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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-3, drawn to a game apparatus, classified in A63B65/122.
II. Claims 4-5, drawn to a method of playing a game, classified in A63B67/06.
III. Claim 6, drawn to a game kit, classified in A63B67/06.
The inventions are independent or distinct, each from the other because:
Inventions I and III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, invention I is a game apparatus having a bucket comprising a fixed or detachable backboard to stop balls, a raised backboard, the raised backboard having a decline, not required by invention III, whereas invention III is a game kit that is “for use in a versus game with multiple players forming teams of equal number, each team using both buckets, scoops and balls”, not required by invention I. As such, inventions I and II have a materially different design as evidenced by the mutually exclusive limitations required by the claims, as identified above. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions I and II, and III and II, are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, invention I is a game apparatus having a bucket comprising a fixed or detachable backboard to stop balls, a raised backboard, the raised backboard having a decline, not required by invention II. As such, the process of invention II can be practiced with another materially different product. Also in the instant case, invention III requires “for use in a versus game with multiple players forming teams of equal number, each team using both buckets, scoops and balls”, not required by invention II, furthermore, invention II requires the steps of “evaluating the tosses based on predetermined criteria to determine the score of each toss and continuing the game until a predetermined number of team turns or points are reached, declaring a winner based on the higher score”, which are not required in by invention III. As such, the process for using the product of invention III as claimed can be practiced with another materially different product and the product of invention III as claimed can be used in a materially different process of using that product.
As indicated above, each invention I, II and III would require a search in distinct CPC subgroups. They have obtained a separate status in the art due to their recognized divergent subject matter. Further, there is no reason to believe the searches queries would be coextensive. Even though the inventions may share some of the same CPC subgroups, each invention would require a unique text search and a search for the structure of one invention would not necessarily involve a search for the other inventions as they require different search terms.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
During a telephone conversation with Anthony Kokakis on 1/5/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-3. Affirmation of this election must be made by applicant in replying to this Office action. Claims 4-6 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
This application makes reference to or appears to claim subject matter disclosed in Application No. 63/414069, filed 10/7/2022. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76; if the application was filed on or after September 16, 2012, the specific reference must be included in an ADS in compliance with 37 CFR 1.76. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the applicable petition fee under 37 CFR 1.17(m)(1) or (2), and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m)(1) or (2) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS in compliance with 37 CFR 1.76 with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76). See MPEP § 211.02.
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 “suction lock and release mechanism” of claim 3 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 1-3 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.
Claim 1 recites the limitation "the raised backboard may have a decline" in line 7. As written it is unclear of the limitation is actually required by the claim, as currently written it appears to be a conditional limitation. For examination purposes, as best understood by the Examiner in view of the specification, the limitation will be interpreted as “the raised backboard includes a decline”. Examiner suggests amending the claim as such to overcome the indefiniteness issues.
Claim 1 recites the limitation "one or more malleable spherical balls" in line 9. There is insufficient antecedent basis for this limitation in the claim. Furthermore, it is unclear of the one or more malleable spherical balls are separate from or part of the “balls” previously recited in the claimed. For examination purposes, as best understood by the Examiner in view of the specification, the limitation will be interpreted as “wherein the balls include one or more malleable spherical balls”. Examiner suggests amending the claim as such to overcome the antecedent basis and indefiniteness issues.
Claim 1 recites the limitation "the rounded protrusion of the scoop" in lines 9-10. There is insufficient antecedent basis for this limitation in the claim. Furthermore, it is unclear to which rounded protrusion of which scoop Applicant is referring. For examination purposes, as best understood by the Examiner in view of the specification, the limitation will be interpreted as “the rounded protrusion of each scoop”. Examiner suggests amending the claim as such to overcome the antecedent basis and indefiniteness issues.
Claim 1 recites the limitation "the malleable spherical balls" in lines 11-12. There is insufficient antecedent basis for this limitation in the claim. Furthermore, it is unclear to which malleable spherical balls of the one or more malleable spherical balls Applicant is referring. For examination purposes, as best understood by the Examiner in view of the specification, the limitation will be interpreted as “the one or more malleable spherical balls”. Examiner suggests amending the claim as such to overcome the antecedent basis and indefiniteness issues.
Claims 2-3 are also indefinite by virtue of their dependency on Claim 1.
Claim 2 recites the limitation "selected from the group consisting of but not limited to plastic, leather, and rubber" in line 2. The Markush grouping requires a material selected from an open list of alternatives (e.g., “but not limited to”), which renders the claim indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). For examination purposes, as best understood by the Examiner in view of the specification, the limitation will be interpreted as “selected from the group consisting of plastic, leather, and rubber”. Examiner suggests amending the claim as such to overcome the antecedent basis and indefiniteness issues.
Claim 3 is also indefinite by virtue of their dependency on Claim 2.
Claim 3 recites the limitation "the extended handle and rounded protrusion" in line 1. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, as best understood by the Examiner in view of the specification, the limitation will be interpreted as “the handle and rounded protrusion”. Examiner suggests amending the claim as such to overcome the antecedent basis and indefiniteness issues.
Claim 3 recites the limitation "the scoop apparatus can be used as a stand-alone or used in games like cricket, baseball, lacrosse, but not limited to, as a throwing object using suction lock and release mechanism" in lines 2-4. It is unclear what Applicant is trying to claim due to the awkward phrasing. Further, it is unclear if the scoop apparatus can be used as a stand-alone throwing object in games like cricket, baseball, lacrosse, or something else. Further, the phrase “but not limited to” renders the claim indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). Examiner suggests amending the claim to clarify what is being claimed.
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.
(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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burks (US 20150137454).
In Regard to Claim 1
Burks teaches:
A game apparatus(Fig 1-5) comprising:
a. one or more scoops(10), each scoop including a handle(20) and a rounded protrusion(15) extending outward from the handle(15 is rounded and protrudes outward from handle 20 as is visually apparent in Fig 1-3);
b. a bucket(60) for receiving balls tossed using the one or more scoops(P[0022]-P[0023]), the bucket further comprising a fixed backboard to stop balls(75,75A is a backboard which stops balls);
c. a raised backboard to stop balls(portion 75 is raised from bucket portion 70 to stop balls);
d. wherein the raised backboard may have a decline to allow for the balls to bounce straight up in the air after hitting the backboard(portion 75A of the raised backboard has a decline configured to allow balls to bounce straight up in the air after hitting the backboard when the ball impacts the backboard at the correct angle of descent; Fig 4).
e. one or more malleable spherical balls(paint balls; P[0026]) sized and shaped to fit within the rounded protrusion of the scoop(as shown in Fig 3, the projectile is sized and shaped to fit within the recess portion 30 of the rounded protrusion 15);
f. wherein the rounded protrusion of the scoop is configured to friction fit with the malleable spherical balls(the recess portion of the rounded protrusion of the scoop is structurally capable of friction fitting with the malleable spherical balls as 10 may be used like a sling shot wherein the recess is shaped to hold the spherical projectiles; P[0026]);
g. wherein the one or more scoops are also usable as stand-alone equipment for playing toss and catch games(10 is structurally capable of being used as stand-alone equipment for playing a toss and catch game with the spherical projectiles; P[0026]).
Examiner notes the limitations “for receiving balls tossed using the one or more scoops”, “to stop balls”, and “to allow for the balls to bounce straight up in the air after hitting the backboard” are either intended use or is a mere function of the game apparatus in which case it is inherent to the game apparatus structure and therefore anticipated by Girardeau. Regarding intended use, it has been held that the recited modification with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex part Masham, 2 USPQ2d 1647 (1987)
In Regard to Claim 2
Burks teaches:
The game apparatus of claim 1(see rejection of claim 1 above), wherein the one or more scoops are made of a hard or semi-hard material, selected from the group consisting of but not limited to plastic, leather and rubber(P[0017]).
In Regard to Claim 3
Burks teaches:
The game apparatus of claim 2(see rejection of claim 2 above), wherein the extended handle and rounded protrusion of the one or more scoops are identically shaped and sized(the handle and rounded protrusion of the one scoop 10 is shown in Fig 1-5), and the scoop apparatus can be used as a stand-alone or used in games like cricket, baseball, lacrosse, but not limited to, as a throwing object using suction lock and release mechanism(10 is able to be used as a throwing object in games like cricket, baseball, and/or lacrosse).
Examiner notes the limitation “the scoop apparatus can be used as a stand-alone or used in games like cricket, baseball, lacrosse, but not limited to, as a throwing object using suction lock and release mechanism” does not limit the claim scope since the phrase “can be” suggests or makes optional the limitations following the phrase.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 1164609 A
Darton; W.B.
US 20150137454 A1
Burks; Vance
US 20220168620 A1
Hayes; Ronald
US 20150164046 A1
Lutz; Thomas et al.
US 4548413 A
David; Chris A.
US 10150022 B1
Robino; John Barry
US 3589349 A
Parker; Robert J.
US 5290039 A
Cornelio; Julius B.
US 7648433 B1
Huqueriza; Esar S.
US 11931635 B1
Hayes; Ronald
AU 2017101406 A4
DAVID JOHN
The above references are cited for teaching similar scoop and bucket ball toss games and/or similar apparatus used to the throw and/or catch a ball.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P WOLCOTT whose telephone number is (571)272-9837. The examiner can normally be reached M-F 8:00am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Court D. Heinle can be reached at (571) 270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P WOLCOTT/Primary Examiner, Art Unit 3745