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 .
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,138,518.
Regarding claim 1 of the instant application, the patented case recites a frame, projections pads and straps and the instant claim merely broadens “central hub” to a “central origin”; recites the frame includes four projections configured tetrahedrally; broadens the pad coverage from surrounding a majority of the projection length to surrounding at least a portion; and recites the strap being routed over a geometrically opposed portion of the frame rather than wrapped around the hub. Modifying the specific hub configuration and strap routing while maintaining the identical overall tackling training device would have been an obvious design variation that would have been expected by on of ordinary skill in the art and does not render the claimed invention patentably distinct.
Regarding claims 2 and 4 of the instant application and the patented case they both recite same structures
Regarding claim 3, both the instant application and the patented case recite outwardly extending projections removably attached to the hub in an overlapping relationship. The additional recitation of as continuous contour at the interface only defines the shape of the overlapping joint and would have been an obvious refinement of the patented case.
Regarding claim 5, the claim is not patentably distinct form the patented case claim 2 (or claims 2-4 collectively).
Regarding claims 6-11, they are not patentably distinct from the claims 9-14 of the patent. The instant claims merely reorganize or further define the same pad construction using different terminology without producing a patentably distinct invention. Regarding claim 6 of the instant application, see claim 9 of the patent; regarding claim 7 of the instant claim see claims 10-13 of the patent; regarding claim 8 of the instant application, see claims 9-10 of the patent; regarding claim 9 of the instant application, see claims 12-13 of the patent; regarding claim 10 of the instant application, see claim 13 of the patent; regarding claim 11 of the instant application, see claim 14 of the patent.
Regarding claims 12-14, the claims are not patentably distinct from claims 15-17 of the patent claims. They both claim: raised gripping surfaces, player-shaped contours, and visual aiming indica. The instant application’s claims merely rearrange or simplify the language.
Regarding claim 15 of the instant application, see claim 5 of the patent. They are the same.
Regarding claim 16 of the instant application, see claim 6 of the patent. They are the same.
Regarding claim 17 of the instant application, see claim 7 of the patent. They are the same.
Regarding claim 18 of the instant application, see claim 8 of the patent. Both recite sliding the pads over the projections before securing the pads. The difference between using a strap versus a fastener would have been an obvious choice because the parent already teaches straps as the fastening mechanism in independent claim 1.
Regarding claim 19 of the instant application, see claim 1 of the patent. The claim merely specifies directing the strap over a portion of the frame to hold the pad, which is an obvious use of the strap already recited in the patent.
Regarding claim 20 of the instant application, see claim 18 of the patent. They are the same.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the patented claims ae merely obvious variations that would have been obvious to one of ordinary skill in the art at the time of the invention was made. The claimed modifications, including broadening the hub to a central origin, modifying strap, specifying elongate passages, and reorganizing the pad construction and gripping features, do not render the claims patentably distinct form the patented claims because they represent predictable design choices directed to the same tackling training device and methods of making and using that device.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Boutet et al.
(FR 3118887).
Boutet discloses a tackling training device (2. See Figures 1 and 5) comprising: a frame including a plurality of outwardly extending projections coupled at a central origin (6),wherein the frame includes four outwardly extending projections configured in a tetrahedral arrangement, and further wherein a free end of each said outwardly
extending projection defines an apex of a tetrahedron in three-dimensional space (6);
and a plurality of pads (10), each said pad (10) of the plurality of pads (10 as shown in
Figure 5) being coupled to and surrounding at least a portion of each said projection (6)
in the plurality of projections of the frame (see Figure 5); and at least one coupling to
removably attach each said pad in the plurality of pads to each said outwardly extending
projection in the plurality of projections of the frame (32). Boutet discloses the invention
as recited above but does not explicitly disclose the at least one coupling including a
strap attached to each of the plurality of pads at a plurality of locations, the strap being
routed over a respective portion of the frame that is geometrically opposed to a
respective outwardly extending projection on which a respective pad is mounted. It
should be noted that the instant application disclose that the coupling could include at
least one of an adhesive material, a strap, a threaded fastener, a tie, and a clip, among
others (see the 4th paragraph under the "Summary of the Disclosure" of the instant
application). At the time the invention was made, it would have been an obvious matter
of design choice to a person of ordinary skill in the art to provide multiple types of
coupling including a strap because Applicant has not disclosed that the use of a
provides an advantage, is used for a particular purpose, or solves a stated problem.
One of ordinary skill in the art would have expected Applicant's invention to perform
equally well with either the coupling as taught by Boutet or the claimed strap because
both devices perform the function of connecting the pad/pads to the frame securely.
Therefore, it would have been an obvious matter of design choice to modify Boutet to
obtain the invention as specified in this claim.
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Boutet
in view of Stevenson (US Patent Application Publication No. 2007/0167297).
Boutet does not disclose the hub being removably attached to the extending
projections, the projection being removably attached to the hub in physically overlapping
relationship, fastener, elongate passage configured to receive the outwardly extending
projection as recited. However, the use of the above recited features in a training device
is not a new concept and Stevenson is one example of reference that teaches these
concepts. Stevenson discloses a hub (the combination of elements 62, 56a, 60a and
58a as shown in Figure 1) being removably attached to the extending projections (56b,
58, 60 as shown in Figure 1), the projection being removably attached to the hub in
physically overlapping relationship (see in Figure 1), fastener (56c, 58c, 60c as shown
in Figure 1), elongate passage configured to receive the outwardly extending projection
(the internal passage of 56a, 58a, 60a where elements 56b, 58c, 60c). It would have
been obvious to one of ordinary skill in the art before the effective filing to provide the
Boutet device with hub, removable extending projections, fastener and so on as taught
in the Stevenson reference so that the device of Boutet could be adjustable and
useable both for children and adults of different sizes.
Claims 6-9, 12-14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims to 2-5 above, and further in view of W.P. Dickens (US Patent No. 3,384,372).
Regarding claims 6-9, the references as applied to claims 2-5 do not explicitly
disclose a fabric layer/fabric jacket, plurality of layers of fabric surrounding the pad, the
fabric layer including a ring-shaped as recited. The outwardly extending projections of
Boutet as shown in Figure 1 of the reference as having a projection that terminated in a
free end having an enlarged cross-sectional area as recited. Dickens discloses a
training device that teaches the use of a training device that has a layer/fabric jacket
(12. See abstract. See column 3 lines 4-5) surrounding a pad (24. Pad 24 is disclosed
as being a rubber foam and this material is resilient). It would have been obvious to one
of ordinary skill in the art before the effective filing to provide the references as applied
to claims 2-5 with a fabric layer surrounding the pad as taught by Dickens in order be
able to easily protect the pad from dirt and to be able to wash the cover when it gets
dirty. Regarding the fabric being ring-shaped, it would be obvious to have a ring-shaped
section since the actual pad shape of the Boutet and Dickens are cylindrical and
obviously the cover for the cylindrical material will have a section that is ring-shaped to
match the pad shape.
Regarding the use of plurality of layers of fabric, it would have been obvious to
one having ordinary skill in the art at the time the invention was made provide multiple
layers of fabric, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. V. Bemis Co.,
193 USPQ 8.
Regarding claims 12-13, the references as applied to claims 2-5 do not disclose
external contour having at least one raised surface as recited in the claim. However the
use of such type of raised surface in a training device is not new and Dickens discloses
raised elements (40) as shown in Figures 1-5 of the reference. The shape of element
(40) as best understood is considered as having a shape that resembles a portion of an
opposing player. It would have been obvious to one of ordinary skill in the art before the
effective filing date to provide the references as applied to claims 2-5 with an external
contour having a raised surface (40) as shown in Figures 1-5 of the Dickens reference
so that the user could be able to easily grip the raised surfaces so that the user may slip
his hand in order to gasp the device (see column 3 lines 50-51).
Regarding claim 14, the references as discussed above do not disclose a visual
indicia as recited. It would have been obvious to one having
ordinary skill in art at the time the invention was made to provide the raised surface with
a visual indicia since it was known in the art that providing visual indicia that is distinct
as recited will make the device to enhance the visual appeal of the device making it
more stylish.
Regarding claim 20, Boutte teaches a method of performing a tackling drill in Rugby and including providing a tackling training device (Rugby and football share similar contact mechanics). Boutet however, does not expressly teach wherein the gripping step includes gripping a raised surface extending outwardly from an external contour of one of the pads, as recited. Dickens teaches providing raised elements (40) extending outwardly providing gripp0ing locations for a user as shown in Figures 1-5. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the tackling training device of Boutet to include the raised gripping elements taught by Dickens because the raised elements provide improved gripping locations for a use, thereby facilitating secure grasping, improving control of the training device during tackling drills, and enhancing the realism and effectiveness of tackling practice. Applying the known gripping feature of Dickens to the known tackling training device of Boutet would have been no more than the predictable use of a known technique to improve a similar device for its intended purpose.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over the
references as applied to claims to 2-5 above, and further in view of Dickens.
See rejection of claims 6-9 above. The references used in claims 6-9 do not
disclose the use of end cap that is formed from resilient material. The use of end cap in
a sport device is not new and Dickens is one example of reference that teaches the use
of a cap (20). It would have been obvious to one of ordinary skill in the art to provide the
references as applied to claims 2-5 with a cap as taught by the Dickens device in order
to allow access to the pad so that the pad can easily be removed ant the fabric cover
could be washed when it gets dirty. Regarding the cap being made resilient material, it
would been obvious to make the caps out of resilient material SO that the cap could
absorb and dampen shocks, protecting components from damage due to impact or
sudden forces.
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Boutet in view of Stevenson, as applied in the rejection of claims 2-5, and further in view of Nichols (US Patent No. 8,147,357).
Regarding claim 15, the reference as applied to claims 2-5 do not explicitly disclose a container to store and ship the device as recited. However, the use of storage in training device is not a new concept and Nichols is one example of reference that teaches the use of a container (see element 90 as shown in Figure 17 of the Nichols reference). It would have been obvious to one of ordinary skill in the art to provide the Boutet in view of Stevenson with a container as taught by the Nichols device in order to store the components of the device to be easily store and ship the training device to a user.
Regarding claim 16, Boutet in view of Stevenson and Nichols teaches or renders obvious a tackling training device according to claim 15. Nichols further taches storing the disassembled components of a training device with a container (element 90, Figure 17) for shipment and storage. The claimed method of disposing the plurality of outwardly extending projections, hub and plurality of pads in a container, and shipping the container merely recites the expected use of the modified device taught by the prior art. It would have been obvious to one of ordinary skill in the art to place the disassembled components of the Boutet device, as modified by Stevenson, into the container taught by Nichols and ship the container in order to facilitate storage, transportation, and delivery of the training device to a user.
Regarding claim 17, the combination of Boutet, Stevenson, and Nichols teaches a tackling training device having separable outwardly extending projections, a hub, and pads, wherein the device is stored in a disassembled state within a container. Once the device has been transported in its disassembled state, it would have been obvious to one of ordinary skill in the art to open the container, couple the outwardly extending projections to the hub to form the frame, and thereafter attach the pads to the assembled frame, as this merely represents the ordinary and necessary assembly procedure for preparing the known disassembled training device for use. Performing the assembly steps in the recited order ensures proper installation of the pads onto the completed frame and is no more than the predicable use of the known components according to their intended purpose.
Regarding claim 18, Boulet, as modified by Stevenson, teaches pads that are mounted on the outwardly extending projections and secured to the frame by fastening arrangement. To the extent the references do not expressly disclose sliding each pad over respective outwardly extending projection before fastening, it would have been obvious to one of ordinary skill in the art to install pads by sliding them over the projections prior to fastening because this is the predictable and conventional manner of mounting sleeve-like pads onto elongated support members before securing the pads in position, thereby facilitating proper alignment and installation.
Regarding claim 19, Boutet, as modified by Stevenson, teaches securing the pads to the frame suing a strap. During assembly of the device, the user necessarily routs or directs the strap over the appropriate portion of the frame before fastening the strap to secure the pad in place. Therefore, it would have been obvious to one of ordinary skill in the art to direct the strap over a portion of the frame to hold the pad in place because this merely describes the ordinary manner of using the known fastening strap during assembly of the modified tackling training device and would have yielded the predictable result of securing the pad to the frame.
Conclusion
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Certificate of Mailing
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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/NINI F LEGESSE/Primary Examiner, Art Unit 3711
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