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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 8, 2026 has been entered.
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.
Claims 2-3 and 5-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In claim 2, lines 1-2 and claim 5, lines 1-2, the recitation “the image of an article of clothing” lacks antecedent basis, as such has been canceled from parent claim 1.
In claim 13, lines 1-2, “the left and right chamber” is indefinite relative to a single such chamber, and should be either --the left and right chambers-- or --the left chamber and right chamber--.
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 1-7 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over CoolNES LLC Silicone Funny Ball Holder Pouch Sack (including a card with a suspension opening) in view of Baker (D620253). CoolNES discloses a ball holder (sack pouch included with a display suspension card) with side-by-side left and right chambers wherein each of the chambers has a rounded exterior and is configured to receive and removably retain a ball therein, an upper portion extending from above the left and right chambers, the ball holder having a front side and a rear side, wherein the rounded exteriors extend in the front side of the ball holder, the rear side is generally planar (when engaging the display suspension card) and defines a ball-receiving opening (opening defined by the Ball Sack Pouch) in communication with each of the left and right chambers and configured to enable a pair of balls to be received and removed from the left and right chambers. CoolNES does not disclose a single ball-receiving opening in communication with each of left and right chambers to enable a pair of balls to be received and removed from the left and right chambers. However, Baker discloses a ball holder (golf ball pouch or bag) with a single ball-receiving opening (see Figures 1 and 6) in communication with each of left and right chambers to enable a pair of balls to be received and removed from the left and right chambers via the single ball-receiving opening. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ball holder opening located in the rear side of CoolNES with a single ball-receiving opening as claimed, as such a modification would predictably provide a feature already recognized in the field of the ball holders to allow a single entrance to side-by-side chambers. To provide the opening in any location on the ball holder to gain access to both the chambers would have been within the level of ordinary skill in the art. It has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japikse, 86 USPQ 70.
As to claims 2 and 5-7, CoolNES does not disclose providing an image of clothing to define the appearance of clothed human breasts or clothed human buttocks. However, provided indicia providing an image of clothing to define the appearance of clothed human breasts or clothed human buttocks does not render a functional effect to the prior art. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the ball holders of CoolNES with various indicia as claimed, as such a modification would predictably provide a solely aesthetic effect to the ball holders to enhance the already provided visual effect. A change in aesthetic (ornamental) design generally will not support patentability. See In re Seid, 73 USPQ 431. Furthermore, to further limit the clothing to represent a particular clothing to provide a particular aesthetic effect would again provide a solely aesthetic effect to the ball holders. Each chamber is configured to receive a respective golf ball therein and in the blister pack form to retain the rounded shape thereof without a golf ball therein.
As to claim 3, each ball holder of CoolNES is configured to receive a golf ball in each respective chamber.
As to claim 4, the blister ball holder of CoolNES has its chambers configured to retain the rounded shape thereof without a golf ball therein.
As to claim 11, each ball holder of CoolNES is integrally formed as a one-piece structure.
As to claim 12, the blister pack embodiment has the chambers and upper portion formed from flexible and resiliently stretchable plastic material.
As to claim 13, the sack pouch embodiment has the chambers being stretchable such that they are independently resiliently expandable when a ball is received therein.
Claims 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over CoolNES LLC Silicone Funny Ball Holder Pouch Sack in view of Baker. CoolNES discloses a ball holder (sack pouch) with side-by-side left and right chambers wherein each of the chambers has a rounded exterior and each configured to receive and removably retain a ball therein, an upper portion extending from the chambers, the upper portion defining a flap (secured by the shown fasteners in the sack pouch) defining a ball-receiving opening in communication with the chambers to allow receipt and removal of balls from the ball holder, wherein each of the chambers give the appearance of a human body part, wherein each of the chambers generally retains a rounded shape without a ball received therein (shown rounded empty shape of the sack pouch) and the chambers being stretchable such that they are independently resiliently expandable when a ball is received therein, the ball holder having a front side and a rear side, wherein the rounded exteriors extend in the front side of the ball holder, the rear side is generally planar (when engaging the display suspension card) and defines a ball-receiving opening (opening defined by the Ball Sack Pouch) in communication with each of the left and right chambers and configured to enable a pair of balls to be received and removed from the left and right chambers. CoolNES does not disclose a single ball-receiving opening in communication with each of left and right chambers to enable a pair of balls to be received and removed from the left and right chambers. However, Baker discloses a ball holder (golf ball pouch or bag) with a single ball-receiving opening (see Figures 1 and 6) in communication with each of left and right chambers to enable a pair of balls to be received and removed from the left and right chambers via the single ball-receiving opening. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ball holder opening located in the rear side of CoolNES with a single ball-receiving opening as claimed, as such a modification would predictably provide a feature already recognized in the field of the ball holders to allow a single entrance to side-by-side chambers. To provide the opening in any location on the ball holder to gain access to both the chambers would have been within the level of ordinary skill in the art. It has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japikse, 86 USPQ 70.
As to claims 15 and 16, the combination does not disclose providing a shape define the appearance of human breasts or human buttocks. However, provided indicia providing an image to define the appearance of human breasts or human buttocks does not render a functional effect to the prior art. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the ball holders of CoolNES with various indicia as claimed, as such a modification would predictably provide a solely aesthetic effect to the ball holders to enhance the already provided visual effect. A change in aesthetic (ornamental) design generally will not support patentability. See In re Seid, 73 USPQ 431.
As to claim 17, CoolNES discloses a pair of balls received in the chambers.
As to claim 18, CoolNES discloses a loop in the upper portion of the ball holder configured to secure the ball holder to an object.
As to claims 19 and 20, the addition of clothing to enhance the visual aesthetic would fail to render any new or unexpected utility.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above, and further in view of Slemp (5,183,154). The original combination does not disclose the rear side ball-receiving opening being an open slot-shape. However, Slemp discloses a rear side resiliently expandable ball-receiving opening (15) being slot-shaped to selectively allow passage of a golf ball into a chamber. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the ball holder of CoolNES and Baker with an open slot opening in the manner of Slemp as claimed, as such a modification would predictably provide an opening to selectively insert a golf ball into a chamber.
Applicant’s arguments and amendments, filed January 8, 2026, with respect to the rejections of claims 1-20 under CoolNES and the supporting references have been fully considered, but are not persuasive. Applicant presents the argument that CoolNES may not be prior art. It is noted that applicant has submitted CoolNES as prior art and any reconsideration of such as prior art must be made by applicant providing some evidence to the contrary.
With respect to the rear side of CoolNES being planar, the rear side of CoolNES in combination with a suspension display card as shown on the first and tenth pages of CoolNES appears to be the combination of the Pouch Sack with a planar suspension display card to which the Pouch Sack is joined providing a planar rear side of the Pouch Sack.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Orlando Aviles, can be reached on (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG