DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985).
Claims 1-11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11857865 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain substantially similar subject matter.
Claim 1 of the ‘865 patent includes limitations directed towards a playing area with panels that have a thickness and slots which are assembled to form a playing enclosure. These limitations are similar to claim 1 of the instant application which are directed towards a playing area enclosed by panels with a thickness and slot, the slots having a respective length and width to form a polygonal playing area.
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, 5-11 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 includes limitations directed towards "the panels having a height of more than 2 feet, and being sufficiently rigid to bounce back a kicked ball." The examiner cannot ascertain the exact bounds of what sufficiently rigid to bounce back a kick ball encompasses to properly bound the subject matter claimed. Furthermore, a
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 1-3, 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Elliott (9556605 B2) in view of LaDue (US 4792144).
Regarding claim 1, Elliott teaches 1. A method for assembling a fenced-in game playing area large enough for children to play within the game playing area, comprising; providing a plurality of panels, each panel having a thickness and an upward open slot adjacent to one end and a downward open slot adjacent an opposite end; the slots having a length of at least have the height of its respective panel, the slots having a width greater than an adjacent panel thickness, the panels engaged end to end to form a polygon shaped playing area. See Fig. 2, 82, 84 and 86.
LaDue does teach what the primary reference is silent on including the panels having a height of more than 2 feet, and being sufficiently rigid to bounce back a kicked ball. See 3:30+ which speaks of the use of a solid material which the examiner considered to be sufficiently rigid as claimed and also of a heigh of no less than three feet which overlaps with the claimed height.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Elliott with LaDue to provide a "knock-down" wall which can be easily dismantled but used in multiple different playing courts.
Regarding claim 2, Elliott teaches 2. The method according to claim 1, wherein the polygon-shaped area comprises an octagon shaped area. See Fig. 82.
Regarding claim 3, Elliott teaches 3. The method according to claim 1, wherein the polygon shaped area comprises a hexagon shaped area. See Fig. 82 Additionally, the court held that “the configuration of a claimed apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant”. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)) As such, utilizing a hexagonal shaped area instead of an octongonal shaped area such as shown in Fig. 83 is a matter of choice that a person of ordinary skill in the art would have found obvious at the time of the invention. No persuasive evidence is found on the record to show that the claimed configuration is significant.
Regarding claim 5, Elliott teaches 5. The method according to claim 1, wherein at least one of the panels includes a recess from one edge of the panel to provide a lowered entry location for a player to enter the playing area. See Fig. 86.
Regarding claim 6, Elliott teaches 6. The method according to claim 1, wherein at least one of the panels forms a goal opening. See Fig. 85.
Regarding claim 7, Elliott teaches 7. The method according to claim 1, wherein at least one of the panels includes a recess from one edge of the panel to provide either a lowered entry location for a player to enter the playing area when set in one orientation or a goal opening when set in an alternate orientation. See Fig. 86.
Regarding claim 8, Elliott teaches 8. The method according to claim 1, wherein the polygon shaped area comprises an octagon shaped area, wherein at least one of the panels includes a recess from one edge of the panel to provide a lowered entry location for a player to enter the playing area. See Fig. 82 and 86.
Regarding claim 9, Elliott teaches 9. The method according to claim 1, wherein the polygon shaped area comprises a hexagon shaped area, wherein at least one of the panels includes a recess from one edge of the panel to provide a lowered entry location for a player to enter the playing area. See Fig. 82 and 86.
Regarding claim 10, Elliott teaches 10. The method according to claim 1, wherein the polygon shaped area comprises an hexagon shaped area, and wherein at least one of the panels includes a recess from one edge of the panel to provide either a lowered entry location for a player to enter the playing area when set in one orientation or a goal opening when set in an alternate orientation. See Fig. 82 and 86.
Regarding claim 11, Elliott teaches 11. The method according to claim 1, wherein the polygon shaped area comprises an octagon shaped area, and wherein at least one of the panels includes a recess from one edge of the panel to provide either a lowered entry location for a player to enter the playing area when set in one orientation or a goal opening when set in an alternate orientation. See Fig. 82 and 86.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of new grounds of rejections that are initiated by applicant’s amendments to the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene L Kim can be reached on (571) 272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711