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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “backboard inclination angle relative to the base at angle greater than ninety degrees” (e.g., claim 6) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. 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.
The drawings are objected to because Fig. 5 indicia “100” need to be “110” related to the base. 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 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 1-4 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.
With respect to claim 1, further clarification is require what is applicant consider “and wherein a distal end of a first support member of the one or more support members disposed on a first side of the base is coupled to a distal end of a second support member of the one or more support members disposed on the first side of the base”. Claim 1, is related to the embodiment of Fig. 5, and while support 530b (i.e., related to the claimed “a first support member”) is coupled to support 530a (i.e., “at a distal end”) and position at the first side of the base, support 530a (i.e., “a second support member”) can’t be also disposed on the first side of the base, as claimed.
With respect to claims 2-4, further clarification is require as to already claimed “a backboard” and “support members”, within independent claim 1 (line 10 regarding “a backboard” and line 9 regarding “support members”).
With respect to claim 3, further clarification is require regarding “wherein distal ends of the one or more support members extend toward a common location and are coupled to a rim positioned above the first surface of the base.”. Claim 3 dependent from claim 1, whereas claim 1 is not “a generic claim” and related to the specific embodiment of Fig. 5, whereas such limitations of claim 3 are related to a different and distinct embodiment of Fig. 7.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,427,386 (“ ‘386”) in view of Manner et al US 8,764,017 (“Manner”) and Caselli et al US 5,300,920 (“Caselli”).
Claim 1 of ‘386, recites all the limitations of above claim 1, namely “An apparatus, comprising: a base including a first end, a second end positioned opposite of the first end, a first surface, and a second surface positioned opposite of the first surface, a receptacle formed in the first surface of the base and positioned between the first end of the base and the second end of the base; one or more support members extending from the base; a backboard coupled to the one or more support members; and a rim coupled to the backboard, the backboard including an insert horizontally centered above the receptacle” except “wherein the first end includes a first thickness between the first surface and the second surface, the second end includes a second thickness between the first surface and the second surface, and the second thickness is greater than the first thickness; wherein the one or more support members are positioned between the receptacle and the first end of the base and between the receptacle and the second end of the base, and wherein a distal end of a first support member of the one or more support members disposed on a first side of the base is coupled to a distal end of a second support member of the one or more support members disposed on the first side of the base.”.
With respect to “wherein the first end includes a first thickness between the first surface and the second surface, the second end includes a second thickness between the first surface and the second surface, and the second thickness is greater than the first thickness” in a similar field of devices, Manner discloses a base (lid 26) wherein a first end includes a first thickness between a first surface and a second surface, a second end includes a second thickness between the first surface and the second surface, and the second thickness is greater than the first thickness (Figs. 6, 7A, 16, 22 and 29 (at least 3:60-4:14). Therefore, 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 to form ‘386’s base wherein the first end includes a first thickness between the first surface and the second surface, the second end includes a second thickness between the first surface and the second surface, and the second thickness is greater than the first thickness for the reason that a skilled artisan would have been motivated by Manner’s suggestions to form such base configuration in a traditional manner suitable to be used as a recreational amusement device to enable toss game thereto (e.g., 3:60-4:49).
With respect to, wherein a distal end of a first support member of the one or more support members disposed on a first side of the base is coupled to a distal end of a second support member of the one or more support members disposed on the first side of the base, in a similar field of devices, Caselli discloses wherein a distal end of a first support member of one or more support members disposed on a first side of base is coupled to a distal end of a second support member of the one or more support members disposed on a first side of the base (support members 37 and 38 disposed at a first end 62 of a base and coupled to support frame 40 (disposed at second end 63 of the base) at junction 100)(Figs. 1 and 2; 3:24-55 and 4:40-47). Therefore, 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 to form ‘386 wherein a distal end of a first support member of the one or more support members disposed on a first side of the base is coupled to a distal end of a second support member of the one or more support members disposed on the first side of the base for the reason that a skilled artisan would have been motivated in utilizing known mechanical support arrangement that firmly connect the backboard with the base while the apparatus in a ready use configuration.
With respect to “wherein the one or more support members are positioned between the receptacle and the first end of the base and between the receptacle and the second end of the base”, within the modified ‘386 by the teachings of Caselli the supports (as taught by Caselli) would have been position upon the base in such position in relation to the receptacle.
Claims 5 and 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,427,386 (“’ 386”) in view Pierre US 5,320,360 (“Pierre”).
Claim 11 of ‘ 386 recite all the limitations of above claims 5 and 6, namely “An apparatus, comprising: a base including a first end, a second end positioned opposite of the first end, a first surface, and a second surface positioned opposite of the first surface; a receptacle extending through the base between the first surface of the base and the second surface of the base; one or more vertical members extending from the base; a backboard coupled to and spaced over the base by the one or more vertical members; wherein the backboard includes a face oriented toward the receptacle, wherein the face of the backboard extends in a plane which extends relative to the first surface of the base at an angle greater than ninety degrees”, except “and one or more legs coupled to the base, the one or more legs configured to elevate the second end of the base relative to the first end of the base to provide the first surface of the base at an inclination when the base is positioned on an underlying surface”.
However, in similar field of devices, Pierre discloses and one or more legs coupled to a base, the one or more legs configured to elevate a second end of the base relative to a first end of the base to provide a first surface of the base at an inclination when the base is positioned on an underlying surface (base 10 is including legs 13 and 14 placing the apparatus at such incline manner)(Fig. 1 in conjunction to Fig. 2 and at least 2:5-21). Therefore, 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 to form ‘386’ and one or more legs coupled to the base, the one or more legs configured to elevate the second end of the base relative to the first end of the base to provide the first surface of the base at an inclination when the base is positioned on an underlying surface for the reason that a skilled artisan would have been motivated in utilizing known mechanical support arrangement that firmly support the base above playing surface that is suitable to be used as a recreational amusement device to enable toss game thereto.
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) 5 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pierre US 5,320,360 (“Pierre”).
As per claim 5, Pierre discloses an apparatus (target apparatus)(Figs. 1-3; at least 2:5-66), comprising:
a base including a first end, a second end positioned opposite of the first end, a first surface, and a second surface positioned opposite of the first surface (base 10 having front edge 16 and rear edge 17; top surface 19 and base plate 26)(Figs.1 and 2; 2:5-21 and 5:29-48); a receptacle extending through the base between the first surface of the base and the second surface of the base (receptacle 25)(Figs. 1 and 2; 2:29-40);
one or more vertical members extending from the base (support panel 32)(Figs. 1 and 2; 2:49+); a backboard coupled to and spaced over the base by the one or more vertical members (panel 30 coupled with support panel 32)(Figs. 1 and 2; 2:49+);
and one or more legs coupled to the base (legs 13 and 14)(Figs. 1 and 2), the one or more legs configured to elevate the second end of the base relative to the first end of the base to provide the first surface of the base at an inclination when the base is positioned on an underlying surface (Figs. 1 and 2; 2:5-13).
As per claim 6, Pierre discloses wherein the backboard includes a face oriented toward the receptacle (panel 30 includes a face oriented toward receptacle 25)(Figs. 1 and 2), wherein the face of the backboard extends in a plane which extends relative to the first surface of the base at an angle greater than ninety degrees (Fig. 2 as marked hereinafter).
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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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manner et al US 8,764,017 (“Manner”) in view of Caselli et al US 5,300,920 (“Caselli”).
As per claim 1, Manner discloses an apparatus (at least in Figs. 1-22; and 3:42-7:35), comprising:
a base (lid 26) including a first end, a second end positioned opposite of the first end (Figs. 6-7A), a first surface (top 27), and a second surface positioned opposite of the first (surface 57)(Figs. 6-7A; 3:60-4:13), wherein the first end includes a first thickness between the first surface and the second surface (Figs. 6 and 7A), the second end includes a second thickness between the first surface and the second surface (figs. 6 and 7A), and the second thickness is greater than the first thickness (Figs. 6 and 7a);
a receptacle formed in the first surface of the base and positioned between the first end of the base and the second end of the base (one or more cavities 29)(Figs. 6-7a, 12 and 22; 4:28-49)
one or more support members extending from the base (construed as mounting pegs 51 to be placed within mounting holes 50; the examiner construed the pegs 51 within holes 50 as “extending from base 26”)(Figs. 12 and 13; 5:25-44);
a backboard coupled to the one or more support members (backboard 47 coupled with pegs 51)(Figs. 12 and 13; 5:25-44), and a rim coupled to the backboard (ring 48)(Fig. 13), the backboard including an insert horizontally centered above the receptacle,(Fig. 13 as marked hereinafter);
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wherein the one or more support members are positioned between the receptacle and the first end of the base (pegs 51 positioned between receptacle 29 and the first end of base 26)(Fig. 12).
Manner is not specific regarding and between the receptacle and the second end of the base, and wherein a distal end of a first support member of the one or more support members disposed on a first side of the base is coupled to a distal end of a second support member of the one or more support members disposed on the first side of the base.
However, in a similar field of apparatuses, Caselli discloses wherein a distal end of a first support member of one or more support members disposed on a first side of base is coupled to a distal end of a second support member of the one or more support members disposed on a first side of the base (support members 37 and 38 disposed at a first end 62 of a base, and is coupled to a support frame 40 (disposed at a second end 63 of the base) at junction 100)(Figs. 1 and 2; 3:24-55 and 4:40-47). Therefore, 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 to form Manner wherein a distal end of a first support member of the one or more support members disposed on a first side of the base is coupled to a distal end of a second support member of the one or more support members disposed on the first side of the base for the reason that a skilled artisan would have been motivated in utilizing known mechanical support arrangement that firmly connects the backboard with the base while the apparatus is in a ready use configuration.
With respect to “wherein the one or more support members are positioned between the receptacle and the first end of the base and between the receptacle and the second end of the base”, within the modified Manner by the teachings of Caselli the supports (as taught by Caselli) would have been position upon the base in such position in relation to the receptacle.
In addition, with respect to the position of the support members, it is noted that it has been held that claims which read on the prior art except with regard to the position of the elements were held unpatentable because shifting the position of the elements would not have modified the operation of the device; see In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950);In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). In this case, the position of the support members, relative to the receptacle as claimed, would have been merely a matter of obvious engineering choice that would have not changed the nature of the support members to support the backboard above a playing surface to allow throwing, shooting projectiles (e.g., basketballs) toward the backboard-to-rim.
As per claim 2. With respect to, further comprising a backboard coupled to the one or more support members and a rim coupled to the backboard, the backboard including an insert horizontally centered above the receptacle, note Manner’s Figs. 12 and 13; 5:25-44 regarding backboard 47 coupled with pegs 51, and ring 48); note Fig. 13 as marked above with respect to the insert; with respect to wherein the one or more support members extend along and are coupled to the base from the first end of the base to the second end of the base, note Caselli as support members 37 and 38 disposed at a first end 62 of a base and coupled to a support frame 40 (disposed at second end 63 of the base) in Figs. 1 and 2. Therefore, 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 to form Manner’s wherein the one or more support members extend along and are coupled to the base from the first end of the base to the second end of the base for similar reasons discussed above with respect to claim 1.
As per claim 4, with respect to further comprising a backboard coupled to the one or more support members and a rim coupled to the backboard, the backboard including an insert horizontally centered above the receptacle, note Manner’s Figs. 12 and 13; 5:25-44 regarding backboard 47 coupled with pegs 51, and ring 48); note Fig. 13 as marked above with respect to the insert.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manner and Caselli as applied to claima1 above, and further in view of Edward US 5,524, 881 (“Edward”).
As per claim 3, with respect to wherein the one or more support members are positioned between the receptacle and the first end of the base, within Manner pegs 51 are positioned between receptacle 29 and the first end of base 26(Fig. 12);
With respect to and between the receptacle and the second end of the base, within the modified Manner by the teachings of Caselli the supports (as taught by Caselli) would have been position upon the base in such position in relation to the receptacle. Also, note the examiner’s discussion above with respect to claim 1, as such position of the support members would have been an obvious engineering choice that would have not changed the nature of the support members to support the backboard above a plying surface.
Manner - Caselli is not specific regarding wherein distal ends of the one or more support members extend toward a common location and are coupled to a rim positioned above the first surface of the base.
However, in a similar field of apparatuses, Edward discloses wherein distal ends of one or more support members extend toward a common location and are coupled to a rim positioned above a first surface of a base (rim 14 connected to leg members 24 above base frame members 22)(Figs. 1 and 2; 3:29-54). Therefore, 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 to form Manner - Caselli’s wherein distal ends of the one or more support members extend toward a common location and are coupled to a rim positioned above the first surface of the base for the reason that a skilled artisan would have been motivated in utilizing known mechanical arrangement including support members to firmly support a rim above a playing surface to receive thrown, shoot, projectiles (e.g., basketballs) towards the rim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 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, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.K/Examiner, Art Unit 3711 6/5/2026
/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711
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