DETAILED ACTION
Election/Restrictions
1. Applicant’s election without traverse of Invention I (claims 1-10) in the reply filed on 6/9/26 is acknowledged.
Claim Rejections - 35 USC § 112
2. 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 1-10 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 recites the limitation "the two upright members". There is insufficient antecedent basis for this limitation in the claim.
With respect to claim 6, the recitation to “horizontal sleeves” creates an indefinite scope because it is unclear if it is referencing the horizontal sleeves previously recited in claim 1. It is recommended to amend to “the horizontal sleeves”. For examining purposes, the scope will be construed commensurate with the suggested amendment as this appears to comport with the intended scope in view of the specification as a whole.
With respect to claim 7, the recitation to “vertical sleeves” creates an indefinite scope because it is unclear if it is referencing the vertical sleeves previously recited in claim 1. It is recommended to amend to “the vertical sleeves”. For examining purposes, the scope will be construed commensurate with the suggested amendment as this appears to comport with the intended scope in view of the specification as a whole.
Claim Rejections - 35 USC § 103
3. 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
4. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over BP Strike Zone (NPL YouTube video uploaded 10/15/22 by “Big Boy Gloves” at https://www.youtube.com/watch?v=TrwzR0Du_S0) in view of Daskoski (US Pat. No. 5,803,841).
With respect to claims 1-5, BP Strike Zone teaches a throwing target comprising: a. a base; b. two shock absorbing springs vertically oriented to connect the two upright members (Fig.’s 1-3); c. two cross members Id.; further comprising a set of removable wheels attached to the base (Fig. 1; “attachable wheels for easy transport”); wherein the base has an H-shape comprising a stable foundation for the target and facilitates easy transportation and positioning (Fig.’s 1-3); wherein the removable wheels enable the target to be moved and positioned on various playing surfaces; wherein the shock absorbing springs provide cushioning and reduce strain on the target when hit by high-velocity pitches;
BP Strike Zone utilizes a “Flap” that is positioned within a rectangular frame between the cross-bars and upright members as opposed to a net as claimed. However, analogous art reference Daskoski teaches the following to be known in the art: d. a net 56 comprising two vertical sleeves passed over two upright members and two horizontal sleeves through which the cross members are inserted, forming a rectangular frame for holding the net in place (Fig. 3; column 6, lines 18-23). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to replace the flap of BP Strike Zone with a net, as taught by Daskoski. The rationale to combine is to utilize a known target to receive and contain thrown balls. Moreover, a net is known to be lightweight and inexpensive, improving the portability and cost of the throwing target.
Regarding the limitation that the cross members are removable, BP Strike Zone teaches “New Removable cross bar” in the Description. Thus, the limitation not expressly taught is that both cross bars are removable. However, per In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349(CCPA 1961), the Federal Courts have held that removability, where needed, is not a patentable advance where there is art-recognized need to do so. MPEP 2144.04. Here, there is an art-recognized need for improved assembly and stowage. Supplemental to this, BP Strike Zone expressly teaches that it is known to provide a cross-bar that is removable. Moreover, Daskoski also teaches wherein the cross bars are removable via wingnuts 59 (Fig. 3; column 5, lines 54-60). As such, a person ordinary skill in the art would have found it obvious to make both cross bars removable. The rationale to combine is to allow improved stowage, portability. It also permits the sleeves of the net to be easily connected to the target.
Should applicant argue that the “attachable” wheels of BP Strike Zone are not removable, examiner again cites to MPEP 2144.04 - In re Dulberg. A person ordinary skill in the art would have found it obvious to make the wheels removable as this will expectantly allow the target to sit level and stable on the ground.
Lastly, per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural
limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the structure provided by the BP Strike Zone as modified above is capable of being used as claimed.
With respect to claims 6-8, BP Strike Zone in view of Daskoski teaches wherein the removable cross members are inserted through horizontal sleeves in the net, securing the net in place and forming a defined target area, wherein the net comprises vertical sleeves that pass over the upright members, ensuring proper alignment and stability during use, wherein the removable cross members are attached to the two upright members after being passed through the horizontal sleeves, forming a stable rectangular frame for holding the net. See BP Strike Zone at Fig.’s 1-3 and Daskoski at Fig. 3, column 6, lines 18-23. The rationale to combine is the same as stated above. Examiner considers the assembly of the net to be intended use of functional language. See MPEP 2114 - In re Schreiber. See also MPEP 2113, “PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS” - "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to claims 9-10, BP Strike Zone in view of Daskoski as modified above teaches wherein the net can be adjusted and tensioned within the target frame to suit the needs and preferences of the pitcher, wherein the removable cross members and the net's sleeve-based attachment system allow for easy assembly and disassembly of the target See BP Strike Zone at Fig.’s 1-3 and Daskoski at Fig. 3, column 6, lines 18-23. The rationale to combine is the same as stated above. MPEP 2114 - In re Schreiber. For example, tensioners can easily be applied to the net.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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