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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
In reference to claim 1, in lines 11 and 15 after “the deformable” and before “layer”, it is suggested to insert “metal foil”, in order to ensure consistency in the claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In reference to claim 1, the claim has been amended to recite “areas of the deformable layer that are not directly adjacent to the voids transfer kinetic energy between the batted ball and the bat without being deformed” in lines 15-16. While the originally filed disclosure provides support for portions of the deformable layer at the area of contact that are not proximate to the voids not visibly deforming due to the relative incompressibility of the incompressible layer at page 6. There is no support that areas of the deformable layer that are not directly adjacent to the voids transfer kinetic energy between the ball and the bat without being deformed as presently claimed.
Regarding dependent claims 2-7, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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 (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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lester (US 2005/0153790) in view of Correa et al. (WO 2020/16993) (Correa).
In reference to claims 1-4, Lester teaches a training aid adapted to be used in baseball in which a hitting instrument strikes a ball ([0026]). The sports training aid determines the point of contact between a ball and a hitting instrument ([0002]) (corresponding to a sports training aid adapted to indicate area of contact between a smooth surface of a bat and a smooth surface of a batted ball). The training aid includes an opaque and malleable material, a deformable sheet attached to the opaque and malleable material, and an adhesive layer that affixes the training aid to the hitting instrument ([0008]). The opaque and malleable material is a sheet of aluminum foil ([0018]) (corresponding to a solid, flexible, deformable metal foil layer disposed against the second outer surface of the layer).
Lester further teaches when the hitting instrument strikes the ball, the opaque and malleable material is deformed and generates an impression of the ball ([0008]). The depth of the opaque and malleable material is 3/1000 of an inch to 5/1000 of an inch (i.e., 0.0762–0.127 mm) ([0018]) (corresponding to the aluminum foil being characterized by a thickness of 0.006-0.200 mm, inclusive).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Lester further teaches the deformable sheet is attached to the opaque and malleable first sheet and an adhesive layer on the back face of the deformable sheet for affixing the training aid to a hitting instrument ([0020]) (corresponding to a layer; the layer having a first outer surface and a second outer surface the first outer surface adapted to be temporarily affixed to a barrel section of the bat). The adhesive used to affix the training aid to the hitting instrument leaves little to no residue on the hitting instrument ([0025]).
Lester does not explicitly teach the deformable sheet is a paper layer characterized by cylindrical voids that extend entirely therethrough, the voids characterized by a diameter in a range of 1.0 mm to 10 mm, and being distributed in a regular pattern, as presently claimed. However, Lester teaches the deformable sheet may have elastic properties which permits the sheet to be resilient ([0019]).
Correa teaches a pressure sensing device having a first outer electrode layer and a second outer electrode layer and a spacer layer sandwiched between the electrode layers (p. 2, 7). The pressure sensing device is senses the reduction in the distance between the first and second electrode due to an amount of applied pressure (p. 6). The spacer layer is a unitary piece of material comprising an array of through-holes extending through the thickness of the spacer layer (p. 7-8). The spacer layer is formed from paper (p. 8, 17) (corresponding to a paper layer). Each through-hole comprises a circular shaped cross-section (p. 8) (corresponding to a paper layer characterized by cylindrical voids that extend entirely therethrough; the voids distributed in a regular pattern).
Correa further teaches adjacent pairs of through-holes are spaced apart by at least a distance equivalent to the diameter of the voids (Figure 5) (corresponding to the voids being distributed in a regular pattern such that adjacent pairs of the voids are spaced apart by at least a distance equivalent to the diameter of the voids). The width of each through-hole is configured to set a predetermined pressure or force required to reduce or close the gap between the first and second electrodes (p. 10). Correa further teaches the spacer layer can have XYZ dimensions as small as 0.5-1 mm (p. 18) (corresponding to the voids characterized by a diameter in a range of 1.0 mm to 10 mm, inclusive; the paper layer being characterized being characterized by a thickness of 0.02-1.20 mm, inclusive).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to adjust the width of the voids and thickness of the spacer layer, including over the presently claimed, in order to provide a gap between the outer layers that is set to a predetermined pressure or force required to reduce the gap for the intended application, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.).
It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
In light of the motivation of Correa, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have the deformable sheet of Lester be the paper spacer layer, in order to provide lightweight stable layer that is capable of allowing the outer layer to indent into the through-holes when a force is applied, and thereby arriving at the presently claimed invention.
Lester in view of Correa teaches when the hitting instrument strikes the ball, the opaque and malleable material is deformed and generates an impression of the ball (Lester, [0008]) (corresponding to areas of the deformable layer and within an area of contact with the batted ball are adapted to permanently deform in response to contact with the batted ball, thereby creating visible deformations that are indicative of the area of contact between the bat and the batted ball).
Given that the training aid of Lester in view of Correa is substantially identical to the presently claimed sports training aid in composition and structure, it is clear the opaque and malleable material proximate to the cells of the paper spacer layer will intrinsically permanently deform into the through-holes in response to contact with the ball, thereby creating visible deformations that are indicative of the area of contact between the bat and the ball and areas of the opaque and malleable material that are not directly adjacent to the through-holes transfer kinetic energy between the ball and the bat without being deformed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lester in view of Correa as applied to claim 4 above, and further in view of Cervantes et al. (US 5,779,556) (Cervantes).
In reference to claims 5-7, Lester in view of Correa teaches the limitations of claim 4, as discussed above.
Lester in view of Correa does not explicitly teach a base layer disposed against the paper layer, as presently claimed. However, Lester teaches an adhesive layer on the back face of the deformable sheet couples with a non-stick sheet having a non-stick surface ([0020]).
Cervantes teaches a golf club point of impact and relative club velocity indicator (Abstract). The indicator is attached to the face of the golf club with a removable adhesive to facilitate the removal of the indicator after impacts (col. 2, lines 22-26). The indicator is attached to a piece of backing material, which acts as a temporary backing prior to use of the indicator (col. 4, lines 26-29). The backing material prevents the point of impact and relative club velocity indicator from adhering to unintended objects and permits it to be removed easily from the backing when use is desired (col. 4, lines 31-34).
The backing material is a composite of two layers comprising a layer of silicone and a layer of fibrous paper. The silicone layer prevents the adhesive layer from adhering to the layer of fibrous paper and the backing material provides temporary protection of the adhesive layer (col. 5, lines 6-14).
In light of the motivation of Cervantes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the non-stick sheet of Lester in view of Correa be the two lay layer composite backing, in order to prevent the adhesive layer from adhering to the backing and provide temporary protection of the adhesive layer, and thereby arriving at the presently claimed invention.
Lester in view of Correa and Cervantes teaches the training aid includes an adhesive layer on the paper spacer layer, a silicone layer (i.e., base layer) on the adhesive layer and a fibrous paper (i.e., transfer paper) on the silicone layer (corresponding to a base layer disposed against the paper layer; an adhesive disposed on the base layer; a transfer paper disposed on the adhesive).
Response to Arguments
In response to amended claim 1, which now requires the paper layer to have cylindrical voids that extend entirely therethrough, the voids characterized by a diameter in a range of 1.0 mm to 10 mm and adjacent pairs of the voids are spaced apart by at least a distance equivalent to the diameter of the voids, the paper layer having a first outer surface and a second outer surface, it is noted that claim 11 of copending Application No. 19/012,031, Lester and Kikuchi (JP 2006/118550), alone or in combination, no longer meet the presently claimed limitations. Therefore, the previous Double Patenting rejections over copending Application No. 19/012,031 and 35 USC 103 rejections over Lester in view of Kikuchi are withdrawn. However, the amendment necessitates a new set of rejections as discussed above.
Applicant’s arguments filed 03/26/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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