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 .
Specification
The abstract of the disclosure is objected to because the abstract includes “marking, counting lines 1-5”, as no other text should be included with the abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 15-20 objected to because of the following informalities: each of the claim recites as “the goal structure according to claim 16”. There is no “goal structure according to claim 16”. For purposes of examination only, the examiner construed each claim as “the playing field according to claim 14”. Appropriate correction is required.
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.
Claims 1-13 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11, 883,725 (“ ‘725”). Although the claims at issue are not identical, they are not patentably distinct from each other because above claim 1 recites “A goal structure configured for use in a ball game comprising: a) An upper ring defining an upper portion of the goal structure, the upper ring having a center; b) A lower ring defining a lower portion of the goal structure, the lower ring having a center; c) A pole having an upper end and a lower end, wherein the upper end of the pole is connected to the center of the upper ring and wherein the lower end of the pole extends through the center of the lower ring to create a space to receive a ball; d) At least one chain connecting the lower ring and the lower end of the pole; and, e) At least one hoop positioned to connect the lower end of the pole to the lower ring so that a there is a gap between the at least one hoop and the at least one chain to allow the ball to exit the goal structure. .Every limitations in claim 1, as set forth above, is recited in claim 1 of ‘725, and thus claim 1 anticipated by claim 1 of ‘725.
Claims 2-13, each recite the same limitations as respective to each claims 2-13 of the ‘725.
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker et al US 2003/0190981 (“Walker”).
As per claim 14, Walker discloses a playing field for playing a ball game (Fig. 8; paragraph [0040]) comprising:
a) A center portion having a circular shape and having a defined diameter, wherein the center portion is positioned directly below a suspended goal structure positioned in the center portion (support 44 of goal 10a)(Fig. 8; [0040]);
b) A first ring surrounding the center portion and having a defined width (ring 66) (Fig. 8; [0040]);
c) A second ring surrounding the first ring and having a defined width (ring 64) (Fig. 8; [0040]);
d) A third ring surrounding the second ring and having a defined width (ring 62) (Fig. 8; [0040]); and,
e) A fourth ring surrounding the third ring and having a defined width (ring 60) (Fig. 8; [0040]).
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smither US 1,128,194 (“Smither”).
As per claim 14, Smither discloses a playing field for playing a game (Figs. 1-2; page 1, lines 47-75) comprising:
a) A center portion having a circular shape and having a defined diameter, wherein the center portion is positioned directly below a suspended goal structure positioned in the center portion (central ring to support goal 1)(Fig. 1; 1:47-52 and 1:63-75);
b) A first ring surrounding the center portion and having a defined width (first ring 2)(Fig. 1; 53-63);
c) A second ring surrounding the first ring and having a defined width (second ring 2)(Fig. 1; 53-63);
d) A third ring surrounding the second ring and having a defined width (third ring 2)(Fig. 1; 53-63); and,
e) A fourth ring surrounding the third ring and having a defined width (fourth ring 2)(Fig. 1; 53-63).
With respect to the device as “A playing field for playing a ball game” as recites in the preamble, it is noted that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bien US 2015/0345777 (“Bien”) in view of Chittenden US 6,554,285 (“Chittenden”).
As per claim 1, Bien discloses a goal structure configured for use in a ball game (disc entrapment device 140)(at least Fig. 1 and paragraph [0044]) comprising:
a) An upper ring defining an upper portion of the goal structure, the upper ring having a center (loop 124)(Fig. 1; [0044]);
b) A lower ring defining a lower portion of the goal structure, the lower ring having a center (ring of basket 144)( (Fig. 1; [0044]; note the examiner’s markings hereinafter);
c) A pole having an upper end and a lower end, wherein the upper end of the pole is connected to the center of the upper ring and wherein the lower end of the pole extends through the center of the lower ring to create a space (upright pole 146 connected to center of loop 124 via support structures 148; and extends through the lower ring of basket 144 (again, note markings hereinafter in conjunction to Fig. 1);
d) At least one element connecting the lower ring and the lower end of the pole; and (construed as at least one element connected the lower ring (of the basket 144) with pole 142)(Fig. 1 as marked hereinafter);
e) At least one hoop positioned to connect the lower end of the pole to the lower ring so that a there is a gap between the at least one hoop and the at least one element (construed as at least one hoop (that is not construed as at least one element) connected the lower ring (of the basket 144) with pole 142)(Fig. 1 as marked hereinafter).
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With respect to the functionality of the device “to create the space to receive a ball” and “to allow the ball to exit the goal structure”, per MPEP 2114 under II. manner of operating the device does not differentiate apparatus claim from the prior art
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The examiner takes the position that Bien’s device is fully capable “to create the space to receive a ball” and “to allow the ball to exit the goal structure”, since his device included all the structural limitations claimed.
Bien is not specific regarding the element is one chain connecting the lower ring and the lower end of the pole.
However, in the same field of goal structure configure to use in a game, Chittenden discloses a lower ring (segments 22a-d), with a plurality of hoops (segments 18a-d) and a plurality of chains (strands 26) connected to a lower end of pole (tube 20)(Fig. 1; 3:65-4:24). Therefore, 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 to form Bien’s element is one chain connecting the lower ring and the lower end of the pole for the reason that a skilled artisan would have been motivated in using known arrangement, known technique, in the same way of connecting hoop/s and chain/s of a lower ring to a lower pole’s end while forming a goal structure configure for use in a game.
As per claim 2, with respect to wherein the at least one hoop and the at least one chain create action upon receipt of a ball, as mentioned above with respect to claim 1, “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim”. The examiner maintains his position that the prior art is fully capable to perform as claimed since it includes all the structural limitations claimed, as set forth above.
As per claim 3, with respect to wherein the upper end of the pole is configured for suspension above a playing field, the examiner construed the base structure 143 of Bien to support pole 142 above a playing in Fig. 1, to also suspend the upper end of the pole above the playing field. Also, it is further noted that it has been held that a claim containing a “recitation with respect to the manner in which a claimed apparatus
is intended to be employed does not differentiate the claimed apparatus from a prior art
apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The examiner takes the position that Bien’s upper end pole can be suspended above playing field, since it includes the same structure claimed.
As per claim 4, with respect to wherein the upper ring includes a top cap, construed as a ring 110, in Fig. 1 (note also Fig. 2 regarding the structure of the ring 110). With respect to the intended used and/or functionality of the cap to deflect a ball, as mentioned above with respect to claims 1 and 3, apparatus claim need to be distinguish from the prior art in terms of structure rather than function/intended used. The examiner maintains his position that the prior art is fully capable to perform as claimed since it includes all the structural limitations claimed.
As per claim 5, with respect to wherein the upper ring includes a top cap, construed as ring 110, in Fig. 1 (note also Fig. 2 regarding the structure of the ring 110); with respect to the top cap configured with eyes to support attachment (such as support structure 148 with hooks 149)(Fig. 1; [0044]). With respect to the function/intended use of the cap as “to deflect a ball, and the eyes “and suspension above the playing field”, as mentioned above with respect to claims 1 and 3, apparatus claim need to be distinguish from the prior art in terms of structure rather than function/intended used. The examiner maintains his position that the prior art is fully capable to perform as claimed since it includes all the structural limitations claimed.
As per claim 6, with respect having at least three chains connected between the lower end of the pole and the lower ring, the at least three chains positioned around the circumference of the lower ring, note Chittenden’s Fig. 1 and 4:16-24 regarding the use of plurality strands 26 (i.e., at least three chains) connected to lower end of pole/tube 20. Therefore, 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 to form Bien’s having at least three chains connected between the lower end of the pole and the lower ring, the at least three chains positioned around the circumference of the lower ring for similar reasons discussed above with respect to claim 1 (i.e., as known technique of connecting hoop/s and chain/s of a lower ring to a lower pole’s end while forming a goal structure configure for use in a game).
As per claim 7, with respect to having at least three hoops connected between the lower end of the pole and the lower ring, the at least three hoops equidistantly positioned around the circumference of the lower ring, note the examiner markings above regarding the plurality hoops-elements (i.e., at least three hoops); position in such manner around the lower ring (of basket 144). Also, note Chittenden regarding a plurality of hoops (segments 18a-d) and around lower rings (segments 22a-d)(Fig. 1). Therefore, 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 to form Bien’s having at least three hoops connected between the lower end of the pole and the lower ring, the at least three hoops equidistantly positioned around the circumference of the lower ring for similar reasons discussed above with respect to claim 1.
Claim(s) 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bien and Chittenden as applied to claim 1 above, and further in view of Walker OR Smither.
As per claim 8, Bien- Chittenden is not specific regarding the playing field further comprising: a) A center portion having a circular shape and having a defined diameter, wherein the center portion is positioned directly below the goal structure; b) A first ring surrounding the center portion and having a defined width; c) A second ring surrounding the first ring and having a defined width; d) A third ring surrounding the second ring and having a defined width; and, e) A fourth ring surrounding the third ring and having a defined width.
However, Walker discloses a playing field for playing a ball game (Fig. 8; paragraph [0040]); a) A center portion having a circular shape and having a defined diameter, wherein the center portion is positioned directly below the goal structure (support 44 of goal 10a)(Fig. 8; [0040]); b) A first ring surrounding the center portion and having a defined width (ring 66); c) A second ring surrounding the first ring and having a defined width (ring 64); d) A third ring surrounding the second ring and having a defined width(ring 62); and, e) A fourth ring surrounding the third ring and having a defined width(ring 60). Also, Smither discloses a playing field for playing a game (Figs. 1-2; page 1, lines 47-75); a) A center portion having a circular shape and having a defined diameter, wherein the center portion is positioned directly below the goal structure(central ring to support goal 1)(Fig. 1; 1:47-52 and 1:63-75);b) A first ring surrounding the center portion and having a defined width(first ring 2)(Fig. 1; 53-63); c) A second ring surrounding the first ring and having a defined width (second ring 2)(Fig. 1; 53-63); d) A third ring surrounding the second ring and having a defined width (third ring 2)(Fig. 1; 53-63); and, e) A fourth ring surrounding the third ring and having a defined width (fourth ring 2)(Fig. 1; 53-63). Therefore, 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 to form Bien-Chittenden’s goal structure position above a playing field comprising A center portion having a circular shape and having a defined diameter, wherein the center portion is positioned directly below the goal structure; b) A first ring surrounding the center portion and having a defined width; c) A second ring surrounding the first ring and having a defined width; d) A third ring surrounding the second ring and having a defined width; and, e) A fourth ring surrounding the third ring and having a defined width for the reason that a skilled artisan would have been motivated in combining prior art elements according to known methods to yield predictable results including a playing field related to the goal structure while playing a game, whereas the playing field provide challenging and skills as well as entertainment and alike while playing a game upon the goal structure position on the playing field.
As per claims 9-13, with respect to wherein the defined diameter of the center portion of the playing field is six feet (claim 9), wherein the defined width of the first ring is nine feet (claim 10), wherein the defined width of the second ring is nine feet (claim 11), wherein the defined width of the third ring is nine feet (claim 12), and wherein the defined width of the fourth ring is nine feet (claim 13), Walker discloses diameter of the center portion of the playing field (support 44 of goal 10a)(Fig. 8; [0040]), the defined width of the first ring (ring 66)(Fig. 8; [0040]), the defined width of the second ring (ring 64),the defined width of the third ring (ring 62), and the defined width of the fourth (ring 60). Smither discloses diameter of the center portion of the playing field (central ring to support goal 1)(Fig. 1; 1:47-52 and 1:63-75), the defined width of the first ring (first ring 2)(Fig. 1; 53-63), the defined width of the second ring (second ring 2),the defined width of the third ring (third ring 2), and the defined width of the fourth (fourth ring 2).
Although Walker OR Smither is not specific regarding such dimensions as claimed (i.e., center portion of the playing field is six feet; first ring is nine feet; second ring is nine feet; third ring is nine feet; and fourth ring is nine feet) it is noted that it has been held that claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions. Therefore, 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 to form Walker OR Smither with such dimensions since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In 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). In this case the device of Walker OR Smither would have not operate differently with the dimension as claimed and each would function appropriately with the claimed dimension.
Claim(s) 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walker OR Smither.
As per claims 15-20, with respect to wherein the defined diameter of the center portion of the playing field is six feet (claim 15), wherein the defined width of the first ring is nine feet (claim 16), wherein the defined width of the second ring is nine feet (claim 17), wherein the defined width of the third ring is nine feet (claim 18), wherein the defined width of the fourth ring is nine feet (claim 19), wherein the defined width of the 4th ring is nine feet (claim 20), Walker discloses diameter of the center portion of the playing field (support 44 of goal 10a)(Fig. 8; [0040]), the defined width of the first ring (ring 66)(Fig. 8; [0040]), the defined width of the second ring (ring 64),the defined width of the third ring (ring 62), and the defined width of the fourth (ring 60). Smither discloses diameter of the center portion of the playing field (central ring to support goal 1)(Fig. 1; 1:47-52 and 1:63-75), the defined width of the first ring (first ring 2)(Fig. 1; 53-63), the defined width of the second ring (second ring 2),the defined width of the third ring (third ring 2), and the defined width of the fourth (fourth ring 2).
Although Walker OR Smither is not specific regarding such dimensions as claimed (i.e., center portion of the playing field is six feet; first ring is nine feet; second ring is nine feet; third ring is nine feet; and fourth ring is nine feet) it is noted that it has been held that claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions. Therefore, 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 to form Walker OR Smither with such dimensions since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In 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). In this case the device of Walker OR Smither would have not operate differently with the dimension as claimed and each would function appropriately with the claimed dimension.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.K/Examiner, Art Unit 3711 2/3/2026 /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711