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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/473,034, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Therefore, the effective filing date of the claims of the instant Application are, at the earliest, that of the provisional 63/455,095, which is 3/28/23.
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 5 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.
Claim 5 recites the limitation "said outer overcoat". There is insufficient antecedent basis for this limitation in the claim.
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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over PGPUB US 20140309059 A1 by Minch (“Minch”), in view of PGPUB US 20220088460 A1 by Roberts, II (“Roberts”).
In regard to Claim 1, Minch teaches a ball, comprising:
an illumination core, said illumination core comprises a one-piece […] sufficiently transparent to emit light as a viewable indicia, said one-piece thermoplastic elastomer encapsulating:
(see, e.g., F2, 52);
a radio frequency transceiver;
(see, e.g., p64);
at least one sensor which generates sensor data that varies based on change in movement of said ball;
(see, e.g., p64);
one or more light emitters actuatable to illuminate said illumination core;
(see, e.g., F2A, 70, 72, 74, 76);
a microprocessor communicatively coupled to a non-transitory computer readable medium containing a processor readable code, said microprocessor operable to:
(see, e.g., F2A, 64);
[…]
actuate said one or more light emitters [based on change in one or more ball movements];
(see, e.g., p70);
Furthermore, in an analogous reference, Roberts teaches
an illumination core, said illumination core comprises a one-piece thermoplastic elastomer sufficiently transparent to emit light as a viewable indicia,
(see, e.g., p47);
record said sensor data that varies based on change in one or more [hockey puck] movements;
convert said sensor data generated by said at least one sensor to [hockey puck] movement values correlated to said one or more ball movements;
compare said [hockey puck] movement values to ball movement threshold values; and
actuate said one or more light emitters upon satisfying said [hockey puck] movement threshold values.
(see, e.g., claim 31);
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 employed the material for the illumination core and added the programming taught by Roberts to the baseball otherwise taught by Minch, in order to better protect and more precisely provide feedback to the user.
In regard to Claims 2-3, Roberts teaches these claimed limitations in regard to a hockey puck (see, e.g., F11, 22);
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 overcoat taught by Roberts to the illumination core otherwise taught by Minch, in order to better protect the core (see, e.g., p60-61 in Minch regarding need for same and employing an additional layer around the core as a means of doing so).
In regard to Claims 4-5, Minch teaches these claimed limitations (see, e.g., p56).
In regard to Claim 6, Roberts teaches these claimed limitations in regard to a hockey puck (see, e.g., claim 25);
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 programming taught by Roberts to the baseball otherwise taught by Minch, in order to more precisely provide feedback to the user.
In regard to Claims 7-8, Roberts teaches these claimed limitations in regard to a hockey puck (see, e.g., claims 34-37);
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 programming taught by Roberts to the baseball otherwise taught by Minch, in order to more precisely provide feedback to the user.
In regard to Claims 9-12, Roberts teaches these claimed limitations in regard to a hockey puck (see, e.g., claims 39-42);
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 programming taught by Roberts to the baseball otherwise taught by Minch, in order to more precisely provide feedback to the user.
In regard to Claims 13-14, Roberts teaches these claimed limitations in regard to a hockey puck (see, e.g., claims 31-32);
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 external device and programming taught by Roberts to the baseball system otherwise taught by Minch, in order to provide better feedback to the user.
In regard to Claim 15, Roberts teaches these claimed limitations in regard to a hockey puck (see, e.g., claim 38);
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 external device and programming taught by Roberts to the baseball system otherwise taught by Minch, in order to provide better feedback to the user.
In regard to Claim 16-19, Roberts teaches these claimed limitations in regard to a hockey puck (see, e.g., p84 and claims 34-37);
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 external device and programming taught by Roberts to the baseball system otherwise taught by Minch, in order to provide better feedback to the user.
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
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