DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 2/13/26. Claims 12-13 and 15 are amended; claims 1-20 are pending.
Claim Rejections - 35 USC § 103
2. 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 of this title, 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.
3. Claims 1-3, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (US Pub. No. 2010/0317470) in view of McVeigh et al. (US Pub. No. 2010/0138971) and further in view of Seymour et al. (US Pat. No. 6,059,676).
With respect to claims 1, 3 and 7, Cea et al. teaches an illuminated toss bag, comprising: an outer shell configured to form a toss bag defining an internal portion 40 for receiving and retaining filling material 42 comprising a semi-transparent pellet shaped material with a diffused texture (paragraph [0029]); one or more illuminating portions disposed within the internal portion 40 (paragraphs [0034]-[0035]); and a hidden enclosing 102/104 feature disposed along a seam of outer shell of the toss bag selectively providing access to the internal portion 40 of the toss bag (paragraph [0040]). Per MPEP 2114 - 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). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the structure of Cea is capable of being used as claimed as the internal portion 40 can receive semi-transparent pellets with a diffused texture.
Cea teaches wherein the one or more illuminating portions comprises a power source, one or more illumination sources 66 and a user selectable device that allows a user to control operation of the one or more illumination sources (paragraph [0034]). Cea further teaches wherein the power source (and processor/control board) is enclosed within a housing (paragraph [0036] – “potted cube”), but not the illumination source 66. The claim elements not taught by Cea are the requirement that the user selectable device is a switch and wherein the illuminating portion housing encloses the illumination source and switch.
Examiner cites to analogous art reference McVeigh for its teaching that it is known to provide a depressable switch 161 as part of a lighting control board that will control operation of a game illuminating portion when depressed for at greater than 2 seconds (paragraphs [0029], [0035]-[0039]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate a user actuatable pushbutton, or switch, on the control board of Cea. The rationale to combine is to allow a game operator to adjust lighting settings/modes on the bag itself. The proposed modification has a reasonable expectation of success. A user can access the pushbutton through the hidden enclosure, or manipulate the button from the outside of the bag.
Further, within the art, it is known to provide an illuminating source, switch and battery within a housing as evidenced by Seymour (column 4, lines 15-26; Fig. 3; the housing being the structure defining the cavity 14 and having a shape substantially similar to the capsule 17). A person ordinary skill in the art would have found it obvious to encase the illuminating source and switch with the battery. The rationale to combine is to preserve the lights after repeated impacts with a landing target. The proposed modification has a reasonable expectation of success since Cea et al. already teaches a housing.
With respect to claim 2, Cea et al. as modified above fails to expressly teach a plurality of illuminating portions as claimed. However, The Federal Courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, see MPEP 2144.04, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In the instant case, applicant has not provided criticality to the addition of a second illuminating portion. A person ordinary skill in the art would have found it obvious to provide a second illuminating portion within the internal cavity 40 in view of MPEP 2144.04 - In re Harza. The rationale to duplicate is for the expected result of providing additional lighting options. The proposed modification has a reasonable expectation of success as Cea already teaches the use of multiple lighting sources positioned at various perimeter locations.
With respect to claim 9, Cea does not expressly teach wherein the outer shell comprises a translucent material. However, analogous art Seymour et al. teaches this feature to be known in the art – column 4, lines 3-7. The rationale to combine is disclosed by Seymour – “permit passage of light”. The combination will not frustrate the intended purpose of Cea and thus has a reasonable expectation of success.
4. Claims 4-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (US Pub. No. 2010/0317470) in view of McVeigh et al. (US Pub. No. 2010/0138971) and further in view of Seymour et al. (US Pat. No. 6,059,676) and further in view of Morgan et al. (US Pub. No. 2004/0160199).
With respect to claims 4-6 and 8, Cea does not expressly disclose wherein the one or more illumination sources comprise a white light or multi-colored light. The internal portion, moreover, is configured to receive a filling material comprising a non-white color and a material comprising a diffused texture. See MPEP 2114 - In re Schreiber. Within the art, it is known for an illumination source to be a white light or multi-colored light source as evidenced by Morgan et al. – paragraphs [0033], [0038], [0044], [0156], [0157], [0162], [0206]. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select an illumination source color as taught by Morgan et al. for the game system of Cea. The rationale to combine is to produce desirable and dynamic lighting using a known illumination means.
5. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (US Pub. No. 2010/0317470) in view of McVeigh et al. (US Pub. No. 2010/0138971) and further in view of Seymour et al. (US Pat. No. 6,059,676) and even further in view of Boyer et al. (US Pub. No. 2005/0170920).
With respect to claim 10, Cea as modified above fails to expressly teach wherein the outer shell comprises one or more patterns disposed on a surface of the outer shell. However, within the art, it is known to provide a pattern on an exterior surface of a projector shell as evidenced by Boyer et al. (paragraphs [0024]-[0025]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a pattern to the exterior shell of Cea. The motivation to combine is to provide an entertaining visual aesthetic to the bag.
6. Claim 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (US Pub. No. 2010/0317470) in view of Forte (US Pat. No. 8,858,289) and further in view of McVeigh et al. (US Pub. No. 2010/0138971) and even further view of Seymour et al. (US Pat. No. 6,059,676).
With respect to claim 18, Cea et al. teaches an illuminated toss bag, comprising: an outer shell configured to form a toss bag defining an internal portion 40 for receiving and retaining filling material 42 comprising a semi-transparent pellet shaped material (paragraph [0029]); one or more illuminating portions disposed within the internal portion 40 (paragraphs [0034]-[0035]); and one or more illumination sources 36 coupled to a perimeter of the outer shell of the toss bag (paragraph [0026]). See MPEP 2114 - In re Schreiber. Here, the structure of Cea is capable of being used as claimed as the internal portion 40 can receive semi-transparent pellets.
The illumination sources of Cea are conventional glowsticks, and thus Cea does not expressly teach an electronics module comprising a power source and a switch configured to control operation of the one or more illumination sources, the electronics module being electrically coupled to the one or more illumination sources. However, analogous art reference Forte teaches the following to be known in the art: an electronics module 24 comprising a power source 28 and a switch 25 configured to control operation of one or more illumination sources 22 coupled to a perimeter of a game projectile 10, the electronics module 24 being electrically coupled to the one or more illumination sources 22 (column 3, lines 45-67). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the glowsticks of Cea such that they are electronically controlled as taught by Forte. The rationale to combine is to add lighting diversity to the perimeter-oriented lights as Forte teaches different lighting modes for the lights 22. The proposed modification has a reasonable expectation of success as the functionality of the toss bag of Cea et al will not be frustrated by the combination.
Cea teaches wherein the one or more illuminating portions comprises a power source, one or more illumination sources 66 and a user selectable device that allows a user to control operation of the one or more illumination sources (paragraph [0034]). Cea further teaches wherein the power source (and processor/control board) is enclosed within a housing (paragraph [0036] – “potted cube”), but not the illumination source 66. The claim elements not taught by Cea are the requirement that the user selectable device is a switch and wherein the illuminating portion housing encloses the illumination source and switch.
Examiner cites to analogous art reference McVeigh for its teaching that it is known to provide a depressable switch 161 as part of a lighting control board that will control operation of a game illuminating portion when depressed for at greater than 2 seconds (paragraphs [0029], [0035]-[0039]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate a user actuatable pushbutton, or switch, on the control board of Cea. The rationale to combine is to allow a game operator to adjust lighting settings/modes on the bag itself. The proposed modification has a reasonable expectation of success. A user can access the pushbutton through the hidden enclosure, or manipulate the button from the outside of the bag.
Further, within the art, it is known to provide an illuminating source, switch and battery within a housing as evidenced by Seymour (column 4, lines 15-26; Fig. 3; the housing being the structure defining the cavity 14 and having a shape substantially similar to the capsule 17). A person ordinary skill in the art would have found it obvious to encase the illuminating source and switch with the battery. The rationale to combine is to preserve the lights after repeated impacts with a landing target. The proposed modification has a reasonable expectation of success since Cea et al. already teaches a housing.
With respect to claim 19, Forte, cited above for the illumination sources, further teaches a tube 12 stitched to an outer shell of the game projectile (Fig. 9 showing seem stiches 16 – column 4, lines 35-37), wherein: the one or more illumination sources 22 are disposed within the tube 12, and the one or more illumination sources 22 comprises a plurality of light sources 22 connected together along a length of wire (Fig.’s 4-5; column 5). The motivation to combine is the same as stated above.
With respect to claim 20, the outer shell of Cea et al. inherently comprises a color. Cea does not expressly teach wherein the outer shell comprises a translucent material. However, analogous art Seymour et al. teaches this feature to be known in the art – column 4, lines 3-7. The rationale to combine is disclosed by Seymour – “permit passage of light”. The combination will not frustrate the intended purpose of Cea and thus has a reasonable expectation of success.
6. Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (US Pub. No. 2010/0317470) in view of Forte (US Pat. No. 8,858,289) and further in view of Oister et al. (US Pub. No. 2004/0220001).
With respect to claim 12, Cea teaches an illuminated toss bag, comprising: an outer shell configured to form a toss bag defining an internal portion 40 for receiving and retaining filling material 42; an illumination portion including one or more illumination sources 36 coupled to a perimeter of the outer shell of the toss bag (paragraph [0026]). See MPEP 2114 - In re Schreiber.
The illumination sources of Cea are conventional glowsticks, and thus Cea does not expressly teach an electronics module comprising a power source and a switch configured to control operation of an illumination portion including the one or more illumination sources, the electronics module being electrically coupled to the one or more illumination sources. However, analogous art reference Forte teaches the following to be known in the art: an electronics module 24 comprising a power source 28 and a switch 25 configured to control operation of one or more illumination sources 22 coupled to a perimeter of a game projectile 10, the electronics module 24 being electrically coupled to the one or more illumination sources 22 (column 3, lines 45-67). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the glowsticks of Cea such that they are electronically controlled as taught by Forte. The rationale to combine is to add lighting diversity to the perimeter-oriented lights as Forte teaches different lighting modes for the lights 22. The proposed modification has a reasonable expectation of success as the functionality of the toss bag of Cea et al will not be frustrated by the combination.
Lastly, Cea teaches wherein the illumination portion 40 extends intermittingly about the perimeter of the outer shell, as opposed to “continuously” as claimed. However, analogous art reference Oister et al. teaches that it is known for an illumination portion 14 to continuously extend about a perimeter of an outer shell of a game projectile (paragraphs [0010]-[0011]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to have the illumination portion of Cea to extend continuously about the perimeter of the outer shell as taught by Oister et al. The rationale to combine is to provide a known illumination means arrangement on a periphery portion of a game projectile. A continuous formation, moreover, will expectantly provide more easily viewed lighting, increasing the entertainment and lighting functionality.
With respect to claims 13-14, Forte, cited above for the illumination sources, further teaches a tube 12 (i.e. illumination portion) stitched to an outer shell of the game projectile (Fig. 9 showing seem stiches 16 – column 4, lines 35-37), wherein: the one or more illumination sources 22 are disposed within the tube 12, and the one or more illumination sources 22 comprises a plurality of light sources 22 connected together along a length of wire (Fig.’s 4-5; column 5). The motivation to combine is the same as stated above.
7. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (US Pub. No. 2010/0317470) in view of Forte (US Pat. No. 8,858,289) and further in view of Oister et al. (US Pub. No. 2004/0220001) and further in view of Gerpheide et al. (US Pub. No. 2017/0325532).
With respect to claim 15, Cea et al. as modified above fails to expressly teach wherein the one or more illumination sources comprises a light-diffusing fiber. However, within the novelty lighting art, it is known to utilize a light-diffusing fiber as an illumination source (paragraph [0095]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize a light-diffusing fiber for the illumination source. The rationale to combine is to use a known lighting means for the expected result of providing visual enjoyment of the toss bag. The proposed modification has a reasonable expectation of success. The Fibrance lighting diffused fiber is known to be flexible and can easily be incorporated into the modified gamebag of Cea.
7. Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (US Pub. No. 2010/0317470) in view of Forte (US Pat. No. 8,858,289) and further in view of Oister et al. (US Pub. No. 2004/0220001) and further in view McVeigh et al. (US Pub. No. 2010/0138971) and even further view of Seymour et al. (US Pat. No. 6,059,676).
With respect to claims 16-17, Cea teaches wherein one or more illuminating portions are disposed within the internal portion, the one or more illuminating portions comprises a power source, one or more illumination sources 66 and a user selectable device that allows a user to control operation of the one or more illumination sources (paragraph [0034]). Cea further teaches wherein the power source (and processor/control board) is enclosed within a housing (paragraph [0036] – “potted cube”), but not the illumination source 66. The claim elements not taught by Cea are the requirement that the user selectable device is a switch and wherein the illuminating portion housing encloses the illumination source and switch.
Examiner cites to analogous art reference McVeigh for its teaching that it is known to provide a depressable switch 161 as part of a lighting control board that will control operation of a game illuminating portion when depressed for at least 1 second (paragraphs [0029], [0035]-[0039]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate a user actuatable pushbutton, or switch, on the control board of Cea. The rationale to combine is to allow a game operator to adjust lighting settings/modes on the bag itself. The proposed modification has a reasonable expectation of success. A user can access the pushbutton through the hidden enclosure, or manipulate the button from the outside of the bag.
Further, within the art, it is known to provide an illuminating source, switch and battery within a housing as evidenced by Seymour (column 4, lines 15-26; Fig. 3; the housing being the structure defining the cavity 14 and having a shape substantially similar to the capsule 17). A person ordinary skill in the art would have found it obvious to encase the illuminating source and switch with the battery. The rationale to combine is to preserve the lights after repeated impacts with a landing target. The proposed modification has a reasonable expectation of success since Cea et al. already teaches a housing.
Allowable Subject Matter
9. Claim 11 is 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.
Response to Arguments
10. Applicant’s arguments, see page 1, filed 2/13/26, with respect to the previous rejection under 35 USC 112(b) have been fully considered and are persuasive; this rejection has been withdrawn.
Applicant's arguments with respect to independent claims 1 and 18 have been fully considered but they are not persuasive. Applicant argues that Seymour fails to teach its switch 24 to be enclosed. Examiner respectfully disagrees. Fig. 3 shows each of the capsule 17 and its switch 24 to be enclosed within a housing as required by claims 1 and 18. Examiner notes the capsule 17 is not the enclosure (i.e. housing). The housing of Seymour is the structure defining the cavity 14 and having a shape substantially similar to the capsule 17 clearly shown in Fig. 3. Applicant further argues the combination of Cea and Seymour is improper because Cea “teaches away” from the combination. Examiner respectfully disagrees. Cea does not require the LEDs to be positioned at the corners, but is merely a preference that the LEDs are positioned “proximate side walls” or “proximate corners”. However, it is unclear why applicant considers the combination of Cea and Seymour results in the LEDs being positioned at regions other than proximate the sidewalls. Seymour is being cited merely for showing that a switch, illuminating source and battery are known to be housed together within a same housing enclosure. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, positioning a switch, illuminating source and battery within a housing does not preclude the LED from being positioned proximate a sidewall, thus ensuring visibility of light as intended.
Applicant’s arguments with respect to claims 12-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711