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 .
This action is in response to applicant’s remarks and amendments dated 12/22/2025. Claim 22 has been amended. Claims 1-19 and 21-23 are currently pending.
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 1-19 and 23 are 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 1 lines 4-5 recite that a first end of the support is disposed within the body (i.e. separate but attached elements), while lines 11-12 recite that the ball consists as a single manufactured part from a same material, presumably intending to claim that all of the listed parts of the “ball” in claim 1 are a single integral component. It is unclear, then, how separate components with a recited attachment can simultaneously be integral. These recitations are conflicting. The claim seems to recite both separate, mated together elements, and then recites that these elements are one integral element in the same claim. For the purposes of this action, it is presumed that the support was simply intended to be recited as attached “to” or “at” the body at one end, similar to the other recitations in the claim, due to the fact that applicant appears to be attempting to claim a single unitary element in this claim. It is noted that applicants arguments also seem to support that this is what is attempting to be claimed Appropriate correction is required.
Claim 4 similarly recites elements of the support that appear to be distinct from the body of the ball, however, claim 1 already recited that the “ball,” which includes both the body and the support, is a single manufactured part. Therefore, claim 4 conflicts with claim 1. Appropriate correction is required.
Claims 5 and 6 recite that the “ball” has a particular diameter. However, the term “ball” in claim 1 refers to the entire assembly, including the support, tail, and hooks. Therefore, this claim terminology makes it unclear what diameter is attempting to be claimed. Presumably applicant intended to recite the diameter of the “spherical body” or similar. Claim 23 line 3 has this same issue. Appropriate correction is required.
Claim 8 recites that “at least a portion of a front end of the body comprises...,” however, claim 1, again, has recited that the entire “ball” structure is a single manufactured part from the same material. Therefore, it is unclear what is attempting to be claimed in claim 8. Since all of the ball is the same material, presumably claim 8 intended to recite that the entire “ball” has this material property, or similar. Appropriate correction is required.
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 1-6 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Cummings (US PGPub. No. 2014/0338647 A1) in view of Neal et al. (US PGPub. No. 2009/0011870 A1), and further in view of Price (US Patent No. 2,109,120).
In Reference to Claims 1-6
Cummings teaches (Claim 1) A launching and/or catching toy kit, comprising: a ball comprising: a) a [head] (item 42, fig’s 1 and 2); b) a support non-movably attached to the body (item 44), where a first end of the support is disposed within the body (left end of item 44, fig’s 1 and 2, note this is confusing as the claim later recites these components are integral) and a second end of the support extends beyond the back end of the body (right end of item 44, fig’s 1 and 2), where a longitudinal axis is defined through the body and the support (fig’s 1 and 2); c) a tail attached to the second end of the support (item 46, fig’s 1 and 2); d) a first and a second elastic band hook oppositely disposed about the longitudinal axis and attached to the body and/or the support (items 48, fig’s 1 and 2); []; a slingshot associated with the ball, the slingshot configured to launch the ball from a first user to a second user, the slingshot comprising: a) a handle configured to be gripped by the first user (item 24, fig’s 1 and 2); b) a pair of prongs connected and/or extending from a top of the handle (items 18, fig’s 1 and 2), wherein the pair of prongs form an opening wherein the opening is at least as wide as a maximum width of the ball (fig. 3); c) at least one elastic band connected to each prong of the pair of prongs (items 36, fig’s 1 and 2); wherein each at least one elastic band is releasably captured by its respective first or second elastic band hook on the ball during launching by the first user (fig. 3);
(Claim 2) wherein the tail extends outwardly in a vertical plane aligned along the longitudinal axis which is generally perpendicular to a horizontal plane, where the horizontal plane is aligned along the longitudinal axis but also extends through the first and second elastic band hook (fig’s 1 and 2, side portions of item 46 are in a horizontal plane and aligned with hooks 48);
(Claim 3) wherein the tail comprises a finger grip feature configured to be easily grasped by the first user when launching (item 50 / 52, fig’s 1 and 2; note “configured to be grasped” is an intended use; item 50/52 is fully capable of being grasped, meeting this limitation);
(Claim 4) wherein the support is not disposed through a front end of the body or wherein the support comprises a hollow aluminum tube (fig’s 1 and 2, item 44 does not extend through a front end of item 42).
Cummings fails to teach the head being a spherical body and the “ball” being made of a single manufactured part of claim 1 and the features of claims 5 and 6.
Neal teaches a projectile toy that has (Claim 1) a spherical body defining a diameter (fig’s 1 and 2);
(Claim 5) wherein the diameter of the ball is at least 2.0 inches (paragraph 0005);
(Claim 6) wherein the diameter of the ball is at least 2.5 inches (paragraph 0005).
Price teaches (Claim 1) e) wherein [a projectile] consists as a single manufactured part from a same material (fig’s 2-5 and page 2 lines 40-44).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy projectile device of Cummings with the feature of a spherical body with the diameter claimed as taught by the toy projectile device of Neal for the purpose of making the shape of the head of the projectile similar to a conventional baseball so that the device may be used to additionally practice aspects of the fundamentals of baseball as taught by Neal (paragraph 0017), making the device more versatile, more useful, and more interesting and attractive to the users.
Further, the examiner notes that it has been held that changes in shape are obvious matters of engineering design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since Cummings teaches that the head of the projectile may be in different forms (paragraph 0025), and, since there does not appear to be any functional significance to the shape of the projectile head, merely claiming a particular shape is an obvious matter of engineering design choice, and is not a patentable distinction.
Further still, the examiner notes that it has been where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Neal teaches providing a head to a projectile that simulates a baseball, merely claiming specific diameters that would serve the purpose of providing regulation baseball dimensions is an obvious matter of engineering design choice, and is not a patentable distinction.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy projectile device of Cummings with the feature of making the projectile of a single manufactured part as taught by the toy projectile device of Price for the purpose of making the projectile more rugged and durable as taught by Price (page 1 lines 30-34), making the device more reliable, and more attractive to the users.
Further the examiner notes that it has been held that making components of a prior art device a single integral element as opposed to multiple parts rigidly secured together as a single unit is an obvious matter of engineering design choice. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Simply claiming a single integral element as opposed to separate but rigidly connected elements is an obvious matter of engineering design choice, and is not a patentable distinction. This is further evidenced by Neal which teaches, in the alternative, that the components of the device may be formed of a single unitary structure (fig’s 2-5), or alternately, with a removable head (fig’s 6 and 7), both of which would work equally well for the intended purpose of being used as a projectile device.
In Reference to Claim 22
Cummings teaches (Claim 22) A launching and/or catching toy kit, comprising: a ball comprising: a) a [head] (item 42, fig’s 1 and 2) b) a support non-movably attached to the body (item 44), where a first end of the support is disposed [at] the body (left end of item 44, fig’s 1 and 2) and a second end of the support extends beyond the back end of the body (right end of item 44, fig’s 1 and 2), where a longitudinal axis is defined through the body and the support (fig’s 1 and 2); c) a tail attached to the second end of the support (item 46, fig’s 1 and 2); d) a first and a second elastic band hook oppositely disposed about the longitudinal axis and attached to the body and/or the support (items 48, fig’s 1 and 2); a slingshot associated with the ball, the slingshot configured to launch the ball from a first user to a second user, the slingshot comprising: a) a glove attachment feature configured to attach to a webbing of a baseball glove worn by the first user (item 24, fig’s 1 and 2; note there is no specific structure recited here, since item 24 could be attached to a baseball glove webbing, e.g. with a string, it meets the claims); b) a pair of prongs connected and/or extending from a top of the glove attachment feature (items 18, fig’s 1 and 2), wherein the pair of prongs form an opening wherein the opening is at least as wide as a maximum width of the ball (fig. 3); c) at least one elastic band connected to each prong of the pair of prongs (items 36, fig’s 1 and 2); wherein each at least one elastic band is releasably captured by its respective first or second elastic band hook on the ball during launching by the first user (fig. 3).
Cummings fails to teach the features of the head being spherical and the support being within the body of claim 22.
Neal teaches (Claim 22) a spherical body defining a diameter (fig’s 1 and 2, and paragraph 0005).
Price teaches (Claim 22) a first end of [a] support within [a] body (fig’s 6 and 7).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy projectile device of Cummings with the feature of a spherical body with the diameter claimed as taught by the toy projectile device of Neal for the purpose of making the shape of the head of the projectile similar to a conventional baseball so that the device may be used to additionally practice aspects of the fundamentals of baseball as taught by Neal (paragraph 0017), making the device more versatile, more useful, and more interesting and attractive to the users.
Further, the examiner notes that it has been held that changes in shape are obvious matters of engineering design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since Cummings teaches that the head of the projectile may be in different forms (paragraph 0025), and, since there does not appear to be any functional significance to the shape of the projectile head, merely claiming a particular shape is an obvious matter of engineering design choice, and is not a patentable distinction.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy projectile device of Cummings with the feature of mounting the support within the body as taught by the toy projectile device of Price for the purpose of allowing the device to be sufficiently durable, while allowing the device to be more adaptable to various forms of play as taught by Price (page 1 lines 30-37), making the device more versatile, and more attractive to the users.
Further the examiner notes that it has been held that making components of a prior art device a single integral element as opposed to multiple parts rigidly secured together as a single unit is an obvious matter of engineering design choice. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Simply claiming a single integral element as opposed to separate but rigidly connected elements is an obvious matter of engineering design choice, and is not a patentable distinction. This is further evidenced by Neal which teaches, in the alternative, that the components of the device may be formed of a single unitary structure (fig’s 2-5), or alternately, with a removable head (fig’s 6 and 7), both of which would work equally well for the intended purpose of being used as a projectile device.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Cummings in view of Neal et al., Price, and further in view of Bynum, Jr. (US PGPub. No. 2014/0256479 A1).
In Reference to Claims 7 and 8
The modified device of Cummings teaches all of claim 1 as discussed above.
Cummings fails to teach the specific weight and hardness claimed.
Bynum teaches (Claim 7) wherein an overall weight of [a projectile] is less than 100 grams (paragraph 0073 lines 16-21);
(Claim 8) wherein at least a portion of a front end of [a] body comprises a Shore A durometer hardness substantially equal to or less than 25 (paragraph 0080 lines 8-10).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the projectile device of Cummings with the feature of the weight and hardness values claimed as taught by the projectile device of Bynum for the purpose of making the device soft enough and light enough to be safe and prevent injury, while retaining enough durability and balance to function well as a projectile as taught by Bynum (paragraph 0024), making the device more reliable, safer, and more attractive to the users.
Claims 23 is rejected under 35 U.S.C. 103 as being unpatentable over Cummings in view of Neal et al., Price, Bynum, Jr., and further in view of Yearick (US Patent No. 7,476,166 B2).
In Reference to Claim 23
Cummings teaches (Claim 23) A launching and/or catching toy kit, comprising: a ball comprising: a) a [head] (item 42, fig’s 1 and 2), [] b) a support non-movably attached to the body (item 44), where a first end of the support is disposed [at] the body (left end of item 44, fig’s 1 and 2) and a second end of the support extends beyond the back end of the body (right end of item 44, fig’s 1 and 2), where a longitudinal axis is defined through the body and the support (fig’s 1 and 2); c) a tail attached to the second end of the support (item 46, fig’s 1 and 2); d) a first and a second elastic band hook oppositely disposed about the longitudinal axis and attached to the body and/or the support (items 48, fig’s 1 and 2); []; at least [a] slingshot[] associated with the ball, each slingshot configured to launch the ball from a first user to a second user, each slingshot comprising: a) a handle configured to be gripped by the first user (item 24, fig’s 1 and 2); b) a pair of prongs connected and/or extending from a top of the handle (items 18, fig’s 1 and 2), wherein the pair of prongs form an opening wherein the opening is at least as wide as a maximum width of the ball (fig. 3); c) at least one elastic band connected to each prong of the pair of prongs (items 36, fig’s 1 and 2); wherein each at least one elastic band is releasably captured by its respective first or second elastic band hook on the ball during launching by the first user (fig. 3).
Cummings fails to teach the spherical body, support within the body, overall weight, and two slingshots of claim 23.
Neal teaches (Claim 23) a spherical body defining a diameter wherein the diameter of [a] ball is at least 2.5 inches (fig’s 1 and 2, and paragraph 0005).
Price teaches (Claim 23) a first end of [a] support within [a] body (fig’s 6 and 7).
Bynum teaches e) wherein an overall weight of the ball is less than 100 grams (paragraph 0073 lines 16-21).
Yearick teaches providing two slingshots in a system (fig’s 1 and 2, column 2 lines 35-38).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy projectile device of Cummings with the feature of a spherical body with the diameter claimed as taught by the toy projectile device of Neal for the purpose of making the shape of the head of the projectile similar to a conventional baseball so that the device may be used to additionally practice aspects of the fundamentals of baseball as taught by Neal (paragraph 0017), making the device more versatile, more useful, and more interesting and attractive to the users.
Further, the examiner notes that it has been held that changes in shape are obvious matters of engineering design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since Cummings teaches that the head of the projectile may be in different forms (paragraph 0025), and, since there does not appear to be any functional significance to the shape of the projectile head, merely claiming a particular shape is an obvious matter of engineering design choice, and is not a patentable distinction.
Further still, the examiner notes that it has been where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Neal teaches providing a head to a projectile that simulates a baseball, merely claiming specific diameters that would serve the purpose of providing regulation baseball dimensions is an obvious matter of engineering design choice, and is not a patentable distinction.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy projectile device of Cummings with the feature of mounting the support within the body as taught by the toy projectile device of Price for the purpose of allowing the device to be sufficiently durable, while allowing the device to be more adaptable to various forms of play as taught by Price (page 1 lines 30-37), making the device more versatile, and more attractive to the users.
Further the examiner notes that it has been held that making components of a prior art device a single integral element as opposed to multiple parts rigidly secured together as a single unit is an obvious matter of engineering design choice. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Simply claiming a single integral element as opposed to separate but rigidly connected elements is an obvious matter of engineering design choice, and is not a patentable distinction. This is further evidenced by Neal which teaches, in the alternative, that the components of the device may be formed of a single unitary structure (fig’s 2-5), or alternately, with a removable head (fig’s 6 and 7), both of which would work equally well for the intended purpose of being used as a projectile device.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the projectile device of Cummings with the feature of the weight value claimed as taught by the projectile device of Bynum for the purpose of making the device soft enough and light enough to be safe and prevent injury, while retaining enough durability and balance to function well as a projectile as taught by Bynum (paragraph 0024), making the device more reliable, safer, and more attractive to the users.
Finally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the toy slingshot system of Cummings with the feature of two slingshots as taught by the toy slingshot system of Yearick for the purpose of allowing multiple players to use the devices to both fire and catch the projectiles as taught by Yearick (column 2 lines 8-15), allowing the system to be used in a wider variety of games, making the system more interesting and more attractive to the users.
The examiner further notes that it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Simply providing additional launchers for additional users would not produce any new or unexpected results and is, therefore, not a patentable advance.
Claim 22 is alternately rejected under 35 U.S.C. 103 as being unpatentable over Cummings in view of Neal et al., Price, and further in view of Yount et al. (US Patent No. 3,494,346).
In Reference to Claim 22
It is noted that the examiner believes that all of the limitations of claim 22 are taught in Cummings, Neal, and Price, as discussed above. Specifically, that since the handle of Cummings could be attached to a glove webbing, it meets the claims. No specific structure is claimed regarding the “glove attachment feature,” therefore, anything that could be attached to a glove webbing would meet this limitation.
However, in the view that this was intended to claim an independent attachment structure, specifically, an alternate rejection is set forth below:
Yount teaches an attachment feature on a slingshot device (item 38), which could be used to attach to a glove webbing.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the slingshot device of Cummings with the feature of an attachment device as taught by the slingshot device of Yount for the purpose of providing a convenient mechanism for attaching the slingshot to a user, for storage, or for any other desired attachments, making the device more versatile, more useful, and more attractive to the users.
Allowable Subject Matter
Claim 21 is allowed.
Claims 9-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Applicant’s argument regarding the unitary construction claimed is not persuasive. First, this limitation is confusing in light of other limitations in the claim that appear to claim distinct components, and not a unitary construction. This also conflicts with some dependent claims as discussed in the 112 section above. Second, merely making components of a prior art device integral instead of separate but rigidly connected elements is not a patentable advance. See action above for further details.
Applicant’s argument regarding the limitation of the glove attachment feature is noted but is not persuasive. First, there is no specific structure recited here. Anything that can by attached to a glove webbing by any means (such as with a string) meets these limitations. It appears applicant is reading more limitations into the claims than currently exist.
Second, this is mostly an intended use limitation. It has been held that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Further still, it has also been held that "The recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “Apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Simply reciting that the “glove attachment feature” is “configured to attach to a webbing of a baseball glove” does not impart any specific structure to the claims. It does not recite how it is attached, what does the attaching, or anything specific about an attachment mechanism. Anything that could be attached to the webbing of a baseball glove meets these limitations.
Applicant’s argument regarding claim 23 including two slingshots is noted, but is moot in view of the new grounds of rejection. See action above for further details.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/ Primary Examiner, Art Unit 3711