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 Objections
Claim 36 is objected to because of the following informalities: line 3 contains a typo, “customisable” should be “customizable” for consistency and clarity with claim 26. Appropriate correction is required.
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 26, 32, 34, 41, 43, and 45 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.
The term ““about, near and/or slightly above” in claim 26 is a relative term which renders the claim indefinite. The term “about” and “near” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The phrases do not provide objective boundaries the temperature range is required for heating by the claim. The specification does not provide a standard for measuring the scope of these terms of degree with certainty. The specification fails to define what constitutes “about” (and does not describe “about” at all). The use of “about, near, and/or slightly above “ introduces multiple alternative scopes without clarifying which is required further contributing to uncertainty of the required heating conditions.
The term “essentially” in claim 34 is a relative term which renders the claim indefinite. The term “essentially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is therefore indefinite what essentially ring shaped body means, examiner understands this can be any shape with a hollow central region.
The phrase "Optionally" in claim 32, renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 32, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 41 recites the limitation "reinforcing layers or structure" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the claim limitation is referencing the “reinforcing strips” of claim 40 or the lower matrix structure, upper matrix structure, peripheral matrix structure, a monolithic plastic or plastic composite matrix structure of claim 39.
Claim 45 recites the limitation "reinforcing layers or structure" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the claim limitation is referencing the “plurality of layers comprise polypropylene (PP) composite containing PP copolymer as a matrix and stretched PP homopolymer as reinforcement” of claim 42.
Claim 43 recites the limitation "the at least one of the plurality of layers" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 26-28, 30, and 38 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayward (TW200932625), English translation provided as NPL.
In regards to claim 26, Hayward discloses a method of manufacturing a board (410) for use in skateboarding or other extreme sports, wherein the board comprises: upper (416) and lower (417) surfaces extending along a length between first and second ends (430, 432) and across a width perpendicular to the length (see fig. 19,22), the board having a thickness between the upper and lower surfaces (see fig. 21); and a core (418), a lower structure (424) located beneath the core and forming the lower surface, an upper structure (422) located above the core and forming the upper surface and a peripheral structure (440, see fig. 22) around the core (418) and between the upper and lower structures (422, 424), wherein the method comprises: determining customizable performance parameters for the board comprising board flexibility, board pop-up, shock absorption and/or strength (see para. 0033-0035, 0139, 0235, 0237, disclosing varying foam core density along the length and varying thickness or composition of the layers to change the rigidity / deflection and performance); selecting, for achieving the customizable performance parameters to tune the properties of the board, (i) the core (418) (see para. 139-149, 201), (ii) a plurality of layers of plastic and/or plastic-composite material for forming the upper structure (422), lower structure and peripheral structure (424) (see para. 131) and (iii) an interface between the core and the upper and/or lower structures (440) (fig. 22); arranging the selected core and plurality of layers over and/or around one another with the selected interface (see fig. 22, para. 201-205); and forming the lower, upper and peripheral structures by heating the plurality of layers (see para. 055) to about, near and/or slightly above the melting point(s) of the plurality of layers and then allowing the plurality of layers to cool, such that the plurality of layers fuse and resolidify to form a monolithic structure with the core encapsulated therein (see para. 0055, 0087, and para. 0146, the core is heated and cured, then cut and placed into a mold where the lower upper and peripheral structures are molded and cooled including layer 420 that is under pressure to form a monolithic structure).
In regards to claim 27, Hayward discloses wherein during the arranging step the plurality of layers are stacked together as a sandwich structure with the core (418) located within a hollow space of at least one layer of the plurality of layers for forming the peripheral structure (see fig. 22), overlain by at least one layer of the plurality of layers for forming the upper structure (422) and underlain by at least one layer of the plurality of layers for forming the lower structure (424).
In regards to claim 28, Hayward discloses comprising at least one of: cutting at least one of the plurality of layers for a lower structure; cutting at least one of the plurality of layers for the peripheral structure with a hollow space for accommodating the core; and cutting at least one of the plurality of layers for the upper structure (see fig. 22, para. 203, the layers are formed and then cut, the upper, lower and peripheral structure are cut in a shape to accommodate the core 418 thereby with a hollow space).
In regards to claim 30, Hayward discloses wherein: the upper and lower structures have the same or different thicknesses above and below the core (see fig. 22, para. 201); and/or the thicknesses and/or number of the plurality of layers forming the upper and lower structures are selected for achieving the customizable performance parameters for a given board weight (para. 201 discloses the layers 422, 424, 440, 426, 428 may be the same as shown or varied as need to create the desired difference in deflection in the board 410).
In regards to claim 38, Hayward discloses a board (410) formed according to the method of claim 26 (see above claim 26).
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 29, and 42, 44-45 are rejected under 35 U.S.C. 103 as being unpatentable over Hayward (TW200932625), as applied above, and further in view of Jacobs (EP 1787790) (see attached).
In regards to claim 29, Hayward discloses wherein during the forming step: the plurality of layers are heated and pressed to fuse and melt so that the monolithic structure is produced; a pressure is applied in the range of from 10 bar to 20 bar inclusive; and/or the pressure is applied within an autoclave environment (see para. 147, Hayward discloses the step of applying pressure from a press causing the layers to be solidified). Although Hayward fails to disclose the pressure is applied in the range of from 10 bar to 20 bar. However, Jacobs teaches a similar method of manufacturing a sandwiched style composite wherein the method includes the steps of applying a pressure to fuse the layers together, wherein the pressure applied is in the range from 5-20 bar. It would have been obvious to a person of ordinary skill in the art, lacking criticality, to apply the range as taught by Jacobs in order to properly distribute the materials into the space and form the monolithic structure since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In regards to claim 42, Hayward discloses a board (410) for use in skateboarding or other extreme sports, wherein the board (410) comprises: upper and lower surfaces (416, 417) extending along a length between first and second ends (430, 432)and across a width perpendicular to the length, the board body having a thickness (core 418) between the upper and lower surfaces (416, 417); and a plurality of layers extending between the upper and lower surfaces and fused together as a monolithic structure (see para. 0135 "multilayer structure comprising at least three layers, see also para. 0145-148, upper and lower covers include a second layer of the laminate resin which can be cured and hardened to fix everything together, the laminate resin is a layer of plastic or plastic composite material fused together see again para. 0135-136).
Hayward fails to explicitly disclose wherein the plurality of layers comprise polypropylene (PP) composite containing PP copolymer as a matrix and stretched PP homopolymer as reinforcement.
Jacobs teaches a method for forming a thermoplastic composite wherein a matrix uses polypropylene as the material for matrix and the material for the reinforcement will preferably be a homopropylene. Examiner notes it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331. Therefore, it would have been obvious to a person of ordinary skill in the art to have modified Hayward's board composition with the composite Jacobs teaches having a matric and a reinforcement with the claimed material makeup, before the effective filing date with a reasonable expectation of success so as to increase the performance characteristics with the composite Jacobs teaches.
In regards to claim 44, Hayward discloses further comprising a core (418), a lower matrix structure (424) located beneath the core (418) and forming the lower surface (417), an upper matrix structure (422) located above the core (418) and forming the upper surface (416) and a peripheral matrix structure (440) around the core (418) and between the upper and lower matrix structures (424, 422), wherein: the lower, upper and peripheral matrix structures comprise a plurality of layers of plastic or plastic-composite material fused together as a monolithic plastic or plastic composite matrix structure and the core (418) is encapsulated within the monolithic structure(see fig. 22) (see para. 0135 "multilayer structure comprising at least three layers, see also para. 0145-148, upper and lower covers include a second layer of the laminate resin which can be cured and hardened to fix everything together, the laminate resin is a layer of plastic or plastic composite material fused together see again para. 0135-136); and the lower, upper and peripheral matrix structures comprise the PP composite (as taught in combination with Jacobs).
In regards to claim 45, Hayward discloses wherein there is variable rigidity along a longitudinal direction of the board between the first end and the second end (430, 432 respectively), wherein said variable rigidity is achieved through variation of the reinforcing layers or structure (see para. 201).
Claims 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over Hayward (TW200932625), as applied above and further in view of Cheung (US 7303454).
In regards to claim 31, Hayward teaches the core is formed by fusing many discrete thermoplastic beads together in a mold under heat/steam but it fails to explicitly disclose forming the core from a plurality of core layers. Cheung teaches a comparable sports board to Hayward's wherein the core is formed from two or more layers laminated together to form the core. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date to have modified Hayward in view of Cheung wherein the core is formed from a plurality of layers for the board to be formed with the desired density and thickness, substituting one known equivalent for another would have been obvious with a reasonable expectation of success.
In regards to claim 32, Hayward and Cheung in combination teach forming the core by at least one of: cutting the plurality of core layers to shape, such as from sheets of material; stacking the plurality of layers together; and fusing the plurality of core layers to form a single core body upon cooling. optionally by heating and pressing, optionally by heating to a temperature in the range of between 180°C and 240°C. This method is taught by Hayward, para. 055, 087, and 0146, cutting ,stacking, fusing. Cheung teaches the layers are laminated together, the process of lamination is understood as boding them together under high temperature and pressure and then cooled to form a multilayer single body core, see Cheung Col. 5 lines 27-30. It would have been obvious to a person of ordinary skill in the art before the effective filing date to apply Cheung's lamination process for the forming of the multilayer core as combined in Hayward, in order for the cores density and structural integrity be maintained.
In regards to claim 33, Hayward and Cheung discloses wherein in that each of the core layers has a thickness between 0.05 mm and 3 mm inclusive and wherein the core layers are stacked together prior to fusing (see Cheung col. 5 lines 23-25, .25 in thickness with at least 2 layers each layer being about 3 mm).
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Hayward (TW200932625), as applied above and further in view of Boyle (US 20090108554) and Olson (US 5921564).
In regards to claim 34, Hayward discloses, wherein at least one core layer comprises carbon fiber reinforced plastic and/or high strength composite material (see para. 139-144 and 145); Hayward fails to explicitly disclose the core comprises an essentially ring-shaped body having a hollow central region; and/or top and/or bottom core surfaces of the core are rough, are undulated, comprise a plurality of slots or cuts in the core and/or comprise a non-uniform cross-sectional area.
Boyle teaches a skateboard 20 comparable to Hayward with an improvement technique wherein the core (middle layers 55C-55E) comprises an essentially ring-shaped body having a hollow central region (core plates are provided with cutouts 60C - 60E forming essentially a ring shaped body around the ring). It would have been obvious to a person of ordinary skill in the art before the effective filing date to have modified Hayward in view of Boyle wherein the core is ring shaped to accommodate a reinforcement for increased strength performances of the board as Boyle teaches.
Olson teaches a comparable sport board (2) to that of Hayward wherein the top and/or bottom core surfaces of the core are rough, are undulated, comprise a plurality of slots or cuts in the core and/or comprise a non-uniform cross-sectional area (see fig. 2 and 3, slots 12 on the lower surface of the board core 10). It would have been obvious to a person of ordinary skill in the art to have modified the core of Hayward, before the effective filing date with a reasonable expectation of success, in view of Olson’s teachings, including the rough, undulated, slots or cuts in the core with a nonuniform cross sectional area in order to increase the strength of the board (Olson col.2 lines 32-38). Examiner notes it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331. Additionally, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Hayward (TW200932625), as applied above and further in view of Boyle (US 20090108554).
In regards to claim 35, Hayward teaches the core comprises a matric of plastic material (see para. 139-144) but fails to explicitly disclose wherein the core comprises several discrete reinforcing strips within a matrix of plastic material. Boyle teaches, see fig.1-2, the core of a board (middle layers 55C-E) provided with slots (60) for reinforcing strips (52). It would have been obvious to a person of ordinary skill in the art to have modified Hayward to form the core with the improvement technique of reinforcing strips as Boyle teaches, before the effective filing date with a reasonable expectation of success, so as to increase rigidity, and torsional stiffness (see para. 0045).
Claims 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Hayward (TW200932625), as applied above and further in view of Mets (US 20150302504) and Bieganski (US 6321221).
In regards to claim 36, Hayward discloses manufacturing a board having performance characteristics that are selectable/tunable by selecting construction variables (core configuration/density, and cover/layer thickness/composition) to achieve desired flexural response and stiffness characteristics. However, Hayward fails to disclose the method comprising providing a user interface for receipt of inputs including a user weight, selections of the customizable performance parameters and a priority order of the selected customizable performance parameters; and determining the customizable performance parameters for the board based upon receipt of user inputs via the user interface.
Mets teaches a method and system for selecting a surfboard wherein a board is selected based on user input (weight and height) through a web application system (see abstract) wherein the system selects a "suitable board tailored to [the user's] needs and preferences" (para. 0052) and it determines the surfboard size information, length width, thickness and volume from the received user information (i.e., selecting performance related board characteristics based on user inputs, see para. 0007-0011).
In addition, regarding the priority order, Bieganski teaches prompting the user with questions corresponding to product attributes and allowing the user to weight the importance of each attribute, storing that information, and then ordering the attributes according to the preference weights, and ranking the products accordingly. Thereby producing recommendations in priority ordered form (see claim 16, priority ordering/ranking recommendations) based off of user's weighted input. Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date, to modify Hayward method of manufacturing a tunable performance board by incorporating the user input interface and input driven selection features of Mets and Bieganski with a reasonable expectation of success, in order to permit each user to provide their characteristics and desired performance, thereby achieving predictable results of improved user fit and selection consistency without changing the manufacturing operations of Hayward.
In regards to claim 37, Hayward teaches a selecting board construction variables (selecting the core compositions, the number or composition of layers for upper and lower structure and the peripheral structure, and the interface) to tune board performance characteristics but fails to teach that such selection is performed by a computer system comprising at least one processor implementing an algorithm, wherein, based upon on the user inputs, the algorithm makes a selection of the most appropriate board for that user amongst a finite number of standardized boards. Mets teaches a computer system (100) executing an algorithm that receives user inputs (weight/height) and based upon those inputs determines and recommends/selects one or more suitable boards from a finite set of board represented by the system (see para. 007-0011, and 0013-0018). It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify Hayward's selection system for turning a board's construction variables by implementing a computer system as taught by Mets based upon the users inputs to make a selection of a board for that user amongst what is available by Hayward that best satisfy the inputs, thereby achieving predictable improvements in selection accuracy and manufacturability while using known computerized selection techniques to choose among known results effective board construction variables.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Hayward (TW200932625) and further in view of Metrot (US 20080280096).
In regards to claim 39, Hayward discloses a board (410) for use in skateboarding or other extreme sports, wherein the board comprises: upper (416) and lower (417) surfaces extending along a length between first and second ends (430, 432) and across a width perpendicular to the length (see fig. 19,22), the board having a thickness between the upper and lower surfaces (see fig. 21); and a core (418), a lower matrix structure (424) located beneath the core and forming the lower surface, an upper matrix structure (422) located above the core (418) and forming the upper surface and a peripheral matrix structure (440) around the core (418) and between the upper and lower matrix structures (424, 422), wherein: the lower, upper and peripheral matrix structures comprise a plurality of layers of plastic or plastic-composite material fused together as a monolithic plastic or plastic composite matrix structure and the core (418) is encapsulated within the monolithic structure(see fig. 22) (see para. 0135 "multilayer structure comprising at least three layers, see also para. 0145-148, upper and lower covers include a second layer of the laminate resin which can be cured and hardened to fix everything together, the laminate resin is a layer of plastic or plastic composite material fused together see again para. 0135-136); the properties of the board are defined by a combination of attributes of the core, of the upper matrix structure, lower matrix structure, and peripheral matrix structure (see para. 128-149).
Hayward fails to teach the board wherein the upper, lower and/or peripheral matrix structure comprise pockets of lightweight material, said lightweight material having a density less than 400 Kg/m3 . Metrot teaches, a board similar to hayward (board 10) where a sandwich structure (upper, lower, peripheral and core structure) are arranged having localized lightweight layers (see para. 0013, sandwich structure is reinforced at least locally by at least one compressed foam layer, examiner understands this to mean it is not continuous and is more of a pocket/insert of lightweight material). Solomon teaches one example of a lightweight material see para. 0004 with density lower than 400 Kg/m3. Examiner notes it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331. Therefore, although this is explicitly used in the core, one of ordinary skill in the art could use the same material for the lightweight layers as well. Therefore, it would have been obvious to a person of ordinary skill in the art to have modified Hayward, before the effective filing date with a reasonable expectation of success in view of Solomon for increased reinforcement with a lightweight density as the improvement technique of boards Solomon suggests.
Claims 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Hayward (TW200932625) and Metrot (US 20080280096) and further in view of Boyle (US 20090108554).
In regards to claim 40, Hayward and Solomon fail to teach wherein said core comprises several discrete reinforcing strips within a matrix of plastic material. However, Boyle teaches see fig.1-2, the core of a board (middle layers 55C-E) provided with slots (60) for reinforcing strips (52). It would have been obvious to a person of ordinary skill in the art to have modified Hayward to form the core with the improvement technique of reinforcing strips as Boyle teaches, before the effective filing date with a reasonable expectation of success, so as to increase rigidity, and torsional stiffness (see para. 0045).
In regards to claim 41, Hayward discloses variable rigidity along the longitudinal direction using core density variation and layer thickness (see para. 201). Because Hayward already motivates tuning for performance, varying reinforcement layout/thickness along the length is well known as Boyle teaches to achieve the desired stiffness distribution. Therefore, in combination it would have been obvious to further modify Hayward with Boyle's improvement technique of reinforcement layers wherein there is variable rigidity along a longitudinal direction of the board between the first end and the second end, wherein said variable rigidity is achieved through variation of the reinforcing layers or structure.
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Hayward (TW200932625) and Jacobs (EP 1787790), as applied above, and further in view of Metrot (US 20080280096).
In regards to claim 43, Hayward as modified fails to teach wherein within the at least one of the plurality of layers comprises pockets of lightweight material, said lightweight material comprising balsa wood. Metrot teaches, a board similar to Hayward (board 10) where a sandwich structure (upper, lower, peripheral and core structure) are arranged having localized lightweight layers, said lightweight material comprising balsa wood (see para. 0013, sandwich structure is reinforced at least locally by at least one compressed foam layer, examiner understands this to mean it is not continuous and is more of a pocket/insert of lightweight material, see par. 0005). Although Hayward and Jacobs don't explicate teach the PP composite extends throughout at least 75% of the volume of the board, it is understood that the layers and structure excluding the core make up approximately more than 75% of the board's volume (see Hayward fig. 22). Examiner notes, absent any evidence of criticality, It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to modify Hayward with a reasonable expectation of success for the pp composite to extend throughout at least 75% of the boards volume, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for a list of relevant prior art that teaches boards for use in sports and methods of manufacturing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN ANNE MILLER whose telephone number is (571)272-4356. The examiner can normally be reached M-F 8:00am-5:00pm (est).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason Shanske can be reached at (571) 270-5985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.A.M./Examiner, Art Unit 3614
/JASON D SHANSKE/Supervisory Patent Examiner, Art Unit 3614