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 .
DETAILED ACTION
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 1, light-emitting members corresponding to “flexible light strips, light strings, or light panels”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 5, 7 and 8 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 7 is unclear in that there appears to be a typographical error wherein the claim should be “the slots on the plate body can be arranged on [[an]] either one side or both sides of the plate body.”
Claims 5 and 8 are unclear for the uses of “can be” in combination with the open language of “comprising” of claim 1. It is unclear if the limitations are required or optional. The broadest reasonable interpretation requires that they be treated as optional. Additionally, the shapes of claim 8 appear to be aesthetic in nature. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) wherein the court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.
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.
Claim(s) 1 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Matt US 2024022667 in view of Apatini US 20160243416.
Regarding claim 1, Matt discloses a creative light-emitting racket, comprising
a plate body (111) and a grip (112), the grip is fixedly installed beneath the plate body (Fig. 1),
adapted light-emitting members (circle containing 130) are installed
However, it does not teach a set of or a plurality of sets of slots with a certain depth are formed on the plate body, and the slots are formed to be slots of any shapes or slot holes of any shapes penetrating the plate body; and light-emitters are installed inside the slots.
Apatini teaches a racket comprising a set of or a plurality of sets of slots (Fig. 5b) with a certain depth are formed on the plate body, and the slots are formed to be slots of any shapes or slot holes of any shapes penetrating the plate body; and a light-emitter (cell phone) is installed inside the slot (Fig. 3, 4 and 5c) in order to receive and secure said light-emitter ([0019]). Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the plate body as taught by Matt by utilizing a slot with the light-emitter installed inside the slot as taught by Apatini in order to receive and secure the light-emitter and ensure a smooth surface (Matt, [0003]).
Regarding claim 6, Matt further discloses that the lamp beads are specifically configured as single-color lamp beads (inherent) or multi-color lamp beads.
Regarding claim 7, Matt further discloses that the slots on the plate body can be arranged on [[an]] either one side (Fig. 1) or both sides of the plate body.
Regarding claim 8, Matt further discloses that 8. The creative light-emitting racket according to claim 1, wherein the slots (6) can be (optional?) configured as character- or letter-shaped slots (letter “O”, Fig. 1), heart-shaped slots, flower-shaped slots or star-shaped slots.
Regarding claim 9, Matt further discloses an adapted light-transmitting panel is arranged on the plate body (Fig. 1).
Claim(s) 1 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Matt US 2024022667 in view of Apatini US 20160243416 as applied to claim 1 above and further in view of Stark EP 1886715.
Regarding claim 2, Matt further discloses a battery (191)
Stark teaches a racket comprising a battery (24) arranged inside the grip (Fig. 1). Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the location of the batteries as taught by Matt, but relocating them to the handle as taught by Stark, in order to yield the predictable results of powering light emitters in a racket. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), MPEP 2143 (I)(D).
Regarding claim 3, Matt further discloses that the battery and the light-emitting members are electrically connected to the circuit board (Fig. 1).
Regarding claim 4, Matt further discloses a charging socket (192) is formed on on the grip (Fig. 1), and the charging socket penetrates the corresponding grip (Fig. 1).
Applicant has not disclosed that having a charging socket formed on the circuit board solves any stated problem or is for any particular purpose beyond suppling power thereto. It appears that the combination would perform equally well with the charging socket formed on the circuit board as claimed by applicant. Thus, absent persuasive evidence that the particular configuration of the claimed limitation is significant, it would have been an obvious matter of design choice, before the effective filing date of the claimed invention, to modify the charging socket and circuit board as taught by Matt by utilizing a charging socket formed on the circuit board while maintaining the charging socket penetrating the grip as claimed for the purpose of supplying power to the circuit board. See, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Regarding claim 5, Matt further discloses a light control chip (171) is arranged on the circuit board, and the lamp beads on the light-emitting members can be (optional?) controlled through the light control chip (Fig. 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN O PETERS whose telephone number is (571)272-2662. The examiner can normally be reached Tue-Sat, 12:00pm-10pm EST.
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/BRIAN O PETERS/Primary Examiner, Art Unit 3711