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 .
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.
Claims 9-11 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 9 recites the limitation "the strength and duration" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "detecting the position" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the force" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 sensors within the gripping features (claims 9 and 10) and accelerometer/sensor to determine force/impact (claim 11) 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.
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.
Claim 1-5 and 7 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 7, and 13-18 of U.S. Patent No. 11,998,821 (“’821”).
Above claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of ‘821. Although the claims at issue are not identical, they are not patentably distinct from each other because the above claims 1 and 2 are anticipated by claim 1 of ‘821, which among other thing recites “a first padded tackling training apparatus for targeted training of tackle technique the first padded tackling training apparatus having a weight in the range of from 10 to 30 kg, and a length from 50 to 90 cm, the first padded tackling apparatus having a first apparatus padded elongate body with a base end and a top end, and defining the apparatus length between the base end the top end, the padded elongate body being substantially uniform in shape along the length at least two gripping features in the form of elongate members each having a gripping feature length and attached to the first apparatus padded elongate body as protrusions, each of the at least two gripping features extending along at least 80% of the apparatus length between base end to the top end, each of the at least two gripping features in the form of elongated member joined along a side surface of the first apparatus padded elongate body in a direction from the base end to the top end and each of at least two gripping features having a width of from 3 to 15 cm and a radial depth of 3 to 15 cm relative to the width, and being a plastic outer coating that is internally padded with a foam material and with a cross-sectional shape that is spherical, semispherical, or cuboidal that makes holding one of the at least two gripping features difficult for the player”.
Claims 3 and 4 are reciting similar limitations as claims 4 and 5 of the ‘821. Although the claims at issue are not identical, they are not patentably distinct from each other because the above claims 3 and 4 are anticipated by claims 4 and 5 of ‘821.
Claim 5 recites similar limitations as claim 6 of the ‘821. Although the claims at issue are not identical, they are not patentably distinct from each other because the above claim 5 is anticipated by claim 6 of ‘821.
Claim 7 recite the same limitations as claim 7 of the ‘821.
With respect to claim 13 of the ‘821, although the claims at issue are not identical, they are not patentably distinct from each other because the above claims 1 and 3 are anticipated by claim 13 of ‘821, for the same reasons discussed above.
Claim 5 recites similar limitations as claim 16 of the ‘821. Although the claims at issue are not identical, they are not patentably distinct from each other because the above claim 5 is anticipated by claim 16 of ‘821.
Claim 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,998,821 (“’821”) in view of Cituk US 3,111,317 (“Cituk”).
The ‘821 is not specific regarding “further comprising an interchangeable core”.
However, such is well known in the art, as taught by Cituk (interchangeable core, 7 in Figs. 2 and 4 and core 18 in Figs. 5 and 6)(also 2:7- 3:10).
Therefore, 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 to form ‘821further comprising an interchangeable core as taught by Cituk for the reason that a skilled artisan would have been motivated by Cituk’s suggestions to use means to enhance the use of the device by providing interchangeable core to allow changing of the weight of the device to accommodate different users’ ages and skills (e.g., 2:38+ ”In addition to the provision of reinforcing means, it is also desirable that the bag be constructed and arranged so that its weight can be varied to accommodate it to a particular age group, or to the strength of the user.” ).
Claims 1-5 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-7 of U.S. Patent No. 11,338,185 (“’185”) in view of Segura US 4,546,966 (“Segura”).
Independent claim 1 of ‘185 recites as a training method for developing tackle, wrap, and hold technique of a player at a range of heights in American football or rugby ,whereas the above claims recites as an apparatus. Nonetheless, the method includes the structure within above claim 1, namely “providing a first padded tackling training apparatus having a first height of from 50 to 90 cm and a weight in the range of from 10 to 30 kg; wherein each of the first, second and third padded tackling training apparatus comprises a padded elongate body having a first end and a second end and a side surface defining the surface of the body between the first and second ends, the elongate body having on or part of the side surface at least three gripping features in the form of elongate members running along the side surface of the padded elongate body in a direction from the first end to the second end wherein each of the at least three gripping features extends along at least 80% of the respective length of the padded elongate body of the first, training apparatus and is continuously affixed to the padded elongate body of each of the first, tackling training apparatus, the gripping features having a width of from 5 to 15 cm and being adapted for gripping during a tackle technique;”
The ‘185 does not disclose that the gripping features being a plastic outer coating that is internally padded with a foam material.
However, Segura discloses gripping features being a plastic outer coating that is internally padded with a foam material (construed as padding elements 54-60 attach at a side of the body 52 of apparatus 10)(Fig. 7; 4:1-26).
Therefore, 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 to form ‘185 with gripping features being a plastic outer coating that is internally padded with a foam material as taught and suggested by Segura for the reason that a skilled artisan would have been motivated in applying a known technique to a known device ready for improvement to yield predictable results of forming a training device that includes such features that are suitable to be grasp (in part, due to the plastic cover) while providing enough “cushioning” to protect a user, especially when the device is design to be use with extreme force while practicing football drills. Such protective means, for the gripping features, within the training device of ‘185 is much desired for protecting users’ hands while forming football tackling drills.
Claims 3 and 4 are reciting similar limitations as claims 5 and 6 of the ‘185. Although the claims at issue are not identical, they are not patentably distinct from each other because the above claims 3 and 4 are anticipated by claims 5 and 6 of ‘185.
Claim 5 recites similar limitations as claim 7 of the ‘185. Although the claims at issue are not identical, they are not patentably distinct from each other because the above claim 5 is anticipated by claim 7 of ‘185.
Allowable Subject Matter
Claims 1-11 allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Applicant stated that a terminal disclaimer filed with his current response (remarks page 2). However, as of the mailing of this office action, the Office as yet to receive the TD and thus the claims stand rejected under DP as set for the above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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/A.A.K/Examiner, Art Unit 3711 12/5/2025
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711