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 disclosure is objected to because of the following informalities: special definitions in the specification must be clearly stated. ¶0025 states “The term ‘or’ refers to a single element of stated alternative elements or a combination of two or more elements, unless the context clearly indicates otherwise.” (emphasis added). This “context” amounts to a judgement call that the inventor has made, which the reader is not privy to. Appropriate correction is required.
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: “mechanical connection” in claim 4. This is being interpreted in light of the disclosure of a hook in ¶0034, and equivalents thereof.
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 1-14 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.
RE Claim 1, the phrase “or otherwise transfer heat” is unclear, since it introduces ambiguity to the manner in which the device is required to function in the claimed functional recitation. The term “otherwise” has not been redefined by the instant specification, and renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Further RE Claim 1, it is unclear whether the “wherein the one or more heating elements comprise a chemical heating packet,” (emphasis added) is required, since “one or more heating elements” are introduced in a functional claim limitation (“configured to receive one or more heating elements”). Consequently, it is unclear whether the limitations recited in claims 2-4, 6-7, 10-14 are further limiting because they further limit the one or more heating elements and/or the chemical heating packet(s).
Claims 5, 8, & 9 are rejected as being ultimately dependent from claim 1, rejected above.
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 1-4, 7, 10, 13, & 14 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being disclosed by Cincotti et al. (US 20120218633 A1, “Cincotti”).
For Claim 1, Cincotti discloses a shooting target (title, disclosure, especially the embodiment of Fig. 4, see ¶0042,69,72), comprising:
a body portion (target 40) having a front surface (the front of substrate 28) and a back surface (40A);
a front zone on the front surface of the body portion, the front zone adapted for use as a target area (in the normal use of the target 40, the front surface of the substrate 28 is used as a target); and
a rear zone on the back surface of the body portion (any “zone”, e.g. 58A, immediately surrounding one or more or all of pouches 42A-42D), the rear zone configured to receive one or more heating elements that contact and/or otherwise transfer heat to the body portion of the shooting target to generate a heat signature in the infrared range (as discussed in ¶¶0072-73);
wherein the one or more heating elements comprise a chemical heating packet (“pouches” 42A-42D, discussed in ¶¶0072-73).
For Claim 2, Cincotti discloses the shooting target of claim 1, and Cincotti further discloses wherein the chemical heating packet is secured to the back surface of the body portion (in the example of 42B, Fig. 4 & ¶0072, attached via adhesive).
For Claim 3, Cincotti discloses the shooting target of claim 2, and Cincotti further discloses wherein the chemical heating packet is secured to the back surface of the body portion by an adhesive (in the example of 42B, Fig. 4 & ¶0072, attached via adhesive).
For Claim 4, Cincotti discloses the shooting target of claim 2, and Cincotti further discloses wherein the chemical heating packet is secured to the back surface of the body portion by a mechanical connection (in the example of 42B, Fig. 4 & ¶0072, attached via adhesive).
For Claim 7, Cincotti discloses the shooting target of claim 1, and Cincotti further discloses wherein the chemical heating packet comprising a flexible pouch containing a mixture of chemicals capable of generating heat when activated (as discussed in ¶¶0040-44,69).
For Claim 10, Cincotti discloses the shooting target of claim 1, and Cincotti further discloses wherein the one or more heating elements have a first shape (see the substantially rectangular shape of pouches 42A-42D) and the body portion of the shooting target has a second shape (at least the ‘body’ portion of the target 40 is rectangular in shape, Fig. 4; note that the device shown in the prior art may contain more elements than claimed, since the open-ended transitional phrase “comprising” is used in the current claim construction), wherein the first and second shapes are generally the same geometric shape (Fig. 4).
For Claim 13, Cincotti discloses the shooting target of claim 10, and Cincotti further discloses wherein the first shape is rectangular (Fig. 4).
For Claim 14, Cincotti discloses the shooting target of claim 10, and Cincotti further discloses wherein the first and second shapes are rectangular (Fig. 4).
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 5, 6, 8, & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Cincotti as applied to claim 2 above, and further in view of Hutchinson et al. (US 20110042900 A1, “Hutchinson”).
For Claim 5, Cincotti discloses the shooting target of claim 2.
Cincotti is silent to wherein the rear zone comprises a pocket for receiving the one or more heating elements.
Hutchinson, like prior art above, teaches a target (title, disclosure), and further contemplates “targets with localized heat sources are known, even those wherein the heat source is mounted onto the target …by inserting it into a pocket on the target” ¶0015.
Therefore, it would have been obvious to one of ordinary skill in the art before the claimed invention was effectively filed to modify the attachment of the heat pouch on the back of the device of Cincotti by placing it in a pocket as taught by Hutchinson, in order to utilize a well-known method of attachment, which would allow for the ease of reuse of the device, yielding predictable results.
For Claim 6, Cincotti in view of Hutchinson teaches the shooting target of claim 5, and the resulting device further teaches wherein the one or more heating elements have a smaller volume than a volume of the pocket (in order to operate as intended, the pouches of Cincotti would have to be smaller than the pockets holding them, taught by Hutchinson, or they would not be removable).
For Claim 8, Cincotti in view of Hutchinson teaches the shooting target of claim 5, and the resulting device further teaches wherein the pocket is integrally formed with the back surface of the body portion (in order to operate as intended, the pocket of Hutchinson would have to be attached, or integral with, the rear surface of Cincotti).
For Claim 9, Cincotti in view of Hutchinson teaches the shooting target of claim 5, and the resulting device further teaches wherein the pocket (taught by Hutchinson, as modified above) is mechanically connected (via adhesive, Cincotti) to the back surface of the body portion (in the example of 42B, Fig. 4 & ¶0072, Cincotti).
Claims 11 & 12 are rejected under 35 U.S.C. 103 as being unpatentable over Cincotti as applied to claim 10 above.
For Claims 11 & 12, Cincotti discloses the shooting target of claim 10.
Cincotti is silent to wherein the first and second shapes are round.
However, it would have been an obvious matter of design choice before the claimed invention was effectively filed to make the heating packet or the heating packet and supporting target of Cincotti to be whatever form or shape was desired or expedient, including circular, in order to provide the user’s preferred target aesthetic, whether for a particular gun and/or event, yielding predictable results. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Conclusion
The cited prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Special attention is drawn to the disclosures of KR 200354191 Y1, DE 102019000225 A1, US 20230160669 A1, and US 12016089 B1 as disclosing an invention or aspects of the invention which are similar to those claimed and/or disclosed in the instant invention. The remaining references cited establish the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Morgan T. Jordan whose telephone number is (571)272-8141. The examiner can normally be reached M-Th 8:30-5:30.
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/MORGAN T JORDAN/Primary Examiner, Art Unit 3643