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 .
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, 3-13 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.
Regarding claim 1, the scope of the claims is unclear because the claims are directed to a tray yet recites structure of the tray in relation to a ceramic ball. For purposes of examination, claims will be given their broadest reasonable interpretation and will be treated as a tray capable of functioning with a ceramic ball. In particular, claim 1 recites, in part “ceramic ball with a diameter of 10 mm or more and 100 mm or less” and further recites “a diameter of the ceramic ball” and it is unclear if they are referring to the same diameter or to a different diameter. Clarification of the scope of the claims 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.
Claim(s) 1, 3-6, 10-13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US 2005/0145533 to Seligson.
Regarding claim 1, Seligson discloses a storage tray (14) capable of storing ceramic balls (44) with recited diameter comprising a storage portion (16) that can store the ball, wherein the storage portion has a protruding portion (A, Fig 2 below) protruding downward and formed such that a center of a bottom surface portion (B, Fig 2 below) of the storage portion is hollow, a height of an outer circumferential surface of the protruding portion relative to a diameter of a ceramic ball is capable of being within a range of .05 or more and .3 or less since it has the structure as recited and depending on the dimensions of the ball.
PNG
media_image1.png
589
784
media_image1.png
Greyscale
Regarding claims 3-6, 10-12, Seligson discloses the tray capable of functioning with a ceramic ball in the range as recited since it has the structure as recited.
Regarding claim 13, Seligson further discloses protruding portion (A) has a hollow cylindrical shape formed such that the center of the bottom surface portion is hollow (Fig 2).
Claim(s) 1, 3-13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US Patent No. 3,568,830 to Moren.
Regarding claim 1, Moren discloses a storage tray (Fig 1) capable of storing ceramic balls comprising a storage portion (18) that can store the ball, wherein the storage portion has a protruding portion (20) formed such that a center of a bottom surface portion (18) of the storage portion is hollow, a height (H) of an outer circumferential surface of the protruding portion relative to a diameter of a ceramic ball is capable of being within a range of .05 or more and .3 or less since it has the structure as recited and depending on the dimensions of the ball.
Regarding claims 3-6, 10-12, Moren discloses the tray capable of functioning with a ceramic ball in the range as recited since it has the structure as recited.
Regarding claim 7, Moren further discloses height (H) of circumferential surface of the protruding portion (20) is 3mm or more (col. 2, ll. 35-40).
Regarding claim 8, Moren further discloses the tray made of plastic (col. 1, ll. 55-56).
Regarding claim 9, 13, Moren further discloses protruding portion (20) has a hollow cylindrical shape formed such that the center of the bottom surface portion is hollow (col. 2, ll. 30-35).
Response to Arguments
Applicant's arguments filed 4/15/2026 have been fully considered but they are not persuasive. Initially, it is noted that applicant does not argue the rejection of the dependent claims. Applicant argues that the amended claims cure the 35 USC 112 deficiency. This is not persuasive because the claims continue to recite structure of the tray in relation to a ceramic ball even though the ceramic ball is not claimed. Applicant argues that prior art does not teach a storage portion adapted to store a ceramic ball with the recited dimensions. This is not persuasive because so long as prior art has the structure of a storage portion, then it would be adapted to store a ceramic ball with the recited dimensions. Applicant further argues that prior art does not teach a protruding portion protruding downward. This is not persuasive because Seligson discloses protruding portion (A) of the storage area protruding downwards towards the bottom of the box (10). Applicant further argues that prior art is silent regarding ratio of the recited dimensions of the protruding portion and storage portion in relation to ceramic ball. However, since a ceramic ball is not recited, it is believed that the prior art can have the ratio recited depending on the diameter of the ball.
In response to applicant's argument that Moren discloses a tray for display purposes and not intended to be used by stacking trays containing ceramic balls, 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. If the prior art structure is capable of performing the intended use, then it meets the claim. Applicant argues that Moren does not teach the wells adapted to store ceramic balls with a diameter as recited. This is not persuasive because so long as prior art has the structure of a storage portion, then it would be adapted to store a ceramic ball with the recited dimensions. Applicant further argues that prior art does not teach a protruding portion protruding downward. This is not persuasive because Moren discloses protruding portion (20) of the storage area protruding downwards towards the bottom of the box (26). Applicant further argues that prior art is silent regarding ratio of the recited dimensions of the protruding portion and storage portion in relation to ceramic ball. However, since a ceramic ball is not recited, it is believed that the prior art can have the ratio recited depending on the diameter of the ball.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
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, Anthony Stashick can be reached at (571)272-4561. 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.
/ROBERT POON/Examiner, Art Unit 3735
Prosecution Insights