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 .
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 18/131,213. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the aforementioned U.S. Patent No. 18/131,213 recites all of the limitations of Claim 1 of the instant application.
Claims 9-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 9 of U.S. Patent No. 18/131,213 in view of Nosworthy et al. (US 20060097469 A1) (hereinafter “Nosworthy”). [Note that prior art citations below are italicized and enclosed in brackets.] Claim 9 of the instant application recites, inter alia, the limitation “a second metal reinforcement layer positioned on a second side of the core layer, the second side opposite the first side”. U.S. Patent No. 18/131,213 teaches a ski comprising a body [Annotated Lee Fig. 2a (see Notice of Allowance for U.S. Patent Application No. 18/131,213), below], but does not teach a metal reinforcement layer. Nosworthy teaches a second metal reinforcement layer positioned on a second side of the core layer, the second side opposite the first side [Annotated Nosworthy Fig. 1, below; Nosworthy Paragraph 0034: “Other suitable materials which can be used in the present invention for forming the upper and lower reinforcing layers…In addition reinforcing layers can be formed from wood, metal, polycarbonate, styrene or polyamides.”].
It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the ski of Lee to include, with a reasonable expectation of success, a metal reinforcement layer in view of Nosworthy. A person having ordinary skill in the art would have been motivated to combine U.S. Patent No. 18/131,213 and Nosworthy because this would have achieved the desirable result of providing additional strength, as recognized by Nosworthy [Nosworthy Paragraph 0026: “provided for additional strength”]. It should be noted that while Nosworthy does not explicitly provide additional motivation for the use of a metal reinforcement layer, the use of metal reinforcing layers in skis is common in the art (e.g., EP 1452210 B1, US 20050161910 A1, US 20010022439 A1). The use of a metal reinforcing layer would provide desirable stiffness and strength as would be recognized by a person having ordinary skill in the art. It should be further noted that applying a known technique to a known device, method, or product ready for improvement to yield predictable results is likely to be obvious. (See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007); see MPEP § 2143, D.).
Claims 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 18/131,213. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 19 of the aforementioned U.S. Patent No. 18/131,213 recites all of the limitations of Claim 19 of the instant application.
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Annotated Lee Fig. 2a (see Notice of Allowance for U.S. Patent Application No. 18/131,213)
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Annotated Nosworthy Fig. 1
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 oval aperture positioned asymmetrically with respect to the center axis of the body (Claim 11) must be shown or the feature canceled from the claim. 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 Objections
Claim 6 is objected to because of the following informality: wording in Line 4. Replacing “the first, second, and third aperture” with “the first, second, and third apertures” is suggested. (Emphasis added.) Appropriate correction is required.
Claim 9 is objected to because of the following informalities: wording in Line 11. Replacing “a second metal reinforcement layer positioned on a second side of the core layer, the second side opposite the first side.” with “a second reinforcement layer consisting of a metal reinforcement layer, positioned on a second side of the core layer, the second side opposite the first side.” is suggested (Emphasis added.) Appropriate correction is required.
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.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (KR 20160045008 A). [Note that prior art citations below are italicized and enclosed in brackets.]
Lee teaches a ski, defining a body having a tail and a tip [Annotated Lee Fig. 2a, above; Lee Abstract: “The present invention relates to a ski plate assembly”], a tip [Lee Fig. 2a, above], a tail opposite the tip [Annotated Lee Fig. 2a, above], a top sheet [Lee “Description of Embodiments” Paragraph 13: “to stably maintain the laminating and bonding forces between the cover layer (not shown) covering these upper parts and the running surface lining (not shown) covering these parts.”], a base extending from the tip to the tail and opposite the top sheet [Lee “Description of Embodiments” Paragraph 13: “This is to stably maintain the laminating and bonding forces between the cover layer (not shown) covering these upper parts and the running surface lining (not shown) covering these parts.”], a core layer positioned between the base and the top sheet [Annotated Lee Fig. 2a, above; Lee “Description of Embodiments” Paragraph 7: “the ski plate assembly according to the embodiment of the present invention includes the upper rigid plate 10, the lower rigid plate 20, and a laminated structure of the core plate 30 interposed between the rigid plates 10 and 20.”], a reinforcement layer positioned between the top sheet and the base, the reinforcement layer defining an aperture extending therethrough and positioned within a first third of a length of the ski, the length defined from the tip to the tail [Annotated Lee Fig. 2a, above; Lee Abstract: “The upper and the lower stiff plate have a first mounting hole vertically penetrating a front portion”].
Regarding Claim 7, Lee teaches that a central axis of the aperture is aligned with a central axis of the body [Annotated Lee Fig. 2a, above].
Claim 19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (KR 20160045008 A). [Note that prior art citations below are italicized and enclosed in brackets.]
Lee teaches, a reinforcement layer of a ski comprising: a body [Annotated Lee Fig. 2a, above; Lee Abstract: “The present invention relates to a ski plate assembly and a manufacturing method thereof which can secure directional efficiency while maintaining stiffness, vibration and elastic stability of an upper and a lower stiff plate disposed to reinforce a bending phenomenon.”], defining a tip, a tail, a boot center [Annotated Lee Fig. 2a, above; Lee “Description of Embodiments” Paragraph 8: “In the present invention, the upper and lower rigid plates 10 and 20 of the above-described laminated structure are arranged such that at least one of the front portion and the rear portion of the front portion and the rear portion of the middle portion, on which the binder (not shown) is installed.”], an aperture positioned between the tip and the boot center [Annotated Lee Fig. 2a, above], a first tapered feature having a first narrow end at the tip [Lee Fig. 2a, above], a second tapered feature having a second narrow end at the tail [Annotated Lee Fig. 2a, above].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Holzer et al. (AT 508022 A4) (hereinafter “Holzer”). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 2, Lee teaches a ski with a reinforcement layer and an aperture but does not teach aperture shape. Holzer teaches that the aperture is an ellipse [Holzer Fig. 1, below].
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Holzer Fig. 1
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski with aperture of Lee to provide an elliptical shape as taught by Holzer. As such “an elastic connection in the longitudinal direction of the sliding board body is provided” as recognized by Holzer.
Regarding Claim 8, Lee teaches that a distance between the tip of the ski and a center of the aperture is larger than a distance between a boot center of the ski to the center of the aperture [Lee Fig. 2a, above; Lee “Description of Embodiments” Paragraph 8: “In the present invention, the upper and lower rigid plates 10 and 20 of the above-described laminated structure are arranged such that at least one of the front portion and the rear portion of the front portion and the rear portion of the middle portion, on which the binder (not shown) is installed.”]. It should be noted that while Lee does not explicitly indicate the precise location of a boot center, the approximate location of Lee’s boot center can be approximated by inspection [Lee Fig. 2a, above]. Locating the aperture between the tip of the ski and the boot center would enable attaining a desired ski stiffness and weight distribution, as would be recognized by a person having ordinary skill in the art. It should be further noted that the discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Jodelet (US 5501825 A). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 3, Lee teaches a ski with a reinforcement layer but does not teach reinforcement layer material. Jodelet teaches that the reinforcement layer is an aluminum alloy comprising zinc and magnesium [Jodelet Paragraph 45: “In a practical embodiment…a rigid plate having a high elastic modulus, aluminum alloys, aluminum/zinc/magnesium alloy”].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the reinforcement layer of Lee to specify an aluminum alloy as taught by Jodelet. Doing so would provide “a high elastic modulus” as recognized by Jodelet [Paragraph 45].
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Nosworthy et al. (US 20060097469 A1) (hereinafter “Nosworthy”). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 4, Lee teaches a ski with a core layer and an aperture but does not teach a second aperture. Nosworthy teaches that the aperture is a first aperture; and the core layer defines a second aperture extending at least partially through the core layer [Annotated Nosworthy Fig. 1, above; Nosworthy Paragraph 0006: “a core having upper and lower surfaces and at least one aperture extending therebetween”].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski with aperture of Lee to provide a second aperture as taught by Nosworthy. Doing so would enable “tying the upper and lower reinforcing layers to the core.” as recognized by Nosworthy [Paragraph 0017].
Regarding Claim 5, Lee teaches a ski with a first aperture and a first reinforcement layer but does not teach a second reinforcement layer or a third aperture. Nosworthy teaches that the aperture is a first aperture and the reinforcement layer is a first reinforcement layer and further comprising: a second reinforcement layer defining a third aperture extending at least partially through the second reinforcement layer [Nosworthy Fig. 1, above; Nosworthy Paragraph 0016: “a core having at least one aperture and upper and lower surfaces, at least one upper reinforcing layer on the upper surface of the core and at least one lower reinforcing layer on the lower surface of the core, the upper and lower reinforcing layers including at least one aperture”].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski with aperture of Lee to provide a third aperture as taught by Nosworthy. Doing so would enable “tying the upper and lower reinforcing layers to the core” as recognized by Nosworthy [Paragraph 0017].
Regarding Claim 6, Lee teaches a ski with a first aperture and a first reinforcement layer but does not teach aperture alignment. Nosworthy teaches that the second aperture extends through the second reinforcement layer; the third aperture extends through the core layer; and the first, second, and third aperture are aligned with respect to a vertical axis along a thickness of the body [Nosworthy Fig. 1, above; Nosworthy Paragraph 0007: “at least one upper reinforcing layer disposed on the upper surface of the core and at least one lower reinforcing layer disposed on the lower surface of the core, the upper and lower reinforcing layers each including at least one aperture extending therethrough, the apertures in the upper and lower reinforcing layers being in substantial alignment with each other and with the aperture or apertures in the core”].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski with aperture of Lee to feature alignment as taught by Nosworthy. Doing so would enable “tying the upper and lower reinforcing layers to the core.” as recognized by Nosworthy [Paragraph 0017].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Nosworthy et al. (US 20060097469 A1) (hereinafter “Nosworthy”). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 9, Lee teaches, a ski, a tip, a tail opposite the tip, a length extending from the tip to the tail [Annotated Lee Fig. 2a, above], a boot region located in a middle third of the length [Lee Fig. 2a, above; Lee “Description of Embodiments” Paragraph 8: “In the present invention, the upper and lower rigid plates 10 and 20 of the above-described laminated structure are arranged such that at least one of the front portion and the rear portion of the front portion and the rear portion of the middle portion, on which the binder (not shown) is installed.”], a core layer, and at least one laminate layer [Lee Claim 1: “A ski plate assembly having a laminated structure”], but does not teach first and second reinforcing layers.
Nosworthy teaches a second metal reinforcement layer positioned on a second side of the core layer, the second side opposite the first side [Annotated Nosworthy Fig. 1, above; Nosworthy Paragraph 0034: “Other suitable materials which can be used in the present invention for forming the upper and lower reinforcing layers…In addition reinforcing layers can be formed from wood, metal, polycarbonate, styrene or polyamides.”]
It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the ski of Lee to include, with a reasonable expectation of success, a metal reinforcement layer in view of Nosworthy. A person having ordinary skill in the art would have been motivated to combine Lee and Nosworthy because this would have achieved the desirable result of providing additional strength, as recognized by Nosworthy [Nosworthy Paragraph 0026: “provided for additional strength”]. It should be noted that while Nosworthy does not explicitly provide additional motivation for the use of a metal reinforcement layer, the use of metal reinforcing layers in skis is common in the art (e.g., EP 1452210 B1, US 20050161910 A1, US 20010022439 A1, US 7234721 B2). The use of a metal reinforcing layer would provide desirable stiffness and strength as would be recognized by a person having ordinary skill in the art. It should be further noted that applying a known technique to a known device, method, or product ready for improvement to yield predictable results is likely to be obvious. (See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007); see MPEP § 2143, D.).
Claims 10-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Nosworthy et al. (US 20060097469 A1) (hereinafter “Nosworthy”) and further in view of Krafft (FR 2906153 A1). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 10, the combination of Lee and Nosworthy teaches a ski having an aperture but does not teach a through aperture. Krafft teaches that the aperture is a through aperture [Krafft Abstract: “Gliding board having a front end and a rear end, said front end and said rear end being distant from each other along a longitudinal axis, which board being constituted by the superposition of the following elements: a gliding sole; at least one lower reinforcement; at least one upper reinforcement (3); an intermediate structure, placed between said at least one lower reinforcement and said at least one upper reinforcement; characterized in that, at least one of the ends of the gliding board, said at least one lower reinforcement and/or said at least one upper reinforcement comprises, respectively, each comprise a longitudinal slot”; Krafft “Description” Paragraph 3: “Preferably, slots are formed in the lower reinforcement and in the upper reinforcement and these slots are through”].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski having and aperture of the combination of Lee and Nosworthy to provide a through aperture as taught by Krafft. As such, the “intermediate structure is not interposed between a portion of said at least one lower reinforcement and said at least one upper reinforcement.” as recognized by Krafft [Kraft “Description” Paragraph 3].
Regarding Claim 11, the combination of Lee and Nosworthy teaches a ski having an aperture but does not teach aperture center axis with respect to the ski. Krafft teaches that the aperture is an oval; and a center axis of the aperture is positioned asymmetrically with respect to a center axis of the body [Krafft Fig. 10c, below].
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Krafft Fig. 10c
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski having an aperture of the combination of Lee and Nosworthy to specify asymmetry as taught by Krafft. It should be noted that while Krafft does not explicitly teach shape, nothing in Kraft’s invention would preclude the use of an oval shape; an oval shape would not affect applicability or functionality of Kraft’s invention. As a reason for using an oval-shaped aperture has not been provided in the instant application, it should be noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1966) (see MPEP § 2144.04).
Regarding Claim 12, the combination of Lee and Nosworthy teaches a ski having an aperture but does not teach aperture shape. Krafft teaches that the aperture is an hourglass shape internal to the first reinforcement layer [Krafft Fig. 10a, below].
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Krafft Fig. 10a
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski having an aperture of the combination of Lee and Nosworthy to specify an hourglass-shaped aperture as taught by Krafft. It should be noted that while Krafft does not explicitly teach an hourglass shape, nothing in Kraft’s invention would preclude the use of an hourglass shape; an hourglass shape would not affect applicability or functionality of Kraft’s invention. As a reason for specifying an hourglass-shaped aperture has not been provided in the instant application, it should be noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1966) (see MPEP § 2144.04).
Regarding Claim 15, the combination of Lee and Nosworthy teaches a ski having an aperture but does not teach aperture shape. Krafft teaches that the aperture is a circle. It should be noted that while Krafft does not explicitly teach a circular shape, nothing in Kraft’s invention would preclude the use of a circular shape; a circular shape would not affect applicability or functionality of Kraft’s invention. As a reason for specifying a circle-shaped aperture has not been provided in the instant application, it should be noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1966) (see MPEP § 2144.04).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Nosworthy et al. (US 20060097469 A1) (hereinafter “Nosworthy”) and further in view of Holzer et al. (AT 508022 A4) (hereinafter “Holzer”). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 13, the combination of Lee and Nosworthy teaches a ski having an aperture but does not teach a second aperture. Holzer teaches that the aperture is a first aperture; the first reinforcement layer defines a second aperture positioned between the tip and the first aperture; and the first and second apertures are symmetrical about a center axis of the body [Holzer Fig. 1, above].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski having an aperture of the combination of Lee and Nosworthy to provide a second aperture as taught by Holzer. Doing so would “prevent lateral deviations between the sliding board body and the power transmission element” as recognized by Holzer.
Regarding Claim 14, the combination of Lee and Nosworthy teaches a ski having an aperture but does not teach aperture size. Holzer teaches that a first surface area of the first aperture is larger than a second surface area of the second aperture [Holzer Fig. 1, above].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski of the combination of Lee and Nosworthy to feature different sized apertures as taught by Holzer. Given that a reason for different relative sizes of apertures has not been specified in the instant application, it should be noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1966) (see MPEP § 2144.04) and further that the size of an article is not a matter of invention. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Nosworthy et al. (US 20060097469 A1) (hereinafter “Nosworthy”) and further in view of Kashiwa (US 4858945 A). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 16, the combination of Lee and Nosworthy teaches a ski with reinforcement layers but does not teach yield strength. Kashiwa teaches that the first and second reinforcement layers have a yield strength exceeding 600 MPa [Kashiwa Paragraph 48: “The upper and lower sheets are made of high strength steel which preferably should have a yield strength of at least as great as about 200,000 lb/inch2.”].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski having a reinforcement layer of the combination of Lee and Nosworthy to specify a minimum yield strength as taught by Kashiwa. Doing so would provide “the necessary characteristic of basic durability, the most important part being resistance to permanent bending” as recognized by Kashiwa [Paragraph 17].
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Nosworthy et al. (US 20060097469 A1) (hereinafter “Nosworthy”) and further in view of Smith et al. (US 8733782 B2) (hereinafter “Smith”). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 17, the combination of Lee and Nosworthy teaches a ski with a core but does not teach core material. Smith teaches that the core layer comprises poplar and paulownia [Smith Paragraph 30: “The ski members may be constructed from any suitable material commonly used to build recreational skis such as, for example but not limited to, a Poplar/Paulownia wood blend core”].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski having a core layer of the combination of Lee and Nosworthy to specify a poplar and paulownia core as taught by Smith. Doing so would provide “Lightweight construction [that] may enable the ski to perform much like a traditional alpine touring (AT) ski.” as recognized by Smith [Paragraph 30].
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Nosworthy et al. (US 20060097469 A1) (hereinafter “Nosworthy”), further in view of Smith et al. (US 8733782 B2) (hereinafter “Smith”), and further in view of Holzer et al. (AT 508022 A4) (hereinafter “Holzer”). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 18, the combination of Lee, Nosworthy, and Smith teaches a ski having an aperture but does not teach an ellipse aligned with the central axis of the body. Holzer teaches that the aperture is an ellipse defining a major axis and a minor axis, and the major axis of the aperture is aligned with a central axis of the body [Holzer Fig. 1, above].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the ski having an aperture of the combination of Lee, Nosworthy, and Smith to specify an elliptical aperture aligned with the central axis of the body as taught by Holzer. Doing so “allows a balance of bending between the support members and the support body so that mutual tension between the support body and the sliding board body are avoided if possible, when this overall unit of the sliding device is subject to a sag or bending.” as recognized by Holzer.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20160045008 A) in view of Jodelet (US 5501825 A). Regarding Claim 20, Lee teaches a reinforcement layer of a ski but does not teach layer thickness. Jodelet teaches that the reinforcement layer has a thickness between 0.3 mm and 1 mm [Jodelet Paragraph 45: “In a practical embodiment…a damping assembly constituted by a rigid stress plate exhibiting…a thickness of between 0.5 and three millimeters, preferably of the order of one millimeter”].
It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, the reinforcement layer of Lee to specify layer thickness as taught by Jodelet. As such, “the stress plate and the viscoelastic layer exhibit optimum damping effects” as recognized by Jodelet [Paragraph 45].
Conclusion
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/MICHAEL T. WALSH/Examiner, Art Unit 3613