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 .
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 3, 4, 10, 11, 16, 17, 18, and 20 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.
Claims 3, 4, 18, and 20 do not define any additional structure, therefore, it is unclear what the intent of these claims is. No string or head were positively claimed in claim 1, therefore, simply referring to items not previously claimed and stating functions of the device do not appear to limit the claims in any meaningful way. Appropriate correction / clarification is required.
The term “substantially” in claims 10, 11, 16, and 17 is a relative term which renders the claim indefinite. The term “substantially” 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 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 1-9, 12-15, and 18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Caron (US PGPub. No. 2016/0081421 A1).
In Reference to Claims 1-9 and 12
Caron teaches (Claim 1) A device for securing a mesh comprising: an attachment portion (item 20, fig’s 1-3); and a base (item 10, fig’s 1-3), including a receptacle (formed by items 103 and 107, fig’s 1-3); wherein said attachment portion is configured to contact and apply pressure to a lacrosse stick textile (paragraph 0028 and 0032, note this is functional language, the device is capable of being used to apply pressure to a lacrosse stick textile and, therefore, meets the claim limitations); and wherein a portion of said attachment portion is configured to be received by and removably secured in said receptacle to secure an amount of said lacrosse stick textile in said receptacle to connect said mesh to a head of a lacrosse stick (item 207, fig’s 1-3);
(Claim 2) wherein said attachment portion comprises a strap (item 30, fig’s 1-3), insert (item 207, fig’s 1-3), and front connector (frontmost portion of item 50, fig’s 1-3);
(Claim 3) wherein said lacrosse stick textile is a string configured to be threaded through said mesh to secure said mesh to said head (fig. 5, this simply defines any string, also note no string was positively claimed, only that the claimed device is “configured to contact” a string);
(Claim 4) wherein said device is configured to be at least one of secured in and secured proximate to an aperture of said head (again, the device could be used this way, this claim does not define any additional structure);
(Claim 5) wherein said insert is configured to be received by and removably secured in said receptacle (fig’s 1-3), and wherein a channel adapted to receive said lacrosse stick textile is present on each side of said insert when said insert is positioned in said receptacle (channels formed on either side of item 207 when closed, fig’s 1-3);
(Claim 6) further comprising: an indented gap between said front connector and said insert (item 51, between front portion of item 50 and item 207); and a lip portion of a rim of said base (item 53, fig’s 1-3); wherein said indented gap is configured to receive said lip portion of said rim of said base to secure said attachment portion to said base (fig’s 1-3 paragraph 0036);
(Claim 7) wherein said front connector is configured to permit a user to attach said attachment portion to said base and to detach said attachment portion from said base (fig’s 1-3 and paragraph 0036);
(Claim 8) wherein said insert comprises a plurality of ridges (fig’s 1 and 2, item 207 has ridges, not separately labeled);
(Claim 9) wherein said base comprises a rim having a lip portion positioned below a top surface of said base (item 53, fig’s 1-3);
(Claim 12) wherein said attachment portion and said base are configured to be detached from one another (fig’s 1-3).
In Reference to Claims 13-15 and 18
Caron teaches (Claim 13) A device for securing a mesh comprising: a base (item 10, fig’s 1-3), including a receptacle (formed by items 103 and 107, fig’s 1-3); an attachment portion (item 20, fig’s 1-3), including an insert (item 207, fig’s 1-3) and a gap (item 51, fig’s 1-3); wherein said insert of said attachment portion is configured to contact and apply pressure to a lacrosse stick textile (paragraph 0028 and 0032, note this is functional language, the device is capable of being used to apply pressure to a lacrosse stick textile and, therefore, meets the claim limitations); and wherein said insert is configured to be received by and removably secured in said receptacle to secure an amount of said lacrosse stick textile in said receptacle to connect said mesh to a head of a lacrosse stick (paragraph 0028 and 0032, note this is functional language, the device is capable of being used this way and meets the claimed limitations).
(Claim 14) wherein said gap is configured to receive a portion of said base to cause said portion of said base to be removably secured to said attachment portion (fig’s 1-3 and paragraph 0036);
(Claim 15) wherein said insert comprises a plurality of ridges (fig’s 1-3, item 207 has ridges, not separately labeled);
(Claim 18) wherein said lacrosse stick textile is a string configured to be threaded through said mesh to secure said mesh to said head (fig. 5, this simply defines any string, also note no string was positively claimed, only that the claimed device is “configured to contact” a string).
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 10, 16, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Caron in view of Hastings (US Patent No. 9,867,429).
In Reference to Claim 10
Caron teaches all of claim 1 as discussed above.
Caron fails to teach the feature of claim 10.
Hastings teaches (Claim 10) wherein [a] base is substantially round in shape (fig. 2).
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 string fastener of Caron with the feature of making the base round as taught by the string fastener of Hastings for the purpose of providing a better gripping profile for the device as taught by Hastings (column 6 lines 32-39), making the device more convenient to use and more attractive to the users.
Further, the examiner notes that it has been held that changes in shape are obvious matters of engineering design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since there does not appear to be any mechanical function to the exterior shape of the device, merely claiming that it is round or any other desired shape is simply a matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 16
Caron teaches all of claim 13 as discussed above.
Caron fails to teach the feature of claim 16.
Hastings teaches (Claim 16) wherein [an] insert extends substantially the height of [a] receptacle and at least half the distance across said receptacle (fig’s 6 and 7).
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 string fastener of Caron with the feature of the relative dimensions claimed as taught by the string fastener or Hastings for the purpose of filling more of the receptacle, creating a tighter fit and a more snug connection with the string, making the device more reliable and more attractive to the users.
Further, the examiner notes that it has been held that recitation of relative dimensions where the claimed dimensions would not perform differently than the prior art device are not patentable distinctions. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), and In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Since Caron teaches dimensions of an insert and receptacle that leave just enough room to snugly secure a string (paragraph 0032), merely claiming specific relative dimensions that would also accomplish this result are not patentable distinctions.
In Reference to Claim 17
Caron teaches all of claim 13 as discussed above.
Caron fails to teach the feature of claim 17.
Hastings teaches (Claim 17) wherein [a] base is substantially round in shape (fig. 2).
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 string fastener of Caron with the feature of making the base round as taught by the string fastener of Hastings for the purpose of providing a better gripping profile for the device as taught by Hastings (column 6 lines 32-39), making the device more convenient to use and more attractive to the users.
Further, the examiner notes that it has been held that changes in shape are obvious matters of engineering design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since there does not appear to be any mechanical function to the exterior shape of the device, merely claiming that it is round or any other desired shape is simply a matter of engineering design choice, and is not a patentable advance.
In Reference to Claims 19-20
Caron teaches (Claim 19) A device for securing a mesh comprising: a base (item 10, fig’s 1-3), including a receptacle (formed by items 103 and 107, fig’s 1-3) [], and a lip portion extending a fraction of the height of said base (item 53, fig’s 1-3); an attachment portion (item 20, fig’s 1-3), including an insert (item 207, fig’s 1-3) and a gap (item 51, fig’s 1-3); wherein said gap is configured to receive said lip portion to removably secure said lip portion to said attachment portion (fig’s 1-3, paragraph 0036); and wherein said attachment portion is configured to secure an amount of a lacrosse stick textile in said receptacle to connect said mesh to a head of a lacrosse stick (paragraph 0028 and 0032, note this is functional language, the device is capable of being used to connect to a lacrosse stick textile and, therefore, meets the claim limitations).
(Claim 20) where said lacrosse stick textile is a string configured to be threaded through said mesh to secure said mesh to said head (fig. 5, this simply defines any string, also note no string was positively claimed, only that the claimed device is “configured to contact” a string).
Caron fails to teach the receptacle extending the height of the base of claim 19.
Hastings teaches a receptacle extending the height of a base (fig. 7).
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 string fastener of Caron with the feature of the relative dimensions claimed as taught by the string fastener or Hastings for the purpose of providing a larger receptacle and filling more of the receptacle, creating more surface area and a tighter fit and a more snug connection with the string, making the device more reliable and more attractive to the users.
Further, the examiner notes that it has been held that recitation of relative dimensions where the claimed dimensions would not perform differently than the prior art device are not patentable distinctions. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), and In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Since Caron teaches dimensions of an insert and receptacle that leave just enough room to snugly secure a string (paragraph 0032), merely claiming specific relative dimensions that would also accomplish this result are not patentable distinctions.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Caron in view of King, Jr. (US PGPub. No. 2004/0172850 A1).
In Reference to Claim 11
Caron teaches all of claims 1, 2, and 5 as discussed above.
Caron fails to teach the feature of claim 11.
King teaches (Claim 11) wherein [a] channel is substantially semicylindrical in shape (items 114, fig’s 4-8, paragraph 0178).
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 string securing device of Caron with the feature of making the channels semicylindrical in shape as taught by the string securing device of King for the purpose of better matching the profile of the string to allow a user to more easily move string through the channels, while still snugly securing the string as taught by King (paragraphs 0173 and 0175), making the device easier to use, more reliable, and more attractive to the users.
Further, the examiner notes that it has been held that changes in shape are obvious matters of engineering design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since Caron teaches gaps that are sized to secure a string (paragraph 0032) merely claiming a particular shape to the gap that would work equally well for this function does not appear it would provide any significant functional distinction and is, therefore, a matter of engineering design choice, and is not a patentable advance.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 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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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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