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 § 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.
Claims 1-2, 6, 11-12, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PGPUB US 20160375296 A1 by Downey et al (“Downey”).
In regard to Claims 1 and 11, Downey teaches a structure for use in performing a sport, comprising:
two or more structure blocks to be associated together to form the structure, individual structure blocks of the two or more structure blocks to comprise an upper layer, a shock absorption layer that is below the upper layer, and a cell-support layer that is below the shock absorption layer, the upper layer having at least a friction feature, wherein the upper layer, the shock absorption layer, and the cell-support layer are to couple together with corresponding layers of other structure blocks upon the two or more structure blocks being associated together, and wherein the shock absorption layer is comprised of separate shock absorbing components that are individually associated to the upper layer and to the cell-support layer
(see, e.g., F4, 152 (“two or more structure blocks…form the structure”); e.g., F1, 18 (“upper layer”); e.g., F1, 32 and 34 (“shock absorption layer”); e.g., F1, 16 (“cell support layer”)).
In regard to Claims 2 and 12, Downey teaches these limitations. See, e.g., p26.
In regard to Claims 6 and 16, Downey teaches these limitations. See, e.g., F1, 12.
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 3-4 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Downey, in view of PGPUB US 20180030667 A1 by Penland, JR et al (“Penland”).
In regard to Claims 3-4 and 13-14, Penland teaches the claimed limitations (see, e.g., F18 and p196);
Furthermore, the combination of the cited prior art would have been obvious to one of ordinary skill in the art at the time of filing because the cited prior art includes each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the cited prior art being the lack of actual combination of the elements in a single prior art reference; one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately; and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Specifically, it would have been obvious to have molded the upper layer taught by Downey with the ridges taught by Penland, in order to provide traction for the user.
Claims 7-8 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Downey, in view of PGPUB US 20180030667 A1 by Penland, JR et al (“Penland”).
In regard to Claims 7 and 17, Penland teaches the claimed limitations (see, e.g., p65 and p242);
Furthermore, the combination of the cited prior art would have been obvious to one of ordinary skill in the art at the time of filing because the prior art contains a device/method/etc. which differed from the claimed device by the substitution of some components/steps/elements with other components; the substituted components and their functions were known in the art; one of ordinary skill in the art could have substituted one known element for another; and the results of the substitution would have been predictable.
Specifically, it would have been obvious to have constructed the upper layer taught by Downey with out of the translucent or transparent materials otherwise taught by Penland, in order to allow the mats to be used on grass.
In regard to Claims 8 and 18, see rejection of Claims 3 and 4.
Claims 5, 9, 15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Downey, in view of Pentland, further in view of machine translation of Chinese patent publication CN209734915U·2019-12-06 by Zhang, et al (“Zhang”).
In regard to Claims 9 and 19, Zhang teaches the claimed limitations (see, e.g., p29);
Furthermore, the combination of the cited prior art would have been obvious to one of ordinary skill in the art at the time of filing because the cited prior art includes each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the cited prior art being the lack of actual combination of the elements in a single prior art reference; one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately; and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Specifically, it would have been obvious to have added the light, pressure sensor and controller device taught by Zhang to the apparatus taught by the otherwise cited prior art, in order to provide instruction and scoring for fencing kendo.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,918,875. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant Application claims the genus of which the ‘875 patent is a species.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
Prosecution Insights