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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 3, 25, 27, 29, 32-36 and 60-62 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/2/26. Please note that while applicant indicated claim 3 as elected, claim 3 recites that the performance enhancing component is a peripheral skin, which is a feature of non-elected species B (figure 3).
Drawings
The drawings are objected to because figures 1-3 are not proper black and white line drawings, and contain improper shading. All drawings are of low quality, possibly due to poor transmission. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 57 and 59 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.
Claim 57 recites that “the at least one performance enhancing component is at least partially shaped into a form using a moulding process,” however, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966. It is unclear how the recited process limitations limit the apparatus claim.
Claim 59 recites that “the surfing device body and at least one performance enhancing component are able to be recycled via a single recycling stream,” however recycling streams are determined by the recycling process, and are not inherent properties of materials. For example, some recycling streams incorporate paper, metal and glass, while others do not include glass. It is unclear how an unrelated recycling process limits the apparatus.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 4-13 and 57-59 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yeh US 8,652,630.
Regarding claim 1, Yeh discloses a surfing device 100, comprising:
a surfing device body 1 comprised of polymer bead foam being substantially formed from of at least one polymer selected from a single polymer class; and
at least one performance enhancing component 2-4 having a contacting portion at least partially embedded within, integral with, or affixed to a surface of, the surfing device body;
wherein the contacting portion of the at least one performance enhancing component is substantially formed from at least one polymer selected from the single polymer class in a substantially similar composition ratio.
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Figure 1- Yeh Figure 8
In this case, the body 1 and component 2 both comprise thermoplastic foam, and can be made from the same or different ratio of materials (column 3, lines 16-46).
Regarding claim 2, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the at least one performance enhancing component is selected from the list of peripheral skin, leash anchor, leash anchor mount, strengthening element, strengthening element mount, reinforcing fibre, fin, and fin mount (“The accessory 3 may be, but not limited to, a holder or a sail pole. The holder relates to a base for carrying a component, such as a surfboard fin,” column 3, lines 8-10).
Regarding claim 4, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the contacting portion 2 of the at least one performance enhancing component is permanently embedded into, onto, or within, or integral with, the surfing device body (column 5, lines 4-15).
Regarding claim 5, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the contacting portion 2 of the at least one performance enhancing component is directly bonded with the polymer bead foam of the surfing device body that is substantially adjacent thereto (column 5, lines 4-15).
Regarding claim 6, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the surfing device does not comprise additional affixing means between the surfing device body and the at least one performance enhancing component (column 5, lines 4-15).
Regarding claim 7, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the single polymer class is one of the set of classes comprising thermoplastics, recyclable thermosets, polypropylenes, polyketones, or polyolefins (The preferred embodiment is thermoplastics EPE and EPS, column 3, lines 16-46).
Regarding claim 8, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the polymer bead foam is substantially formed from a single polymer (“the foam body 1 is made of EPS,” column 3, lines 32-34).
Regarding claim 9, Yeh discloses the invention as claimed as detailed above with respect to claim 8. Yeh also discloses that the at least one performance enhancing component 2-4 is substantially formed from the same single polymer as the polymer bead foam of the surfing device body. In this case, block 2 is mostly EPS, like the board 1 (column 3, lines 16-46).
Regarding claim 10, Yeh discloses the invention as claimed as detailed above with respect to claim 9. Yeh also discloses that the single polymer is selected from the list of polypropylene, polyethylene, polystyrene and polyurethane. In this case, block 2 is mostly EPS, like the board 1 (column 3, lines 16-46).
Regarding claims 11 and 12, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the polymer bead foam (first blend) and performance enhancing component (second blend) are substantially formed from the same selection of polymers, in a substantially similar compositional ratio, being selected from the same polymer class. In this case, the polymer bead foam and performance enhancing component can be formed from the same material (“The foam body 1 and the connection block 2 may be made of same foam material,” column 3, lines 17-18).
Regarding claim 13, Yeh discloses the invention as claimed as detailed above with respect to claim 11. Yeh also discloses that the first blend of polymers is a blend of polyolefins. In this case, Yeh discloses that block 2 can comprise expandable polyolefin, and block 2 and foam body 1 can be the same material (column 3, lines 16-46).
Regarding claim 57, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the at least one performance enhancing component 2-4 is at least partially shaped into a form using a moulding process (column 4, lines 10-21).
Regarding claim 58, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that a molecular or intermolecular bond extends between the contacting portion of the at least one performance enhancing component 2-4 and the polymer bead foam of the surfing device body 1 substantially adjacent thereto (column 5, lines 4-15).
Regarding claim 59, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh also discloses that the surfing device body 1 and at least one performance enhancing component 2-4 are able to be recycled via a single recycling stream. In this case, this depends on the recycling process, but the polymer bead foam and performance enhancing component can be formed from the same material (“The foam body 1 and the connection block 2 may be made of same foam material,” column 3, lines 17-18).
Claim Rejections - 35 USC § 103
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.
Claims 9-13, 15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yeh US 8,652,630.
Regarding claims 9-13, Yeh discloses the invention as claimed as detailed above with respect to claim 1. If the applicant does not agree that Yeh teaches the materials as recited, then it would have been obvious to one having ordinary skill in the art at the time the invention was made to select the desired foam blends in order to obtain the desired stiffness, toughness or bonding, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Regarding claim 15, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh does not teach colors of the foam, however it would have been an obvious matter of design choice to form the board from whatever color foam was desired in order to achieve the intended aesthetic appearance, since it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)
Regarding claim 20, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh does not teach that the contacting portion comprises at least one aperture extending therethrough, such that a portion of the surfing device body is able to protrude therethrough, however it would have been an obvious matter of design choice to make the different portions of the block with cutouts, passthroughs or of whatever form or shape was desired or expedient in order to increase the bonding ability between the components. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yeh US 8,652,630 in view of Longo US 9,566,729.
Regarding claim 20, Yeh discloses the invention as claimed as detailed above with respect to claim 1. Yeh does not teach that the contacting portion comprises at least one aperture extending therethrough, such that a portion of the surfing device body is able to protrude therethrough. Longo teaches an injection molded surfboard component 210, wherein an insert 212 comprises at least one aperture 230a extending therethrough, such that a portion of the injection molded portion is able to protrude therethrough. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the performance enhancing component of Yeh with apertures as taught by Longo in order to “provide enhanced bonding between the pre-preg flange 212 and the injection molded housing 214” (column 9, lines 46-50).
Examiner Note
Please note that while Yeh column 3, line 42 states “the foam body 1 is made of a copolymer of EPE and EPS,” this is a typographical error. The remainder of the disclosure consistently states that the foam body is preferably EPS while the connection block is EPS- see the abstract, column 1, lines 63-67, and column 3, lines 32-37.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hayward US 2017/0001694 teaches a surfboard comprising polymer beads molded around a stringer.
Patterson US 6,068,531 teaches a surfboard molded around a fin box.
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/MARC BURGESS/Primary Patent Examiner, Art Unit 3615