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 .
Specification
The disclosure is objected to because of the following informalities:
Page 5, line 1 “configured cover” should be “configured to cover”
Page 6, lines 26-28 “shown the” should be “shown in the”
Pages 12 and 15 the use of the terms “Bluetooth”, “Wi-Fi”, and “Intel”, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claims 46 and 53 is objected to because of the following informalities:
Claim 46, “to forms a” should be “to form a”
Claim 53 “elastomer layer have” should be “elastomer layer having”
Appropriate correction is required.
Priority
3. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed application, Application No. 17/473034, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for claims 43-62 of this application. Specifically, limitations in each independent claim 43, 54, directed to “an annular sidewall extending to a first annular retainer ring having an inwardly directed annular lip terminating in first retainer ring periphery” are not supported by the parent application.
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.
4. Claim 52 is 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.
Regarding claim 52, the phrase "wherein said overcoat comprises an over-mold of said illumination core" renders the claim indefinite because a person ordinary skill in the art cannot properly ascertain the metes and bounds of the claim. The overcoat composition/structure has previously been claimed in independent claim 43, requiring the annular ring with lip. The recitation to the over-mold of the core appears to contradict the structure required by claim 43. Applicant should provide clarity to this inconsistency.
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.
5. Claims 43-50 and 52-61 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0409973 A1 (hereinafter, “Gaudreau”) in view of US 2022/0323842 A1 (hereinafter, “Ibragimov”).
Regarding claims 43 and 54, Gaudreau discloses a hockey puck and method of making that comprises forming an illumination core (Fig.’s 2-3, 140 tracking device), containing at least one sensor (Paragraph 0089) which generates sensor data that varies based on change in one or more movements of said hockey puck (Paragraph 0089, accelerometer);
a microprocessor Paragraph (0089) communicatively coupled to a non-transitory computer readable medium containing processor readable code (Paragraph 0089, electronic device);
and an overcoat comprising an annular member having an annular sidewall (Fig. 2, 121) extending to a first annular retainer ring having an inwardly directed annular lip (Fig. 2, 124, Paragraph 0100) terminating in first retainer ring periphery defining a first overcoat open area (Fig. 2, 122), said annular sidewall having external surface dimensions of said hockey puck (external surface dimensions highlighted with arrows in annotated Fig. 3 below), said illumination core disposed within said overcoat (Fig. 3, 140).
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Gaudreau does not specifically disclose that the illumination core is able to actuate one or more light emitters to illuminate said illumination core based on said change in said one or more movements of said hockey puck. Ibragimov discloses another hockey puck (Fig. 1, 1) in the same field of endeavor which actuates output parameters, such as light “as an immediate feedback to the player practicing ice hockey” using a control unit (Paragraph 0027). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to connect an accelerometer reading/data to a light source output to visually alert the user and provide puck movement feedback for training.
Regarding claims 44 and 55, modified Gaudreau discloses a hockey puck and method of making that has a first overcoat inlay (Gaudreau, Fig. 2, 130) configured to mate with or have a common boundary with said first retainer ring periphery to overlay said illumination core (Gaudreau, Fig 3. 140) disposed within said overcoat, said first overcoat inlay overlaying an illumination core first face to form a first flat face of said hockey puck.
Regarding claims 45 and 56, while one embodiment of modified Gaudreau discloses a hockey puck and method of making that has a first annular ring, it does not disclose a second annular retaining ring having an inwardly directed annular lip terminating in second retainer ring periphery defining a second overcoat open area. A different embodiment within Gaudreau does disclose a similar annular receptacle (Figs. 4 and 5, 220) that is open-ended on a second periphery. Thus, it would be obvious to someone with ordinary skill in the art to combine the embodiments within Figs. 2 and 3, and Figs. 4 and 5 according to known methods to yield predictable results. Furthermore, by the addition of a second open area, the electronics are easier to access for quick repairs or adjustment.
Regarding claims 46 and 57, modified Gaudreau discloses a hockey puck and method of making that has a second overcoat inlay (Gaudreau, Fig. 4, 230b) configured to mate with or have a common boundary with said second retainer ring periphery to overlay said illumination core (Gaudreau, Fig. 5, 140) disposed within said overcoat, said second overcoat inlay overlaying an illumination core second face to forms a second flat face of said hockey puck.
Regarding claims 47 and 58, modified Gaudreau discloses a hockey puck and method of making that has the annular sidewall (Gaudreau, Fig. 2, 121) extending between said first annular retainer ring and a second flat face of said hockey puck (Fig. 3, 126).
Regarding claims 48 and 59, while aforementioned embodiments of modified Gaudreau disclose a hockey puck and method of making that has inlays, it does not specifically comment on first overcoat inlay or said second overcoat inlay include one or more apertures through which light passes from said one or more light emitters within said illumination core. An additional, alternative embodiment of Gaudreau (Figs. 13 and 14) discloses the addition of a body aperture “which enables the charging base to connect with an external charger” and “allows light to come out” (Paragraphs 0179, Fig. 13, 614). Thus, it would be obvious to someone of ordinary skill in the art at the time of filing to combine the aperture feature into the other embodiments for charging accessibility and light visualization.
Regarding claims 49 and 60, while modified Gaudreau does disclose a hockey puck and method of making that has inlays, it does not specify that the first overlay inlay or said second overcoat inlay further comprising a translucent material through which light passes from said one or more light emitters within said illumination core. Ibragimov does disclose that the hockey puck can contain a transparent lid, “enabling light to be transmitted through the lids” (Paragraph 0025). Thus, it would be obvious to a person having ordinary skill in the art to construct the inlay with a light-transmitting material to allow the user to see the light outputs from the core, giving feedback on puck motion.
Regarding claims 50 and 61, modified Gaudreau discloses a hockey puck and method of making a first adhesive layer or a second adhesive layer correspondingly disposed between said illumination core first face or said illumination core second face and said first overcoat inlay or said second overcoat overlay (Gaudreau, Paragraph 0076).
Regarding claim 52, modified Gaudreau discloses a hockey puck that the overcoat comprises an over-mold of said illumination core (Gaudreau, Paragraph 0076).
Regarding claim 53, discloses a hockey puck that the overcoat comprises an elastomer layer have an overcoat internal surface defining a hollow interior space configured to receive said illumination core (Gaudreau, Paragraph 0083 and 0087).
6. Claims 51 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Gaudreau and Ibragimov as applied to claims 43-50 and 52-61 above, and further in view of US 2005/0202238 A1 (hereinafter, “Kishioka”).
Regarding claims 51 and 62, while modified Gaudreau does disclose a hockey puck or method of making that has an adhesive layer, it is silent on the layer specifically comprising a translucent two-sided adhesive material. Kishioka discloses a transparent, double-sided tape or sheet to be used with optical films in displays because of its excellent adherence and visibility properties (Paragraph 0133). Thus, one of ordinary skill in the art at the time of filing would have been motivated to use a translucent, two-sided adhesive as to not dim/prevent light transmittance from the core to strongly attach two or more structural components. Furthermore, double-sided, transparent tape is also widely known and used for aesthetic purposes to hide unsightly adhesives. Should applicant argue Kishioka is not analogous art, examiner notes 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, both applicant’s invention and Kishioka use a translucent two-sided adhesive to facilitate attachment between complimentary planar components.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/S.M.B./Examiner, Art Unit 3711
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711