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 .
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)(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 1-4 and 8 are rejected under 35 U.S.C. 102a1 as being anticipated by WO2022082293. WO2022082293. Regarding claim 1, WO2022082293 discloses a rollable two-sided die*, comprising: a first piece (102, 202, 302, 402, 502, 602, 702, 802, 902, figures 1A-9C) and a second piece (104, 204, 304, 404, 504, 604, 704, 804, 904, figures 1-9C), bonded, molded, or shaped together (first and second pieces are integrally shaped together, see paragraph numbers 23 and 72-73), wherein the first and second pieces have a similar shape to one another(figures 1-9C); and wherein said first and second piece are connected in parallel to one another (figures 1A, 1B, 4 and 5), and overlap at least in part in a lengthwise direction (figures 1A-9C).
*NOTE: The text in bold in the preamble is not limiting. When reading the preamble in the context of the entire claim, the recitation ‘a rollable two-sided die” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Regarding claim 2, the rollable two-sided die of claim 1, wherein the first and second pieces are comprised of wood or composite material (see para. # 13, first and second pieces are made of fiberglass which is a composite material).
Regarding claim 3, the rollable two-sided die of claim 1, wherein the first and second pieces are cylindrical in shape (figures 1A-9C).
Regarding claim 4, the rollable two-sided die of claim 1, wherein the first and second pieces are conical in shape (figures 1A-9C).
Regarding claim 8, the rollable two-sided die of claim 1, wherein *construction methods comprise molding, chiseling, whittling or printing.
*NOTE: The text in bold is a product by process claim and not given any patentable weight.
Claims 1 and 8 are rejected under 35 U.S.C. 102a1 as being anticipated by U.S. Patent Application Publication No. 2009/0210101, hereafter referred to as ‘Hawkins ‘101’. Regarding claim 1, Hawkins ‘101 discloses a rollable two-sided die (figures 1A-1D), comprising: a first piece 110 and a second piece 120, bonded, molded, or shaped together (first and second pieces are connected together (via 112 & 122 or 130 & 140, and thus are shaped together, see paragraph numbers 51-52), wherein the first and second pieces have a similar shape to one another (figures 1A-1D); and wherein said first and second piece are connected in parallel to one another (figures 1A-1D), and overlap at least in part in a lengthwise direction (figures 1A-1D).
Regarding claim 8, the rollable two-sided die of claim 1, wherein *construction methods comprise molding, chiseling, whittling or printing.
*NOTE: The text in bold is a product by process claim and not given any patentable weight.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over WO2022/082293. WO2022/082293 discloses the claimed invention except for the teaching that the weight of the first and second pieces differ, to allow for bounce against a flat surface.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the first and second pieces of WO2022/082293 so that the weight of the first and second pieces differ since such a modification would have merely been an obvious engineering design choice yielding the predictable results of making the riding surfaces different sizes and weights in order to provide different riding experiences for the user. Furthermore, the recitation of “to allow for bounce against a flat surface” is an intended use recitation and given very little patentable weight since the device of WO2022/082293, based on the material it is made, would bounce when dropped from a distance onto a flat surface, this limitation is met by the WO2022/082293 reference.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO2022/082293. WO2022/082293 discloses the claimed invention except for the teaching that the second piece is smaller than the first piece, in both diameter and length.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the first and second pieces of WO2022/082293 so that the second piece is smaller than the first piece, in both diameter and length since such a modification would have merely been an obvious engineering design choice yielding the predictable results of making the riding surfaces different dimensions, sizes and weights in order to provide different riding experiences for the user.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over WO2022/082293. WO2022/082293 discloses the claimed invention except for the teaching that the first and second piece comprises Acrylonitrile butadiene styrene (ABS), Polylactic acid (PLA), Polyvinyl alcohol (PVA), High-density polyethylene (HDPE), Nylon, Polyethylene terephthalate (PETT), Wood Filament, Metal Filament, Carbon Fiber, Plexi, or Wood.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the first and second pieces of WO2022/082293 so that they are made of Acrylonitrile butadiene styrene (ABS), Polylactic acid (PLA), Polyvinyl alcohol (PVA), High-density polyethylene (HDPE), Nylon, Polyethylene terephthalate (PETT), Wood Filament, Metal Filament, Carbon Fiber, Plexi, or Wood since such a modification would have merely been an obvious engineering design choice yielding the predictable results of using different materials to make the device of WO2022/082293 based on factors, such as strength, durability, cost etc. for optimally manufacturing the device of WO2022/082293.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins ‘101. Hawkins ‘101 discloses the claimed invention except for the teaching that the first and second pieces are comprised of wood or composite material and/or comprised of Acrylonitrile butadiene styrene (ABS), Polylactic acid (PLA), Polyvinyl alcohol (PVA), High-density polyethylene (HDPE), Nylon, Polyethylene terephthalate (PETT), Wood Filament, Metal Filament, Carbon Fiber, Plexi, or Wood.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the first and second pieces of WO2022/082293 so that they are made of wood or composite material or Acrylonitrile butadiene styrene (ABS), Polylactic acid (PLA), Polyvinyl alcohol (PVA), High-density polyethylene (HDPE), Nylon, Polyethylene terephthalate (PETT), Wood Filament, Metal Filament, Carbon Fiber, or Plexi since such a modification would have merely been an obvious engineering design choice yielding the predictable results of using different materials to make the die of Hawkins ‘101 based on factors, such as strength, durability, cost etc. for optimally manufacturing the die of Hawkins ‘101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Velich ‘237 discloses a cylindrical shaped die which is similar to applicant’s invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M SEMBER whose telephone number is (571)272-2381. The examiner can normally be reached flexing generally from 7 a.m. to 5.00 p.m. M-F.
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/THOMAS M SEMBER/Primary Examiner, Art Unit 2875