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 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.
The subject matter of a claim must be directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter. If it is not, the claim is not eligible for patent protection. The subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena (i.e., the judicial exceptions) (See Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1979 (2013))). There are two criteria for determining subject matter eligibility under 35 U.S.C. 101 and both must be satisfied. The claimed invention (1) must be directed to one of the four statutory categories, and (2) must not be wholly directed to subject matter encompassing a judicially recognized exception. The recitation in claim 13 of “instructing a player to move their feet to a desired location; moving a coaching tool to an undesired location, the coaching tool including a housing and a handle attached to the housing; and providing a kinesthetic response to the player through the coaching tool upon the player contacting the housing at the undesired location” (and the limitations of dependent claims 14-20) are directed to methods of organizing human activity (following instructions/rules governing an activity/game). Methods of managing a game/activity are abstract ideas (See: Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)) and a set of rules for a game are drawn to abstract ideas (See: In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016)). The claimed invention is directed to non-statutory subject matter because the claims as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Based on the subject matter eligibility test for products and processes, claims 13-20 are not eligible for patent protection because:
(Step 1) claims 13-20 are directed to a process, machine, manufacture or composition of matter.
(Step 2A) claims 13-20 are directed to a law of nature, a natural phenomenon, or an abstract idea (a judicially recognized exception) based on the recited limitations of claims 13-20. The recited limitations fall within the subject matter grouping of abstract ideas and are directed to methods of organizing human activity (following instructions/rules governing an activity/game). If a claim recites a judicial exception (an abstract idea), the claim is evaluated as to whether the judicial exception is integrated into a practical application. Integration into a practical application is evaluated by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The additional elements or combination of elements in the claims other than the abstract idea per se amounts to no more than: a coaching tool including a housing and a handle having a fulcrum, a force sensor configured to identify a force applied to the housing, a light-emitting source that emits light when force applied to the force sensor, a sound-emitting source that emits sound when force applied to the force sensor. The recited judicial exception has not been integrated into a practical application because the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use.
(Step 2B) claims 13-20 do not recite provide an inventive concept because the additional elements do not amount to significantly more than the judicial exception (See: Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 1293-94, 101 USPQ2d 1961, 1965-66 (2012)). The examiner takes official notice that the additional elements (a coaching tool including a housing and a handle having a fulcrum, a force sensor configured to identify a force applied to the housing, a light-emitting source that emits light when force applied to the force sensor, a sound-emitting source that emits sound when force applied to the force sensor) are well-understood, routine, and conventional and are widely prevalent and in common use in the relevant field (See for example: Dastrup (20160206944), Taylor (20080242437), Baggot (7261640), Marley (5860871), Stanton (20170007903)), comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. 112(a).
Therefore, claims 13-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 19-20 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.
The term “substantially” in claim 19 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Claims 13-14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Dastrup (20160206944) in view of Baggot (7261640).
Regarding claim 13, Dastrup (Figures 1-25) teaches a method for coaching footwork development, comprising: a player moving their feet to a desired location (0095, 0097); moving a coaching tool to an undesired location (Para. 0095), the coaching tool including a housing (200) and a handle (Fig. 3, Part No. 300) attached to the housing; and providing a kinesthetic response to the player through the coaching tool upon the player contacting the housing at the undesired location (Para. 0080-0081, 0095, 0097). (the handle can be read on the upper portion 300 and the housing can be interpreted to lower portion 200 below this which is attached to the handle 300).
It is noted that claims are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of “housing” is being interpreted to mean “the space taken out of a structural member”.
Dastrup does not specifically teach instructing a player to move their feet to a desired location. However, a player is required to move their feet to a desired location to provide tactile feedback to the player.
Baggot (Figures 1-4) teaches instructing a player to move their feet to a desired location (Col. 1, Lines 27-30).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Dastrup with instructing a player to move their feet to a desired location as taught by Baggot as a means of providing a player with the correct distance of separation between the ball and player's feet (Baggot: Col. 1, Lines 27-30).
Regarding claim 14, the modified Dastrup (Figures 1-25) teaches moving the coaching tool to the undesired location is accomplished by grasping the handle and sliding the coaching tool to the undesired location (Para. 0081).
Regarding claim 19, the modified Dastrup (Figures 1-25) teaches the handle (300) extends from a first end to a second end with a fulcrum (Fig. 6, Part No. 400) (Para. 0083) disposed between the first end and the second end, the first end being attached to the housing (See fig. 3, 6), the second end being spaced from the first end (See fig. 3), and the fulcrum being configured such that a force exerted upon the handle near the second end in a substantially downward direction causes the first end of the handle to move in a substantially upward direction (See fig. 16, 19, 21B) (Para. 0083).
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Dastrup in view of Baggot, further in view of Taylor (20080242437).
Regarding claim 15, the modified Dastrup (Figures 1-25) teaches the coaching tool including a housing (Fig. 7-9, Part No. 112; Para. 0079).
The modified Dastrup does not teach the housing includes a force sensor configured to identify a force applied to the housing.
Taylor (Figures 1-8) teaches the housing includes a force sensor (Para. 0230) configured to identify a force applied to the housing.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Dastrup with the housing includes a force sensor configured to identify a force applied to the housing as taught by Taylor as a means of providing a player with proper foot placement during sports training (Taylor: Para. 0230).
Regarding claim 16, the modified Dastrup (Figures 1-25) teaches the coaching tool including a housing (Fig. 7-9, Part No. 112; Para. 0079).
The modified Dastrup does not teach the housing includes a light-emitting source, and wherein, upon recognition of a force applied to the force sensor, the light-emitting source emits a light.
Taylor (Figures 1-8) teaches the housing includes a light-emitting source, and wherein, upon recognition of a force applied to the force sensor, the light-emitting source emits a light (Para. 0232).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Dastrup with the housing includes a force sensor configured to identify a force applied to the housing as taught by Taylor as a means of providing a player with proper foot placement during sports training (Taylor: Para. 0232).
Regarding claim 17, the modified Dastrup (Figures 1-25) teaches the coaching tool including a housing (Fig. 7-9, Part No. 112; Para. 0079).
The modified Dastrup does not teach the housing includes a sound-emitting source, and wherein, upon recognition of a force applied to the force sensor, the sound-emitting source emits a sound.
Taylor (Figures 1-8) teaches the housing includes a sound-emitting source, and wherein, upon recognition of a force applied to the force sensor (Para. 0230), the sound-emitting source emits a sound (Para. 0231).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Dastrup with the housing includes a force sensor configured to identify a force applied to the housing as taught by Taylor as a means of providing a player with proper foot placement during sports training (Taylor: Para. 0231).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Dastrup in view of Baggot, further in view of Sarkees (20170333775).
Regarding claim 18, the modified Dastrup (Figures 1-25) teaches a coaching tool.
The modified Dastrup does not teach the coaching tool is moved by a football coach.
Sarkees teaches the coaching tool is moved by a football coach (Para. 0013, 0042-0043) (See fig. 2).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Dastrup with the coaching tool is moved by a football coach as taught by Sarkees as a means of teaching a player proper foot placement by using a coach/instructor (Sarkees: Para. 0013, 0042-0043).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Dastrup in view of Baggot, further in view of Marley (5860871).
Regarding claim 20, the modified Dastrup (Figures 1-25) teaches the coaching tool is moved along the ground (Para. 0095).
The modified Dastrup does not teach the coaching tool is moved along the ground at the fulcrum.
Marley (Figures 1-32) teaches the coaching tool is moved along the ground at the fulcrum (Fig. 21-22, Part No. 130) (Col. 12, Lines 29-49).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Dastrup with the coaching tool is moved along the ground at the fulcrum as taught by Marley as a means of pivoting members of a coaching tool along a ground surface (Marley: Col. 12, Lines 29-49).
Allowable Subject Matter
Claim 21-32 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record (Yarmuth (20150126295), Shende (20070207876), Parente (5788584), Kettelson (5415399), Dastrup (20160206944), Taylor (20080242437), Baggot (7261640), Marley (5860871), Stanton (20170007903)) does not teach the recitation in claim 21 of “a method comprising: moving a coaching tool to an undesired location, the coaching tool comprising: a housing having a plurality of rubber shims; the kinesthetic response indicating to the user that the foot of the user is in the undesired location, the plurality of rubber shims disposed between the front plate and the back plate of the housing, the plurality of rubber shims extending respective heights above the front plate and the back plate of the housing, the plurality of rubber shims respectively decreasing in height from the back plate toward the front plate; and a handle extending from a first end to a second end with a fulcrum disposed between the first end and the second end”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER GLENN whose telephone number is (571)272-1277. The examiner can normally be reached 9:00 a.m. - 5:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, EUGENE KIM can be reached at (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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/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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