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 .
Procedural Summary
This is responsive to the claims filed 7/2/2024.
Claims 1 & 2 are pending.
The Drawings filed 7/2/2024 are noted.
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.
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.1
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Claims 1 & 2 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.
Claims 1 & 2 do not recite single sentence claims nor do they describe what the invention is or how it works. To the extent “claims” are presented, each claim includes multiple statements in multiple sentences and fails to describe what Applicant intends the claims to cover. They are merely narrative with a general field of use. To the extent the claims can be examined, weight has only been given to the first sentence in each claim.
Additionally, certain claim language is provided within parentheses. It is unclear if Applicant is attempting to modify the language preceding the parentheses, or clarify the language, or in general, what Applicant is attempting to use parentheses for. Regardless, since Examiner is only giving patentable weight to the first sentence in each claim, these limitations are not considered.
It is also unclear what statutory categories are being claimed. For examination purposes, Examiner construes the claims as drawn to processes since Claim 2 recites a “method”.
Applicant’s claim drafting has limited this examination: For example, strictly, Claim 1 fails to recite a claim and is only a general narrative. Claim 2 similarly only states that the invention is “unique” and lists what other inventions lack. This is not how a claim is to be drafted. 2 The claims have been examined as requiring a customizable grid representation of ball placement sent to players (including pitchers) wearing a device that displays the grid/ball placement.
Applicant is encouraged to review patented applications in the baseball arts for examples of proper claim and Specification drafting.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 does not depend from Claim 1 nor does it further limit Claim 1. And, as explained above, Claim 2 does not in fact recite a claim hence it cannot further limit Claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 & 2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to process categories.3
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claims 1 & 2 are analyzed below, with italicized limitations indicating recitations of an abstract idea:
Claim 1: “1. Using a graphical, customizable grid representation of ball placement sent to pitchers and other players on baseball or softball field wearing a device to display the grid and ball placement. The scope of this invention is for use in the sports of baseball and softball at any level (beginner to professional).”
Claim 2: “The delivery method chosen for this invention is unique within the scope of the invention (i.e. used for the sports of baseball and softball). Currently no other pitch calling solution uses: - Mobile app to send and track pitches to players in the field - A custom-built device to display the desired grid, pitch location and desired pitch from the mobile app.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG4:
“Mental Processes”: concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
Here, for example, the claims can be performed by a human holding a sign (a device) displaying a grid and ball placement. The sign is viewable by players including pitchers. It is noted that a human being indicating grid and ball placement to others, irrespective of a physical sign, is an ineligible mental process.
The claimed concept can be wholly performed in the human mind and is thereby drawn to an abstract idea.
“Certain Methods Of Organizing Human Activity”: managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Here, for example, indicating grid and ball placement is managing personal behavior or interactions between people, i.e., managing interactions between players on a baseball field.
Additionally, managing baseball pitch style and placement is falls under teaching and following rules/instructions. It is also a social activity.
Prong 2: Does the Claim recite additional elements that integrate the exception into a practical application of the exception?
The claims do not recite additional limitations beyond a device displaying the grid and ball placement.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using pencil and paper (a sign as a display device.)
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to using pencil and paper to implement the invention.
For example, as pointed out above, the claimed invention fails to recite any additional elements. Therefore, there lacks significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, the prior art relied on in the anticipation rejection, infra, shows the conventionality of displays showing baseball pitches and placement.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions provide conventional implementation (pencil and paper) of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they are devoid of any computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing.
Concerning preemption, the Federal Circuit precedent controls5:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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 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 1 & 2 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Rolih (U.S. Pub. No.: 2024/0325853 A1).
Applicant’s claim language is presented below with citations to the prior art6:
Regarding Claim 1: “Using a graphical, customizable grid representation of ball placement sent to pitchers and other players on baseball or softball field wearing a device to display the grid and ball placement. The scope of this invention is for use in the sports of baseball and softball at any level (beginner to professional).” (See Abstract, Fig. 1, 100, and related descriptions).
Regarding Claim 2: “The delivery method chosen for this invention is unique within the scope of the invention (i.e. used for the sports of baseball and softball). Currently no other pitch calling solution uses: - Mobile app to send and track pitches to players in the field - A custom-built device to display the desired grid, pitch location and desired pitch from the mobile app.” (See Abstract, Fig. 1, 100, and related descriptions).
Conclusion
Additional Relevant References: See 892
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached on M-F, generally 9am-5:30 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, David Lewis can be reached on 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 Teeger et al. (U.S. Patent. No.: 10,894,198 B1).
2 Since Applicant appears pro se, Examiner has attempted to give weight to what is presented in the claim set, but ordinarily, such a listing of claims would preclude examination altogether.
3 For reasons more fully set forth below, were Applicant to suggest that the “claims” are drawn to an apparatus instead of a method, the claims would likely still fail § 101 since, for example, the claimed “device” reads on a human holding a sign and renders the claimed invention an ineligible abstract idea.
4 See MPEP 2106
5: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
6 See 112 rejections, supra.