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 .
Allowable Subject Matter
Claims 3-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the aforementioned claims set forth a series of physical structures/configurations that are well beyond that which is disclosed within the Lester and Swartz references (discussed in greater depth infra), which represents the prior art combination closest to Applicant’s claimed invention, and there would be no obvious reason to modify Lester and Swartz to the extent necessary to satisfy each of Applicant’s pertinent limitations.
With respect to claim 3 (and claim 4 depending therefrom), the provision of an uncompressible inner layer is well known, but providing such an uncompressible arrangement in Lester’s layer 14, which is specifically designed to be “deformable”, would interfere with the ability of the Lester invention to perform as originally intended.
In view of the foregoing, the modifications necessary to satisfy each of Applicant’s claim limitations would be likely to render the Lester/Swartz assembly incapable of continuing to operate/behave in the particular manner set forth within the references themselves (given the particularly sensitive nature of such use/impact detection assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claims 3-4 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Note that any change to the scope of the claimed invention related to the aforementioned claims may potentially affect the determinations/treatment of claims set forth supra.
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 1-16 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 claims 1 and 9 recitations of “characterized by” are unclear, as it is unknown exactly what structure/configuration is actually called for. Does Applicant merely intend to recite “comprising”? Exactly what structure/configuration is sought? Please review/revise/clarify.
The claims 1 and 9 recitations of “in response to contact” are unclear, as it is unknown exactly that type of “contact” (e.g. contact between which particular elements) is intended. Exactly what structure/configuration is sought? Please review/revise/clarify.
The term “regular” in claims 8 and 14 is a relative term which renders the claims indefinite. The term “regular” is not defined by the claims, 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.
Claims 2-7, 10-13 and 15-16 are rejected as depending (directly or indirectly) from rejected independent claims 1 and 9.
Claim Rejections - 35 USC § 103
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 1-2 and 5-16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20050153790 to Lester (“Lester”) in view of U.S. Patent Application Publication No. 2008/0254907 to Swartz et al. (“Swartz”).
Regarding claim 1, Lester discloses an impact detection apparatus (e.g. training aid 10, as shown in fig. 1 and discussed at para. 18) comprising: i) a non-resilient (para. 18) deformable (para. 18) outer layer (e.g. first sheet 12, as shown in fig. 1 and discussed at para. 18); and ii) an inner layer (e.g. deformable sheet 14, as shown in fig. 1 and discussed at para. 19-20) to which the outer layer (12) is affixed (fig. 1), the apparatus (10) adapted to be affixed to (fig. 2 and para. 12 and 23) sports equipment (e.g. golf club 32, as shown in fig 2 and discussed at para 23) such that areas (e.g. spatial area of training aid 10) of the outer layer (12) and within an area of contact (e.g. spatial area of impression made by strike with golf ball 34) between (fig. 2) the sports equipment (32) and a sports object (e.g. golf ball 34, as shown in fig. 2 and discussed at para. 23) are adapted to deform in response to contact (para. 24), thereby creating (para. 24) a deformation (i.e. “impression” discussed at para. 24) that is indicative (para. 24) of the area of contact (aforementioned spatial area of impression made by strike with golf ball 34).
Lester does not disclose said inner layer (14) being characterized by an array of projections.
Swartz teaches the concept of providing a layer (e.g. first thermochromic layer 730 and second thermochromic layer 740, together, as shown in fig. 7 and discussed at para. 32) characterized by an array (fig. 7) of projections (e.g. second portions 750, 752, 754, 756, and 758, as shown in fig. 7 and discussed at para. 33).
Given that Lester and Swartz both concern assemblies designed to be attached to golf clubs for the purpose of indicating exactly where strikes with balls have been made, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the Swartz thermochromic compound layer 730 and second thermochromic layer 740 teachings to the Lester deformable sheet 14 structure, in order to provide the benefit of yielding a resultant assembly having internal components that are resilient, and thus capable of being reused with supplementary newly applied first sheets 12.
Regarding claim 2, Lester in view of Swartz discloses the apparatus of claim 1 wherein the inner layer (Lester 14, as modified in the rejection of claim 1, supra) is compressible and resilient (see the combination set forth in the rejection of claim 1, supra).
Regarding claim 5, Lester in view of Swartz discloses the apparatus of claim 1 wherein the inner layer (Lester 14, as modified in the rejection of claim 1, supra) comprises silicone, paper, polycarbonate, acrylic, ABS, or metal (e.g. metallic clip discussed at Lester para. 22).
Regarding claim 6, Lester in view of Swartz discloses the apparatus of claim 1 wherein the projections (Swartz second portions 750, 752, 754, 756, and 758) are cylindrical (compare Swartz figs. 7 and 4).
Regarding claim 7, Lester in view of Swartz discloses the apparatus of claim 1 further comprising an adhesive (e.g. Lester adhesive layer 16, as shown in fig. 1 and discussed at para. 20) applied to (Lester fig. 1) the inner layer (Lester 14, as modified in the rejection of claim 1, supra).
Regarding claim 8, Lester in view of Swartz discloses the apparatus of claim 1 wherein the projections (Swartz second portions 750, 752, 754, 756, and 758) are distributed in a regular geometric pattern (Swartz fig. 7).
Regarding claim 9, Lester discloses an impact detection apparatus (e.g. training aid 10, as shown in fig. 1 and discussed at para. 18) comprising: i) a non-resilient (para. 18) deformable (para. 18) outer layer (e.g. first sheet 12, as shown in fig. 1 and discussed at para. 18); and ii) an inner layer (e.g. deformable sheet 14, as shown in fig. 1 and discussed at para. 19-20) to which the outer layer (12) is affixed (fig. 1), the apparatus (10) adapted to be affixed to (fig. 2 and para. 12 and 23) sports equipment (e.g. golf club 32, as shown in fig 2 and discussed at para 23) such that areas (e.g. spatial area of training aid 10) of the outer layer (12) and within an area of contact (e.g. spatial area of impression made by strike with golf ball 34) between (fig. 2) the sports equipment (32) and a sports object (e.g. golf ball 34, as shown in fig. 2 and discussed at para. 23) are adapted to deform in response to contact (para. 24), thereby creating (para. 24) a deformation (i.e. “impression” discussed at para. 24) that is indicative (para. 24) of the area of contact (aforementioned spatial area of impression made by strike with golf ball 34).
Lester does not disclose said inner layer (14) being characterized by an array of voids.
Swartz teaches the concept of providing a layer (e.g. first thermochromic layer 730 and second thermochromic layer 740, together, as shown in fig. 7 and discussed at para. 32) characterized by an array (fig. 7) of voids (e.g. spaces opposite first portions 732, 734, 736 and 738, as shown in fig. 7 and discussed at para. 33).
For the reasons set forth in the rejection of claim 1, supra, it would have been obvious to apply the Swartz thermochromic compound layer 730 and second thermochromic layer 740 teachings to the Lester deformable sheet 14 structure.
Regarding claim 10, Lester in view of Swartz discloses the apparatus of claim 9 wherein the non-resilient deformable layer (Lester 12) comprises a metallic foil (Lester para. 18).
Regarding claim 11, Lester in view of Swartz discloses the apparatus of claim 9 wherein the inner layer (Lester 14) comprises silicone, paper, polycarbonate, acrylic, ABS, or metal (e.g. metallic clip discussed at Lester para. 22).
Regarding claim 12, Lester in view of Swartz discloses the apparatus of claim 9 wherein the projections (Swartz second portions 750, 752, 754, 756, and 758) are cylindrical (compare Swartz figs. 7 and 4).
Regarding claim 13, Lester in view of Swartz discloses the apparatus of claim 9 further comprising an adhesive (e.g. Lester adhesive layer 16, as shown in fig. 1 and discussed at para. 20) applied to (Lester fig. 1) the inner layer (Lester 14, as modified in the rejection of claim 1, supra).
Regarding claim 14, Lester in view of Swartz discloses the apparatus of claim 9 wherein the voids (Swartz spaces opposite first portions 732, 734, 736 and 738) are distributed in a regular geometric pattern (Swartz fig. 7).
Regarding claim 15, Lester in view of Swartz discloses the apparatus of claim 9 wherein the voids (Swartz spaces opposite first portions 732, 734, 736 and 738) partially traverse (compare Lester fig. 1 and Swartz fig. 7, in view of the modification set forth in the rejection of claim 1, supra) the inner layer (Lester 14, as modified in the rejection of claim 1, supra).
Regarding claim 16, Lester in view of Swartz discloses the apparatus of claim 9 wherein the voids (Swartz spaces opposite first portions 732, 734, 736 and 738) completely traverse (compare Lester fig. 1 and Swartz fig. 7, in view of the modification set forth in the rejection of claim 1, supra) the inner layer (Lester 14, as modified in the rejection of claim 1, supra).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN V LEWIS whose telephone number is (571)270-5052. The examiner can normally be reached M-F 7:30AM-5:00PM.
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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
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