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 .
Response to Amendment
The amendments filed April 14, 2026 have been entered. Claims 43-44, 46, 48-55, 57, and 59-62 remain pending in the application. Applicant’s amendments to the specification and claims have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed December 18, 2025.
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 43 and 54 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding claims 43 and 54, the original disclosure including Fig. 9 lacks support for the annular lip terminating on the illumination core face. Therefore, this limitation is new matter.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 43-44, 46, 48-50, 52-56, and 57-61 are rejected under 35 U.S.C. 103 as being unpatentable over US 20220409973 (hereinafter “Gaudreau”) in view of US 20220323842 (hereinafter “Ibragimov”).
Regarding claim 43 and 54, Gaudreau discloses a hockey puck and method of making, that has an illumination core having an illumination core sidewall joining an illumination core first face opposite an illumination core second face (Fig.’s 2-3, 140 tracking device – 3D cylindrical shape with top/bottom face and sidewall – also shown in Fig. 1D), said illumination core containing: at least one sensor (Para. 0089) which generates sensor data that varies based on change in one or more movements of said hockey puck (Para. 0089, accelerometer);
a microprocessor communicatively coupled to a non-transitory computer readable medium containing processor readable code (Para. 0089);
and an overcoat comprising an annular member having an annular sidewall internal surface engaging said illumination core sidewall (Fig. 2, 121 and Para. 0076 – illumination core “connected” i.e. engaging receptacle which includes receptacle body 121), said annular member sidewall extending to a first annular retainer ring having an inwardly directed annular lip terminating (Fig. 2, 124, Paragraph 0100) in a first retainer ring periphery defining a first overcoat open area (Fig. 2, 122).
This embodiment of Gaudreau does not disclose the
Processor readable code is executable 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, or
The first annular lip terminating on said illumination core first face and said annular member sidewall extending to a second annular retainer ring having an inwardly directed annular lip termination on said illumination core second face, said overcoat delimits external surface dimensions of said hockey puck.
However, 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.
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.
Additionally, Ibragimov further discloses an overcoat that delimits the external dimensions of the puck (Fig. 4, 3 and 7) that also has a lip that terminates at an illumination core face (Fig. 4, 15) (see annotated Fig. 4 below). Thus, this configuration would be obvious to a person of ordinary skill in the art, as it provides a flush puck surface for smooth play and is a known design.
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Regarding claims 44 and 55, modified Gaudreau further 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), said first overcoat inlay overlaying an illumination core first face to form a first flat face of said hockey puck.
Regarding claims 46 and 57, modified Gaudreau further 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), said second overcoat inlay overlaying an illumination core second face to forms a second flat face of said hockey puck.
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 overcoat 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 that has 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 inlay (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, modified Gaudreau discloses a hockey puck that the overcoat comprises an elastomer layer having an overcoat internal surface defining a hollow interior space configured to receive said illumination core (Gaudreau, Paragraph 0083 and 0087).
Claims 51 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Gaudreau and Ibragimov as applied to claims 50 and 61 above, and further in view of US 20050202238 (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.
Response to Arguments
Applicant’s arguments with respect to claims 43 and 54 have been considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The limitation of “annular lip terminating on said illumination face” is considered new matter, and is not supported by the Applicant’s disclosure. Additionally, the amendment of “delimits” further changes the grounds of rejection. However, these concepts are realized by Gaudreau in view of Ibragimov as stated supra.
In regards to the argument of Gaudreau’s receptacle 220 not including either a first or second inwardly directed lip, this secondary embodiment teaches two openings/annular rings in combination with the first embodiment teaching with an inwardly directed lip (Gaudreau, Fig. 2, 124). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, any inside edge of an annular ring can be interpreted under BRI as a lip that is directed from the exterior wall to the interior wall of the ring.
Applicant's further arguments filed April 14, 2026 have been fully considered but they are not persuasive.
Regarding claims 50-51 and 61-62, Gaudreau clearly describes that the tracking device (140), the cap (130) and the receptacle (120, which includes 121 receptacle body) “could be connected to one another in different ways, including permanent or removable connections” in para. 0076. This includes by bonding (e.g. adhesive). Regarding the “space” shown in Figure 3, the drawing is exemplary and is not necessarily drawn to scale, and instead should be viewed in further light of the disclosure. Gaudreau further discloses that the tracking device 140 could be secured to the receptacle body 120 via adhesive as well as other ways to secure the device (paragraph 109).
Regarding claim 52, paragraph 0076 of Gaudreau contemplates “For example, without being limited thereto, one of the part could be connected to an other one of the parts by pressing (e.g., interference fit), by welding (e.g., ultrasonic welding), by bonding (e.g., adhesive), by mechanical interlocking (e.g., male-female connection, snap fit), by threading, by overmolding, and/or by fastening.”
Conclusion
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 SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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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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/S.M.B./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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