DETAILED ACTION
Claims Subject to Examination
Claims 1-20 of this application are subject to examination.
Claim Construction in Examination
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
Examiner’s Claim Construction
The following claim limitations are construed by the examiner to aid in examination:
Claim Limitations:
filter portion permitting airflow between the interior cavity and the outside environment while restricting fluid flow between the interior cavity and the outside environment (claim 1), and
filter portion being configured to permit transmission of gaseous material and block transmission of the solid material into and out of the inner cavity (claim 13)
Examiner’s Construction:
Any of:
A filter1 that is cylindrical in shape and has a circular top surface, a circular bottom surface, a cylindrical outer surface, and a hole arranged in the top surface and extending partially through the filter portion, with the filter made from porous media, such as, for example, synthetic fiber, polyester (such as, for example, extruded polyester), or foam (such as, for example, open-cell foam).
A filter system incorporating some unspecified type of mechanical media.
Some unspecified type of mechanical filter.
Some unspecified type of mechanical switch that activates under pressure.
Some unspecified type of two-way valve that activates under pressure.
Art-recognized equivalents of the above.
Examiner’s Explanation:
The term “portion” is a generic placeholder for structure and is modified by functional language defining the function it performs. The claim does not recite (i) sufficiently definite structure, or (ii) sufficient structure for performing the claimed function. Thus, 35 USC 112(f) is invoked.
The specification:
Broadly describes a filter system capable of incorporating either mechanical or porous media. See ¶ 0021.
Describes a “filter portion” that is cylindrical in shape and has a circular top surface, a circular bottom surface, a cylindrical outer surface, and a hole arranged in the top surface and extending partially through the filter portion. See ¶¶ 0035-0039.
Broadly states that, in some examples, the filter portion comprises a mechanical filter, which permits air exchange through the filter portion. See ¶ 0040.
Broadly states that, in some examples, the filter portion comprises a filter made from porous media, such as, for example, synthetic fiber, polyester (such as extruded polyester), or foam (such as open-cell foam). See ¶ 0040.
Broadly states that, in some examples, the filter portion comprises a mechanical switch that activates under pressure. See ¶ 0048.
Broadly states that, in some examples, the filter portion comprises a two way valve that activates with air pressure. See ¶ 0048.
Thus, the corresponding structure identified in the specification is one of:
A filter that is cylindrical in shape and has a circular top surface, a circular bottom surface, a cylindrical outer surface, and a hole arranged in the top surface and extending partially through the filter portion, with the filter made from porous media, such as, for example, synthetic fiber, polyester (such as, for example, extruded polyester), or foam (such as, for example, open-cell foam).
A filter system incorporating some type of mechanical media—the specification being silent as to any specifics of both the structure of the filter system overall and the structure of the mechanical media.
Some type of mechanical filter—the specification being silent as to any specifics of the structure of the mechanical filter.
Some type of mechanical switch that activates under pressure—the specification being silent as to any specifics of the structure of the mechanical switch.
Some type of two-way valve that activates under pressure—the specification being silent as to any specifics of the structure of the two-way valve.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
GROUND 1: Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The written description requirement serves both to satisfy applicant’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the inventor(s) was in possession of the invention that is claimed. It is not enough that a skilled artisan could theoretically construct his/her own version of the claimed invention. Rather, applicant bears the burden of setting forth sufficient information to show that the inventor had possession of the claimed invention. Thus, the written description requirement requires applicant to go beyond a discussion of mere concepts and suggestions. It is not sufficient to merely outline desired results that the claimed invention is expected to achieve. Rather, the specification must explain how the invention is structured and how it functions in order to achieve the desired results. While subject matter that is conventional or well known in the art need not be described in detail, the specification must provide a complete description of each of the essential features recited in the claims which enable the claimed invention to achieve the desired results.
As explained above, the “filter portion” required by claims 1 and 13 encompasses any of:
A filter that is cylindrical in shape and has a circular top surface, a circular bottom surface, a cylindrical outer surface, and a hole arranged in the top surface and extending partially through the filter portion, with the filter made from porous media, such as, for example, synthetic fiber, polyester (such as, for example, extruded polyester), or foam (such as, for example, open-cell foam).
A filter system incorporating some unspecified type of mechanical media.
Some unspecified type of mechanical filter.
Some unspecified type of mechanical switch that activates under pressure.
Some unspecified type of two-way valve that activates under pressure.
However, the specification is silent as to: (i) any specifics of both the structure of the filter system overall—when incorporating mechanical media—and the structure of the mechanical media; any specifics of the structure of the mechanical filter; any specifics of the structure of the mechanical switch; and any specifics of the structure of the two-way valve. The specification fails to explain how the embodiments encompassed by claims 1 and 13 are structured and/or how they function to achieve the desired results. Thus, the scope of claims 1 and 13 exceeds the scope of the disclosure. Accordingly, the disclosure fails to set forth sufficient information to show that the inventor had possession of the full scope of the claimed invention.
Further, with respect to claims 1, 9, 10 and 13, the specification fails to explain how the cylindrical structure—as described in the specification—is constructed from any of synthetic fiber, polyester (such as extruded polyester), or foam (such as open-cell foam). The specification fails to explain how the embodiments encompassed by claims 1, 9, 10 and 13 are structured and/or how they function to achieve the desired results. Thus, the scope of claims 1, 9, 10 and 13 exceeds the scope of the disclosure. Accordingly, the disclosure fails to set forth sufficient information to show that the inventor had possession of the full scope of the claimed invention.
Claims 6 and 15 recite “the shell portion comprises any one or more of PVC, silicone, silicone rubber, and TPU.” The specification states that the shell portion comprises a material such as, for example, PVC, silicone, silicone rubber, TPU. However, the specification fails to describe any embodiment in which the shell portion is made of “more” than of PVC, silicone, silicone rubber, and TPU. The specification fails to explain how the embodiments encompassed by the “or more” limitation of claims 6 and 15 are structured and/or how they function to achieve the desired results. Thus, the scope of claims 6 and 15 exceeds the scope of the disclosure. Accordingly, the disclosure fails to set forth sufficient information to show that the inventor had possession of the full scope of the claimed invention.
Dependent claims are included in the rejection at least because of their dependencies.
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.
GROUND 2: Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
As explained above, the “filter portion” required by claims 1 and 13 invokes 35 USC 112(f) and encompasses any of:
A filter that is cylindrical in shape and has a circular top surface, a circular bottom surface, a cylindrical outer surface, and a hole arranged in the top surface and extending partially through the filter portion, with the filter made from porous media, such as, for example, synthetic fiber, polyester (such as, for example, extruded polyester), or foam (such as, for example, open-cell foam).
A filter system incorporating some unspecified type of mechanical media.
Some unspecified type of mechanical filter.
Some unspecified type of mechanical switch that activates under pressure.
Some unspecified type of two-way valve that activates under pressure.
As explained above, applicant has failed to satisfy the requirement to identify the specific structure that corresponds to the claimed “filter portion” that invokes 35 USC 112(f). Since the corresponding structure has not been adequately identified, the claims are indefinite.
Claim 1 recites “a shell portion comprising an outer surface defining an interior space of the ball” (l. 2). This subject matter fails to accurately define the disclosed invention. The outer surface of the shell portion does not define its interior space. Rather, a wall/sidewall of the shell portion defines its interior space.
In claim 1, “fluid” (l. 7) is inconsistent with and broader than “airflow” (l. 6). This creates confusion as to the scope of the claim.
Claim 8 recites “the filter portion contacts the bottom surface of the sleeve.” This subject matter fails to accurately define the disclosed invention. The filter portion does not contact the bottom surface of the sleeve. Rather, the filter portion contacts a bottom wall of the sleeve.
Claim 10 is indefinite because it is unclear whether the parenthetical and “such as” limitations are optional or required.
Claim 13 recites “a shell portion comprising a flexible outer surface” (l. 2). This subject matter fails to accurately define the disclosed invention. The outer surface of the shell portion is not a flexible structural feature. Rather, a wall/sidewall of the shell portion is a flexible structural feature.
Dependent claims are included in the rejection at least because of their dependencies.
AIA – First to File
The present reissue application contains claims to a claimed invention having an effective filing date on or after March 16, 2013. Accordingly, this application is being examined under the AIA first to file provisions.
Pertinent Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference for each document (listed alphabetically):
“Bengs et al.”
US Publication No. 2002/0074283 A1
“Burke”
US Publication No. 2016/0167851 A1
“De See et al.”
US Patent No. 3,174,501
“Henry”
US Patent No. 9,038,652 B1
“Holland”
US Publication No. 2016/0303451 A1
“Marsh et al.”
US Publication No. 2020/0155906 A1
“Maurice”
CN Publication No. 201657768 U
“Ochoa”
US Patent No. 3,107,683
“Parenti”
US Publication No. 2011/0312433 A1
“Ragan”
US Publication No. 2019/0022471 A1
“Savary”
FR Publication No. 2 940 622 A1
“Voit et al.”
US Patent No. 2,183,900
“West”
US Patent No. 5,915,407
The prior art listed above is considered pertinent to the claimed invention but is not relied upon to reject any claim.
Burke teaches a ball comprising a shell 18 having a hole therethrough, a rubber valve 10 mounted in the hole, and a foam filter 34 positioned within the shell 18 below the valve 10. See Fig. 2. However, the shell 18 does not have a sleeve extending inward, and the filter 34 is not arranged within such a sleeve.
Henry teaches a bag (Figs. 1-5) or ball (Figs. 8-16) comprising a shell 16 having a sleeve 28 extending into its interior space, a lining 24 mounted in the sleeve 28, a primary one-way valve 26 arranged within the sleeve 28 and lining 24, and an air pressure release valve 14 mounted in an opening in the shell 16. Henry further teaches that a counterweight can be joined to the internal surface of the shell (col. 6, ll. 50-54). The primary one-way valve 26 can be a Tesla valve (see Figs. 6-7), but the valve 26 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
Parenti teaches a ball comprising a shell 3 having a sleeve (see Figs. 1, 9B and 9D-10B) extending into its interior space, a self-sealing valve (see Figs. 1, 9C and 9E-9F) arranged within the sleeve, and a solid fill material 4 arranged within the shell 3 and prevented from escaping by the self-sealing valve. Parenti’s self-sealing valve is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
Marsh et al. teaches a ball comprising a shell 301 having a sleeve 311 extending into its interior space, a rubber air valve 315 arranged within the sleeve 311, and a solid fill material 309 arranged within the shell 301 and prevented from escaping by the valve 315. The valve 315 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
Ragan teaches a ball comprising a shell (see Figs. 1A, 2A and 2C) having a sleeve (see Figs. 1A, 2A and 2C) extending into its interior space, an inflation and fill valve 39 arranged within the sleeve, and a solid fill material 35B arranged within the shell and prevented from escaping by the valve 39. The valve 39 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
Holland teaches a ball comprising a shell 10 having a sleeve 18 extending into its interior space, a plug 20 arranged within the sleeve 18, and a fill material 16 that includes solid particulate arranged within the shell 10 and prevented from escaping by the plug 20. The plug 20 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
Savary teaches a bag comprising a shell 4, a valve 7 arranged within a top portion 4a of the shell 4, a solid fill material 6a arranged within the shell 4 and prevented from escaping by the valve 7, and pressurized air 6b arranged within the shell 4 and prevented from escaping by the valve 7. The valve 7 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
Ochoa teaches a ball comprising a shell (see Figs. 1 and 3) having a sleeve 1 extending into its interior space, a cylinder 2 received in the sleeve, and a plug 4 received in the cylinder 2. The plug 4 and/or the cylinder 2 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
Voit et al. teaches a ball comprising a shell 12 having a sleeve 13 extending into its interior space, and a rubber valve core 23 received in the sleeve 13. The valve core 23 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
De See et al. teaches a ball comprising a shell 16 having a sleeve 18 extending into its interior space, a valve body 12 received in the sleeve 18, and a valve member 25 received in the valve body 12. The valve body 12 and/or the valve member 25 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
West teaches a ball comprising a shell 12 having a sleeve 22 extending into its interior space, and a valve body 42 received in the sleeve 22. The valve body 42 is not a “filter portion” since (i) it is not a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and (ii) it does not comprise a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
Bengs et al. teaches a filter portion/system comprising a cylindrical sleeve 2, a filter medium 3 received in the sleeve 2, and porous elements 4, 5 received in the sleeve 2. However, the sleeve 2 does not extend inward from a shell of a ball.
Maurice teaches a filter portion/system comprising a hollow cylindrical filter medium 2 and a solid cylindrical filter medium 4 received in an outer wrap or sleeve (not shown). However, Maurice lacks a sleeve extending inward from a shell of a ball.
Claim Objections
Claim 16 is objected to because reference number 114 should not appear in the claim.
Specification Objections
The specification is objected to because:
In ¶ 0031, at ll. 2-3, “the outer surface 106 is approximately .125 inches thick” is inaccurate. A surface does not have a thickness. Rather, the shell has a wall/sidewall with a thickness.
In ¶ 0032, at ll. 7-8, “the thickness of the inner surface 112 is substantially the same as the thickness of the outer surface 106” is inaccurate for the reasons given above.
In ¶ 0033, at l. 1, “the cylindrical surface” is confusing since it is unclear whether this refers to the outer surface 106 or the inner surface 112.
In ¶ 0033, at ll. 2-4, “the thickness of the inner surface 112 is substantially the same as the thickness of the outer surface 106” is inaccurate for the reasons given above.
In ¶ 0039, at ll. 1-2, “As shown in FIG. 5, in some examples, the hole 126 extends through the filter portion 104” is an inaccurate description of Fig. 5. Rather, Fig. 5 shows the hole 126 extending partially through the filter portion 104 (as described in the next sentence).
In ¶ 0040, at ll. 1-2, “mechanical filter or filter” is confusing since a mechanical filter is a filter.
In ¶ 0043, at ll. 1-2, “the bottom surface 122 of the filter portion 104 contacts the bottom surface 114 of the sleeve 110” is inaccurate. The bottom surface 122 of the filter portion 104 contacts a bottom wall (not a bottom surface) of the sleeve 110.
In ¶ 0047, at l. 6, “11c6” should read “116”.
In ¶ 0051, at l. 2, “in which players to establish their own targets on any surface” is grammatically incorrect.
In ¶ 0060, at l. 3, “portion 102” should read “portions 102”.
In ¶ 0067, at l. 5, “a motor 308” is inaccurate because plural motors are shown. See ¶ 0068, which states that a motor 308 is arranged over each funnel 306.
In ¶ 0080, the first sentence is incomplete, i.e., it includes only a phrase/clause, not a complete sentence.
Drawing Objections
The drawings are objected to under 37 CFR 1.83(a) for failing to show every feature of the invention specified in the claims. Therefore, the features listed below must be shown in the drawings or canceled from the claims. No new matter should be entered.
Porous media (claim 9).
Porous media comprising synthetic fiber (claim 10).
Porous media comprising extruded polyester (claim 10).
Porous media comprising or open-cell foam (claim 10).
Filter portion adhesively bonded to the sleeve (claim 11).
The drawings are also objected to because:
Fig. 5 is described as a cross section view (see ¶¶ 0011, 0039), but it fails to comply with 37 CFR 1.84(h)(3). The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is not possible to place reference characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes or principal lines, preferably 45°. A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
In Fig. 6, the lead line for reference number 114 is not directed to the bottom surface (see ¶ 0032) of the sleeve 110. Rather, it is directed to a bottom wall of the sleeve 110.
In Fig. 8, the lead line for reference number 302 is not directed to the support surface (see Fig. 9 and ¶ 0067)
The objection to the drawings will not be held in abeyance.
Response Period
A shortened statutory period for response is set to expire THREE MONTHS from the mailing date of this action.
Filing and Contact Information
All correspondence relating to this application should be directed:
By Patent Center2: Registered users may submit via the Patent Center at: https://patentcenter.uspto.gov/
By Mail3 to: Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-8300
By hand: Customer Service Window
Knox Building
501 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Primary Examiner, Art Unit 3993
1 By definition, a “filter” is (i) a porous device through which liquid or gas is passed to remove suspended impurities or recover solids, and/or (ii) a porous substance or mass through which a gas or liquid is passed to separate out matter in suspension.
2 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).
3 Mail Stop REISSUE should only be used for the initial filing of reissue applications, and should not be used for any subsequently filed correspondence in reissue applications. See MPEP 1410.
Prosecution Insights