DETAILED ACTION
This is the First Office Action on the Merits based on the 18/735,340 application filed on 06/06/2024 and which claims as originally filed have been considered in the ensuing 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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/06/2024 and 12/11/2025 were filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election of Species A (Fig. 1-7), directed to a rollable exercise mat in the reply filed on 12/11/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The Applicant states that claims 6-7, 9, 13, and 18-20 are withdrawn as being directed towards a non-elected embodiment. However, claim 8 is dependent upon claim 7 and is also, therefore, withdrawn. Claims 1-5, 10-12, 14-17 are directed to the elected embodiment.
Drawings
The drawings are objected to because:
In Fig. 3, reference numeral “134” designated “first side” points to both the left and right side of the exercise mat
In Fig. 6, reference numeral “106” designated “weights” points to two different components
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The limitation of “spring biasing mechanism” in claim 15 has not been interpreted under 35 USC 112(f) as the means (mechanism) plus function (biasing) has been specified with the structure of a spring.
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 10-11 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.
Regarding claim 10, the limitation “one or more handles” on lines 1-2 lacks clarity, as “one or more handles” have already been claimed in claim 1. Therefore it is unclear if the handles of claim 10 are the same or different than the handles of claim 1.
Regarding claim 11, the limitation “handles” on line 2 lacks clarity, as “one or more handles” have already been claimed in claim 1. Therefore it is unclear if the handles of claim 11 are the same or different than the handles of claim 1.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 10-12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kokakis (US 11,000,447).
Regarding claim 1:
Kokakis discloses a weight storage portion (the inside of the fitness roller, see annotated Fig. below; the inside of the roller has been considered a weight storage portion as it is configured to accept handle 4 which in turn accepts weight 3) including one or more weights (weight 3); and an outer shell (the outer portion of the fitness roller, see annotated Fig. below) including one or more handles (handles 4; which are shown as removable, see Fig. 3 specifically).
[AltContent: textbox (opening)][AltContent: arrow][AltContent: textbox (Weight storage portion)][AltContent: textbox (Outer shell)][AltContent: arrow][AltContent: arrow]
PNG
media_image1.png
746
260
media_image1.png
Greyscale
Regarding claim 2:
Kokakis discloses that the outer shell comprises a removable cover (lacking any other structural or functional limitations cap 6 has been considered a removable cover as it is removable from the fitness roller allowing for weights and other materials to be placed within the fitness roller).
Regarding claim 3:
Kokakis discloses that the removable cover is removable to expose an opening (see annotated Fig. above) in the outer shell, the weight storage portion being accessible through the opening in the outer shell (see Fig. 5, specifically).
Regarding claim 10:
Kokakis discloses that the outer shell comprises one or more handles (please see the 35 USC 112(b) rejection above, for the purposes of examination, the one or more handles have been considered to the be same as those claimed in claim 1).
Regarding claim 11:
Kokakis discloses that the outer shell comprises one or more openings (see annotated Fig. above) through which handles (see 35 USC 112(b) rejection above, for purposes of examination the one or more handles of claim 1 have been interpreted as the same as those of claim 11) arranged on the weight storage portion are accessible (the handles of Kokakis are removable from the weight storage portion through openings in the outer shell, when the handles are in the stored position, they are arranged on the weight storage portion).
Regarding claim 12:
Kokakis discloses a mat rolling portion (Fig. 4 shows that the fitness roller has a zipper to connect to a mat, which allows the mat to be connected to the fitness roller and rolled into a compact configuration, the zipper and outer surface of the outer shell have been interpreted as the mat rolling portion. The Examiner notes that the mat rolling portion of Applicant’s device is also the outer shell of the device) including an exercise mat (mat 11).
Regarding claim 14:
Kokakis discloses that the weight storage portion is arranged next to the mat rolling portion (see Fig. 3-5).
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 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kokakis (US 11,000,447) in view of Thornton (US 8,769,742). Kokakis discloses the device as substantially claimed above.
Regarding claim 15-17:
Kokakis fails to disclose that the mat rolling portion is spring loaded by a spring biasing mechanism (claim 15), wherein the spring biasing mechanism is charged when the exercise mat is moved from a rolled to an unrolled configuration (claim 16), and wherein the spring biasing mechanism is moved from an unrolled to a rolled configuration when the spring biasing mechanism is discharged (claim 17).
Thornton discloses an exercise mat with a roll mechanism that comprises a bistable spring band or strip (108) that is connected to the long edge of an exercise mat, that spring loads the mat from a charged unrolled state to an uncharged rolled state (see abstract).
PNG
media_image2.png
718
353
media_image2.png
Greyscale
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the mat of Kokakis to have the spring biasing member of Thornton to allow for easy roll up of the mat.
Claims 1-3, 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kokakis (US 11,000,447) in view of Carrasca et al (US 9,028,383).
Regarding claim 1:
In an alternative interpretation of Kokakis, Kokakis discloses a weight storage portion (handle 4 is configured to accept weights 3 and have been considered a weight storage portion) including one or more weights (weight 3); and an outer shell (the outer portion of the fitness roller, see annotated Fig. below).including one or more handles
[AltContent: arrow][AltContent: textbox (Weight storage portion)][AltContent: textbox (opening)][AltContent: arrow][AltContent: textbox (Outer shell)][AltContent: arrow]
PNG
media_image1.png
746
260
media_image1.png
Greyscale
In an the alternative interpretation of Kokakis, Kokakis fails to disclose that the outer shell including one or more handles.
Carrasca et al discloses an exercise mat that is configured to roll on a cylindrical container, equivalent to Kokakis. Carrasca et al further discloses that the end caps of the cylindrical container are configured to attach to a strap (30) to create a handle for carrying the device when the mat is in the rolled position.
PNG
media_image3.png
661
435
media_image3.png
Greyscale
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the end caps of Kokakis to have an attachment for a strap, as taught by Carrasca et al to allow for the device to be easily transportable.
Regarding claim 2:
In an alternative interpretation of Kokakis, Kokakis as modified discloses that the outer shell comprises a removable cover (lacking any other structural or functional limitations cap 6 has been considered a removable cover as it is removable from the fitness roller allowing for weights and other materials to be placed within the fitness roller).
Regarding claim 3:
In an alternative interpretation of Kokakis, Kokakis as modified discloses that the removable cover is removable to expose an opening (see annotated Fig. above) in the outer shell, the weight storage portion being accessible through the opening in the outer shell (see Fig. 5, specifically).
Regarding claim 12:
In an alternative interpretation of Kokakis, Kokakis as modified discloses a mat rolling portion (Fig. 4 shows that the fitness roller has a zipper to connect to a mat, which allows the mat to be connected to the fitness roller and rolled into a compact configuration, the zipper and outer surface of the outer shell have been interpreted as the mat rolling portion. The Examiner notes that the mat rolling portion of Applicant’s device is also the outer shell of the device) including an exercise mat (mat 11).
Regarding claim 14:
In an alternative interpretation of Kokakis, Kokakis as modified discloses that the weight storage portion is arranged next to the mat rolling portion (see Fig. 3-5).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kokakis (US 11,000,447) and Carrasca et al (US 9,028,383) in view of Peyton (US 10,343,009).
In an alternative interpretation of Kokakis, Kokakis as modified discloses the device as substantially claimed above.
Regarding claim 4:
In an alternative interpretation of Kokakis, Kokakis as modified discloses that the weight storage portion includes a core (the weight storage portion is a core of the fitness roller).
In an alternative interpretation of Kokakis, Kokakis as modified fails to disclose that the core is a foam material.
Peyton discloses a weighted bag having a handle with a foam outer layer (40).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the handles/weight storage portion of Kokakis to have a foam material layer, as taught by Peyton, for the comfort of the user. It is well known for handles to have a foam layer.
Regarding claim 5:
In an alternative interpretation of Kokakis, Kokakis as modified discloses that the core comprises a cylinder (see Fig. 3-5).
Conclusion
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