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 claims 1-15 in the reply filed on 12/8/25 is acknowledged. The traversal is on the ground(s) that “every case involves a search of multiple classes/subclasses and multiple search queries.” This is not found persuasive because the applicant is challenging the basic definition of search burden. However in this case, the restriction was between a sports board and a method of making an expanded foam board. As will be detailed below, prior art was found that teach the structural limitations of the sports board. Had the application not been restricted, the action would have required additional searching to also find the limitations of the method of making the foam board. By definition, searching for the additional invention is an additional burden on the office.
The requirement is still deemed proper and is therefore made FINAL.
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 4-8 and 10 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.
Claims 4-7 make references to “vent markings,” with claim 7 further specifying that they are micro- or steam vent markings. As the claims are defining an apparatus (and not a method of making or a device for manufacturing the apparatus) it is unclear how these limitations affect the device as claimed. Even though product-by-process claims are limited by and defined by the process, 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. That is, while the protrusions can be physically defined, it is unclear how their method of manufacture is intended to further define them. For the purposes of this action, “vent marking” alone without further physical details will not convey further limitations.
Claim 10 recites that the “cluster protrusions are randomly arranged.” It is unclear what it meant by “randomly.” Much like how any arrangement can be said to be a pattern, no pattern is truly “random.” That is, once the board is constructed, the placement is what it is, and cannot be called “random.” For the purposes of this action, this will be interpreted as an “irregular” pattern.
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, 9 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katz US 6,872,111.
Regarding claim 1, Katz discloses a sports board 1 comprising:
a monolithic structure 3 composed of a single homogeneous material (column 4, lines 18-20);
the monolithic structure having a continuous exterior skin including at least one purchase surface area 29, 31;
the continuous exterior skin including a plurality of cluster protrusions 37;
the plurality of cluster protrusions defining the at least one purchase surface area.
Regarding claim 9, Katz discloses the invention as claimed as detailed above with respect to claim 1. Katz also discloses that the plurality of cluster protrusions are arranged in a pattern within the at least one purchase surface area, as any arrangement is a pattern.
Regarding claim 15, Katz discloses:
a tail portion 7 including a contoured surface defined by the continuous exterior skin;
wherein the contoured surface is configured as a resting surface for resting the sports board in an upright position.
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 1, 3, 4, 6, 7, 9, 12, 13 and 15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sneddon US 5,273,470.
Regarding claim 1, Sneddon discloses a sports board 10 comprising:
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a monolithic structure composed of a single homogeneous material (column 3, lines 56-66);
the monolithic structure having a continuous exterior skin including at least one purchase surface area 24, 26, 36;
the continuous exterior skin including a plurality of cluster protrusions 28, 30, 34;
the plurality of cluster protrusions defining the at least one purchase surface area.
Note that the board comprises a monolithic structure, but also is taught to comprise a coating on the bottom of the board 14. In an alternative interpretation, if the applicant intended to recite that the board only has the monolithic core, then it would have been obvious to one having ordinary skill in the art at the time the invention was made to omit the bottom liner in order to reduce cost and/or simplify manufacturing of the item, since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Regarding claim 3, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon also discloses that the single homogeneous material is a recyclable material; and the monolithic structure is recyclable. In this case, Sneddon teaches the use of Ethafoam, which is a recyclable LDPE plastic.
Regarding claim 4 as best understood, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon also discloses that each cluster protrusion 28, 30, 34 of the plurality of cluster protrusions includes a plurality of vent markings, as this does not further limit the physical protrusions.
Regarding claim 6 as best understood, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 4. Sneddon also discloses that the plurality of vent markings include a plurality of ridges 28, 34.
Regarding claim 7 as best understood, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 4. Sneddon also discloses that plurality of vent markings include one of a plurality of microvent markings or a plurality of steam vent markings, as this does not further limit the physical protrusions.
Regarding claim 9, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon also discloses that the plurality of cluster protrusions 28, 30, 34 are arranged in a pattern within the at least one purchase surface area 24, 26, 36, as any cluster of protrusions can be interpreted to be a pattern.
Regarding claim 12, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon also discloses that the sports board has a board width in a range of about 20 to 36 inches and has a board length in a range of about 32 to 50 inches (column 3, lines 45-50).
Regarding claim 13, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon also discloses that the sports board has a board width in a range of about 20 to 48 inches and has a board length in a range of about 10 to 40 inches (column 3, lines 45-50).
Regarding claim 15, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon also discloses:
a tail portion 18 including a contoured surface defined by the continuous exterior skin;
wherein the contoured surface is configured as a resting surface for resting the sports board in an upright position.
Claims 2, 3, 5, 8, 10, 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sneddon US 5,273,470.
Regarding claim 2, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon does not teach that the single homogeneous material is an expanded polypropylene (EPP) foam, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize EPP in order to make the board light and strong while maintaining some flexibility, 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 3, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. In an alternate interpretation, Sneddon does not teach that the single homogeneous material is a recyclable material; and the monolithic structure is recyclable, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize a recyclable material in order to reduce the environmental impact of the device, 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 5 as best understood, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 4. Sneddon does not teach that the plurality of vent markings include a plurality of domed protrusions, however it would have been an obvious matter of design choice to make the different portions of the grip surfaces domed or of whatever form or shape was desired or expedient in order to provide a comfortable and functional grip with the desired aesthetic appearance. 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.
Regarding claim 8 as best understood, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 4. Sneddon does not teach spacing for the protrusions, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to space the protrusions as necessary to obtain the desired grip and/or aesthetic appearance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 10 as best understood, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon does not explicitly teach that the plurality of cluster protrusions are randomly/irregularly arranged within the at least one purchase surface area. It would have been obvious to one having ordinary skill in the art at the time the invention was made to orient the protrusions in an irregular pattern in order to obtain the desired grip characteristics and/or aesthetic appearance, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claims 11 and 14, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon does not teach that the sports board has a board width in a range of about 6 to 18 or 36 to 72 inches and having a board length in a range of about 6 to 18 or 60 to 84 inches. It would have been an obvious matter of design choice to make the board whatever size was desired to accommodate different size riders or enable its use for different types of wave riding sports, 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).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Sneddon US 5,273,470 in view of Shanelec US 4,961,715.
Regarding claims 2 and 3, Sneddon discloses/teaches the invention as claimed as detailed above with respect to claim 1. Sneddon does not teach that the single homogeneous material is an expanded polypropylene (EPP) foam, or that the material is recyclable. Shanelec teaches a surfboard made from EPP foam (abstract). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the sport board of Sneddon with EEP foam as taught by Shanelec in order to make the board “extremely light weight and strong, yet able to float and safer than the devices of the prior art” (column 2, lines 39-43). Regarding claim 3, EEP foam is recyclable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Green US 10,046,837 teaches a sport board in which grip ridges are integrally formed as part of the molding process.
Player US 2024/0239448 teaches a surf board with grip features molded in to the outer skin.
Hanrahan US 8,882,553 teaches a wave sports board with a monolithic EPP construction.
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/MARC BURGESS/Primary Patent Examiner, Art Unit 3615