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 .
Drawings
The drawings are objected to because page 2 of the specification recites:
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The description for Fig. 9C is incorrect. Fig. 9C is not a cross section of the arrowhead bump element but rather a cross sectional view of bump element cutout. This description does not correspond to what is shown. 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. REMINDER: Specification may require revision to correspond to drawing changes.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: vertical cross section view A-A’ and horizontal cross section view B-B’ are not shown in figure 9A. 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. 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 § 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.
Claims 1, 3-7, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (5,186,703).
Claim 1, Huang discloses a sports training device comprising:
a first mat (base board/3) configured to lay flat on a horizontal surface, the first mat comprising
a bottom surface, a top surface, a front edge, a rear edge (figures 1-2), and
a plurality of spaced apart cutouts (recessed holes 11, 111; figures 2, 5, 7-8), each cutout having a perimeter shape and size configured to accept an insertable bump element (2), such that the plurality of spaced apart cutouts are arranged in a front row and a rear row (figure 5), and
a plurality of bump elements (4; figures 6, 6-1), each bump element comprising
a base portion (42) inserted into one of the plurality of spaced apart cutouts (11, 111) of the first mat, and
a convex raised portion (4), the convex raised portion configured to cause an object impacting the raised portion to deflect laterally and vertically with respect to the bump element when the object is rolled onto the mat.
Huang shows the device comprises a base board 1 made from foamed plastics in square, rectangular or any of a variety of shapes. In instances where the base board is circular-shaped or oval-shaped the plurality of cutouts would be arranged in an arced arrangement in order to conform to the shape of the base board. Huang discloses the claimed device with the exception of the plurality of cutouts being arranged in an arced front and rear row. It is noted that the shape of the base/mat nor the particular arrangement of the plurality of spaced apart cutouts has been given no criticality by the applicant. Lacking any criticality, it would have been obvious to one of ordinary skill in the art to have formed the mat in any desired shape and arranged the plurality of spaced apart cutouts to include an arced front and rear row to conform to the shape of the base/mat, since it has been held that a change in shape and/or form is generally recognized as a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed shape was significant. In re Dailey, 149 USPQ 47 (CCPA 1976).
It is noted:
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP 2114 [R-1] Apparatus and Article Claims - Functional Language).
Claim 3, Huang shows the plurality of spaced apart cutouts are circular, and the plurality of bump elements are substantially spherical sections (figure 5).
Claim 4, Huang shows each of the plurality of bump elements further comprise a round peripheral bump element base (42) having a retention groove (421), such that the retention groove is configured to engage a cutout (11, 111 or alternatively 422; figures 5, 6).
Claim 5, Huang discloses the claimed device with the exception of the base diameter being in the a range of 2.5 to 3 inches. It is noted that the base diameter of the bump has been given no criticality by applicant. Lacking any criticality it would have been obvious to form the base diameter for Huang’s bumps in any desired range, since it has been held where the general conditions of a claim(s) is disclosed in the prior art, it would have been obvious to one of ordinary skill in the art to have selected any desired thickness for its suitability for the intended use. It is not inventive to discover the optimum or workable ranges by routine experimentation involves only routine skill in the art.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 6, Huang shows the plurality of bump elements have an arrowhead shape (figures 6 and 6-1). Huang discloses the claimed device with the exception of the plurality of spaced apart cutouts have an arrowhead shape. It is noted that the shape of the cutouts formed in the mat has been given no criticality by applicant. Lacking any criticality it would have been obvious to select any known shape for Huang’s cutouts, given that it has been held that a change in shape and/or form is generally recognized as a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed arrowhead shape cutouts was significant. In re Dailey, 149 USPQ 47 (CCPA 1976).
Claim 7, Huang shows each of the plurality of bump elements (4) further comprise a peripheral bump element base (42) having a retention groove (421), such that the retention groove is configured to engage a cutout (11 or 111; figures 5, 6, 6-1).
Claim 11, Huang shows the first board is rectangular in shape (figure 5). Huang discloses the claimed device with the exception of the boards dimension i.e. a length in a range of 30 to 36 inches and a width in the range of 10 to 16 inches. It is noted that the mat dimension has been given no criticality by applicant. Lacking any criticality it would have been obvious to form Huang’s baseboard in an desired size range, since it has been held where the general conditions of a claim(s) is disclosed in the prior art, it would have been obvious to one of ordinary skill in the art to have selected any desired thickness for its suitability for the intended use. It is not inventive to discover the optimum or workable ranges by routine experimentation involves only routine skill in the art.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Huang further shows the first mat comprises first and second side edges and means for connecting to one or more baseboards with at least one mating feature, and a second side edge (column 3, lines 21-23 and column 4, lines 1-2).
Huang shows at least nine bumps arranged on the upper surface of the baseboard. Huang does not expressly disclose placing five bump elements in the arced front row, and four bump elements in the arced rear row, such that the arced rear row is concentric to the front row. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have arranged the bumps in any desired manner, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claim 12, Huang further shows a second mat (column 3, lines 21-23 and column 4, lines 1-2; Huang teaches several base boards can be connected forming an extended exercising floor) comprising a bottom surface, a top surface, a first side edge, a second side edge with at least one mating feature configured to mate with the first side edge mating feature of the first mat, and a plurality of spaced apart cutouts, each cutout having a perimeter shape and size configured to accept an insertable bump element (the structure of the second mat may be identical to the structure of the first mat; with regards to the “mating feature” Huang teaches that the mats can be connected together, therefore, there is a means for mating or connecting the base boards); and
a plurality of bump elements, each bump element comprising a base portion inserted into one of the plurality of spaced apart cutouts of the second mat, and a convex raised portion, the convex raised portion configured to cause an object impacting the raised portion to deflect laterally and vertically with respect to the bump element (as noted above the second mat may have the same structure including the structure of the bump elements and cutouts as the first mat).
Claim 13, Huang discloses the additional baseboards may be connected to the first baseboard. However, Huang does not expressly disclose a particular means for connecting the baseboards together. It is noted that the manner of connecting the mats together has been given no criticality by applicant. Lacking any criticality where the general conditions of a claim are disclosed in the prior art. It would have been obvious to one of ordinary skill in the art to have selected any well-known attachment means for connecting the first and second baseboards of Huang together, since the selection of a known material on the basis of its suitability for the intended use is a matter of obvious design choice, therefore held to be within the general skill of a worker in the art to select. In re Leshin, 125 USPQ 416.
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (5,186,703) in view of Nally (3,968,967).
Claim 2, Huang discloses the claimed invention with the exception of the plurality of the bump elements having a peak height in the a range of 1.5 to 2.5 inches above the top surface of the mat. However, as disclosed by Nally (column 2, line 54) it is known in the art for the pump elements to have a height in the range of 1.5” to 2.00”. Huang further teaches that the size and dimensions It would have been obvious to one of ordinary skill in the art to have made the bumps with a height that falls within the claimed range given that Nally teaches such is a desireable dimension for producing a bump. One would reasonably expect the Nally’s bumps dimensions incorporated into Huang’s device to be predictably successful because both are in the same field of endeavor and are attempting to solve the same problem of producing a base or mat that creates an unpredictable rebounding surface.
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (5,186,703) in view of Snow (6,010,414).
Claim 10, Huang discloses the claimed device with the exception of the first mat further comprises a carry handle opening. However, as disclosed by Snow it is known in the art to include a handle (14) for a mat. It would have been obvious to one of ordinary skill in the art to have included such a handle for Huang’s base/mat given that Snow teaches the handle aids in carrying the mat.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (5,186,703) in view of Villa et al (US2011/0072581 A1) hereinafter (Villa).
Claim 14, Huang discloses the claimed device with the exception of the first mat having a thickness in a range of 0.08-0.12 inches; and the first mat is constructed of a material selected from the group consisting of polyethylene, ABS, natural rubber, polyethylene, polyamide, acrylic, polycarbonate, polyvinyl chloride, polypropylene, thermoplastic polyurethane, thermoplastic rubber, and neoprene rubber. However, as disclosed by Villa (paragraphs 0015, 0027) it is known in the art to form a mat from a variety of different material including polypropylene, polyethylene, rubber, plastics and the like. It would have been obvious to one of ordinary skill in the art to have formed Huang’s baseboard from any well-known material including the materials disclosed by Villa given that Villa teaches such material facilitate cleaning the mat.
With regards to a thickness in a range of 0.08-0.12 inches, it is noted that the thickness of the mat has been given no criticality by applicant. Lacking any criticality where the general conditions of a claim is disclosed in the prior art, it would have been obvious to one of ordinary skill in the art to have selected any desired thickness for its suitability for the intended use. It is not inventive to discover the optimum or workable ranges by routine experimentation involves only routine skill in the art.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 8-9, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (5,186,703) in view of Publicover et al (10,045,647) hereinafter (Publicover).
Claim 8, Huang shows the first board is rectangular in shape (figure 5). Huang discloses the claimed device with the exception of the boards dimension i.e. a length in a range of 30 to 36 inches and a width in the range of 10 to 16 inches. It is noted that the mat dimension has been given no criticality by applicant. Lacking any criticality it would have been obvious to form Huang’s baseboard in an desired size range, since it has been held where the general conditions of a claim(s) is disclosed in the prior art, it would have been obvious to one of ordinary skill in the art to have selected any desired thickness for its suitability for the intended use. It is not inventive to discover the optimum or workable ranges by routine experimentation involves only routine skill in the art.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Huang shows at least nine bumps arranged on the upper surface of the baseboard. Huang does not expressly disclose placing five bump elements in the arced front row, and four bump elements in the arced rear row, such that the arced rear row is concentric to the front row. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have arranged the bumps in any desired manner, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Huang teaches the baseboard can be a variety of shapes, but does not expressly disclose the shape having a convex front eds with respect to the rear edge. However, as disclosed by Publicover (figures 60A-60K) it is known to have a mat shaped such that the front edge is convex with respect to the rear edge (figures 60A-B, D). It would have been obvious to one of ordinary skill in the art to have formed Huang’s baseboard in such a shape given that Publicover teaches any polygonal shape including the ones shown can be used.
Claim 9, Huang shows the device comprises a base board 1 made from foamed plastics in square, rectangular or any of a variety of shapes. As noted above In instances where the base board is circular-shaped or oval-shaped the plurality of cutouts would be arranged in an arced arrangement in order to conform to the shape of the base board. Additionally, Huang as modified in view of Publicover shows any polygonal shape can be used. It would have been an obvious matter of design choice to have formed Huang’s bumps in an arced front and rear row with different radius range, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim 15, Huang discloses the claimed device with the exception of the front edge being tapered. However, as disclosed by Publicover (for example figures 4A-4F; the edges of the mat may be tapered. It would have been obvious to one of ordinary skill in the art to have used tapered edges for Huang’s baseboard given that Publicover teaches the tapered edges create a lower tripping risk when using the mat.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,465,023 (‘023) in view of Huang (5,186,703). ‘023 discloses the claimed invention with the exception of the manner in which the bumps are attached to the mat. However, as disclosed by Huang it is known in the art to form circular holes in the mat and insert bumps within the holes. It would have been obvious to one of ordinary skill in the art to have employed such means for attaching the bumps to ‘023 mat given that Huang teaches this manner of attachment can form a secure bond between the bumps and the mat. With regards to claim 12, Huang further teaches a second mat. With regards to dependent claims 2-11 and 13-15 ‘023 in view of Huang further in view of Snow (6,010,414), Nally (3,968,967), Publicover et al (10,045,647), Villa et al (US2011/0072581 A1) read on the dependent claims. See art rejection for breakdown of rejections.
Response to Arguments
Applicant's arguments filed 23 December 2025 have been fully considered but they are not persuasive.
With regards to the Huang reference teaching away from several aspect of applicant’s claims. The pending claims are apparatus claims, the prior art teaches a walk exercising floor which includes a base board and a plurality of bumps. The device disclosed by Huang is capable of having alternative uses. There is no requirement to have explicit teachings in the Huang reference for alternative use such as a sports training device which appears in the preamble. The preamble -- a sports training device -- does not limit the structure of the claimed device because the portion of the claim following the preamble is a self-contained description of the structure and does not depend on the preamble for completeness. With regards to “the first mat configured to lay flat on a horizontal surface”, Huang shows the baseboard lays flat on a horizontal surface. The claim as recited requires the base of the mat to lay flat and not the top of the mat to lay flat on a horizontal surface. Huang’s baseboard is shown and disclosed to do so. With regards to the plurality of cutouts being “arranged in an arced front and rear row”. The specification recites “In one example, a configuration of 9 bump elements is provided in concentric arc rows …”. The “arced arrangement” is one example of arranging the bumps. Applicant has placed no criticality on the arrangement of the bumps or the number of bumps on the mat. The Huang reference shows a plurality of bumps. Huang also places no criticality in the number of bumps or the arrangement of bumps. Contrary to applicant’s assertions there is not teaching or suggestion in the Huang reference that the bumps should be arranged in a generally-linear or diagonal rows. As shown in the marked up figure 1 below, the bumps do form arcs. It just depends how you look at the bumps.
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With regards to applicant’s assertions that Huang teaches a tray rather than a mat, and the Huang device peripheral flange would prevent an object from being rolled onto it. Huang does not teach that the base board is a “tray” as applicant appears to be asserting. Calling Huang’s base board a tray is applicant’s interpretation of Huang’s invention. As for the peripheral flange preventing an object from being rolled onto it, not exactly sure what applicant is trying to say? It is not clear why the peripheral flange would prevent an object from being rolled on to “it”. By “it” the examiner is assuming applicant means the base board and not the peripheral flange. The last paragraph of Claim 1 recites:
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Again it is not exactly clear, how the peripheral flange would effect an object being rolled on the mat, after the object impacts the raised portion? Applicant’s arguments, are not found persuasive since it is speculative and is not supported by any objective evidence.
With regards to number of bumps being positioned on the mat, as noted above applicant has placed no criticality on the number of bumps or the arrangement of the bumps. The claim does not exclude the inclusion of additional bumps but merely recites “the plurality of bump elements further comprises nine bump elements …”.
Lastly, with regards to applicant’s assertion that Huang shows stones secure with an epoxy layer … in both cases, a substantial portion of the stone’s height is below the top surface of the board or epoxy layer. It is respectfully asserted that the relevance of applicant’s remarks with regards to the use of epoxy or that a substantial portion of the height is below the top surface is not understood. Figures 7 and 8 show a portion of the top is below the surface and of course the stem portion is below the surface. What is shown is not a “substantial portion” as applicant appears to be asserting. The claims as presented do not exclude the use of epoxy or any other material, nor do the pending claims exclude a portion of the bumps being below the upper surface. Applicant has not explained the relevance of their comments with regards to the use of epoxy or a portion of the bump being below the surface. The structure disclosed by Huang reads on the claims alone or in combination with secondary references.
Conclusion
THIS ACTION IS MADE FINAL. 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 MITRA ARYANPOUR whose telephone number is (571)272-4405. The examiner can normally be reached on Mon, Thur, Fri 8:00am to 4:00pm, Wed 8:00-2:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on 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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/MITRA ARYANPOUR/Primary Examiner, Art Unit 3711
/ma/
31 March 2026