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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,428,510 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Maintenance Fee Reminder
Applicant is reminded during the prosecution of the instant reissue patent application, maintenance fees must be kept up to date for the Patent No. 11,428,510 (“the ‘510 patent”). A review of the maintenance fee status for the ‘510 patent shows the 3.5 year fee has been paid and the first day to pay the 7.5 year fee opens August 30, 2029, the surcharge starts March 1, 2030, and the last day to pay is August 30, 2030.
Claim Rejections - 35 USC § 251
Recapture
Claims 1-13 and 15-18 stand rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
See In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
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We apply the recapture rule as a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
During the prosecution of the subject ‘510 patent, after the first Office action rejecting claims 1-3, 6, 7 and 9 over US 8,276,573 to Skell, and claims 4, 5 and 8 over Skell and US 5,457,380 to Hazard et al., Patent Owner made two substantive amendments to claim 1 to define over the earlier Skell teachings.
As amended 4/18/2022 and subsequently allowed, claim 1 recites:
1. A device for launching clay targets comprising;
a clay target thrower;
an electric motor coupled to the clay target thrower wherein the electric motor is operable to at least assist in propelling the clay targets; a
programmable electronic controller coupled to the clay target thrower;
a battery coupled to the clay target thrower wherein the battery provides power to at least one of the electric motor and the programmable electronic controller, and wherein the programmable electronic controller provides a user feedback on status of the clay target thrower, the electric motor and the battery; and
a battery interface on the clay thrower providing a blade and terminal electrical connection between the battery and the clay thrower and supporting the battery on rails such that the battery is removable for recharging and/or replacement. (Substantive additions underlined)
As amended on 2/13/2026, independent Claim 1 is reproduced below:
1. (Four Times Amended) A device for launching clay targets comprising;
a clay target thrower;
an electric motor coupled to the clay target thrower wherein the electric motor is operable to at least assist in propelling the clay targets;
a programmable electronic controller coupled to the clay target thrower; and
a battery coupled to the clay target thrower wherein the battery provides power to at least one of the electric motor and the programmable electronic controller, and wherein the programable electronic controller provides [a user] feedback on status of the clay target thrower, the electric motor and the battery , including at least monitoring a state of charge of the battery; and
a battery interface on the clay thrower providing a [blade and terminal] secure electrical connection between the battery and the clay thrower and supporting and releasably engaging the battery on rails such that the battery is removable for recharging and/or replacement.
First, in comparing amended Claim 1 to the earlier substantive limitations of patented Claim 1, it is readily apparent that the first notable limitation in patented Claim 1 calling for a battery interface on the clay thrower providing a “blade and terminal” electrical connection between the battery and the clay thrower such that the battery is removable for recharging and/or replacement is absent in amended Claim 1.
In sum, it is clear that amended Claim 1 is broader in scope than patented Claim 1.
Similar and corresponding method steps have been amended in the same way in patented Claim 8, and as such, amended Claim 8 is likewise broader in scope that patented Claim 8.
Next, it must be determined if the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution. If an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by applicant. The reliance by applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art.
With respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, “[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.” Id.
In the Response filed 4/18/2022, following the above-noted rejections over Skell, Patent Owner made the following arguments relative thereto and added the substantive limitations above to Claim 1:
“While the type of programming taught by Skell allows the motor to be shut off after a predetermined number of throws has been counted, Skell fails to provide the type of programming now set forth in Applicant’s independent claims 1 and 7. Particularly, amended claim 1 recites: a programmable electronic controller coupled to the clay target thrower ... wherein the programmable electronic controller provides a user feedback on status of the clay target thrower, the electric motor and the battery [and] a battery interface on the clay thrower providing a blade and terminal electrical connection between the battery and the clay thrower and supporting the battery on rails such that the battery is removable for recharging and/or replacement.
Similarly, Applicant's amended claim 7 recites: coupling a battery to a battery interface on the clay thrower with a blade and terminal electrical connection thereby supporting the battery on rails such that the battery is removable for recharging and/or replacement: [and] providing a user feedback on status of the clay target thrower, the electric motor and the battery with the programmable electronic controller.
The claimed feature of providing a user feedback on status of the clay target thrower, the electric motor and the battery with a programmable electronic controller is neither shown nor suggested by the system of Skell. A system and method that either counts or senses the number of throws previously made fails to anticipate a system and method that provides feedback on status of the clay target thrower. Moreover, in combination with providing feedback on the status of the clay thrower, the electric motor and the battery, Applicant’s claimed invention provides a battery and a battery interface on the clay thrower with a blade and terminal electrical connection supporting the battery on rails such that the battery is removable for recharging and/or replacement. While Skell generally discloses a battery 216, the reference fails to teach or suggest the claimed battery interface on rails as now set forth in claims 1 and 7. This claimed feature protects from the elements of weather and assists in overall stability of the system and power connection during use and transport. This feature also provides communication with the battery thereby provides status of the system, including the battery. Skell fails to contemplate such a device and method having this unique and advantageous combination of features. Therefore, independent claims 1 and 7 are allowable over Skell for at least these reasons. The claims dependent on claims 1 and 7 are allowable for at least the same reasons.”
Thus it is clear that the above highlighted subject matter was surrendered by Patent Owner in the original prosecution.
Of the notable limitations in patented Claims 1 and 8, Patent Owner makes specific arguments as to each one as highlighted above, however, only the battery status in terms of charge is represented in amended Claims 1 and 8. The remaining limitations are not present in amended Claims 1 and 8, thus it is clear that the broadened reissue Claims 1 and 8 are in the area of the surrendered subject matter.
Lastly, it must be determined if the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. In looking at amended Claims 1 and 8, adding, “including at least monitoring a state of charge of the battery”, “secure”, and “and releasably engaging” do narrow with respect to the surrender generating limitations; however, they do not avoid the prior art as discussed in the art rejections below, and thus, cannot avoid the recapture.
New independent Claims 17 and 18 suffer for the same reasons as noted above regarding the missing substantive limitations. As to Claim 18, a specific type of battery would not amount to a material narrowing, being within the genus of the originally claimed battery.
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 13, 15, and 17 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.
Regarding Claim 13, the limitation, “rails” in line 2, renders the claim indefinite, because it is unclear whether it is the same rails as in line 13 of claim 1 or different rails. For the office action below, it is presumed it is the same rails.
Regarding claim 15, the limitation, “rail” in line 2, renders the claim indefinite, because it is unclear whether it is the same rails as in line 13 of claim 1 or different rails. For the office action below, it is presumed it is the same rails.
Claim 17 recites the limitation "the lithium battery" in line 10. There is insufficient antecedent basis for this limitation 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.
Claim(s) 1-13 and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young (KR-20100058071) in view of LaPorte et al. (WO-2019077110) and Bailey, Jr. et al. (US6057608).
As to Claims 1, 6-7, 13, and 15, Young teaches a device for launching clay targets comprising;
a clay target thrower (1);
an electric motor (520) coupled to the clay target thrower wherein the electric motor is operable to at least assist in propelling the clay targets: “and a drive Motor 520 is electrically connected to a power supply unit comprises a unit 620 for selectively supplying power to the drive motor 520” (see Machine Translation page 8, lines 16-17);
a programmable electronic controller coupled to the clay target thrower (in the form of control means 600): “control means 600 for controlling the operation of the drive means 500 This control means 600 has a base plate 100 installed on one side and the driving motor 520 electrically connected to, and a controller 610 for controlling the operation of the driving motor 520, a controller 610, and a drive Motor 520 is electrically connected to a power supply unit comprises a unit 620 for selectively supplying power to the drive motor 520” (see Machine Translation page 8, lines 11-17), also “(i)n addition, the control means 700 in addition to a portable wireless control device, which is installed at one side of the base plate 100 (not shown) is separately provided may control the firing of the remote target (700)” (see Machine Translation page 8, lines 39-41);
and a battery (620) coupled to the clay target thrower wherein the battery provides power to at least one of the electric motor and the programmable electronic controller: “(t)he above-described control means 600, drive motor 520 and power supply 620 and that, although being not but electrically connected by the electric wire shown, power supply 620 includes a moving target automatic firing apparatus 1 outdoors preferably a rechargeable battery is used as the charge used throughout” (see Machine Translation page 8, lines 18-21); and
a battery interface on the clay thrower (see Figure 1 and the battery/power supply on the base plate) providing a secure electrical connection between the battery and the clay thrower (the battery and power supply would inherently include some form of interface and/or electrical connection to allow the battery to power the device) and supporting the battery (such as by the base plate) such that the battery is removable for recharging and/or replacement (functional language, the battery of Young is capable of being removed or the device would not work if the battery died; furthermore, even rechargeable batteries have a lifespan that eventually lapses and they have to be completely replaced). Young does not expressly disclose the programmable controller provides feedback on status of the clay target thrower, the electric motor and the battery, including at least monitoring a state of charge of the battery; the battery interface releasably engaging the battery on rails such that the battery is removable for recharging and replacement; wherein the programmable electronic controller is programmed to cause the clay target thrower to provide a number of throws of the clay targets and the programmable electronic controller provides feedback to the user including calculating the number of throws remaining based on power draw from the battery; and an electronic display coupled to the programmable electronic controller, wherein the programmable controller provides the feedback through the electronic display; the battery is coupled to the clay target thrower by a mounting mechanism that includes rails; and wherein the battery is removable from a mounting rail that couples the battery to the clay target thrower.
However, LaPorte et al. teaches a device for launching clay targets comprising a programmable electronic controller 10 coupled to the clay target thrower; and a battery 7 coupled to the clay target thrower wherein the battery provides power to at least one of an electric motor (see Machine Translation page 5, lines 2-7) and the programmable electronic controller (depicted by lines from 7 to 10 in Figure 1), and wherein the programmable electronic controller provides feedback on the status of the clay target thrower, the electric motor and the battery (see Machine Translation page 6, lines 8-33), including at least monitoring a state of charge of the battery (see Machine Translation page 6, lines 25-28); and wherein the programmable electronic controller is programmed to cause the clay target thrower to provide a number of throws of the clay targets (see Machine Translation page 6, lines 8-33) and the programmable electronic controller provides feedback to the user including calculating the number of throws remaining based on power draw from the battery (see Machine Translation page 6, lines 25-28, reaching the minimum threshold would mean no more throws remaining); and an electronic display coupled to the programmable electronic controller, wherein the programmable controller provides the feedback through the electronic display (see Machine Translation page 7, lines 10-11, “visual interface” is a display). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the monitoring and feedback output to a display of LaPorte et al. to the controller of Young to determine when the battery needs to be recharged or replaced, as taught by LaPorte et al. at page 6, lines 25-28 of the machine translation, and/or count the number of targets launched and know when the stock is empty and in need of replenishment, as taught by LaPorte et al. at page 6, lines 29-32 of the machine translation.
Further, Bailey, Jr. et al. teaches a rechargeable and replaceable battery 16 for mounting on and powering portable devices, such as power tools 10, 12, 14, wherein the battery is coupled to the device by a mounting mechanism that includes rails 52,54 and is removable from a mounting rail 54 that couples the battery to the device (Figures 1-16). It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to use the rail mounting mechanism of Bailey, Jr. et al. for the battery of Young in view of LaPorte et al. to make the battery easy to mount and dismount, to make the mount secure, and/or to make the battery versatile by being able to mount to a number of devices as taught by Bailey, Jr. et al.
As to Claim 2, Young teaches that the programmable electronic controller is capable of being programmed to set launch characteristics of one of the clay targets being propelled by the target thrower, including launch timing and/or frequency, launch speed, and launch angle or height: “(t)he above-described control means 600, drive motor 520 and power supply 620 and that, although being not but electrically connected by the electric wire shown, power supply 620 includes a moving target automatic firing apparatus 1 outdoors preferably a rechargeable battery is used as the charge used throughout. On / off of the user through the above-described power control device 600 is able to target as well as 700 control the firing mode of the fire time interval and whether the firing sequence.” (see Machine Translation page 8, lines 18-23).
As to Claim 3, Young teaches a user input device coupled to the programmable electronic controller wherein the user input device enables a user to program the programmable electronic controller in the form of a wireless control: “(i)n addition, the control means 700 in addition to a portable wireless control device, which is installed at one side of the base plate 100 (not shown) is separately provided may control the firing of the remote target (700).” (see Machine Translation page 8, lines 39-41).
As to Claim 4, Young does not specifically teach an electronic display coupled to the user input device and the electronic display further enables a user to program the programmable electronic controller, the electronic display including icons and the programmable electronic controller activates one or more of the icons to communicate an input selected by the user, and wherein the icons further comprise visual indicators selectively illuminated by the programmable electronic controller, however, it is considered inherent that some form of electronic display exists such that the user may see the settings that it is inputting via the controls or buttons at 610 in Figure 1. That said, although it is readily apparent that icons are not per se used on any such display, it would have amounted to an obvious choice in engineering design before the invention to have used a touchscreen style display with icons for the user to select the programming features in Young as a mere substitution of known functionally equivalent controller input mechanisms.
As to Claim 5, Young teaches a wireless transmitter (see Machine Translation page 8, lines 39-41) (that inherently communicates with the wireless control noted above) and receiver coupled to the programmable electronic controller (not shown but also inherent to receive the wireless control inputs) wherein the wireless transmitter and receiver communicate with a wireless communication device (wireless control) enabling the user to use the wireless communication device to remotely program the programmable electronic controller. As noted above for Claim 4, although Young does not teach that any electronic display includes icons and the programmable electronic controller activates one or more of the icons to communicate an input selected by the user, and wherein the icons further comprise visual indicators selectively illuminated by the programmable electronic controller, a substitution of such for any inherent display of Young would have amounted to an obvious design expedient.
As to Claim 8, Young in view of LaPorte et al. and Bailey, Jr. et al. teaches a method of using a clay target thrower operated by a battery for launching clay targets, the method comprising: coupling a battery to a clay thrower using a programmable electronic controller to control functions of the clay target thrower, the functions including at least monitoring a state of charge of the battery;
coupling an electric motor to the clay target thrower; and
providing power to at least one of the electric motor and the programmable electronic controller to at least assist in propelling the clay targets; and
providing a feedback on the status of the clay target thrower, the electric motor and the battery with the programmable electronic controller; and
operating the clay target thrower to launch the clay target in accordance with the programmed launch characteristics. See the application of Young in view of LaPorte et al. and Bailey, Jr. et al. to the corresponding structures in Claim 1 above.
As to Claims 9 and 10, Young in view of Laporte et al. teaches using a wireless communication device (wireless control) to remotely program the launch characteristics of the clay targets being propelled by a clay target thrower and to remotely operate the clay target thrower. See corresponding application of Young in view of LaPorte et al. to corresponding structure in claims 2 and 5 above.
As to claim 11, Young in view of LaPorte et al. teaches wherein programming launch characteristics further including programming the clay target thrower to provide a number of throws of the clay targets, and the method further comprises providing feedback to the user including calculating the number of throws remaining based on the power draw from the battery. See application of Young in view of LaPorte et al. to corresponding structures in claim 6.
As to Claim 12, note the above discussion regarding the inherent/obvious electronic display in Young in view of LaPorte et al., where providing a user feedback further would inherently comprise providing the feedback through an electronic display of the programmable electronic controller. See application of Young in view of LaPorte et al. to corresponding structures in claim 7.
As to Claim 16, although Young fails to teach that the rechargeable battery is a lithium battery, it would have been obvious to those in the art before the invention to have chosen any know type of rechargeable battery as a predictable solution for the Young battery. Such a modification would have amounted to a routine design choice.
As to Claim 17, Young teaches a device for launching clay targets comprising;
a clay target thrower (1);
an electric motor (520) coupled to the clay target thrower wherein the electric motor is operable to at least assist in propelling clay targets “and a drive Motor 520 is electrically connected to a power supply unit comprises a unit 620 for selectively supplying power to the drive motor 520” (see Machine Translation page 8, lines 16-17);
a programmable electronic controller coupled to the clay target thrower (in the form of control means 600): “control means 600 for controlling the operation of the drive means 500 This control means 600 has a base plate 100 installed on one side and the driving motor 520 electrically connected to, and a controller 610 for controlling the operation of the driving motor 520, a controller 610, and a drive Motor 520 is electrically connected to a power supply unit comprises a unit 620 for selectively supplying power to the drive motor 520” (see Machine Translation page 8, lines 11-17), also “(i)n addition, the control means 700 in addition to a portable wireless control device, which is installed at one side of the base plate 100 (not shown) is separately provided may control the firing of the remote target (700)” (see Machine Translation page 8, lines 39-41);
and a battery (620) coupled to the clay target thrower wherein the battery provides power to at least one of the electric motor and the programmable electronic controller: “(t)he above-described control means 600, drive motor 520 and power supply 620 and that, although being not but electrically connected by the electric wire shown, power supply 620 includes a moving target automatic firing apparatus 1 outdoors preferably a rechargeable battery is used as the charge used throughout” (see Machine Translation page 8, lines 18-21);
wherein the programmable electronic controller controls the function of the clay target thrower, the electric motor and the battery “(t)he above-described control means 600, drive motor 520 and power supply 620 and that, although being not but electrically connected by the electric wire shown, power supply 620 includes a moving target automatic firing apparatus 1 outdoors preferably a rechargeable battery is used as the charge used throughout” (see Machine Translation page 8, lines 18-21); and wherein the battery is removable for recharging and/or replacement (functional language, the battery of Young is capable of being removed or the device would not work if the battery died; furthermore, even rechargeable batteries have a lifespan that eventually lapses and they have to be completely replaced). Young does not expressly teach the battery is coupled to the clay target thrower through a mounting rail and providing feedback on status of the clay target thrower, the electric motor, and the lithium battery monitoring a state of charge of the battery.
However, LaPorte et al. teaches a device for launch clay targets comprising a programmable electronic controller 10 coupled to the clay target thrower; and a battery 7 coupled to the clay target thrower wherein the battery provides power to at least one of an electric motor (see Machine Translation page 5, lines 2-7) and the programmable electronic controller (depicted by lines from 7 to 10 in Figure 1), and wherein the programmable electronic controller provides feedback on the status of the clay target thrower, the electric motor and the battery (see Machine Translation page 6, lines 8-33), including at least monitoring a state of charge of the battery (see Machine Translation page 6, lines 25-28); and wherein the programmable electronic controller is programmed to cause the clay target thrower to provide a number of throws of the clay targets (see Machine Translation page 6, lines 8-33) and the programmable electronic controller provides feedback to the user including calculating the number of throws remaining based on power draw from the battery (see Machine Translation page 6, lines 25-28, reaching the minimum threshold would mean no more throws remaining); and an electronic display coupled to the programmable electronic controller, wherein the programmable controller provides the feedback through the electronic display (see Machine Translation page 7, lines 10-11, “visual interface” is a display). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the monitoring and feedback output to a display of LaPorte et al. to the controller of Young to determine when the battery needs to be recharged or replaced, as taught by LaPorte et al. at page 6, lines 25-28 of the machine translation, and/or count the number of targets launched and know when the stock is empty and in need of replenishment, as taught by LaPorte et al. at page 6, lines 29-32 of the machine translation.
Further, Bailey, Jr. et al. teaches a rechargeable and replaceable battery 16 for mounting on and powering portable devices, such as power tools 10, 12, 14, wherein the battery is coupled to the device by a mounting mechanism that includes rails 52,54 and is removable from a mounting rail 54 that couples the battery to the device (Figures 1-16). It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to use the rail mounting mechanism of Bailey, Jr. et al. for the battery of Young in view of LaPorte et al. to make the battery easy to mount and dismount, to make the mount secure, and/or to make the battery versatile by being able to mount to a number of devices as taught by Bailey, Jr. et al.
As to Claim 18, Young teaches a device for launching clay targets comprising;
a clay target thrower (1);
an electric motor (520) coupled to the clay target thrower wherein the electric motor is operable to at least assist in propelling clay targets “and a drive Motor 520 is electrically connected to a power supply unit comprises a unit 620 for selectively supplying power to the drive motor 520” (see Machine Translation page 8, lines 16-17);
a programmable electronic controller coupled to the clay target thrower (in the form of control means 600): “control means 600 for controlling the operation of the drive means 500 This control means 600 has a base plate 100 installed on one side and the driving motor 520 electrically connected to, and a controller 610 for controlling the operation of the driving motor 520, a controller 610, and a drive Motor 520 is electrically connected to a power supply unit comprises a unit 620 for selectively supplying power to the drive motor 520” (see Machine Translation page 8, lines 11-17), also “(i)n addition, the control means 700 in addition to a portable wireless control device, which is installed at one side of the base plate 100 (not shown) is separately provided may control the firing of the remote target (700)” (see Machine Translation page 8, lines 39-41);
and a battery (620) coupled to the clay target thrower wherein the battery provides power to at least one of the electric motor and the programmable electronic controller: “(t)he above-described control means 600, drive motor 520 and power supply 620 and that, although being not but electrically connected by the electric wire shown, power supply 620 includes a moving target automatic firing apparatus 1 outdoors preferably a rechargeable battery is used as the charge used throughout” (see Machine Translation page 8, lines 18-21); and wherein the battery is removable for recharging and/or replacement (functional language, the battery of Young is capable of being removed or the device would not work if the battery died; furthermore, even rechargeable batteries have a lifespan that eventually lapses and they have to be completely replaced);
wherein the programmable electronic controller controls the function of the clay target thrower, the electric motor and the battery “(t)he above-described control means 600, drive motor 520 and power supply 620 and that, although being not but electrically connected by the electric wire shown, power supply 620 includes a moving target automatic firing apparatus 1 outdoors preferably a rechargeable battery is used as the charge used throughout” (see Machine Translation page 8, lines 18-21); and
a battery interface on the clay thrower (see Figure 1 and the battery/power supply on the base plate) providing an electrical connection between the battery and the clay thrower (the battery and power supply would inherently include some form of interface and/or electrical connection to allow the battery to power the device) and supporting the battery (such as by the base plate). Young does not expressly teach that the battery is lithium; the battery is on rails; and providing feedback on status of the clay target thrower, the electric motor and the lithium battery.
However, it would have been obvious to those in the art before the invention to have chosen any know type of rechargeable battery as a predictable solution for the Young battery. Such a modification would have amounted to a routine design choice.
However, LaPorte et al. teaches a device for launch clay targets comprising a programmable electronic controller 10 coupled to the clay target thrower; and a battery 7 coupled to the clay target thrower wherein the battery provides power to at least one of an electric motor (see Machine Translation page 5, lines 2-7) and the programmable electronic controller (depicted by lines from 7 to 10 in Figure 1), and wherein the programmable electronic controller provides feedback on the status of the clay target thrower, the electric motor and the battery (see Machine Translation page 6, lines 8-33), including at least monitoring a state of charge of the battery (see Machine Translation page 6, lines 25-28); and wherein the programmable electronic controller is programmed to cause the clay target thrower to provide a number of throws of the clay targets (see Machine Translation page 6, lines 8-33) and the programmable electronic controller provides feedback to the user including calculating the number of throws remaining based on power draw from the battery (see Machine Translation page 6, lines 25-28, reaching the minimum threshold would mean no more throws remaining); and an electronic display coupled to the programmable electronic controller, wherein the programmable controller provides the feedback through the electronic display (see Machine Translation page 7, lines 10-11, “visual interface” is a display). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the monitoring and feedback output to a display of LaPorte et al. to the controller of Young to determine when the battery needs to be recharged or replaced, as taught by LaPorte et al. at page 6, lines 25-28 of the machine translation, and/or count the number of targets launched and know when the stock is empty and in need of replenishment, as taught by LaPorte et al. at page 6, lines 29-32 of the machine translation.
Further, Bailey, Jr. et al. teaches a rechargeable and replaceable battery 16 for mounting on and powering portable devices, such as power tools 10, 12, 14, wherein the battery is coupled to the device by a mounting mechanism that includes rails 52,54 and is removable from a mounting rail 54 that couples the battery to the device (Figures 1-16). It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to use the rail mounting mechanism of Bailey, Jr. et al. for the battery of Young in view of LaPorte et al. to make the battery easy to mount and dismount, to make the mount secure, and/or to make the battery versatile by being able to mount to a number of devices as taught by Bailey, Jr. et al.
Response to Arguments
With respect to Applicant’s arguments starting on page 7, line 5 to page 8, line 3, Applicant argues “on rails” was the reason argued to overcome the prior art in the response to office action of January 19, 2022, as it relates to the Skell reference and the “blade and terminal” was only mentioned generally. Applicant’s argument is not persuasive. As a first point, the blade and terminal limitation was added to the claims as part of the April 18, 2022 amendment, shown in the recapture section above. Once a limitation is added to the claims it becomes part of a surrender generating limitation. Furthermore, no matter how general the limitation was mentioned in the arguments, if it is argued, which blade and terminal was as shown in the bold section of the arguments in the recapture section, it also becomes a surrender generating limitation. A surrender generating limitation is any limitation that was added to a claim and/or argued in any manner to overcome a prior art rejection. In the instant application, “blade and terminal” was both added to the claim and argued to overcome the rejection. As such, it is a surrendered generating limitation and must be present in the claims to overcome recapture.
With respect to Applicant’s arguments starting on page 8, line 4 to page 8, line 14, Applicant argues there were material narrowing amendments in relation to the surrender generating limitation. While it is agreed there are materially narrowing amendments, such as monitoring the state of the battery, a secure connection and releasably engaging, these materially narrowing limitation still do not avoid the prior art. As they do not avoid the prior art the recapture rejections are not overcome.
With respect to Applicant’s arguments starting on page 8, line 15 to page 10, line 19, Applicant argues there is no reason to combine Young with Laporte as Young is a simple thrower that doesn’t need the complex sensor and diagnostic system of Laporte. Examiner respectfully disagrees in that adding the systems of Laporte to monitor the operation of Young is the exact motivation for making the combination. Making the combination would not change the principle of operation of Young but would improve the operation and alert a user of problems before they make the thrower inoperable as discussed by Laporte. In regards to the temporal discussion in Laporte this is not that the monitoring is done only for a short time, it is that it is done ongoing and compared in a timewise fashion, again to compare to previous similar operations to detect abnormalities, such as batteries that need recharging and obstructions in the system as described in the machine translation of Laporte at page 6, lines 8-33.
With respect to Applicant’s arguments starting on page 10, line 20 to page 11, line 22, Applicant argues Young and Laporte do not disclose mounting the battery on rails for releasably engaging with the thrower for recharging and replacement. As a first point, Applicant fails to address the combination of Young and Laporte with Bailey, Jr. as was applied to at least claims 13 and 15 in the previous office action. Bailey, Jr. clearly teaches these features for a battery powered device. Young teaches the thrower is battery operated thus there must be some sort of interface connecting the battery and the thrower. To substitute the interface of Young for that of an old, well known, and conventional interface, such as the one of Bailey, Jr., in which the battery can be easily connected or removed would not be beyond a person of ordinary skill in the art to allow the battery to be quickly removed and replaced once it gets low, so the user to have to stop using the device.
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.
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/WILLIAM E DONDERO/Reexamination Specialist, Art Unit 3993
CONFEREES:
/Laura Davison/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993