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 .
Election/Restrictions
Applicant's election with traverse of group I, claims 1-7, in the reply filed on 11/14/2025 is acknowledged.
Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/14/25. The response states the Applicant traverses the requirement to the extend of requesting that any pending unelected claims be rejoined or reinstated for allowance, which is noted, however this is not an actual traversal of the restriction requirement. As is general practice when an elected invention is found allowable, any pending withdrawn claims will be considered for rejoinder if they contain the same allowable subject matter or depend from the allowable claims.
Status of Claims
Claims 1-17, filed 9/5/2023, are pending. Claims 1-7 are currently being examined with claims 8-17 being withdrawn from consideration as elected.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ma US Pub. No. 2010/0285721.
In Reference to Claim 1
Ma teaches:
A projectile (projectile(s) 10/100/200, Fig. 1-9D, have different shapes/embodiments but use the same or similar lighting means therein) for use with an air gun or air bow having a barrel, a tank storing compressed gas, and a trigger mechanism that controls fluid communication between the barrel and the tank (the projectile is configured for and capable of intended use with an air gun (toy gun, abstract, Fig. 7a-9b shows the firing portion of the air gun) having a barrel (170, Fig. 9a-b), compressed gas from an air source/tank (compressed air provided from an inherent source (usually a pressurized gas tank or equivalent means, [0058] discusses compressed air supplied through the nozzle) through nozzle 160, [0029]-[0031], [0058], [0059]) and a trigger that controls fluid communication between the air source and the barrel (standard trigger actuated firing of a projectile loaded within a barrel and projected by compressed air as is standard and known in the art though the trigger actuating means is not specifically discussed, this is how essentially all air guns and similar projectors in the art are actuated (the projector limitations in the preamble are intended for use by the projectile and are not actually required by the claim language, only that the prior art is capable of being used in the presented manner, which the projectile of Ma would clearly be capable of as the gun/launching means is essentially disclosed as the same as presented in the preamble as discussed above)), the projectile comprising:
a body having a first end and a second end, an outer surface, and an inner surface that defines a chamber (projectile 10/100/200 having a first forward end near 13/140, a second rear end that engages the air nozzle of the toy gun near 12/120, an outer surface 11/110, and an inner surface/chamber 12/120 extending through the body, Fig. 1-2, 6-9b); and
a light assembly (the same light assembly of Fig. 3, 5a-b is used in each projectile, [0052]-[0053], [0055]-[0059]) having a light-emitting apparatus within the chamber that is configured to selectively emit light (light emits from light source 18 of the light assembly within the chamber 12/120/140, Fig. 4d-e, 7b, 9d), and a switch member that is movable relative to the body between first and second positions (contact pin/switch 24 is movable via 22/23 between first off (Fig. 4a-b, 5a) and second on (Fig. 4d-e, 5b) lighting positions, or microswitch 130 does the same task, Fig. 7a-c), said light assembly being configured such that the light-emitting apparatus does not emit light when the switch member is in the first position (Fig. 4a/5a/7a/9a), and the light-emitting apparatus emits light when the switch member is in the second position (Fig. 4d-e/5b/7b-c/9d, [0052]-[0053], [0055]-[0059]);
wherein the projectile is insertable into the barrel such that, when the trigger mechanism permits fluid communication between the tank and the barrel, pressure causes the switch member to move from the first position to the second position and the projectile to be ejected from the barrel (when the user actuates an inherent trigger actuating mechanism of the gun initiates firing of the gun, compressed air from a tank of storage portion of the gun is sent through the nozzle 160 to launch the projectile out of the barrel 170 of the gun, wherein the switch of the lighting assembly is moved from the first off position to the second on position when the projectile is moved by the provided air pressure to illuminate the projectile during firing, Fig. 4a-e, Fig. 7b-c, 9d, [0052]-[0053], [0055]-[0059]).
In Reference to Claim 2
Ma teaches:
The projectile of claim 1, wherein the switch member is in fluid communication with the second end of the body (the switch of the light assembly is fluidly connected with the rear end of the body 11 through the chamber 12 to actuate the switch due to the surge in air pressure applied to the body and switch through the chamber, Fig. 4a-8, [0028]-[0031], [0055]-[0059]).
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 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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ma as applied to claim 2 above, and further in view of Wygant US Pat. No. 7,849,627.
In Reference to Claim 3
Ma teaches:
The projectile of claim 2, wherein the body forms a sabot slug (the projectile body 10 is approximately the same shape or form as a shotgun slug (similar to a sabot slug), and projectile body 110 is shaped as a sabot slug type shape, Fig. 6, [0057]).
Though Ma doesn’t specifically recite that the projectile body is in the form of a sabot slug, the projectile of Ma is approximately the same shape or form and there are many different shapes and types of shotgun slugs and sabot slugs in the art and therefore, in the broadest reasonable interpretation, one of ordinary skill in the art would find the shape of the projectile body of Ma to be approximate to or equivalent to a sabot slug in shape (especially body 110, Fig. 6). Further, sabot slug shaped projectiles are known in the art and Ma teaches that the projectile body may be formed in different shapes (Fig. 1 vs. Fig. 6).
Further, Wygant teaches:
A similar air gun (20) having a barrel (28), trigger (26), tank having compressed air (Col. 3 line 36 – Col. 4 line 22) and air pressure launched projectiles taking different forms or shapes, such as that similar to the second embodiment of Ma (24, Fig. 1-10), a sabot slug like form (124, Fig. 11-12), or an RPG (224, Fig. 13).
Wygant teaches that similar projectiles may take different shapes, including a sabot slug like shape (Fig. 11-12) and therefore, it would have further have been obvious to one having ordinary skill in the art to have modified the invention of Ma to have formed the body in a different shape, such as a sabot slug, as this type of projectile is known and common in the art and that Ma teaches that different projectile shapes may be used (Fig. 1 v. Fig. 6) and as Wygant teaches that this type of projectile as well as other types and shapes are obvious and known in the art (Fig. 1-13, Col. 4 line 63 – Col. 4 line 50, Col. 7 line 65 – Col. 8 line 41). Additionally, it is noted that it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). In this case, the shape of the projectile is not new and is known in the prior art and therefore one having ordinary skill in the art would have found it obvious to modify the projectile to have changed shape as claimed to mimic or act as another type of projectile that is known in the art.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ma as applied to claim 2 above, and further in view of Berry US Pub. No. 2005/0188979.
In Reference to Claim 4
Ma teaches:
The projectile of claim 2, wherein the body defines a bore open at the first end; and wherein the projectile further comprises a shaft extending into the bore and an arrowhead mounted to the shaft (body 11 is generally hollow with chamber 12 extending therethrough, wherein arrowhead/head 13 is attached at the first end of the body at discs/shaft section 15, Fig. 1, [0051]).
Though Ma doesn’t specifically teach the attached head having a shaft extending into the bore/chamber of the body, it is attached to an outer portion of the body, which merely an alternative design choice and does not materially change the invention. There are other similar projectiles in the art that have connecting portions extending and secured into the interior bore of the body and this is not a new or unobvious way to attach a head of a projectile in the art and it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70). In this case, whether the attachment portion is attached to the outside or the inside of the first end of the body is merely a different way to attach the head to the body and is not a material or patentably distinction.
Further, Berry teaches:
A similar gun (100) having a barrel (104) for receiving an arrow like projectile for launching therein (102), the projectile having a rear end for fluidly communicating with pressurized air from an air tank (122) to launch the projectile when actuated by a trigger (116), the projectile body having a rear body (202) having an approximate frustoconical shape with a larger rear end diameter than front end diameter (Fig. 5), and having a shaft attached thereto (103) and radially extending vanes forming a fletching (212) extending therefrom and an arrowhead at the proximal end of the shaft (pointed arrowhead/tip at the front end of the shaft of the projectile, Fig. 1-7).
Further, it would have been obvious to one having ordinary skill in the art to have modified the invention of Ma to have formed the projectile body in a different shape, such as an arrow, as this type of projectile is known and common in the art and that Ma teaches that different projectile shapes may be used (Fig. 1 v. Fig. 6) and as Berry teaches that this type of projectile is known and common in pressurized air firing guns ([0036]-[0043]).
In Reference to Claim 5
Ma as modified by Berry teaches:
The projectile of claim 4, further comprising vanes mounted to, and extending radially from, the shaft to form fletching (Ma: body 110 is generally hollow with chamber 12 extending therethrough, wherein the rear end of the body having a plurality of vanes extending radially therefrom (Fig. 6-7c shows the rear end of the body having radially extending vanes/fletching generally known to stabilize a projectile in flight) and Berry teaches a plurality of vanes 212 radially extending away from the shaft/body at the rear end of the projectile, Fig. 5-7).
Whether the radially extending vanes are integrally formed or otherwise attached to the shaft is merely a matter of obvious design choice as both versions of attachment are known and common in the art and it has been held that that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70) and it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art (Nerwin v. Erlichman, 168 USPQ 177, 179). In this case, whether the radial vanes are attached to a shaft of the projectile, or the body, or integrally formed with either portion therewith is merely a different way to attach the head to the body and is not a material or patentably distinction.
In Reference to Claim 6
Ma as modified by Berry teaches:
The projectile of claim 4, wherein the body is transparent or translucent (Ma: the body 11 is light transmissive or translucent, [0009], [0051]-[0052]).
In Reference to Claim 7
Ma as modified by Berry teaches:
The projectile of claim 6, wherein the body is fructo-conical; and wherein the diameter of the body at the first end is smaller than the diameter of the body at the second end (Berry: the body portion 202 has an approximate frustoconical shape with a larger rear end diameter than front end diameter, Fig. 5).
It would have further have been obvious to one having ordinary skill in the art to have modified the invention of Ma to have formed the body in a different shape, such as a straight sides frusto-conical shape (vs. rounded frusto-conical of Berry), as this general type of rear end body shape on a projectile is known and common in the art (Berry shows an increased rear end in a rounded conical shape) and Berry (Fig. 5 v. 8) teaches that different rear projectile shapes may be used. Further, it is has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Brief Discussion of Other Prior Art References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the references cited page for publications that are noted for containing similar subject matter as the applicant. For example, Ekstrom (4,890,597, 5,086,749), Giannelli (2015/0198407), and Hilt (2023/0160657), teach similar air guns, and Denen (5,058,900), Call (5,134,552), Simonton (6,390,642), DiCarlo (7,021,784), Palmer (7,900,619), Godsey (10,094,642), Harrington (2019/0265009), and Minica (10,859,353) teach similar switch activated light assemblies for projectiles.
Conclusion
If the applicant or applicant’s representation has any questions or concerns regarding this office action or the application they are welcome to contact the examiner at the phone number listed below and schedule and interview to discuss the outstanding issues and possible amendments to expedite prosecution of this application.
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/ALEXANDER R NICONOVICH/Primary Examiner, Art Unit 3711