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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claim 3 limitation, lines 3-9, a third bore disposed in the top face or the bottom face of the hockey puck; and a third core disposed in the third bore, wherein the third core comprises: at least one signal emitter proximal to a top end of the third core; a switch in operative communication with the at least one signal emitter; and a battery in operative communication with the switch and the at least one signal emitter must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 6 is 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “a filler,” and the claim also recites “that is optionally silica or silanized silica, an accelerator, an antioxidant, and optionally a dye” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 12 is 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 12, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 17 is 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 17 recites the limitation "the first recess" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the instant examination, claim 17 will be read to depend on claim 16.
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 (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 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)(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 1-3, 7-10, and 12-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gaudreau et al. (US 12558601 B2), hereinafter Gaudreau.
Regarding claim 1, Gaudreau discloses:
A trackable hockey puck (Abstract) comprising: a hockey puck-shaped outer shell (column 5, lines 52-55) including a top face (body 110, top surface 111), a bottom face disposed opposite the top face (bottom surface 112), and edge surface disposed between outer circumferences of the top face and the bottom face (peripheral surface 113), a first bore disposed in the top face (218a), and a second bore disposed in the bottom face (218b); and a core (214) disposed in each of the first bore and the second bore (Figures 4-5, column 10, lines 5-15), wherein each core comprises: at least one signal emitter proximal to a top end of the core (column 5, lines 30-33; column 6, lines 47-48); a switch in operative communication with the at least one signal emitter; a battery in operative communication with the switch and the at least one signal emitter; and optionally a system timer in operative communication with the battery, the switch, and the signal emitter (column 7, lines 28-44).
Regarding claim 2, Gaudreau discloses:
The trackable hockey puck of Claim 1, wherein the hockey puck does not include any signal emitters disposed about an edge face of the hockey puck (none of Gaudreau’s twelve embodiments disclose any signal emitters disposed about an edge face of the hockey puck).
Regarding claim 3, Gaudreau discloses:
The trackable hockey puck of Claim 1 further comprising: a third bore (Figures 6-8; element 327c) disposed in the top face or the bottom face of the hockey puck; and a third core (321) disposed in the third bore (column 11, lines 20-31), wherein the third core comprises: at least one signal emitter proximal to a top end of the third core; a switch in operative communication with the at least one signal emitter; and a battery in operative communication with the switch and the at least one signal emitter (column 7, lines 28-45; column 11, lines 9-10).
Regarding claim 7, Gaudreau discloses:
The trackable hockey puck of Claim 1, wherein the bore includes bore threads disposed on its inner surface, and wherein the core includes threads complementary to the bore threads and disposed on its edge surface (column 6, lines 30-33).
Regarding claim 8, Gaudreau discloses:
The trackable hockey puck of Claim 1, wherein the signal emitter, the switch, and the battery are disposed on a flexible PCBA [printed circuit board assembly] board (column 7, lines 28-42).
Regarding claim 9, Gaudreau discloses:
The trackable hockey puck of claim 8, wherein the flexible PCBA board is disposed within the core (column 6, lines 38-41; column 7, lines 28-42).
Regarding claim 10, Gaudreau discloses:
The trackable hockey puck of Claim 9, wherein the core includes an optical opening on its first end configured to enable signal light produced by the signal emitter proximal to the first end of the core to escape the top face of the hockey puck, and wherein the core includes an optical opening on its second end configured to enable signal produced by the signal emitter proximal to the second end of the core to escape the bottom face of the hockey puck (Figures 27-28; column 23, lines 17-25).
Regarding claim 12, Gaudreau discloses:
The trackable hockey puck of Claim 1, wherein the trackable hockey puck does not include a signal emitter disposed to emit a signal (e.g., infrared light) from the edge surface of the trackable hockey puck (none of Gaudreau’s twelve embodiments disclose any signal emitters disposed about an edge face of the hockey puck).
Regarding claim 13, Gaudreau discloses:
The trackable hockey puck of Claim 1, wherein the switch is selected from the group consisting of: a phototransistor and a shock sensor (column 7, lines 28-36).
Regarding claim 14, Gaudreau discloses:
The trackable hockey puck of Claim 1, wherein the signal emitter is selected from the group consisting of: an infrared LED [light-emitting diode], a radio transmitter, and a VCSEL [vertical-cavity surface-emitting laser] (column 7, lines 28-50; column 8, lines 1-5).
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 4-5, 11, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gaudreau.
Claim 4 discloses:
The trackable hockey puck of Claim 1, wherein the core has a dimension from the top end to a bottom, opposite end, of about 1 mm to about 5 mm less than a depth of the first bore or the second bore. Gaudreau substantially discloses the claimed invention. As shown in Figure 5 below, Gaudreau discloses that the receptacle has a dimension less than the depth of the first and second recesses. However, Gaudreau does not explicitly disclose the dimension of the receptacle to be 1 mm to about 5 mm less than the depth of the first or second recess. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Gaudreau to have a depth of the receptacle 1 mm to about 5 mm less than the depth of the aperture since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Gaudreau would not operate differently with the claimed dimension since the receptacle is intended to reside within the body aperture of the hockey puck.
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Claim 5 discloses:
The trackable hockey puck of Claim 4 further comprising potting material disposed on at least the top end of the core, wherein the potting material is flush with the top face or the bottom face of the hockey puck and is substantially transparent to signal emitted by the signal emitter. Gaudreau substantially discloses the claimed invention, including body material (column 2, lines 29-33), receptacle body flush with face of puck body (column 7, lines 3-5; column 9, lines 45-47), and radio-frequency transparency (column 7, lines 17-27).
Claim 11 discloses:
The trackable hockey puck of Claim 1, wherein the core consists essentially of: a first flexible PCBA board disposed proximal to the first end of the core and including exactly one signal emitter, a switch in operative communication with the signal emitter, and a battery in operative communication with the switch and the signal emitter; and a second flexible PCBA board disposed proximal to the second end of the core and including exactly one signal emitter, a switch in operative communication with the signal emitter, and a battery in operative communication with the switch and the signal emitter. Gaudreau substantially discloses the claimed invention (see Figures 15-16; column 15, line 63 – column 16, line 6). However, Gaudreau does not explicitly disclose a first and second flexible PCBA board, each of which includes exactly one signal emitter, a switch in operative communication with the signal emitter, and a battery in operative communication with the switch and the signal emitter. In the embodiment of Figures 15-16 below, Gaudreau does disclose two tracking devices, 140a and 140b. A tracking device can include the majority of the components (boards, microprocessors, sensors, power control circuitry, power unit; see column 7, lines 28-45). Gaudreau further discloses that tracking devices 140a and 140b are electronically connected to one another. It would have been obvious to one having ordinary skill in the art at the time the invention was made to duplicate in each tracking device a flexible PCBA board, each of which includes exactly one signal emitter, a switch in operative communication with the signal emitter, and a battery in operative communication with the switch and the signal emitter, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
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Claim 15 discloses:
A trackable hockey puck comprising: a first core disposed in a first bore of a top face of a hockey puck-shaped rubber shell, the first core comprising: a first core enclosure including a cavity;
a first core beacon disposed within the cavity and including: exactly one infrared LED lamp disposed proximal to a top end of the first core enclosure, a shock sensor or phototransistor in operative communication with the infrared LED lamp, and a battery in operative communication with the shock sensor or phototransistor and with the infrared LED lamp; and cured potting material disposed throughout the cavity; a second core disposed in a second bore of a bottom face of a hockey puck- shaped rubber shell, the second core comprising: a second core enclosure including a cavity; a second core beacon disposed within the cavity and including: exactly one infrared LED lamp disposed proximal to a top end of the second core enclosure, a shock sensor or phototransistor in operative communication with the infrared LED lamp, and a battery in operative communication with the shock sensor or phototransistor and with the infrared LED lamp; and cured potting material disposed throughout the cavity. Gaudreau substantially discloses the claimed invention of a hockey puck body (Figures 15-16; column 15, lines 55-62), a receptacle disposed within the body (column 16, lines 7-23), a tracking device disposed within the receptacle (column 15, line 63 – column 16, line 6; column 7, lines 28-55), and molding the puck body over the receptacle (column 16, lines 55-56). Figures 15-16 below show an embodiment of Gaudreau that discloses first and second receptacle cavities (722a and 722b) configured to receive first and second portions of the tracking device (140a and 140b). Gaudreau does not explicitly teach first and second beacons, each beacon comprising an infrared LED lamp, shock sensor or phototransistor, and battery. However, Gaudreau does disclose that at least one portion of the tracking device includes the majority of the components whereas the second portion of the tracking device includes the battery, the first and second portions electronically connected to one another. Gaudreau further discloses that other configurations are contemplated. It would have been obvious to one having ordinary skill in the art at the time the invention was made to dispose the complete tracking device in each of the receptacle cavities, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
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Claim 16 discloses:
The trackable hockey puck of Claim 15, wherein the first core is disposed within the first bore to form a first recess between the top end of the first core enclosure and the top face of the hockey puck. Gaudreau substantially discloses the invention as claimed, including that a receptacle body is received in an aperture (see Figure 15 below). However, Gaudreau does not explicitly disclose a recess between the top of the core enclosure and the top face of the hockey puck. It would have been obvious to one having ordinary skill in the art at the time the invention was made that a recess would be formed between the receptable and the receiving of it in the aperture since it was known in the art that incorporating a tracking device into a conventional hockey puck involves receiving the tracking device in a receptacle and molding the body material in recesses around the receptacle to form a body of the puck.
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Claim 17 discloses:
The trackable hockey puck of Claim 15 [Examiner reads this depending on claim 16; see 112(b) rejection above], wherein the first recess has a depth of about 1 mm to about 5 mm. Gaudreau substantially discloses the claimed invention. As discussed in the rejection of claim 16 and shown in Figure 15 above, Gaudreau discloses that a recess necessarily obtains between aperture and receptacle. However, Gaudreau does not explicitly disclose the dimension of the receptacle to be 1 mm to about 5 mm less than the depth of the first or second recess. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Gaudreau to have a depth of the receptacle less than 1 mm to about 5 mm than the depth of the aperture since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Gaudreau would not operate differently with the claimed dimension since the receptacle is intended to reside within the body aperture of the hockey puck.
Claim 18 discloses:
The trackable hockey puck of Claim 16 further comprising cured potting material disposed in the first recess. Gaudreau substantially discloses the claimed invention. However, Gaudreau does not explicitly disclose disposing cured potting material in the recess. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Gaudreau to incorporate cured potting material in the first recess in order to receive a tracking device in the body of a puck, 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.
Claim 19 discloses:
The trackable hockey puck of Claim 15, wherein the second core is disposed within the second bore to form a second recess between the top end of the second core enclosure and the bottom face of the hockey puck. Gaudreau substantially discloses the invention as claimed, including that a receptacle body is received in an aperture (see Figure 15 below). However, Gaudreau does not explicitly disclose a recess between the top of the core enclosure and the top face of the hockey puck. It would have been obvious to one having ordinary skill in the art at the time the invention was made that a recess would be formed between the receptable and the receiving of it in the aperture since it was known in the art that incorporating a tracking device into a conventional hockey puck involves receiving the tracking device in a receptacle and molding the body material in recesses around the receptacle to form a body of the puck.
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Claim 20 discloses:
The trackable hockey puck of Claim 19, wherein the second recess has a depth of about 1 mm to about 5 mm. Gaudreau substantially discloses the claimed invention. As discussed in the rejection of claim 17 and shown in Figure 15 above, Gaudreau discloses that a recess necessarily obtains between aperture and receptacle. However, Gaudreau does not explicitly disclose the dimension of the receptacle to be 1 mm to about 5 mm less than the depth of the first or second recess. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Gaudreau to have a depth of the receptacle less than 1 mm to about 5 mm than the depth of the aperture since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Gaudreau would not operate differently with the claimed dimension since the receptacle is intended to reside within the body aperture of the hockey puck.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Gaudreau as evidenced by Douglas (US 5330184), hereinafter Douglas.
Claim 6 discloses:
The trackable hockey puck of Claim 5, wherein the potting material comprises a rubber, a filler that is optionally silica or silanized silica, an accelerator, an antioxidant, and optionally a dye. Gaudreau substantially discloses the claimed invention including a body material of a resilient material such as a rubber compound (See column 6, lines 16-17; column 21, lines 25-37 and 55-60). However, Gaudreau does not explicitly disclose “a filler that is optionally silica or silanized silica, an accelerator, an antioxidant, and optionally a dye”. The rubber body material of Gaudreau is known to be as claimed as evidenced by Douglas (column 4, lines 3-13) which discloses that “[a]dditives such as fillers, reinforcing materials, antioxidants, curing agents, accelerators, and processing materials can also be added to the rubber compounds. However, it should be understood that such components are well known to those skilled in the art and thus, the present invention is not necessarily limited to the use of any particular additives or amounts thereof. Moreover, the additives which can be added may vary substantially depending upon whether the article to be produced, i.e., a hockey puck, is black in color or some other color.” Thus, the body material used in Gaudreau inherently has the claimed rubber, a filler that is optionally silica or silanized silica, an accelerator, an antioxidant, and optionally a dye.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDALL J. LOVDAHL whose telephone number is (571)272-6701. The examiner can normally be reached M-F 0800-1700.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.J.L./Examiner, Art Unit 3711
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711