DETAILED ACTION
Claim Rejections - 35 USC § 112
1. 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 17-19 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. The following recitation in claim 17 is unclear and indefinite: “the elongate tension bearing member looping back on itself at with a first portion of the elongate tension bearing member and a second portion of the elongate tension bearing member and a second portion coming together at a loop neck”. The specification does not provide clarity to this indefinite language and the drawings do not show two distinct second portions. A person ordinary skill in the art cannot ascertain the metes and bounds of the claim. Applicant should provide clarity to these limitations. Claims 18-19 are rejected based on their dependency to 17. For examining purposes, the scope will be construed broadly and reasonably in view of the specification.
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 and 20 rejected under 35 U.S.C. 103 as being unpatentable over Showalter (US Pat. No. 11,331,550) in view of Larrabee (US Pat. No. 5,452,903).
With respect to claims 1 and 20, Showalter teaches a toss game apparatus, comprising: a base member; a target hanger system 1245 selectively mounted to the base member and projecting away from the base member (Fig. 12), the target hanger system configured to releasably support a hanging target 1230 until the hanging target 1230 is struck by a tossed object to release the hanging target (column 15, lines 20-41; Fig. 12). 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, hanging targets 1230 are attached to the target hanger system 1245 using hook portions 1245b and are inherently capable of having the targets 1230 knocked off when a flying disc hits it.
Showalter further teaches an upper target assembly 1202 selectively mounted above the target hanger system 1245 (Fig. 12; column 15, lines 20-41). This upper target assembly 1202 is not structured as a loop target as claimed. However, analogous art reference Larrabee teaches that it is known to provide a loop target assembly including a spine and a cord 11 (“elongated strips”) secured to the spine at each terminal end of the cord to define a loop target (Fig. 1; column 3, lines 11-38); wherein: the loop target assembly further includes a plurality of cords 11 coupled to the spine around the circumference of the spine in addition to the cord; each cord in the plurality of cords is configured the same as the cord; the plurality of cords defines a plurality of loop targets Id. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the upper target assembly of Showalter with the loop target assembly of Larrabee. The rationale to combine is to provide a known target means that generates audible sounds when a direct hit is made. Moreover, different types of the targets will add entertainment diversity to the game. The proposed modification has a reasonable expectation. Showalter teaches wherein the upper target assembly 1202 are removably attached to the base member (See column 8, lines 42-47 – “friction-based connection”). Moreover, the primary purpose of Showalter is not frustrated. Examiner notes, the Federal Court has set forth wherein "connected to" includes being joined together, but can also be broader than that, wherein two things can be "connected" to each other by way of their common connection to something else. See Kreis AG v. American Hospital Supply Corp. (DC NIII) 192 USPQ 585. Here, the claimed term “secured to” is given a definitional scope commensurate with “connected to”, permitting securement via common connected components therebetween (i.e. direct connection or direct securement is not required).
4. Claims 2-7 are rejected under 35 U.S.C. 103 as being unpatentable over Showalter (US Pat. No. 11,331,550) in view of Larrabee (US Pat. No. 5,452,903) and further in view of Gettemeier et al. (US Pat. No. 4,989,880).
With respect to claim 2, Showalter teaches wherein the base member includes a tubular body (i.e. “post”), but does not expressly teach wherein a storage compartment is defined there within. Analogous art reference Gettemeier et al. teaches that it is known to provide a game tubular body 20 as a storage compartment (Fig. 6). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the base tubular body of Showalter to include a storage compartment as taught by Gettemeier. The rationale to combine is to allow components of the game assembly to be easily transported and stowed. The proposed modification has a reasonable expectation of success as the game components of Showalter are substantially thin and elongated, configured to be stored in an elongated storage compartment as taught by Gettemeier.
With respect to claim 3, Showalter teaches wherein toss game apparatus is configured to selectively disassemble with the base member, the target hanger system 1245, and the upper target assembly 1202, selectively separated from each other ( column 15, lines 29-31 – “attached … temporarily”; See also column 8, lines 42-47 – “friction-based connection”). Regarding the loop target assembly, a person ordinary skill in the art would have found it obvious to also make this target assembly selectively separated/removable from the base portion. As Showalter teaches, it is known to make target assemblies removably connected to the base assembly, include at the upper portion of the base. Moreover, per In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349(CCPA 1961), the Federal Courts have held that removability, where needed, is not a patentable advance where there is art-recognized need to do so. MPEP 2144.04. A person ordinary skill in the art would find it obvious to also make the loop target assembly to be removably separatable from the base member. The rationale to combine is to improve transportability and stowage of the game, while also allowing different targets to be positioned at the top portion of the base.
With respect to claim 4, Showalter teaches the target hanger system to comprise short crossbar 1245 and small hooks 1245b. As such, Showalter is considered to teach wherein: the target hanger system is complementarily configured with the tubular body (i.e. Showalter as modified by Gettemeier). From the combination of Showalter and Gettemeier, it is unclear if the cross-bar and hook(s) are configured to be stored within the storage compartment. However, a person ordinary skill in the art would recognize that this functional limitation is dependent on the size of the storage compartment and the components of the target hanger assembly. Per MPEP 2144.04, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to selectively size, or scale, the storage compartment to hold the cross-bar 1245 and hook(s) 1245b. The rationale to make this modification is for the same reason to combine Showalter and Gettemeier – namely, allow the target hanger system to fit within the storage compartment and improve portability and stowage of the game. The proposed modification has a reasonable expectation of success since the base member of Showalter is clearly taught to be longer than the cross-bar and the target hanger system does not require bulky components not suitable for storage in the storage compartment.
With respect to claim 5, secondary reference Larrabee teaches wherein: the loop target assembly comprises elongated strip shaped cord 11, and tubular spine member (Fig. 1). As such, Showalter as modified by Larrabee is considered to teach wherein the loop target assembly is complementarily configured with the tubular body. The motivation to combine is the same as stated above. From the combination of Showalter + Larrabee and Gettemeier, it is unclear if the spine member and cord are configured to be stored within the storage compartment. However, a person ordinary skill in the art would recognize that this functional limitation is dependent on the size of the storage compartment and the components of the target loop assembly. Per MPEP 2144.04, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to selectively size, or scale, the storage compartment to hold the spine and cord. The rationale to make this modification is for the same reason to combine Showalter and Gettemeier – namely, allow the target loop system to fit within the storage compartment and improve portability and stowage of the game components. The proposed modification has a reasonable expectation of success since the base member of Showalter is taught to be substantially elongated and the target loop system does not require bulky components not suitable for storage in the storage compartment.
With respect to claim 6, tertiary reference Gettemeier further teaches wherein the tubular member 20 includes a strap 50 attached to the tubular body to facilitate carrying the tubular member 20 with the target hanger system and the loop target assembly contained within the storage compartment. The rationale to combine and the legal rationale to provide the target hanger and loop system within the storage compartment are the same as stated above. See also MPEP 2114 - In re Schreiber.
With respect to claim 7, Gettemeier further teaches wherein its tubular body includes a cap 16 selectively coupled to the tubular body; and selectively removing the cap 16 provides access to the storage compartment (Fig. 6; column 7, lines 65-43). The rationale to combine is the same as stated above.
5. Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Showalter (US Pat. No. 11,331,550) in view of Larrabee (US Pat. No. 5,452,903) and further in view of Stafford (US Pat. No. 8,905,870).
With respect to claims 15-16, Showalter fails to expressly teach a guide wire system as claimed. However, analogous art reference Stafford teaches the following to be known in the art: a guide wire system configured to selectively support a base member 125 in an upright orientation, wherein the guide wire system includes: an elongate tension bearing member 150 selectively secured to the base member; and an anchor 142 coupled to the elongate tension bearing member 150 distal the base member and configured to be driven into the ground (Fig. 6; column 6, lines 54-65). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize a guide wire system for the game apparatus of Showalter. The rationale to combine is to maintain the base member in an erect position using known stabilization components.
6. Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Showalter (US Pat. No. 11,331,550) in view of Larrabee (US Pat. No. 5,452,903) and further in view of Fox (US Pat. No. 4,319,428).
With respect to claims 15-16, Showalter fails to expressly teach a guide wire system as claimed. However, analogous art reference Fox teaches the following to be known in the art: a guide wire system 10 configured to selectively support a base member (i.e. tree) in an upright orientation, wherein the guide wire system includes: an elongate tension bearing member 22 selectively secured to the base member; and an anchor 20 coupled to the elongate tension bearing member 22 distal the base member and configured to be driven into the ground (Fig.’s 1-9; column 2, lines 52-67). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize a guide wire system for the game apparatus of Showalter. The rationale to combine is to maintain the base member in an erect position using known stabilization components.
With respect to claims 17-18, and as best understood, Fox further teaches wherein: the elongate tension bearing member 22 forms a support loop 26 distal the anchor 20 by the elongate tension bearing member 22 looping back on itself at with a first portion of the elongate tension bearing member 22 and a second portion of the elongate tension bearing member 22 and a second portion coming together at a loop neck (Fig. 1); and the support loop 26 is secured around the base member (Fig. 1); wherein the guide wire system 10 further includes a tension adjuster 54 configured to restrict the first portion and the second portion of the elongate tension bearing member 22 moving relative to each other with a selected amount of tension in the elongate tension bearing member 22 between the base member and the anchor 20 (column 4, lines 9-42). See also MPEP 2114 - In re Schreiber. Admittedly, the tension adjuster 54 is not positioned at the loop neck, as it is positioned generally at a midpoint of the elongate tension bearing member 22. However, Per MPEP 2144.04, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) when the only difference between the prior art and claimed invention is a particular arrangement that would not modify the operation of the device, such differences were held unpatentable. MPEP 2144.04. Here, the location of the tension adjuster has not been set forth as critical. Moroever, Fox would operate as intended if it were positioned at the loop neck as the length of the elongate member 22 can be easily modified to operate with tensioner 54 at the loop neck. As such, the difference in the position of the tensioner is considered obvious in view of In re Japikse. Examiner considers Fox to be analogous art as it relates to guide wire systems used to stabilize vertical orientated structures. Should applicant traverse this position, examiner notes that, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the guide wire system of Fox is also considered to be reasonably pertinent to the particular problem with which the inventor was concerned as the intended purpose of Fox and applicant’s invention is to ensure stable vertical orientation of the vertically oriented component.
Allowable Subject Matter
7. Claims 8-14 and 19 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.
Conclusion
8. 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