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 .
Election/Restrictions
Applicant’s election of Invention I in the reply filed on 09/16/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement between the two inventions, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant's election with traverse of Species A in the reply filed on 09/16/2025 is acknowledged. The traversal is on the ground(s) that Species A and Species C are not patentably distinct. It is noted that the species election directed to Species B was not traversed. Upon further consideration, the applicant’s arguments with respect to the election of species is found persuasive, in part. Based upon the applicant’s arguments, the embodiment shown in Figure 14 will be included in the election of Species A as the embodiment is generally cylindrical consistent with Species A. However, Figure 15 has been maintained as a distinct species due to the bellows disclosed and thereby not having a generally cylindrical shape.
Based upon Applicant’s response, the following patentably distinct species remain in the application with Species A being elected for prosecution:
Species A directed to figures 1-5 and 14
Species B directed to Figures 8-13
Species C directed to Figure 15
Claims 4, 11 and 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/16/2025.
It is noted the applicant has admitted on the record in the response to restriction that the removal of pockets that will not be able to activate due to being pointed towards the impact surface is an obvious variant known to one having ordinary skill in the art and that the use of a lightweight and high-drag tail as a stabilizing mechanism for projectiles is old and well known in the art.
Specification
The use of the term NERF, which is a trade name or a mark used in commerce, has been noted in this application. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 3 is objected to because of the following informalities: the claim should terminate with a period. Appropriate correction is required.
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.
Claim(s) 1-3, 5-10 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koepcke et al, US Patent 5,205,773 (Koepcke).
Regarding claims 1 and 8, Koepcke discloses a toy (10) comprising an enclosure (12) having a substantially sealed interior (15) containing a fluid (i.e. air, column 4, line 7: “increase in air pressure”), the enclosure having a receptacle (18) having a retracted position (Figures 3A/B) and an extended position (Figures 4A/B), the receptacle movable from the retracted position to the extended position upon sufficient compression of the fluid (column 4, lines 8-10). It is noted that the claim limitation of “by impact of the enclosure with a hard surface” has been considered but is a recitation of intended use and as such the manner of operating a device does not differentiate apparatus claims from the prior art.
Koepcke further discloses a projectile (35) held in the receptacle by press fit (column 1, line 60) and being suitable for propulsion from the enclosure when the receptacle moves from the retracted position to the extended position.
Koepcke further discloses that the apparatus may comprise multiple receptacles that have a retracted and extended position (column 5, lines 50-53). However, Koepcke does not positively state that the multiple receptacles contain pluralities of projectiles. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to utilize multiple projectiles within the disclosed receptacles of Koepcke to further entice and engage the user since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
Regarding claims 2 and 9, Koepcke discloses the enclosure is generally spherical (column 3, line 16).
Regarding claims 3 and 10, Koepcke discloses the enclosure is made of an elastomeric material (Column 3, line 18).
Regarding claims 5 and 12, Koepcke discloses the invention substantially as claimed but does not disclose a tail extending form the enclosure. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide a tail extending from the enclosure to further entice a user and to add to the novelty of the apparatus particularly as the illustrated embodiment is a dog. The applicant has admitted on the record that the addition of a tail is well known and of routine skill in the art.
Regarding claims 6 and 13, Koepke discloses that the non-receptacle body portions have a wall thickness that is greater than the wall thickness of the receptacles (column 4, lines 8-10). However, Koepke does not specifically disclose the enclosure wall thickness being about 8-14 millimeters and the receptacle having a thickness from 0.5-4 millimeters. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to utilize a wall thickness of 8-14mm for the wall and 0.5-4mm for the receptacle since it has been held where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. This is considered obvious to try as choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
Regarding claim 7 and 14, Koepke discloses the receptacles are in their retracted position at elastic rest (column 4, lines 43-44).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Note references cited on attached Notice of Reference Cited. In particular, note:
Cassidy, US 744,718 – Figure 4 discloses an elastomeric enclosure filled with a fluid having a plurality of receptacles (a3, a6).
McLain, US 2,853,991 directed to a fluid filled receptacle for launching a friction-fit projectile (13).
Koller, US 1,667,123 discloses a fluid filled receptacle for launching a projectile by percussive engagement of the receptacle against a hard surface.
Tsun, US 2006/0073763 discloses a fluid filled receptacle for launching a plurality of projectiles by fluid compression of the receptacle.
Horiki et al, D1,034,801 directed to a spherical enclosure comprising a plurality of receptacles around the enclosure.
Hudson, US 5,928,049 disclosing a fluid filled receptacle for launching a projectile including a tail apparatus wherein the launching is initiated by impact of the enclosure with a hard surface.
Lee et al., US 5,619,980 disclosing an apparatus for launching a projectile from a fluid filled enclosure.
Spector, US 5,577,732 disclosing a spherical enclosure having a fluid filled interior with trailing tail.
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KIMBERLY BERONA
Supervisory Patent Examiner
Art Unit 3647
/KIMBERLY S BERONA/Supervisory Patent Examiner, Art Unit 3647