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 .
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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 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.
Claim Objections
Claims 2-10 and 12-19 are objected to because of the following informalities: the expression “where” has multiple definition while the expression “wherein” is precise and examiner is suggestion the “where” expression in all the claims to be changed to - - wherein - -
Claim 11 is objected because the expression “an housing” in line 2 need to be changed to - - a housing - - to make it grammatically correct.
Appropriate correction is required.
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 16 is 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.
It is not clear to examiner what is to be considered as an “adapter rim”. For purpose of examination, examiner is considering component (514) of the instant application that is identified as a rim as being the recited “adapted rim”.
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 “adapter rim” as recited in claim 16 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
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.
(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 11-13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by P. A. Derham (US Patent No. 2,858,644).
Regarding claim 11, Derham discloses an apparatus (see all Figures) comprising: an housing (10) having a ball mounting cavity (12); a spring having a first end and a second end (40), the first end of the spring coupled to the housing inside the ball mounting cavity (column 2 lines 60-64 discloses that spring (40) is inserted into the annular compartment 24 formed at the bottom of the housing 10 by a rotating or twisting motion, so that the pop-up element is fastened to. The first end of spring 40 is shown being positioned between flange 22 and annular compartment 24 causing the spring to be coupled to the housing as recited) , the spring (40) configured to be in an uncompressed configuration (SEE Figure 1) and in a compressed configuration (see Figure 3); and a randomizer having a plurality of states (28), the randomizer coupled to the second end of the spring (as shown in Figure 3, the top end of spring 40 is attached to the head) and configured to change state of the plurality of states and position when the spring changes between the compressed configuration and the uncompressed configuration (as shown in Figures 1-3, different configurations as recited are shown).
Regarding claim 12, where the spring comprises a helical spring (40).
Regarding claim 13, further comprising a spring cover (44) that encloses the spring (40), the spring cover (44) coupled to the housing (10) and the randomizer (28) and the spring (40) located within the spring cover (see Figures 2 and 3).
Claim Rejections - 35 USC § 103
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 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.
Claims 1 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Moore (US Patent No. 2,664,077).
Regarding claim 1, Moore discloses a batting tee adapter (see all Figures) comprising: an adapter housing couplable to a batting tee (6), the adapter housing having a rim (the outside top edge of component 6) along an outer edge of a ball mounting cavity comprising an interior surface (the internal central opening of (19) as shown in Figure 3 is considered as a cavity); a spring (20) having a first portion (the bottom section of spring 20 as shown in Figure 3) and a second portion (the top end of spring 20 as shown in Figure 3) and a randomizer (combination of 17, 7, 8, 26 and 25) coupled to the second portion of the spring (see Figure 3), where the spring (20) is configured to compress to a compressed configuration and the spring is configured to lift the randomizer toward the rim of the adapter housing when in an uncompressed configuration (as shown in Figure 3, the spring is shown as uncompressed configuration).
Regarding the intended use set forth in the preamble that the device is to be a batting tee adapter, the device of Moore is capable of being used as an adaptor if so desired. Applicant is not claiming a process. Please note that the examiner is giving the broadest reasonable interpretation of the claims as set forth in MPEP 904.01(a).
Moore does not explicitly disclose if the spring is couple to the interior surface as recited.
Moore teaches using a spring but does not explicitly disclose if the spring could be coupled to the interior surface. It would have been obvious to one of ordinary skill in the art before the effective filing to couple the spring to the interior surface because securing a spring to its support is a routine design choice that improves stability and ensures consistent operation. Since the reference already places the spring at that location, coupling it represents a predictable and commonly used optimization that would naturally be employed to enhance reliability.
Regarding claim 7, where the randomizer is configured to be viewable by a batter when the adapter housing is coupled to the batting tee and the spring is in the uncompressed configuration (as shown in Figure 3, sections of the randomizer is viewable by a batter).
Regarding claim 8, where: the ball mounting cavity is configured to place a ball (28), the spring (20) is configured to compress to the compressed configuration when the ball is on the ball mounting cavity (see Figure 1 showing the spring in an obvious compressed configuration), and the spring is configured to extend to the uncompressed configuration when the ball is not on the ball mounting cavity (see Figure 3 that discloses the spring configured in extended configuration).
Regarding claim 9, where the randomizer (combination of 17, 7, 8, 26 and 25) is configured to compress the spring (20) when the ball is placed on the ball mounting cavity causing the spring to change from the uncompressed configuration to the compressed configuration (as shown in Figure 1, the ball (28) is considered as indirectly being placed on the ball mounting cavity).
Regarding claim 10, where the ball mounting cavity is configured to hold the ball in a stationary position while the spring is in the compressed configuration (as shown in Figure 1, the ball (28) is considered as indirectly being placed on the ball mounting cavity and ball cavity (19) is considered as holding the ball in a stationary position).
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Derham.
Regrading claims 14-15, Derham does not disclose the housing compressing a rubberized or cork material and if the housing could fit within a ball mount of a batting tee. Regarding the materials, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to make the housing out of any material including a rubberized or cork materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding the housing being within a ball mount of a batting tee, it is noted that the size of the ball mount of as batting tee is not disclosed and it would have been obvious in view of the routine optimization expected to make the device of Derham to be any size including making it small toy for small children, since such modification would have involved a mere change in the size of the component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 16, the annular flange (14) as shown in Figure 1 is considered as the recited adapter rim. Regarding the housing being configured to be installed within a ball mount of a batting tee, it should be noted that the size of the ball mount is not disclosed and , it would have been obvious in view of the routine optimization expected to make the device of Derham to be any size including making it small toy for small children, since such modification would have involved a mere change in the size of the component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 17, the housing as shown in Figures 2 and 3 disclose a housing that has narrow end towards the bottom and a wide end towards the rim (14) of the ball mounting cavity (12).
Regarding claim 18, the ball mounting cavity (12) is configured to hold the ball in a stationary position while the spring is in the compressed configuration (see Figures 2 and 3),
Allowable Subject Matter
Claims 2-6 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 19 and 20 are allowed.
Regarding claims 2-5, the following is a statement of reasons for the indication of allowable subject matter: for example, none of the prior art of record disclose or render obvious a batting tee adapter with a randomizer element having a plurality of orientations enclosed within a randomizer housing having a transparent portion coupled to the second portion of the spring as recited in claim 2, when affixed in the manner claimed in combination with the other recited features. Claims 3-4 depend on allowable claim 2 and they are regarded as being allowable.
Regarding claim 19, none of the prior art of record disclose or render obvious a frustoconical adapter housing couplable to a batting tee, a transparent sphere coupled to the second portion of the spring, the transparent sphere located entirely within the ball mounting cavity of the frustoconical adapter housing when the spring is in the compressed configuration and the transparent sphere is located at least partially outside the ball mounting cavity of the frustoconical adapter housing when the spring is in the uncompressed configuration, and a die, when affixed in the manner claimed in combination with the other recited features. Claim 20 depends on allowable claim 19 and it is considered as being allowable.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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/NINI F LEGESSE/Primary Examiner, Art Unit 3711