DETAILED ACTION
Receipt is acknowledged of Applicant’s Response, dated 25 September 2025, which papers have been made of record.
Claims 1-14 are currently presented for examination, of which claims 9-14 have been withdrawn from consideration.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8, in the reply filed on 25 September 2025 is acknowledged. The traversal is on the ground(s) that “a search that finds the type[s] of apparatuses as described will also demonstrate that the operation to use those apparatuses will be very much like the process shown in the withdrawn claims. There prior art for a system and method for assisting and improving the installation of playground equipment and other related components will overlap and show much of the same prior art.”
This is not found persuasive because it remains possible to use the claimed apparatus for another and materially different method, such as a method not including the use of a foundation that can consist of a concrete mass, reinforcing bars, and/or wire. Mere allegation that the apparatus search would result in art directed to the method as claimed does not obviate the basis for restriction presented in the previous Office Action of 25 July 2025.
Furthermore, Applicant cannot overcome the fact that searching the method is not required for the apparatus as claimed. To keep the groups together would be a burden to the examiner. Regarding Applicant’s argument that examination of the entire application would not place a serious burden on the examiner, this is not found persuasive because Applicant has not provided any evidence or showing to support such a conclusion. Clearly, consideration of additional claims drawn to one or more distinct groups of inventions in diverse categories (product and methods) mandates different fields of search with the associated concomitant hundreds to thousands of patents and time consuming evaluation of those patents which gives rise to a sizeable burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 2-8 are objected to because of the following informalities: Each of claims 2-8 depends, directly or indirectly, from claim 1, however each being “A system … as described in claim [number]” rather than “The system … as described in claim [number].”
Appropriate correction is required.
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 1-8 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.
Claim 1 contains the trademark/trade name Surfire Template at line 4. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the instant Application and, accordingly, the identification/description is indefinite.
Claim 1 recites “wherein the ground surface under the flaps can be excavated to create a series of void/ holes for a set of foundations of a pre-determined size” at lines 17-19. It is unclear whether the ground is part of the claimed invention. It is further unclear how one having ordinary skill in the art would determine whether the foundations are part of the claimed invention. If the recited system were located on a shelf in a warehouse, for example, would the invention include any concrete or reinforcing bars? To the best of the examiner’s understanding, neither the ground nor the foundations are understood to be part of the claimed invention, and both the ground and the foundations described in the claim are understood as describing intended use for the template instead.
Claims 2-8 each depend from claim 1, and therefore are rejected for at least the reasons presented above with respect to claim 1.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 5-6
Claims 1 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent 3,816,931 to LaMar (hereinafter “LaMar”).
Regarding claim 1, LaMar discloses a system (10) for assisting and improving the installation a set of playground equipment and for other uses (see Col. 1, lines 50-52) in construction and installation of components called “surfire template” (tradename understood not to define the structure of the apparatus being claimed) comprising: a) a full-size template (Col. 2, lines 42-45) placed on a top surface (10) of a tarp (12; see Col. 2, lines 42-45), said tarp configured with a perimeter and with a predetermined length and width (size of templet is finite and full size), the tarp having a top surface, and the tarp made of durable materials (nylon or Dacron; Col. 2, lines 42-45); b) a series of circles (19, 20) pre-located on the top surface of the tarp and each circle having a center (see Fig. 1); c) a series of stakes (21) made of durable material (Col. 2, lines 65-67) are placed at the center of each of the series of circles (see Col. 2, line 61 – Col. 3, line 3); and d) a pre-sized flap (see Col. 3, lines 44-53; fabric or tarp material may be removed once marked by stakes) denoted by the stakes for access under the top surface (10), wherein the flaps provide access to a ground surface (11) below the tarp (Col. 3, lines ) and wherein the ground surface (11) under the flaps can be excavated to create a series of void/holes (intended use) for a set of foundations of a pre-determined size, and wherein each of the foundations of a pre-determined size can consist of a concrete mass and reinforcing bars and/or wire.
Regarding claim 5, LaMar discloses the limitations of claim 1, and further LaMar discloses that the other uses is selected from the group consisting of small homes (see Col. 1, lines 10-13; apartment houses and motels fairly understood to be small homes), landscape layouts, pole barns, garages, storage sheds, and layouts for trade shows, weekend town and farmer’s markets.
Regarding claim 6, LaMar discloses the limitations of claim 1, and further LaMar discloses that the set of playground equipment is selected from the group consisting of slides, swing sets, monkey bars, merry go rounds, teeter-totters, and climbing sets (where the system is for one of the “other uses” recited in claim 1, the playground equipment does not further limit the other uses).
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.
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 2
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over LaMar as applied to claim 1 above.
Regarding claim 2, LaMar discloses the limitations of claim 1, and further LaMar discloses further comprises of embedded hardware (openings at 14 engage blocks 16 and fasteners; see Col. 2, lines 48-55) as a means for securing a series of pre-chosen building structures (see Col. 3, lines 55-64).
LaMar does not explicitly disclose that the pre-chosen building structures are a pre-chosen set of playground equipment, however one having ordinary skill in the art would at least reasonably expect that the template itself would not require modification to identify the locations of different components for the construction resulting from the template. For example, LaMar teaches that its system may produce a stamped design via a stamp (23) and that the pattern produced “may be of any alphabetic, symbolic, or geometric design” such that the patterns produced on the ground via the template will mark designed locations (see Col. 3, lines 4-16). Additional information can be produced on the template (see Col. 3, lines 25-37) such that the template can mark structures such as plumbing, heating, air conditioning, doors, closets, or windows. While LaMar does not explicitly disclose playground equipment, LaMar teaches a variety of markings can be used to mark a variety of structures. If any of the playground equipment components included any of the disclosed structures, such could be attached without modification of the teachings of LaMar, but even where not, a person having ordinary skill in the art is one of ordinary creativity, not an automaton (see MPEP 2141.03(I)), and inferences and creative steps could be employed. The Office takes the position that the template disclosed by LaMar could be used to demark pre-selected playground structures without modification of the principles of operation of LaMar. There is nothing of record that suggests that hardware suitable for securing the components disclosed by LaMar would not function suitably for securing pre-chosen playground equipment.
Thus, LaMar teaches the limitations of claim 2.
Claim 4
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over LaMar as applied to claim 1 above, and further in view of United States Patent Application Publication 2016/0067992 to Petersen (hereinafter “Petersen”).
Regarding claim 4, LaMar discloses the limitations of claim 1. LaMar teaches that the stakes (21) includes a shaft with a raised rubber pattern at one end (Col. 2, lines 65-67), but appears to be silent as to the material of the shaft.
However, it is known in the art of such stakes to provide stakes formed of wood, steel, rebar, plastic, reinforced plastic, or composite materials.
For example, Petersen teaches such stakes. Petersen teaches a method of forming stakes having shafts (10) which may be formed of plastic (paragraph [0013]) with a rubber material (18) at an end for carrying indicia (see paragraph [0015]).
It would have been obvious to one having ordinary skill in the art to modify the system taught by LaMar to include a conventional stake assembly such as the stake taught by Petersen including a plastic shaft. (See MPEP 2143(1)(A)). The resulting system would predictably function in substantially the same manner as the device of LaMar without modification of the principles of operation of LaMar. The material of the stakes are not understood to change how the apparatus functions, such that providing a stake having the configuration of LaMar’s stake with a conventional material such as a plastic as taught by Petersen would be reasonably expected to function identically.
Thus, the combination of LaMar and Petersen teaches the limitations of claim 4.
Allowable Subject Matter
Claims 3 and 7-8 would be allowable if rewritten to overcome the rejection(s) 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 3, the prior art of record does not explicitly disclose of fairly teach “wherein the durable material for the at least one tarp is selected from the group consisting of biodegradable landscape fabric, 3.2oz UV resistant landscape fabric, 3oz non-woven highly permeable landscape fabric, 5oz UV resistant landscape fabric, 10oz burlap fabric, straw erosion control blanket, 100% coconut erosion control blanket, weed control 4 mil black plastic sheeting, weed control 6 mil black plastic sheeting, weed control 6 mil black/white polyethylene sheeting, and poly mulch black polyethylene film” in combination with the remaining limitations of the claim. LaMar teaches that its template (10) may be formed of a plastic such as nylon or Dacron (see Col. 2, lines 42-45) and that such material should be dimensionally stable, but does not fairly suggest any of the recited materials. Absent using Applicant’s own disclosure as a roadmap, there is no motivation within the reference for modifying the disclosed template materials of LaMar to any of the claimed materials.
Regarding claim 7, the prior art of record does not explicitly disclose or fairly teach “comprised of a ground cover over the tarp,” in combination with the remainder of the limitations of the claim. LaMar fairly teaches a template (10) positionable over a ground (11) for locating components to be built, however does not fairly suggest leaving the template on the ground (see Col. 3, lines 44-54) during installation so that the tarp can be covered with a ground cover in a use configuration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent 4,348,188 to Ahrens (hereinafter “Ahrens”) teaches a template (A) for placing against a work surface (12) for placing playground equipment thereon.
United States Patent Application Publication 2012/0071252 to Georg et al. (hereinafter “Georg”) teaches a modular template (112) for placing playground equipment (116) at desired locations thereon on a ground (see paragraph [0040]).
United States Patent Application Publication 2007/0095005 to Caretto (hereinafter “Caretto”) is directed to a template for facilitating construction along a ground.
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/DARRELL C FORD/Examiner, Art Unit 3726