyer) through which the heads of the straps extend to slidably capture the necks in the slots (as taught by Meyer) so as to mount the body to the rim (as taught by Mcerlean) with the body extending horizontally and curving to follow the curvature of the rim to provide a visual target adjacent the rim and spaced behind the center point of the rim from a perspective of a basketball shooter(as taught by Mcerlean); the necks moving within the slots to absorb impact forces when a ball hits the body (while the modified device attached to the basketball rim); the body having a longitudinal axis (as taught by Mcerlean and Meyer); the straps having longitudinal axes extending in the same direction to one another and perpendicular to the body longitudinal axis (as taught by Meyer); and the body and straps being formed as one piece (as taught by Meyer; Fig. 1; 2:52-56).
As per claim 2, Mcerlean discloses wherein the body (10/11) has a midpoint and opposite ends (Figs. 1-3), and the body slopes downwardly from the midpoint to the opposite ends (Figs. 1-3).
As per claim 3, although Mcerlean is not specific regarding wherein the body is tapered from a midpoint towards opposite ends, the examiner notes that it has been held that the particular configuration of the object is nothing more than one of numerous configurations a person of ordinary skill in the art would find obvious as a matter of users preference or design choice. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1976). 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 Mcerlean’s wherein the body is tapered from a midpoint towards opposite ends for the reason that a skilled artisan would have been motivated as an obvious user choice absent persuasive
evidence that the particular configuration of the claimed product was significant.
As per claim 4, with respect to wherein the straps slide in the slots and the body moves from an initial at-rest position when a basketball hits the body, and then the body resets to the initial a- rest position inside the net, within the modified Mcerlean by the teachings of Meyer, while the modified device is attached to the basketball rim (as taught by Mcerlean) utilizing the straps-to-slots attachment (as taught by Meyer), the modified device would have function as such. In that regard, according to MPEP 2114 under II. Manner Of Operating The Device Does Not Differentiate Apparatus Claim From The Prior Art "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The examiner takes the position that the modified Mcerlean-Meyer device is fully capable to perform as claimed, since it includes the same structure as claimed.
As per claim 5, with respect to wherein the straps have sufficient length to extend loosely over the rim and thereby provide a spring action to the body when a basketball engages the body, within the modified Mcerlean by the teachings of Meyer, while the modified device is attached to the basketball rim (as taught by Mcerlean) utilizing the straps-to-slots attachment (as taught by Meyer), the modified device would have function as such. The examiner maintains his position that the modified Mcerlean-Meyer device is fully capable to perform as claimed, since it includes the same structure as claimed.
As per claim 6, Mcerlean discloses wherein the body extends approximately 180 degrees around the rim (Figs. 2 and 3).
As per claim 7, with respect to wherein the body is elongated, note Mcerlean’s Fig. 1 regarding body 11 and Meyer’s Fig. 1 regarding plate/body 16; with respect to and the straps are longer at a midpoint of the body and shorter at opposite ends of the body, such limitations are amount to mere configuration, (see for example the discussion above with respect to claim 3), and thus 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 Mcerlean-Meyer’s straps are longer at a midpoint of the body and shorter at opposite ends of the body for the reason that a skilled artisan would have been motivated as an obvious user choice absent persuasive evidence that the particular configuration of the claimed product was significant.
As per claim 8, with respect to wherein each slot is T-shaped, note Meyer’s Fig. 1 regarding slot 56/notch 58.
As per claim 9, with respect to further comprising a secondary strap, separate from the plurality of straps, removably connected to the body, note Meyer’s Fig. 1 regarding sections 12/14 attached to plate/body 16 via ball snaps 27 (2:28-34); with respect to with the secondary strap weavable through the net to connect the body to the net, the examiner maintains his position that the modified Mcerlean-Meyer device is fully capable to perform as claimed, since it includes the same structure as claimed (see the examiner discussion above with respect to claim 4).
As per claim 10, with respect to further comprising a pair of T-shaped slots to receive and retain opposite ends of the secondary strap, construed as the flanges 32 to receive secondary strap 12/14 within (Fig. 1; see also the examiner’s markings hereinafter).
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As per claim 11, with respect to wherein each strap includes a curved notch on opposite edges at a juncture of the head and the neck, note Meyer’s Fig. 1 regarding the curvature between arm 52 (e.g., head) and neck (therebetween) of straps 48.
As per claim 12, since the claim’s limitations are very similar to claims 1-2, the examiner states that claim 12 is rejected over Mcerlean and Meyer for the same
reasons discussed above with respect to claims 1-2. Since there is no apparent different structural and/or functional limitations of the device of claim 1-2 and the device of claim 12, it is important to note that such statement by the examiner is not merely to “ignore” the claim’s limitations, rather, the examiner attempts to simplify the above rejection, and not “paste and copy” similar limitations, thus to create unnecessary lengthy Office action.
As per claim 13, with respect to wherein the body has a height downwardly from the midpoint to each of the opposite ends, note Mcerlean’s Figs. 1-3. With respect to the body’s height tapering downwardly from the midpoint to each of the opposite ends, such limitations are amount to mere configuration, (as discussed above with respect to claim 3), and thus 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 Mcerlean’s body’s height tapering downwardly from the midpoint to each of the opposite ends for the reason that a skilled artisan would have been motivated as an obvious user choice absent persuasive evidence that the particular configuration of the claimed product was significant.
As per claim 14, with respect to wherein each slot is T-shaped and the end of each strap has an enlarged head which fits through the T-shaped slot for retention in the T-shaped slot, note Meyer’s Fig. 1 regarding slots 56/notched 58; note also arms 52 (e.g., enlarged head) to fit thereto (also 2:51+).
As per claim 15, with respect to wherein the straps each include an elongated narrowed neck and enlarged head for retention in the slot, note Meyer’s enlarged head (cross arm/s 50) and narrow neck (between the arms)(Fig. 1; 2:10-71); with C-shaped notches on opposite edges of the neck adjacent the head (at/around the arms/ 52 to elongate neck)(Fig. 1). In addition, such C shape notches would have been an obvious user choice absent persuasive evidence that the particular configuration of the claimed product was significant (see for example the discussion above with respect to at least claim 3).
As per claim 16, with respect to wherein the straps slide in the slots when the body is hit by a ball to absorb impact forces of the ball and to return the body to the initial position, and the notches provide a stop point to prevent the head from being pulled through the slot when a ball impacts the body, within the modified Mcerlean by the teachings of Meyer, while the modified device is attached to the basketball rim (as taught by Mcerlean) utilizing the straps-to-slots attachment (as taught by Meyer), the modified device would have function as such. The examiner maintains his position as set forth above (e.g., claim 4) that the modified Mcerlean-Meyer device is fully capable to perform as claimed since it includes the same structure as claimed.
As per claim 17, with respect to further comprising a secondary strap removably connected to the body, note Meyer’s Fig. 1 regarding sections 12/14 attached to plate/body 16 via ball snaps 27 (2:28-34); with respect to with the secondary strap weavable through the net to connect the body to the net, the examiner maintains his position that the modified Mcerlean-Meyer device is fully capable to perform as claimed since it includes the same structure as claimed (see the examiner discussion above with respect to claim 4).
As per claim 18, with respect to wherein the straps form deformable loops extending around the rim, while the flexible straps (as taught by Meyer, e.g., Fig. 1 and 2:52+) attached to the elongate device (as taught by Mcerlean) and while the device is attached to the basketball rim (as taught by Mcerlean, e.g., Figs. 1 and 2; [0021]) the flexible straps form deformable loops extending around the rim.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mcerlean in view of De Vries US 2006/0172826 (“De Vries”).
As per claim 19, Mcerlean discloses a method of attaching a target to a basketball rim and net hanging downwardly from the rim, the rim being circular and the net having open upper and lower ends (attaching training device 10 to a basketball goal)(Figs. 2-4; [0021]-[0026]) , the method, comprising;
positioning a target body horizontally inside the rim and inside the net, adjacent the rim and apart from a center point of the rim, and wholly above a lower end of the net (positioning the training device 10 to rim 15 above a lower end of a conventional netting)(Figs. 2-4; [0021]-[0025]; note at least [0012], regarding the netting means);
extending a plurality of conventional fasteners on the target body around the rim and attaching ends of the conventional fasteners to the target body (slots 13 of body 11 to receive conventional fasteners to attach the device to rim 15)(Fig. 1 and [0021[ in conjunction to Figs. 2-3 and [0022]-[0025]); whereby an imaginary cylinder extending upwardly through the open bottom of the net and coaxially with the center point of the rim is unobstructed by the target body and straps (Figs. 2-4; [0022]-[0027]).
Mcerlean is not specific regarding the conventional fasteners are straps. However, De Vries discloses straps (Figs. 3 and 4; [0002]-[0005]) of body to wrapped around a basketball rim (Fig. 4; [0005]+). 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 Mcerlean’s conventional fasteners as a plurality of straps on the target body around the rim and attaching ends of the straps to the target body for the reason that a skilled artisan would have been motivated using known mechanical fasteners to firmly secure the target body thereon yet allow easy removable for maintains and alike.
As per claim 20, with respect to wherein the body is positioned approximately 1” inside the rim and 1” below the rim, the examiner takes the position that the target device of Mcerlean position as claimed, as shown in Figs. 2-4. In addition, it is noted that it has been held that claims which read on the prior art except with regard to the position of the elements were held unpatentable because shifting the position of the elements would not have modified the operation of the device; see In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950);In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). 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 position Mcerlean’s target device as claimed merely as a matter of obvious engineering choice that would not have modified the operation of the device as target position within rim/basketball goal to practice shooting.
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, 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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/A.A.K/Examiner, Art Unit 3711 1/20/2026
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711