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 .
Information Disclosure Statement
The submissions of Non-patent Literature Documents in the information disclosure statements filed 29 December 2023 and 30 January 2024 fail to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
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 targets of claim 21 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 21 and 22 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.
Regarding claim 21, line 6, “the upper barrier” lacks a proper antecedent basis.
Claim 22 is rejected because it depends from a rejected claim 21.
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, 2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 4,457,513 (Thompson).
Regarding claims 1, 2, 4 and 5, Figures 1 and 2 of Thompson show a frame 70 with an upper section having a target window 72; a lower section 44,46 covered with a net 50; and base members 38. Thompson discloses the height of the upper and lower sections to be three feet high. See Thompson, bridging paragraph between columns 3-4. It would have been obvious to one of ordinary skill in the art to make the height of the upper section approximately 18 inches, since it has been held to be within the general skill of a worker in the art to change the size of an element a matter of obvious engineering choice. See In re Rose, 105 USPQ 237.
Regarding claims 6 and 7, Thompson discloses the width of the frame to be 6 feet. See Thompson, bridging paragraph between columns 3-4.
Regarding claim 8, the space beneath the lower frame as shown in Figure 1 of Thompson is considered to inherently allow a pickleball to pass.
Regarding claim 9, as similarly set forth above, it would have been obvious to one of ordinary skill in the art to make the height of the space beneath the lower frame to be between 3 to 6 inches, since it has been held to be within the general skill of a worker in the art to change the size of an element a matter of obvious engineering choice. See In re Rose, 105 USPQ 237.
Claims 10-13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Thompson as applied above in view of U.S. Patent Number 3,836,144 (Mahoney).
Regarding claim 10, Figure 1 of Thompson shows the legs to be angled instead of extending substantially perpendicular to a plane defined by the frame. Mahoney shows a training apparatus with a frame having legs extending out from the frame substantially perpendicular to a plane defined by the frame. See Mahoney , Figures 6 and 8. The substitution of one known element (perpendicularly-extending legs as shown in Mahoney) for another (angled legs as shown in Thompson) would have been obvious to one of ordinary skill in the art at the time of the invention since the substitution of the perpendicular legs in Mahoney would have yielded results, namely, a stable base that does not easily tip over.
Regarding claims 11 and 18, Mahoney discloses that the legs are foldable via hinges 127,133. See Mahoney, Figures 8-9; column 6, second paragraph.
Regarding claim 12, it would have been an obvious matter of design choice to have the legs of Mahoney being between 6 inches and 4 feet, 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. See In re Rose, 105 USPQ 237.
Regarding claim 13, Mahoney discloses that the legs are selectively extendable/contractable via telescoping members. See Mahoney, Figure 8; column 5, lines 17-28.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Thompson as applied above in view of French Patent Number 3,020,278 (Descoubes).
Regarding claim 14, Figure 1 of Thompson discloses side lines 24 but does not explicitly describe them to be flexible. However, Figure 1 of Descoubes discloses that side lines could be in the form of flexible bands 5. One of ordinary skill in the art could have substituted the side lines of Thompson with the flexible bands of Descoube by known methods and the results would have been a predictable use of known side lines. Therefore, it would have been obvious to one of ordinary skill in the art to replace conventional side lines with flexible side lines.
Regarding claim 15, discovering an optimum value for a result-effective variable has been held to be within the capabilities of the person of ordinary skill in the art. It would have been obvious to a person having ordinary skill in this art, by routine experimentation, to provide the Thompson lines with any reasonable length, including 7 feet, in order to define the size of the court for play.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Thompson as applied above in view of U.S. Patent Number 4,913,439 (Ellington).
Regarding claims 16 and 17, Figure 1 of Thompson discloses the upper and lower horizontal members and two vertical members but does not disclose the in-line hinges in the members. Ellington show that it is old and well-known in the game framing art to provide a hinge 24 in a horizontal frame member 12 in order to easily collapse the structure to make it easier for transport. See Ellington, Figures 1 and 3; column 3, lines 2-50. Therefore, the manner of collapsing a gaming structure using a hinge was made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in Ellington. Accordingly, one of ordinary skill in the art would have been capable of applying this known “improvement” technique in the same manner to the frame of Thompson and the results would have been predictable to one of ordinary skill in the art, namely, one skilled in the art would have readily recognized that hinging the horizontal and vertical members in Thompson would allow the frame to be collapsible in a more compact configuration for easier storage and transportation.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Thompson and Mahoney as applied above in view of Ellington as applied above.
As set forth above, Ellington show that it is old and well-known in the game framing art to provide a hinge 24 in a horizontal frame member 12 in order to easily collapse the structure to make it easier for transport. See Ellington, Figures 1 and 3; column 3, lines 2-50. Therefore, the manner of collapsing a gaming structure using a hinge was made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in Ellington. Accordingly, one of ordinary skill in the art would have been capable of applying this known “improvement” technique in the same manner to the frame of Thompson as modified above and the results would have been predictable to one of ordinary skill in the art, namely, one skilled in the art would have readily recognized that hinging the horizontal and vertical members in Thompson would allow the frame to be collapsible in a more compact configuration for easier storage and transportation.
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 4,231,572 (Thornton) in view of International Publication Number WO 2007/135456 (Jamil).
Regarding claims 21 and 22, Figures 1 and 2 of Thornton show the recited frame 16 that defines a target window 17. Tennis net 11 corresponds to the recited barrier associated with the target window and is considered to inherently rebound a ball. Figure 2 of Thornton further shows the recited base members 26,27 that are attached to the bottom of frame 16 and keep the frame in an upright position.
Thornton does not explicitly describe the dimensions of the target window. It would have been an obvious matter of design choice to make the target window of Thornton with the recite dimensions, 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. See In re Rose, 105 USPQ 237.
Thornton also does not describe the targets. However, Jamil teaches the concept of providing discrete tennis targets in combination with a support structure to enable a player to practice aiming his shots. See Jamil, Figure 3; page 3, first paragraph. To provide the Thornton training device with additional targets would have been obvious to one of ordinary skill in the art, in view of the teachings of Jamil, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention, i.e., one skilled in the art would have recognized that the targets used in Jamil would allow the player to further focus his aim more narrowly within the target window in Thornton.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Raleigh Chiu whose telephone number is (571) 272-4408. The examiner can normally be reached on Monday-Tuesday.
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 number for the organization where this application or proceeding is assigned is (571) 273-8300.
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It is noted that all practice before the Office is in writing (see 37 C.F.R. § 1.2) and the proper authority for action on any matter in this regard are the statutes (35 U.S.C.), regulations (37 C.F.R.) and the commentary on policy (MPEP). Therefore, no telephone discussion may be controlling or considered authority of Petitioner’s/Caller’s action(s).
/RALEIGH W CHIU/ Primary Examiner, Art Unit 3711