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
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
The drawings are objected to because Figs. 5-11A are photographs. 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Claim Objections
Claims 1, 8, and 15 are objected to because of the following informalities:
Claims 1, 8, and 15 recite “can”, it is suggested that Applicant replace the limitation with --is configured to—since such limitation renders the claims after optional. Appropriate correction is required.
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 1-6, 8-13, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 11, 14, and 15 of U.S. Patent No. 12,186,626. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-20 of the instant application is more broad than Claims 1, 4, 5, 11, 14, and 15 of U.S. Patent No. 12,186,626.
Claims 1-3, 6, 8-10, 13, 15-17, and 20 are anticipated by Claims 1 of U.S. Patent No. 12,186,626. Claims 4, 11, and 18 are anticipated by Claim 4 of U.S. Patent No. 12,186,626. And Claims 5, 12, and 19 are anticipated by U.S. Patent No. 12,186,626.
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 3, 4, 7, 10, 11, 14, 17, and 18 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 3, 10, and 17 recite “wherein while the dummy body is in the turtle position, the dummy body is able to support a person’s weight of at least 100 pounds without collapsing.”, does not provide structures or further define how such device support a person’s weight of at least 100 pounds without collapsing, and therefore the limitation will be interpreted as intended use and that such intended use it capable of being performed via the same material make up.
Claims 4, 11, and 18 recite “simulates an arm break with a bone protrusion.”, the claim does not further provide structure or further define how such device simulates an arm break with a bone protrusion and therefore in order to proceed the Office will interpret the claim such that it is intended use and such intended use is capable of being performed via the limbs being bendable.
Claims 7 and 14 recite “positionally defend itself”, it is unclear what the metes and bounds of the limitation are since it is unclear what position Applicant is referring to. In order to proceed, the Office will interpret the claims such that any position is suitable.
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.
(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.
Claim(s) 1-4, 7-11, and 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bourassa-Fulop (US 11311788 B1).
Regarding Claim 1, Bourassa-Fulop teaches a reflexive training apparatus comprising: a dummy body 100 including a head 102, neck (Refer to Col 10 Lines 35-38:” The same for the shoulders, where the grappling dummy 100 may be manipulated to extend the elbow outside away from the chest, and flex inward to place the biceps across the neck.”), and four limbs 103A,B, 104A,B; wherein the dummy body is configured to assume sitting and supine guard positions (Refer to Figs. 2&8); wherein while the dummy body is in the supine guard position, the shape of the supine position only allows the bare minimum surface area to contact with the ground such that the dummy body can rock forward, back, side to side, and spin while in the supine guard position (Refer to Figs. 2-23 Col 11 Lines 45-48:” Such simulation of movement and reactions of the grappling dummy 100 resemble those of a real grappling opponent. Also, as the grappling dummy 100 lacks mechanical parts and because of its overall exterior shape, it is rollable. As such, the grappling dummy 100 provides an advantage in practicing grappling techniques such as rolling entries.”). The Office takes the position that in the broadest reasonable interpretation the bare minimum surface area is that what is suitable for the dummy to contact the ground and the limitation of “rock forward, back, side to side, and spin” is considered intended use and the device is capable of performing the intended use since it metes all the structural limitations and there is nothing limiting the device to rock forward, back, side to side, and spin. 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, then it meets the claim. MPEP 2111.04 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-9]
Regarding Claim 2, Bourassa-Fulop continues to teach wherein the dummy body is further configured to assume a turtle position (Refer to Fig. 15,21).
Regarding Claim 3, Bourassa-Fulop continues to teach wherein while the dummy body is in the turtle position, the dummy body is able to support a person’s weight of at least 100 pounds without collapsing (Refer to Bourassa-Fulop Col 8 Lines 51-53:” Examples of such material may include any types of flexible plastic or rubber known in the art for such purpose.”). The Office takes the position that Bourassa teaches that the device is made from same materials are Applicants invention (Refer to Applicant Paragraph [0025]:” In some embodiments, the apparatus is produced from materials such as flexible plastics, rubber, polyurethane, springs, bolt hardware, and various electronics.”), and therefore is capable of supporting a person’s weight of at least 100 pounds without collapsing in the same manner since they also can be positioned in the same manner.
Regarding Claim 4, Bourassa-Fulop continues to teach wherein at least one of the four limbs includes an elbow joint that simulates an arm break with a bone protrusion (Refer to Claim 13:” wherein the elbow for each of the two arms and the knee for each of the two legs are configured to be resiliently expanded past a normal breaking point of a corresponding human joint.”). The Office takes the position that the limitation of “simulates an arm break with a bone protrusion” is considered functional and since the claim does not provide further structural limitations the device of Bourassa-Fulop is capable of performing such function since it allows for the joints to extends pass a “breaking point”. Additionally, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Refer to MPEP 2114 Apparatus and Article Claims — Functional Language [R-9].
Regarding Claim 7, Bourassa-Fulop continues to teach wherein the dummy body is configured to positionally defend itself (Refer to Fig. 15 & 23).
Regarding Claim 8, Bourassa-Fulop teaches a mixed martial arts training tool comprising: a dummy body 100 including a head 102, neck (Refer to Col 10 Lines 35-38:” The same for the shoulders, where the grappling dummy 100 may be manipulated to extend the elbow outside away from the chest, and flex inward to place the biceps across the neck.”), and four limbs 103A,B, 104A,B; wherein the dummy body is configured to assume sitting and supine guard positions (Refer to Figs. 2&8); wherein while the dummy body is in the supine guard position, the shape of the supine position only allows the bare minimum surface area to contact with the ground such that the dummy body can rock forward, back, side to side, and spin while in the supine guard position (Refer to Figs. 2-23 Col 11 Lines 45-48:” Such simulation of movement and reactions of the grappling dummy 100 resemble those of a real grappling opponent. Also, as the grappling dummy 100 lacks mechanical parts and because of its overall exterior shape, it is rollable. As such, the grappling dummy 100 provides an advantage in practicing grappling techniques such as rolling entries.”). The Office takes the position that in the broadest reasonable interpretation the bare minimum surface area is that what is suitable for the dummy to contact the ground and the limitation of “rock forward, back, side to side, and spin” is considered intended use and the device is capable of performing the intended use since it metes all the structural limitations and there is nothing limiting the device to rock forward, back, side to side, and spin. 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, then it meets the claim. MPEP 2111.04 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-9]
Regarding Claim 9, Bourassa-Fulop continues to teach wherein the dummy body is further configured to assume a turtle position (Refer to Fig. 15,21).
Regarding Claim 10, Bourassa-Fulop continues to teach wherein while the dummy body is in the turtle position, the dummy body is able to support a person’s weight of at least 100 pounds without collapsing (Refer to Bourassa-Fulop Col 8 Lines 51-53:” Examples of such material may include any types of flexible plastic or rubber known in the art for such purpose.”). The Office takes the position that Bourassa teaches that the device is made from same materials are Applicants invention (Refer to Applicant Paragraph [0025]:” In some embodiments, the apparatus is produced from materials such as flexible plastics, rubber, polyurethane, springs, bolt hardware, and various electronics.”), and therefore is capable of supporting a person’s weight of at least 100 pounds without collapsing in the same manner since they also can be positioned in the same manner.
Regarding Claim 11, Bourassa-Fulop continues to teach wherein at least one of the four limbs includes an elbow joint that simulates an arm break with a bone protrusion (Refer to Claim 13:” wherein the elbow for each of the two arms and the knee for each of the two legs are configured to be resiliently expanded past a normal breaking point of a corresponding human joint.”). The Office takes the position that the limitation of “simulates an arm break with a bone protrusion” is considered functional and since the claim does not provide further structural limitations the device of Bourassa-Fulop is capable of performing such function since it allows for the joints to extends pass a “breaking point”. Additionally, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Refer to MPEP 2114 Apparatus and Article Claims — Functional Language [R-9].
Regarding Claim 14, Bourassa-Fulop continues to teach wherein the dummy body is configured to positionally defend itself (Refer to Fig. 15 & 23).
Regarding Claim 15, Bourassa-Fulop teaches a system comprising: a dummy body 100 including a head 102, neck (Refer to Col 10 Lines 35-38:” The same for the shoulders, where the grappling dummy 100 may be manipulated to extend the elbow outside away from the chest, and flex inward to place the biceps across the neck.”), and four limbs 103A,B, 104A,B; wherein the dummy body is configured to assume sitting and supine guard positions (Refer to Figs. 2&8); wherein while the dummy body is in the supine guard position, the shape of the supine position only allows the bare minimum surface area to contact with the ground such that the dummy body can rock forward, back, side to side, and spin while in the supine guard position (Refer to Figs. 2-23 Col 11 Lines 45-48:” Such simulation of movement and reactions of the grappling dummy 100 resemble those of a real grappling opponent. Also, as the grappling dummy 100 lacks mechanical parts and because of its overall exterior shape, it is rollable. As such, the grappling dummy 100 provides an advantage in practicing grappling techniques such as rolling entries.”). The Office takes the position that in the broadest reasonable interpretation the bare minimum surface area is that what is suitable for the dummy to contact the ground and the limitation of “rock forward, back, side to side, and spin” is considered intended use and the device is capable of performing the intended use since it metes all the structural limitations and there is nothing limiting the device to rock forward, back, side to side, and spin. 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, then it meets the claim. MPEP 2111.04 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-9]
Regarding Claim 16, Bourassa-Fulop continues to teach wherein the dummy body is further configured to assume a turtle position (Refer to Fig. 15,21).
Regarding Claim 17, Bourassa-Fulop continues to teach wherein while the dummy body is in the turtle position, the dummy body is able to support a person’s weight of at least 100 pounds without collapsing (Refer to Bourassa-Fulop Col 8 Lines 51-53:” Examples of such material may include any types of flexible plastic or rubber known in the art for such purpose.”). The Office takes the position that Bourassa teaches that the device is made from same materials are Applicants invention (Refer to Applicant Paragraph [0025]:” In some embodiments, the apparatus is produced from materials such as flexible plastics, rubber, polyurethane, springs, bolt hardware, and various electronics.”), and therefore is capable of supporting a person’s weight of at least 100 pounds without collapsing in the same manner since they also can be positioned in the same manner.
Regarding Claim 18, Bourassa-Fulop continues to teach wherein at least one of the four limbs includes an elbow joint that simulates an arm break with a bone protrusion (Refer to Claim 13:” wherein the elbow for each of the two arms and the knee for each of the two legs are configured to be resiliently expanded past a normal breaking point of a corresponding human joint.”). The Office takes the position that the limitation of “simulates an arm break with a bone protrusion” is considered functional and since the claim does not provide further structural limitations the device of Bourassa-Fulop is capable of performing such function since it allows for the joints to extends pass a “breaking point”. Additionally, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Refer to MPEP 2114 Apparatus and Article Claims — Functional Language [R-9].
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(s) 5, 6, 12, 13, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bourassa-Fulop (US 11311788 B1) in view of Daniels et al (US 20160101338 A1).
Regarding Claim 5, 12, and 13, Bourassa-Fulop teaches the claimed invention as noted above further wherein at least one of the four limbs includes a knee joint that simulates a ligament injury (Refer to Claim 13:” wherein the elbow for each of the two arms and the knee for each of the two legs are configured to be resiliently expanded past a normal breaking point of a corresponding human joint.”) but fails to teach tactile feedback. Daniels teaches a dummy comprising tactile feedback (Refer to Paragraph [0125]:” [0125] Another aspect of the present invention allows a user to apply choke techniques to the dummy's neck. Under the dummy's skin sensors may be provided that trigger a signal to the user when enough force is applied to an individual sensor or a combination of sensors to achieve a choke, either a blood choke or an airway choke. This signal can alert the user, for example, that the airway to a human training partner would be impeded causing unconsciousness or even death. The sensor may have multiple applications and feedback capabilities and may be located in various positions. A given sensor can send feedback to a user by sound, light, vibration, or be digitally connected to a computer system (which can record and then itself signal the user, or an instructor), for example.”). Daniels is from the same field of endeavor as Applicants invention and therefore it would have been obvious to modify the device of Bourassa-Fulop to be in view of Daniels such that there are provided tactile feedback for the purpose alerting to a user when the joint has been set to a target bending.
Regarding Claims 6, 19, and 20, Bourassa-Fulop in view of Daniels continues to teach further comprising one or more sensors for indicating effective pressure (Refer to Paragraph [0134]:” Sensor 140 can be implemented using, for example, a Tekscan™ flexi force sensor, for example, and can be wired to pneumatic piston 525 for signal relay. Also shown is elbow joint 105, which can have, for example, a hyperextension break pressure of preferably 3500 Newtons of force, or for example, anywhere from 3000-4000 Newtons. It may be adjustable. This simulation joint can utilize, for example, torque, spring, groove, piston, electro pneumatic, or any other combination of components and materials to achieve a real to life break point. Two tendons, made of simulated skin material at the outside edge of the elbow, 115, can be severable and replaceable. When these tendons are severed, like 140, a signal will stop the ability for the arm to flex from the movement at 525. These tendons 115 may also use a force sensor, as do biceps 140, to measure the necessary force needed to stop flexion of the arm at 525.”). Such sensors are known to be suitable for measuring target forces on a device for user/trainer and therefore does not patentably distinguish the invention over prior arts.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to attach list of references cited for prior arts pertinent to claimed and unclaimed subject matter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NYCA T NGUYEN whose telephone number is (571)272-7168. The examiner can normally be reached Mon-Fri 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Loan Jimenez can be reached at 571-272-4966. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NYCA T NGUYEN/ Primary Examiner, Art Unit 3784
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