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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “303” has been used to designate both inflatable body and receptacle . 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. 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.
Specification
The use of the term VELCRO, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities: in claim 8, line 1, “wherein should be inserted before “the rebound board”. Appropriate correction is required for the above objection.
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 5, 7, 12-17 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 5, 16 and 17 contain the trademark/trade name VELCRO. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe VELCRO and, accordingly, the identification/description is indefinite.
Claims 5, 7 and 14 are rejected because a “Markush group” has been improperly recited which present uncertainty and/or ambiguity to the claimed structure. Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. These claims are indefinite because it is unclear what other alternatives are intended to be encompassed by the claims. One acceptable form of alternative expression, which is commonly referred to as a Markush group, recites members as being “selected from the group consisting of A, B and C.” See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925). (please see MPEP 2173.05(h).
Claim 12, is vague and indefinite because it is unclear what structure is being claimed. Claim 12 is dependent on claim 1 which recites “an illuminating contact sensor”. The claim should be amended to recite “wherein the illuminating contact sensor is a plurality of illuminating contact sensors”.
Claim 13, is vague and indefinite because is unclear what structure is being claimed. Claim 13 is dependent on claim 7. Claim 7 is presented using improper Markush Group. If claim 13 is selecting the “rebound goal” then the claim should be worded differently (see claim 8). The claim should be amended to recite “wherein the rebound goal” comprising: ...
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.
Claims 1, 2, 4, 6-10, 12-15, 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Homsi (8,506,370).
Claim 1, Homsi discloses a training device comprising:
a rebounding member (any one of structures 102, 110 or 112) having a front side facing a first direction (surfaces 104, 114 or 116 facing front or interior region of the space), wherein the front side of the rebounding member includes at least a portion that is configured as a rebounder that rebounds a ball (as shown in figure 1A a person is kicking a ball towards one of the surfaces which can then rebound back to the person or to the interior of the space);
an illuminating contact sensor (one or more sensors 201; figure 2A; column 7, lines 2-18 and lines 35-67 and column 8, lines 1-33; column 18, lines 9-19 which teaches output device 206 on structure structures 200 may be illuminated to visually identify impact locations i.e. the location of the sensors would be illuminated since the sensors detect the ball impact; Note: output devices, such as output device 206, may be associated with one or more sensors, such as sensors 201A and/or 201B) removably couplable with the rebounding member so that when the illuminating contact sensor is coupled with the rebounding member a visible light from a light emitter of the illuminating contact sensor is visible in substantially the same first direction that the front side of the rebounding member faces and so that a force contact from the ball above a predetermined threshold with the rebounder member is sensed by a sensing module; and
a coupler configured to removably couple the illuminating contact sensor with the rebounding member (column 12, lines 13-36 which teach the sensors are removably positioned within a sporting device i.e. backboard, sports goal etc.), wherein the illuminating contact sensor has the sensing module and the light emitter that emits the visible light (as noted above the output device 206 is associated with the sensors), wherein the force contact above a predetermined threshold is sensed by the sensing module and modulates the visible light emitted from the light emitter (column 3, lines 5-8, and column 18, lines 19-32).
Claim 2, Homsi shows the coupler comprises: a receptacle in the rebounding member or attached to the rebounding member that is adapted to removably receive the illuminating contact sensor, wherein the receptacle includes at least one receptacle member (the one or more sensors 201 may be removable and/or interchangeable, the sensors are fully or partially encased within the structure, the sensors are part of the output device which is capable of illuminating when the target is impacted. Note: being fully or partially encased and/or embedded is interpreted as forming a receptacle or housing for receiving the sensor; column 7, lines 6-7 and column 8, lines 42-45).
Claim 4, Homsi shows the illuminating contact sensor is coupled with the rebounding member so that the force contact above the predetermined threshold with the rebounding member is sensed by the sensing module and so that the visible light from the light emitter is visible in substantially the first direction that the front side faces (column 3, lines 4-8; column 9, lines 35-56 and column 18, lines 9-19).
Claim 6, Homsi shows the receptacle member forms a receptacle cavity to receive the illuminating contact sensor (the one or more sensors 201 may be removable and/or interchangeable, the sensors are fully or partially encased within the structure. Note: being fully or partially encased or embedded is interpreted as forming a receptacle or housing which inherently would include an opening or cavity for receiving the sensor; column 7, lines 6-7 and column 8, lines 42-45).
Claim 7, Homsi shows the rebounding member (any one of structures 102, 110 or 112) is configured as rebound target (as shown in figure 1A the user kicks the ball towards the rebounding member; the rebounding member is used as a rebound target).
Claim 8, Homsi shows the training device as the rebound target. Claim 8 is dependent on claim 7 which provides a Markush group of which rebound target was one of the options which is met my the Homsi reference. The rebound board was an alternative option which was not selected. Since the applicant hasn’t limited the claim to the option recited in claim 8, no further comments is deemed necessary. The Homsi reference meets the rebound target limitation.
Claims 9 and 10 are dependent on claim 8, therefore, do not need to be addressed. The Homsi reference meets the rebound target limitation.
Claim 12, Homsi teaches a plurality of illuminating contact sensors (201) removably coupled with the rebounding member (102, 110, 112). As noted above, Homsi teaches, regardless of whether one or more sensors 201 are fully or partially encased within fitness structure (i.e., structure 200), one or more sensors 201 may be removable and/or interchangeable.
Claim 13, Homsi shows the rebound goal, comprising: the rebounding member including a planar body (column 4, lines 43-58 which teach the rebounding members may be rigid or flexible and could be planar or curved) that is a flexible or bendable material; and
the coupler comprising at least one target member (the outer or front face of each structure 102, 110, 112 includes a region 206 (figure 1A) divided into zones which acts at the at least one target member) configured to be removably coupled with the rebounding member, wherein each target member includes a receptacle configured to receive the illuminating contact sensor.
Claim 14, Homsi shows the planar body is a goal barrier selected from flexible plastic material (column 4, lines 43-58).
Claim 15, Homsi shows the rebounding member is configured to be attached to a goal frame or is attached to a goal frame (Homsi teaches that the structures may be used together or individually, the structures are capable of being used with a goal frame).
known and obvious to use when attaching one of Homsi’s structures to a goal since such an attachment allows for quickly attaching and removing the structure from the goal.
Claim 18, Homes shows in figures 1A and 1B the coupler couples the illuminating contact sensor with a top region of the rebounding member (the sensors maybe attached to any location of the structure and as shown in figures 1A and 1B the sensors are positioned in rows which cover the top, middle and bottom of the structure).
Claim 19, Homsi discloses a kit comprising a plurality of the training devices of claim 1. Homsi discloses one or more structures (102, 110 and 112).
Claim 20, During normal use and operation of the Homsi device, the method steps set forth by applicant in the claim is inherently provided. Homsi discloses an apparatus and a method of assembly and use, wherein one or more structures (102, 110, 112) may be provided (note the rejection of claim 1); illuminating a color of the visible light; and striking a first training device with a ball such that the color of the visible light changes.
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 3, 5, 11, 16, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Homsi (8,506,370).
Claim 3, Homsi shows the locations of detected impact forces may be visually mapped on one or more of the structures, wherein the one or more display devices 206 on the structures may be illuminated to visually identify impact locations (column 18, lines 9-13). Homsi does not expressly disclose the receptacle having an optical aperture for allowing the illuminated lighting to emit light through the optical aperture. The Examiner takes Official Notice that the use of optical apertures to allow the light to emit therethrough is old and well and obvious to use with the Homsi assembly since such would allow the light to emit in a control manner.
Claim 5, Homsi teaches, regardless of whether one or more sensors 201 are fully or partially encased within fitness structure (i.e., structure 200), one or more sensors 201 may be removable and/or interchangeable. Homsi discloses the claimed device with the exception of the manner in which the receptacle members are attached/supported on the structure. The Examiner takes Official Notice that the use of attachment means such as pliable material, a hard material, a strap material, VELCRO is old and well known and obvious to use when attaching/securing one of Homsi’s sensors and receptacles to the structure since such an attachment allows for quickly attaching and removing the sensor/receptacle from the structure.
Claim 11, Homsi discloses the claimed device with the exception of the coupler having an extension member. The Examiner takes Official Notice that the use of couplers with extensions is old and well and obvious to use when attaching one of Homsi’s sensors on the rebounding member since such an arrangement would allow for alternative ways of securing the sensor to the rebounding member.
Claim 16, Homsi discloses the claimed device with the exception of VELCRO. The Examiner takes Official Notice that the use of attachment means such as VELCRO is old and well known and obvious to use when attaching one of Homsi’s structures to a goal since such an attachment allows for quickly attaching and removing the structure from the goal.
Claim 17, Homsi discloses the claimed device with the exception of VELCRO. The Examiner takes Official Notice that the use of attachment means such as VELCRO is old and well and obvious to use when attaching one of Homsi’s structures to a goal since such an attachment allows for quickly attaching and removing the structure from the goal.
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.
Claims 1-5, 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, 16 of U.S. Patent No. 12,070,667 (‘667). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application claim substantially the same structure as ‘667. Note: Claims 7-10 are directly or indirectly dependent on claim 6 of ‘677. Claim 6 includes the limitation of a handle which is not being claimed in the present application.
Claims 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-10 of U.S. Patent No. 12,070,667 (‘667) in view of Goldberg (9,457249). The claims of the present application are directed to the same invention with the exception of the limitation of a handle as recited in claim 6 of ‘667. However, as disclosed by Goldberg it is well known in the art to include a handle in order to conveniently transport and store the store device. It would have been obvious to one of ordinary skill in the art to have provided a handle for the device of the present invention given that Goldberg teaches the handle aids in transport and storage of the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yoo et al (12,623,134); Shie (12,447,387); D’Andrade (9,791,246); Goldberg (9,457,249).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MITRA ARYANPOUR whose telephone number is (571) 272-4405. The examiner can normally be reached on Mon, Thurs, Fri 8:00am to 4:00pm, Wed 8:00-2:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on 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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/MITRA ARYANPOUR/Primary Examiner, Art Unit 3711
/ma/
25 June 2026
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