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 .
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
In the instant case the single claim presented is not in the proper form to determine the metes and bounds for applicant’s invention. However, for the purposes of this office action the specification and the drawings provide guidance to search for the inventive concept and provided the prior art made of record.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
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.
Claim 1 is rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Rejections under 35 U.S.C. 112(b) such as this occur when it is unclear of the scope of the claim such that one can readily determine the features of his invention that he finds inventive and seeks to prevent others making, using or selling. This is defined by the claims that are evaluated during examination and not based on the whole of the drawings and specification.
As best can be inferred from claim 1, it recites the combination of a Multi-Layer Memory Foam Wall without further structure or direction to construe the limits of he meaning of such a term. For instance, one cannot determine the structures that makes it describable as being “multi-layer”. Here such cold be having several layers of memory foam or maybe such that the term is merely descriptive of the wall including the silicone layer. Since there are multiple interpretations, the scope of the claim cannot be accurately ascertained. If a claim is amenable to two or more plausible constructions, applicant is required to amend the claim to more precisely define the metes and bounds of the claimed invention or the claim is indefinite under § 112, ¶ 2. Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (expanded panel).The claim should be amended to clarify the “multi-layer” structures and/or remark as to the intended scope of being merely a descriptive title of the wall such that it would include the silicone layer.
Similarly, it is not clear how the recited, “Silicone Impact Surface” is structurally related to the other previously recited elements or what structures are necessarily included in such an element. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding the claims indefinite because the rejection was based on speculative assumptions as to the meaning of the claims. In the specification, such appears to be on a forward-facing surface of the wall, yet such a description cannot be imported into the claims for the purposes of examination. Such structures that applicant may considered inventive must be positively recited in the claims for them to be properly considered in view of the applied art.
The function that the “silicone” surface is intended to “enhances safety and durability, especially in a home environment” is considered indefinite as such is subjective and no particular materials that can meet such an intended objective have not been disclosed.
The term “Movable/Detachable Platform is Customizable to player preference” is unclear as the claim fails to set forth the structures that make it movable and customizable and how such structures related to any particular player preference.
The “drawstring Holes Assembly” are not disclosed or claimed in anyway to be able to determine how such relate to the wall, silicone impact surface, target area or rubber assembly. It is presumed the holes are such that they are provided in each element so that they can be “laced” and sewn together. However, such is speculation and how such is intended to be incorporated into the elements must be shown in the drawings and disclosed. In the context of a “memory foam” wall or target area, memory foam is generally no known to have enough structural integrity to have holes in it such that it could be laced to other elements effectively without tearing.
The “standard fittings in sports equipment” is not a clear standard since examples of such are not recited in the claims or defined in the specification in order to determine the metes and bounds for the claims.
The “Improved durability and ease of maintenance” is taken as functionally descriptive. However, the scope of such is subjective and no clear standard of with respect to what structures or devices the durability and maintenance is considered to be improved upon.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specification
The “drawstring Holes Assembly” are not disclosed or shown in the specification in anyway to be able to determine how such relate to the wall, silicone impact surface, target area or rubber assembly. It is presumed the holes are such that they are provided in each element so that they can be “laced” and sewn together. However, such is speculation and how such is intended to be incorporated into the elements must be shown in the drawings and disclosed. In the context of a “memory foam” wall or target area, memory foam is generally no known to have enough structural integrity to have holes in it such that it could be laced to other elements effectively without tearing.
While the specification broadly discusses the use of and rubber materials, it fails to disclose which types are considered suitable for the intended use either by specified properties or known types of rubber commercially available in the art. Applicant has the duty to inform those how to make and use his invention, the selection the materials deemed suitable for the intended purposes of the invention must be disclosed.
The structures of the “slip-on cover” and how such cooperate with the guard railing are not clearly shown or described. It appears that such may form a “pocket” or “loop” that receives the ends of the each railing. The specification and drawing are not clear with respect to this disclosed feature.
It is not clearly disclosed if the sponge bottom cushion is a separate pad in front of the impact area or if the impact area is attached to the top of the impact area itself. Similarly, it is not clear how the detachable platform is “buckled” and what elements are considered to make up the “main structure”.
As set forth above, it is not clear how the rubber assembly can be “zig-zag” laced via holes in sponge or memory foam successfully without tearing.
The guard railing is not clearly shown and it structure is not considered to be adequately disclosed. In fig. 2, the railing 4 is only on a singular side. While one could speculate that the railing is symmetric and crosses under the target area with respect to the unshown side, the true design and relationship of this element must be disclosed and shown.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the features discussed above as not being adequately disclosed or shown must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 –
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 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Darwin 3,055,704.
Darwin shows what can be described as a multilayered wall of 62, 64, and 66 made of a “foam rubber” (col. 3, ln. 7) that can be described as memory foam as it will maintain its original shape once impacted. 66 is considered a “silicone impact surface” of “plastic” (col. 3, ln. 8) where silicone is a synthetic polymer which is capable of enhancing safety and durability, especially in a home environment. His element 12 is considered to meet the limitations of a movable/detachable platform that is customizable to player preference as to whether one wants it attached or detached. 74 are considered holes capable of inserting a drawstring. Alternatively, in lieu of using nail fasteners, the use of stitching and lacing in order to attach elements together would have been an obvious matter of selecting one method of joining elements together in place of another in order to obtain predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Nicholas Weiss at (571)270-1775.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711