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 § 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.
Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Heaton (US 2011/0221219) in view of DeFluiter et al (US 5,199,716).
As to claim 1, Heaton discloses a disc golf disc retrieval device (11), as illustrated in Figures 1-10, comprising a retrieval head being a suction cup (22) and a telescoping pole (15-16) (see paragraph [0045]), and a connection mechanism (tubing 30) configured to removably connect the retrieval head with the telescoping pole (suction cup further includes a port for connecting a tubing 30 – see paragraph [0047]). The suction cup has at least one port (44). The suction cup is attached to the elongated shaft at a distal end (12). The pneumatic bulb (20) is in pneumatic communication via a tubing network (see Figures 4-6) with the suction cup. The pneumatic controls the pneumatic vacuum pressure in order to attach the suction cup to a Frisbee golf disc (see paragraph [0053-0055]). However, Heaton does not show the device to have a spherical member having a plurality of suction cups extending from spherical member.
DeFluiter et al teaches a suction ball device comprising a spherical member (1) having a plurality of suction cups (2) extending from it. The plurality of suction cups is spaced around the surface of the spherical member to allow the suction ball to stick to a surface.
To provide the retrieval device of Heaton with the suction ball device in lieu of the suction cup attached to the telescoping pole would have been obvious to one of ordinary skill in the art, in view of the teachings of DeFluiter et al, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention, i.e., one skilled in the art would have recognized that the suction ball device used in DeFluiter et al would allow the retrieval device of Heaton to be attached to multiple surface areas on the golf disc and eliminate the production and material costs of the tubing network associated with the pneumatic bulb.
With claim 2, the retrieval head further comprises one connection element (port 44) configured to complement the connection mechanism.
With claims 4-5, the method of retrieving a golf disc can be accomplished with the structural elements as discussed in claims 1-2 above.
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 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5,7, and 11 of U.S. Patent No. 12,616,888. Although the claims at issue are not identical, they are not patentably distinct from each other because the referenced U.S. Patent No. 12,616,888 and the instant application are claiming common subject matter, as follows: a disc golf disc retrieval device comprising a spherical member, suction cups, and a telescoping pole.
Claims 4-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 12,330,025. Although the claims at issue are not identical, they are not patentably distinct from each other because the referenced U.S. Patent No. 12,330,025 and the instant application are claiming common subject matter, as follows: a method of retrieving a disc golf disc comprising providing a disc golf disc retrieval device comprising a spherical member, a plurality of suction cups, and a telescoping pole.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN VU whose telephone number is (571)272-1961. The examiner can normally be reached Monday-Friday, 7:00 am - 3:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Victoria Augustine can be reached at (313) 446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
STEPHEN VU
Primary Examiner
Art Unit 3654
/STEPHEN A VU/Primary Examiner, Art Unit 3654
