DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Allowable Subject Matter
Claims 22-27, 30-36 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 22 includes limitations directed towards 22. (New) The target system of claim 21, the target face further including a locking support. The closest art of record Fernandez teaches the locking plate but is silent with regards to the locking support. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 22 is therefore allowed.
Claim 25 includes limitations directed towards 25. (New) The target system of claim 21, the target face further including a target stem. The closest art of record Fernandez teaches a target face but is silent with regards to the target stem. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 25 is therefore allowed.
Claim 30 includes limitations directed towards 30. (New) The target system of claim 21, wherein the locking plate includes an opening to the second aperture through an exterior edge of the locking plate. The closest art of record Fernandez teaches the locking plate but is silent with regards to an opening to the second aperture through an exterior edge of the locking plate. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 30 is therefore allowed.
Claim 32 includes limitations directed towards 32. (New) The target system of claim 21, wherein the locking plate includes an opening to the first aperture through an exterior edge of the locking plate, the opening and the second aperture having the same width. The closest art of record Fernandez teaches the locking plate but is silent with regards to an opening to the first aperture through an exterior edge of the locking plate, the opening and the second aperture having the same width. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 32 is therefore allowed.
Claim 33 includes limitations directed towards 33. (New) The target system of claim 21, wherein the second aperture is defined by a first tab and a second tab in the locking plate. The closest art of record Fernandez teaches the locking plate but is silent with regards to the second aperture as claimed in the locking plate. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 33 is therefore allowed.
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.
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).
Claims 21, 28-29 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 and 5-6 of U.S. Patent No. 10,030,944 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain substantially similar subject matter.
For example, Claim 21 of the instant invention and claim 1 of the ‘944 patent both contain elements directed towards a locking plate, apertures and a target face being similar in scope. Claim 29 of the instant invention is similar to claim 2 of the ‘944 patent in that both contain a locking plate includes a third aperture. Claim 33 of the instant invention contains limitations directed towards a first aperture being defined by a first tab and a second tab disposed within the locking plate is similar to claim 5 of the ‘944 patent. Claim 28 of the instant invention includes limitations directed towards a target face further including a target similar to claim 6 of the ‘944.
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)(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 21, 28-29 and 38 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fernandez (US 20170343324 A1).
Regarding claim 21, Fernandez teaches 21. (New) A target system, comprising: a locking plate having a first aperture and a second aperture, where the first aperture is wider than the second aperture; and a target face including a locking retainer, wherein the locking retainer is wider than the first aperture. See Fig. 12; (212)(210)(365).
Regarding claim 28, Fernandez teaches 28. (New) The target system of claim 21, the target face further including a target. See Fig. 9; Fig. 9 shows the hanger which would include a target.
Regarding claim 29, Fernandez teaches 29. (New) The target system of claim 21, wherein the locking plate further includes a third aperture. See Fig. 12 which shows multiple apertures that is inclusive of a third.
Regarding claim 38, Fernandez teaches 38. (New) The target system of claim of claim 21, wherein the locking plate is connectable to a stand. See Fig. 9; (200A)(300).
Claim Rejections - 35 USC § 103
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 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.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 37, 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Fernandez (US 20170343324 A1) in view of Kochuba (US 20140217674 A1).
Regarding claim 37, Kochuba teaches 37. (New) The target system of claim 21, wherein the target is disposed at a bottom of the target face. See Fig. 1.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Fernandez with Kochuba to provide a hittable target for the use to strike with a projectile.
Regarding claim 39, Kochuba teaches 39. (New) The target system of claim 21, wherein the target face is flat. See Fig. 1.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Fernandez with Kochuba to provide a hittable target for the use to strike with a projectile.
Regarding claim 40, Kochuba teaches 40. (New) The target system of claim 21, further comprising a three dimensional target on the target face. See Fig. 1.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Fernandez with Kochuba to provide a hittable target for the use to strike with a projectile.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lambert US 20050001381 A1 - which teaches a target hanger.
Anderson US 20160209184 A1 - which teaches a target with hangers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
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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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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
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