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 .
This action is in response to applicant’s remarks and amendments dated 10/14/2025. Claim 1 has been amended. Claim 4 has been cancelled. Claim 13 is new. Claims 1-3 and 5-13 are currently pending.
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 8-10 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.
The term “about” in claims 8-10 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 13 is generally confusing and this type of claim structure is not generally permitted as it provides conflicting claim scope. Specifically, claim 13 appears to broaden the scope of claim 1 by providing language omitting an element that was recited in claim 1, producing a conflicting claim scope. Claim 13 also recites that sound components are “optimized for sports play on a surface,” without any tie to a physical element. It is unclear, physically, what element is attempting to be claimed to achieve this result. Claim 13 also recites “the a” which appears to be a typo. Appropriate correction is required.
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.
(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, and 12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Heath (US PGPub. No. 2018/0188850 A1).
In Reference to Claim 1-3, 7, and 12
Heath teaches (Claim 1) A sound-generating device adapted for use in sporting events (paragraph 0039, wide variety of uses disclosed, including sporting goods), the sound-generating device comprising: a circuit comprising a sound generator that produces an audio signal (paragraph 0075, microprocessor connected to IMU with accelerometer, converts 3D inputs from accelerometer to output of sound, see also paragraph 0084, and paragraph 0087 lines 27-31) adapted to be localized by an athlete (note this is an intended use that does not add structure to the claims), wherein the audio signal comprises, a composite sound consisting of separate components having different sound qualities, the separate components including a vertical plane component, a horizontal plane component, and a distance component (paragraphs 0110 and 0111, different sounds for each input, see paragraph 0095 lines 5-12, paragraph 0098 lines 1-12, paragraph 0099 lines 5-17, x, y, and z are three of the inputs, also note additional sensing of velocity, acceleration, spin, distance, and direction in three dimensions are correlated with changes in tone, pitch, volume, or frequency), wherein the vertical plane component is adapted for localization by an athlete only in the vertical plane, the horizontal plane component is adapted for localization by the athlete only in the horizontal plane, and the distance component is adapted for localization by the athlete only at a distance, wherein the horizontal plane component comprises a broad band of frequencies (note that this is an intended use, since the device produces specific sound / tone / pitch / volume / frequency based on each of a variety of sensor inputs, and three of these inputs are three planes, x, y, and z, the device could be used in this manner, meeting the claimed limitations, further note that rolling, or throwing and catching of the ball are contemplated, paragraph 0017); and a speaker for producing an audible sound from the audio signal (paragraph 0064 and 0096);
(Claim 2) further comprising: a ball surrounding the circuit and speaker (fig’s 1, 3, 4, 17, and 18, paragraph 0079);
(Claim 3) wherein the circuit further comprises: a shock sensor connected to the sound generator, wherein the sound generator produces a second audio signal when the shock sensor detects a change in direction of the circuit (paragraph 0075, sound signals also unique based on gyroscope sensor, this could be considered a “shock” sensor, alternatively, force sensors could be considered “shock” sensors, paragraph 0054);
(Claim 7) wherein the audio signal is complex (paragraphs 0095, 0098, and 0099);
(Claim 12) wherein each of the horizontal plane component, vertical plane component, and distance component are different frequencies (paragraph 0078, 0095, 0098, 0099, each sensory input is mapped to a particular frequency).
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 5, 6, 8-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Heath in view of Malinauskas et al. (US Patent No. 6,117,031).
In Reference to Claims 5, 6, and 8-11
Heath teaches all of claim 1 as discussed above.
Heath fails to teach the specific frequencies / gains claimed in claims 5, 6, and 8-11.
However, Heath teaches associating specific and distinct frequencies and gains with different planes in three-dimensional space to produce sounds that are specific to these planes (paragraphs 0078, 0095, 0098, 0099, 0111, each sensory input is mapped to a particular frequency / gain).
Malinauskas teaches a sound generating sports object which produces optimized sound volumes and frequencies in order to produce sounds that work well for the purpose of guiding visually impaired users in a sporting event (column 5 lines 8-33; column 7 lines 40-46).
It would have, therefore, been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the sound producing object of Heath with the features of producing sounds with the specific frequencies and gains claimed simply as a matter of engineering design choice, since, it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Heath teaches associating different sound profiles with different motion planes in space, and, since Malinauskas teaches that sound frequencies / tone / volume / gain are result effective variables, i.e. a variable which achieves a recognized result, in this case the result of being able to communicate spatial information to visually impaired sports players, merely claiming specific frequencies, gains, or other sound characteristics that are recognized to achieve this result is a matter of routine experimentation, and is not a patentable advance.
In Reference to Claim 13
Heath teaches all of claim 1 as discussed above.
Heath further teaches (Claim 13) wherein the a horizontal plane component and a distance component are optimized for sports play on a surface (unclear what this is intended to be, physically, however, Heath is disclosed to be able to be used on a surface and produces sounds while being used on the surface, paragraph 0017).
Additionally, in the event that applicant believes that something more specific is intended to be claimed here, Malinauskas teaches producing sounds that are optimized for sports play on a surface (column 5 lines 8-33).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the sound producing ball device of Heath with the feature of optimizing the sounds for sports play on a surface as taught by the sound producing ball device of Malinauskas for the purpose of allowing the ball to be used in a wider range of applications, making the device more versatile, and more interesting and attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have omitted the vertical plane component simply as a matter of engineering design choice, since, it has been held that omission of an element and its function is obvious if the function of the element is not desired. See Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). Therefore, when customizing the device for a particular use where a vertical plane component is not necessary, such as for use as a surface projectile in a surface type game, it would be obvious to simply omit this function.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive. Applicant’s arguments with regard to the Binder reference are moot in view of the new grounds of rejection applying the Heath reference. See action above for further details.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711