DETAILED ACTION
This is the final rejection based on the 18/667,757 application filed on 05/17/2024 and which claims as amended on 02/17/2026 have been considered in the ensuing action.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
No amendments were made. The arguments were not persuasive and did not overcome the prior art of record.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7, 9-14, and 16- 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Morgia (US 5,232,368) in view of Deluxe Punch Shield (
https://www.amazon.com/Deluxe-Punch-Shield-Kickboxing-Martial/dp/B005ESOWZM).
Regarding claim 1:
Morgia discloses a first edge (top edge), a second edge (bottom edge), a third edge (left edge), and a fourth edge (right edge), the first edge opposite the second edge (see Figure 1), the third edge opposite the fourth edge (see Figure 1); a pad (board 11 that is composed of foam rubber) disposed between the first edge, second edge, third edge, and fourth edge (see Figure 1); a first top handle (handle 26) aligned with the first edge (see figure 4), a first side handle (handle 22) aligned with the third edge (see Figure 4), and a second side (handle 23) handle aligned with the fourth edge (see Figure 4), the handles are aligned for two-handed rapid deployment by the user (see Figures 1-4; the user would be capable of holding the device with two hands; the Examiner notes that “for two-handed rapid deployment” is intended use); wherein the overall configuration of the pad and placement of the handles allow the blocking pad to be quickly utilized to prevent the special individual from harming the user or a head, face, hands, feet or sensitive areas of the body of the special individual(see Figures 1-4; The Examiner notes that the limitation is merely intended use and the apparatus can be used in the claimed manner). Morgia further discloses that the exterior surface of the pad is smooth and flexible to protect the special individual during strikes (the striking elements 12, 12’, 12’’, 12’’’ are removably attached to the pad, the pad itself has a smooth exterior that is flexible, see Figures 1-4; Morgia discloses that the exterior surface is fabric covering a resilient material), and wherein the exterior surface is colored to reduce aggression and anxiety in the special individual to prevent strikes (the Examiner notes that the device has a color, as all objects have a color and the phrase “to reduce aggression and anxiety the special individual to prevent strikes” is merely intended use).
The Examiner notes that the limitation of “to protect the special individual during strikes” ,“the handles are aligned for two-handed rapid deployment by the user” and “wherein the exterior surface is colored to reduce aggression and anxiety the special individual to prevent strikes” are merely functional language/intended use. It makes no difference if the devices of the prior art are used in a different way since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
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Morgia fails to disclose that the edges of the pad are rounded.
Deluxe Punch Shield is a similar blocking pad that has rounded edges.
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It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the pad of Morgia to have rounded edges as taught by Deluxe Punch Shield, as an obvious matter of design choice.
Regarding claim 2:
Morgia as modified disclose that the blocking pad is flat (see Figure 1) to be place between the special individual and a hard surface to protect the special individual from himself/herself (The Examiner notes that this is merely intended use and does not further limit the claim, the apparatus can be used by an attendance of a special individual).
The Examiner notes that the limitation of “to be placed between the special individual and a hard surface to protect the special individual from himself/herself” is merely functional language/intended use. It makes no difference if the devices of the prior art are used in a different way since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Regarding claim 3:
Morgia fails to disclose the color of the device, particularly that the pad is blue or green, and that the pad includes a logo or markings for the special individual to focus on rather than hitting user. However, “to calm the special individual and deter aggression” is intended use. The Examiner further notes that “for the special individual to focus on rather than hitting user” is merely functional language/intended use. It makes no difference if the devices of the prior art are used in a different way since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Deluxe Punch Shield is a similar blocking pad that is blue in color and has a logo.
It would have been obvious to a person having ordinary skill in the art before the time of the invention to modify Morgia to be blue with a logo as taught by Deluxe Punch Shield as an obvious matter of design choice. The color of the device lacks criticality.
Regarding claim 4:
Morgia as modified disclose that the pad is connected to a rigid support member (support 18).
Regarding claim 5:
Morgia as modified disclose that the first top handle, the first side handle, and the second side handle extend from a rear surface of the pad (see Figure 4).
Regarding claim 6:
Morgia as modified disclose that the pad is rectangularly shaped (see Figure 4).
Regarding claim 7:
Morgia as modified disclose that the pad includes an internal support (support 18 is internal to the perimeter and has therefore been considered an internal support).
Regarding claim 9:
Morgia as modified disclose that an interior portion of the pad is at least partially composed of foam (Morgia discloses that the pad is composed of foam rubber, see column 1 lines 56-59).
Regarding claim 10:
Morgia as modified disclose that the pad includes a cover (in the broadest reasonable interpretation the Velcro covering of the front of the pad has been considered a cover “Sidewalls 20 and at least a portion of the periphery of front surface 14 are covered with VELCRO.RTM. pile fabric 21 which may be glued or otherwise affixed in covering relation thereto” see columns 2-3, lines 68 and 1-3) protecting the interior portion of the pad.
Regarding claim 11:
Morgia discloses a first edge (top edge), a second edge (bottom edge), a third edge (left edge), and a fourth edge (right edge), the first edge opposite the second edge (see Figure 1), the third edge opposite the fourth edge (see Figure 1); a pad (board 11 that is composed of foam rubber) disposed between the first edge, second edge, third edge, and fourth edge (see Figure 1); at least a pair of vertical handles (handles 22 and 23) aligned with the third edge and the fourth edge (see Figure 4); wherein the overall configuration of the pad and placement of the vertical handles allow the blocking pad to be quickly utilized to prevent the special individual from harming the attendant or the special individual in open areas and close quarter situations(see Figures 1-4; The Examiner notes that the limitation is merely intended use and the apparatus can be used in the claimed manner). Morgia further discloses that the exterior surface of the pad is smooth and flexible to protect the special individual during strikes (the striking elements 12, 12’, 12’’, 12’’’ are removably attached to the pad, the pad itself has a smooth exterior that is flexible, see Figures 1-4), and wherein the exterior surface is colored to reduce aggression and anxiety in the special individual deterring aggression and strikes (the Examiner notes that the device has a color, as all objects have a color and the phrase “to reduce aggression and anxiety in the special individual deterring aggression and strikes” is merely intended use).
The Examiner notes that the limitation of “to protect the special individual during strikes” and “to reduce aggression and anxiety in the special individual deterring aggression and strikes” merely functional language/intended use. It makes no difference if the devices of the prior art are used in a different way since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
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Morgia fails to disclose that the edges of the pad are rounded.
Deluxe Punch Shield is a similar blocking pad that has rounded edges.
It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the pad of Morgia to have rounded edges as taught by Deluxe Punch Shield, as an obvious matter of design choice.
Regarding claim 12:
Morgia as modified disclose a first top handle (handle 26) aligned with the first edge (see Figure 4).
Regarding claim 13:
Morgia fails to disclose the color of the device, particularly that the pad is blue or green, and that the pad includes a logo or markings for the special individual to focus on rather than hitting user. The Examiner notes that “to calm the special individual and deter aggression” is merely functional language/intended use. It makes no difference if the devices of the prior art are used in a different way since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Deluxe Punch Shield is a similar blocking pad that is blue in color and has a logo.
It would have been obvious to a person having ordinary skill in the art before the time of the invention to modify Morgia to be blue with a logo as taught by Deluxe Punch Shield as an obvious matter of design choice. The color of the device lacks criticality.
Regarding claim 14:
Morgia as modified disclose that the pad is connected to a rigid support member (support 18).
Regarding claim 16:
Morgia as modified disclose that the vertical handles extend from a rear surface of the pad (see Figure 4).
Regarding claim 17:
Morgia as modified disclose that an interior portion of the pad is at partially composed of foam (Morgia discloses that the pad is composed of foam rubber, see column 1 lines 56-59).
Regarding claim 18:
Morgia as modified disclose that the pad includes a cover (in the broadest reasonable interpretation the Velcro covering of the front of the pad has been considered a cover “Sidewalls 20 and at least a portion of the periphery of front surface 14 are covered with VELCRO.RTM. pile fabric 21 which may be glued or otherwise affixed in covering relation thereto” see columns 2-3, lines 68 and 1-3) protecting the interior portion of the pad.
Regarding claim 19:
Morgia discloses a first edge (top edge), a second edge (bottom edge), a third edge (left edge), and a fourth edge (right edge), the first edge opposite the second edge (see Figure 1), the third edge opposite the fourth edge (see Figure 1); a pad (board 11 that is composed of foam rubber) disposed between the first edge, second edge, third edge, and fourth edge (see Figure 1), wherein the pad includes a cover (in the broadest reasonable interpretation the Velcro covering of the front of the pad has been considered a cover “Sidewalls 20 and at least a portion of the periphery of front surface 14 are covered with VELCRO.RTM. pile fabric 21 which may be glued or otherwise affixed in covering relation thereto” see columns 2-3, lines 68 and 1-3) on an exterior portion of the pad; handles including a first top handle (handle 26) aligned with the first edge (see Figure 4), a first side handle (handle 22) aligned with the third edge (see Figure 4), and a second side (handle 23) handle aligned with the fourth edge (see Figure 4), the handles are aligned for two-handed rapid deployment by the user (see Figures 1-4, the device is capable of being held in two hands in a rapid fashion); wherein the pad and the handles allow the blocking pad to be quickly utilized to prevent the special individual from harming the user or his/her head, face, hands, feet or sensitive areas of the body (see Figures 1-4; The Examiner notes that the limitation is merely intended use and the apparatus can be used in the claimed manner). Morgia further discloses that the exterior surface of the pad is smooth and flexible to protect the special individual during strikes (the striking elements 12, 12’, 12’’, 12’’’ are removably attached to the pad, the pad itself has a smooth exterior that is flexible, see Figures 1-4).
The Examiner notes that the limitation of “to protect the special individual during strikes” and “the handles are aligned for two-handed rapid deployment by the user are merely functional language/intended use. It makes no difference if the devices of the prior art are used in a different way since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
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Morgia fails to disclose that the edges of the pad are rounded and a logo or markings for the special individual to focus strikes on rather than hitting a user.
Deluxe Punch Shield is a similar blocking pad that has rounded edges with a logo.
It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the pad of Morgia to have rounded edges and a logo as taught by Deluxe Punch Shield, as an obvious matter of design choice.
The Examiner notes that the limitation of “for the special individual to focus on rather than hitting the user” are merely functional language/intended use. It makes no difference if the devices of the prior art are used in a different way since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Regarding claim 20:
Morgia as modified discloses that wherein the first top handle, the first side handle, and the second side handle extend from a rear surface of the pad (see Figure 4) and that the pad includes a logo or markings for the special individual to focus on rather than hitting the user (see rejection of claim 19 above).
Morgia fails to disclose the color of the device, particularly that the pad is blue or green.
Deluxe Punch Shield is a similar blocking pad that is blue in color.
It would have been obvious to a person having ordinary skill in the art before the time of the invention to modify Morgia to be blue as taught by Deluxe Punch Shield as an obvious matter of design choice. The color of the device lacks criticality.
Allowable Subject Matter
Claims 8 and 15 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.
Response to Arguments
Applicant's arguments filed 08/11/2026 have been fully considered but they are not persuasive.
With respect to the arguments addressing the ability to use Deluxe Punch Shield as prior art, the Examiner respectfully disagrees. With respect to the date available of the Deluxe Punch Shield, the Examiner has relied on archive.org, not amazon, which is shown in the copy of the reference attached to the office action mailed 09/12/2024 (see page 2 – a copy which is replicated below):
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The Examiner notes that archive.org is a well-known website that archives other websites on the internet, showing the day/time it was accessed by the archive.org and allows a user to look at the website as archived. As shown above, the listing for the Deluxe Punch Shield, was archived on February 21,2012, shown below, but can also be verified by Applicant simply by going to archive.org and typing in the web address of the cited reference.
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Upon clicking on the date highlighted above, archive.org takes you to an archived view of the website from February 21, 2012 which is replicated below:
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With regards to the date viewed, the reference cited above has been applied as prior in parent application as far back as 2014, please see the non-final rejection mailed 10/23/2014 in parent application 13/720,492. With respect to the date first available, as stated above and in the NPL reference attached in previous actions, the date of 2011 has not been relied upon. The archive.org date has been relied upon to teach that the product was available before the instant invention.
With respect to the arguments that the office has not sufficiently established that the Deluxe Punch Shield reference is valid prior art, the Examiner respectfully disagrees. Not only has the reference been established in this case, as shown by the copy attached on 09/12/2024, but the reference has been established in various parent application as far back as 2014.
With respect to the modification of rounding the edges of Morgia, the Examiner respectfully disagrees. It is well-known in striking devices to have rounded edges and it would not be improper. The edges of the device of Morgia would still be extending perpendicularly, the corners themselves would be rounded. The Examiner disagrees that rounding the edges would “eliminate or substantially degrade” the sidewalls and perimeter. The device of Deluxe Punch Shield maintains a rectangular surface with perpendicular sidewalls, yet still has rounded edges. The Examiner disagrees that the modification would render the prior art unsatisfactory. Further, it is note that striking devices like both Morgia and Deluxe Punch Shield will be modified over time to naturally have rounded edges through use and would not result in an inoperable or unsatisfactory device.
With respect to the “obvious matter of design choice”, the Examiner respectfully disagrees. Design choice is a well-known and established reason to make certain modifications. In this instance, not only is rounding the edges, including a logo and using the color blue an obvious design choice, but it is clearly taught by Deluxe Punch Shield and would not result in substantial changes to the operation of Morgia.
With respect to the Applicant’s arguments about the intended use of the claimed invention, as stated above, intended use must result in a structural difference.
With respect to the arguments addressing the exterior surface of the pad, the Examiner respectfully disagrees. Morgia does teach the pad is smooth and flexible. The outer surface of Morgia does not encompass the fastener or the elongated elements. The fasteners and elongated elements are additional components attached to the exterior surface but not part of the exterior surface. The claim language does not preclude additional elements or components attached to the surface.
With respect to the handles, the Examiner respectfully disagrees. The Applicant is arguing a different interpretation of the art than what was applied in the previous action. As shown below, Morgia teaches 3 handles that are parallel with three different edges (22, 23, 26). While Morgia additionally teaches handle 21, it is not being relied upon for the rejection of the independent claims. With respect to “rapid deployment” as discussed above, this is intended use. The Examiner disagrees that the language imparts structure. The structure of the claim is handles being aligned with sides of the device, which Morgia as modified shows.
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Conclusion
THIS ACTION IS MADE FINAL. 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 MEGAN M ANDERSON whose telephone number is (313)446-6531. The examiner can normally be reached M-TH 6 a.m. -4 p.m. (Arizona).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LoAn Jimenez can be reached at 571-272-4966. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Megan Anderson/Primary Examiner, Art Unit 3784
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