DETAILED ACTION
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21, 23-32, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Forutanpour (US Pub. No. 2014/0221136; as cited in applicant’s IDS) in view of Panec (US Pat. No 5,975,983; as cited in applicant’s IDS) in view of Zoellner (US Pub. No. 2005/0170739 A1; as cited in applicant’s IDS).
Regarding claim 21, Forutanpour discloses a toy ball (Fig. 3, item 11 as seen in Fig. 18, items 127 and 129), comprising: a first petal comprising an elastic material (Fig. 3, item 11a, and par. [0058]; noting rubber may be used), the first petal including a rubber sheet (Fig. 18, item 129 and see Fig. 3, items 11a and par. [0058]; noting under Boston Scientific Scimed, Inc. v. Cordis Corp., 683 F.3d 1347 (Fed. Cir. 2011), combining side by side embodiments does not require a “leap of inventiveness”; and par. [0058]; making obvious that the petal can be created from a sheet, i.e. a solid continuous piece of material), a first edge portion having a first fitting surface (Fig. 18; noting the edge of rim on item 129), and a plurality of first magnetic members mounted and fixed inside the first edge portion (Fig. 17, items 111; noting this is obvious and par. [0088]; disclosing item 111 may be a magnet); and a second petal comprising an elastic material (Fig. 18, item 127 and Fig. 3, item 11b, and par. [0058]; noting rubber may be used), the second petal including a rubber sheet configured (Fig. 18, item 127 and see Fig. 3, item 11b, and par. [0058]; making obvious that the petal can be created from a sheet, i.e. a solid continuous piece of material), a second edge portion comprising a second fitting surface (Fig. 18; noting the edge on item 127), and a plurality of second magnetic members mounted and fixed inside the second edge portion (Fig. 17, items 111 and Fig. 16, items 93 making obvious corresponding magnets on the other half, see specifically par. [0088] disclosing magnets), wherein the first fitting surface is shaped to fit and contact the second fitting surface (Fig. 3, item 11), a connecting member integrally connecting the first petal to the second petal (Fig. 18, item 131; noting under the broadest reasonable interpretation, “integrally” simply means “formed as a unit with another part” under merrim-webster.com, and Fig. 18 clearly discloses this at a minimum), wherein the first petal, the second petal, and the connecting member form an integral injection molded member (Fig. 18; noting they are all connected and thus “integral” and alternatively, “integral injection molded member” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”; also noting that applicant uses the term “integral” before “injection molded”, but then argues that “injection molded” connotes “integral”, so does this claim language limitation mean “integral, integral”?); wherein the plurality of first magnetic members are spaced apart from each other, and the plurality of second magnetic members are spaced apart from each other (Fig. 17, item 11, and as per par. [0088] and Fig. 16, it would be obvious that the second magnetic members would be of opposite polarity and spaced consistent with the first magnetic members), wherein the plurality of first magnetic members mate with the plurality of second magnetic members to position the first petal and the second petal in a closed state and define a object-carrying cavity (Fig. 17, and par. [0088]; noting this would be obvious as seen in Fig. 3, item 11, par. [0057] making obvious the ability to carry objects), wherein a magnetic attraction force between the plurality of first magnetic members and the plurality of second magnetic members is sufficient to cause the first edge portion and the second edge portion to contact each other to create the object carrying cavity (Fig. 3 and Fig. 17 making this obvious, and par. [0057]; making obvious the ability to carry objects). It is noted that Forutanpour does not specifically disclose that the ball is toy water ball specifically used to carry water and that the petals are made of silicone. However, Forutanpour discloses that a reusable sports ball can carry other things (par. [0057]) and specifically indicates that the ball can impact another user (par. [0055]; noting the ball can be specifically used in “dodgeball”). In addition, Panec discloses a similar toy ball wherein the ball is toy water ball specifically used to carry water (Fig. 3) and that it is made of rubber or silicone (col. 2, lines 27-29). Thus, it would have bene obvious to one of ordinary skill in the art at the time of filing to modify Forutanpour to make the ball a toy water ball made out of silicone because doing so would be applying a known technique (making a toy ball out of compressible silicone, the toy ball being reusable and can carry water that can be released upon impact) to a known product (a reusable toy ball that is made of rubber and has two sides and two rims that can be closed by magnets) ready for improvement to yield predictable results (making the reusable toy ball from silicone, and specifically using the toy ball for holding water, the toy ball being flexible and compressible enough to impact a user and also allowing the impact to release water). It is noted that the combined Forutanpour and Panec do not specifically disclose that the first and second magnets are fixed inside the first and second edge portion away from the first and second fitting surface, respectively. However, Forutanpour clearly disclose the use of magnets to join two contacting portions with edges (par. [0088] and Fig. 17, items 111). In addition, Zoellner discloses a toy that uses magnets wherein the magnets are specifically positioned away from the fitting surface (Fig. 4). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Forutanpour and Panec to position the magnets away from the first and second fitting surface as taught and suggested by Zoellner because doing so would be use of a known technique (using a layer of material over the connecting magnet proximate a surface) to improve a similar product (a toy ball that has two sides connected by adjoining magnets proximate a surface) in the same way (using a layer of material over the connecting magnets in a toy ball that has two connected surfaces by adjoining magnets, the layer of material over the magnets minimizing the risk of injury to the user when the magnets are connected – see Zoellner: par. [0044]).
Regarding claim 23, the combined Forutanpour, Panec, and Zoellner disclose that the connecting member is integrally formed with the first edge portion and the second edge portion (Forutanpour: Fig. 18, item 131; noting they are all connected or “integral”; and alternatively, “integrally formed” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”).
Regarding claim 24, the combined Forutanpour, Panec, and Zoellner disclose that each of the first petal and the second petal is integrally made of the elastic silicone material (Forutanpour: Fig. 3, items 11a and 11b and par. [0058] disclosing rubber, and Panec: col. 2, lines 27-29 that the specific rubber may be silicone).
Regarding claim 25, the combined Forutanpour, Panec, and Zoellner disclose that the first hemispherical shell of the first petal is integrally formed with the first edge portion (Forutanpour: Figs. 3, item 11, Fig. 5, or 18; noting they are all connected and thus “integral”; and alternatively, “integrally formed” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”).
Regarding claim 26, the combined Forutanpour, Panec, and Zoellner disclose that the second hemispherical shell of the first petal is integrally formed with the second edge portion (Forutanpour: Figs. 3, item 11, Fig. 5, or 18; noting they are all connected and thus “integral”; and alternatively, “integrally formed” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”).
Regarding claim 27, the combined Forutanpour, Panec, and Zoellner disclose that the first fitting surface comprises a slope and the second fitting surface comprises a slope; and wherein the slope of the first fitting surface and the slope of the second fitting surface are tilted to each other (Forutanpour: Fig. 5 below and par. [0065]-[0066]; noting they are concave from inside-to-out, so the edges are sloped or titled out toward the middle and each other).
PNG
media_image1.png
538
476
media_image1.png
Greyscale
Regarding claim 28, the combined Forutanpour, Panec, and Zoellner disclose that the first fitting surface and the second fitting surface deform into a tight fit in the closed state (Forutanpour: Fig. 5 and par. [0065]).
Regarding claim 29, the combined Forutanpour, Panec, and Zoellner disclose that the first fitting surface and the second fitting surface are concavely arranged in a natural state (Forutanpour: Fig. 5 above and par. [0065]-[0066]; noting they are concave from inside-to-out; the Examiner taking the broadest reasonable interpretation of the limitation). In the alternative, regarding the exact shape of the first and second fitting surface, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [0031]; noting the fitting surfaces can actually be “flat, as long as a seal” can be achieved). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the fitting surfaces would not be significant: that is, the surface would continue to seal regardless of its exact shape.
Regarding claim 30, the combined Forutanpour, Panec, and Zoellner disclose that the magnetic attraction force is sufficient to cause the first fitting surface and the second fitting surface to deform into the tight fit against each other and create a water seal (Forutanpour: Fig. 5 and 17 in combination with par. [0065]; noting under noting under Boston Scientific Scimed, Inc. v. Cordis Corp., 683 F.3d 1347 (Fed. Cir. 2011), combining side by side embodiments does not require a “leap of inventiveness”; the Examiner noting that the creation of a water seal is functionally possible given the combined structure as described in Forutanpour: par. [0065]).
Regarding claim 31, the combined Forutanpour, Panec, and Zoellner disclose that each of the plurality of first magnetic members is shaped rectangular block, and each of the plurality of second magnetic member is shaped a rectangular block (Zoellner: Fig. 7, items 122-127). In the alternative, regarding using rectangular shaped magnets over that of circular as shown in Forutanpour: Fig. 17, item 111, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [0034]; giving no criticality to using rectangular shapes). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact shape of the magnets would not be significant: that is, the magnets would allow the two halves to be attracted to each other regardless of their exact shape.
Regarding claim 32, the combined Forutanpour, Panec, and Zoellner disclose that the each of the plurality of second magnetic members is fixed in the second edge portion by integrally molding each second magnetic member in the second edge portion (Forutanpour: Fig. 17, item 111; noting they are connected so they are “integral”; and alternatively, “integrally molding” is merely a product-by-process, see MPEP 2113(II) stating “once a product appearing to be substantially identical is found a prior art rejection is made, the burden shifts to applicant to show an nonobvious difference”; noting duplication of the magnets and their positions with opposite polarity is obvious given the disclosure of par. [0088] and as shown in Fig. 16).
Regarding claim 36, the combined Forutanpour, Panec, and Zoellner disclose that the plurality of first magnetic members are arranged at a middle position of the first fitting surface (Forutanpour: Fig. 17, item 111 and par. [0088]; noting that they are generally located in the middle portion of the surface), and the plurality of second magnetic members are arranged at a middle position of the second fitting surface (Forutanpour: Fig. 17, item 111 and par. [0088]; noting duplication of the magnets and their positions with opposite polarity on the second petal are obvious given the disclosure of par. [0088] and as shown in Fig. 16).
Regarding claim 37, the combined Forutanpour, Panec, and Zoellner disclose that the first petal and the second petal are configured to separate and release water stored in the water carrying cavity when the toy water ball hits a person of an object (Forutanpour: Figs. 17, 18, and par. [0088]; noting this is functionally possible given the structure; the italicized language denoting functional language; also noting if not obvious based on Forutanpour alone, it would be obvious when looking at the teachings of Panec)
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Forutanpour (US Pub. No. 2014/0221136; as cited in applicant’s IDS) in view of Panec (US Pat. No.5,975,983; as cited in applicant’s IDS) in view of Zoellner (US Pub. No. 2005/0170739 A1; as cited in applicant’s IDS) and in further view of Mowbray et al. (herein “Mowbray”; US Pub. No. 2018/0229885 A1; as cited in applicant’s IDS).
Regarding claim 22, the combined Forutanpour, Panec, and Zoellner disclose the connecting member is configured as a sheet (Forutanpour: Fig. 18, noting it appears to be one solid piece of the material). In the alternative, Forutanpour discloses that the connecting member is some kind of folding hinge (Fig. 18, item 131). In addition Mowbray discloses a similar invention with connected petals wherein the connecting member is a sheet (Fig. 13, item 12 or alternatively, Fig. 18, item 6 and par. [0133]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Forutanpour, Panec, and Zoellner to use a connecting member as a sheet as taught by Mowbray because doing so would be a simple substitution of one element (a sheet hinge or living hinge) for another (some type of folding hinge) to obtain predictable results (the continued ability to use a hinge to fasten two petals together, the hinge being in the form of a sheet or living hinge).
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.
Claim 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 51-52 of copending Application No. 17/549,920 (reference application) in view of Silverson (US Pat. No. 6,840,836 B1). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 51-52 of the ‘920 application essentially claims slightly different functional language that is accomplished using the structure. However, the actual structure claimed between the two independent claims is essentially the same. Furthermore, current claim 21 requires that “first petal, second petal, and connecting member form an integral injection molded member”. This limitation is merely directed toward a product-by-process limitation and does not add any structural distinction between current claim 21 and claim 51 of the ‘920 application. Alternatively, Silverson discloses the ability to use injection molding to make an integral silicone object in order to increase production by decreasing curing time (col. 4, lines 52-62).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-33 and 37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 32-45 and 47 of copending Application No. 17/549,920 in view of Forutanpour (US Pub. No. 2014/0221136). Claim 32 of the ‘920 application only claims one magnetic member. Claim 21 of the currently application claims a “plurality” of magnetic members. However, Forutanpour makes obvious that a plurality of magnetic members can be used around the edge portion (Fig. 17, items 111 and par. [0088]). Furthermore, regarding the remainder of the claims, dependent claims 22-32 and 35 of the current application essentially claim the same subject matter as dependent claims 33-45 and 47 of the ‘920 application. Finally, current claim 21 requires that “first petal, second petal, and connecting member form an integral injection molded member”. This limitation is merely directed toward a product-by-process limitation and does not add any structural distinction between current claim 21 and claim 51 of the ‘920 application.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 11/5/25 have been fully considered but they are not generally persuasive.
Rejection
“the plurality of first magnetic members mate with the plurality of second magnetic members to position the first petal and the second petal in a closed state and define a water-carrying cavity”
Applicant essentially argues that the above combined references do not teach a ball used to carry water (see Remarks, pages 7-8). Applicant goes on to argue that “Forutanpour never discloses that its sports ball containing any of these items or other balls or sporting equipment would be used for playing a game such as dodgeball” (see Remarks, page 8). For the record, Forutanpour never really states if the outer ball (see for example, Fig. 3) is intended to be used with the other objects or balls inside, or with them removed (see entire specification; emphasis added). However, what is clear is that the ball in Forutanpour can still functionally be used with the other objects inside (see Figs. 1-3; emphasis added). Couple Forutanpour with the teachings of Panec that the ball is intended to be used with water inside, and the limitations of using a ball with water inside is obvious. Restated, there is nothing in Forutanpour that creates a “teaching away” (implicit or explicit) from using the ball with an object inside because Forutanpour is completely silent on the issue. Furthermore, the fact that Forutanpour shows a ball that can functionally be used with an object inside rebuts applicant’s argument of an implicit teaching away.
Applicant goes on to argue that “One of ordinary skill in the art would have understood that Forutanpour’s sports ball containing the above-identified items could harm a target, particularly if such a sports ball were configured for impact” (see Remarks, page 8), The problem with this argument is that 1) Forutanpour shows a ball that may functionally be used with other objects inside (Figs. 1-3), 2) Forutanpour specifically states the invention can be used in “dodgeball” (par. [0055]), and 3) Forutanpour never specifically comments on whether the inside balls should be removed prior to using the outer ball. As such, applicant’s arguments are not compelling. Finally, the Examiner fails to see how throwing a ball filled with soft candy or a sandwich (i.e. “food” as specifically listed in par. [0057]) would be “harmful” to another person.
Applicant goes on to argue that using water in the Forutanpour invention would cause “unbalance and frustrate the purpose of Forutanpour’s sports ball”. Respectfully submitted, Forutanpour: Figs. 1-3 specifically discloses an inherent imbalance caused by the presence of an oblong football placed inside a spherical ball. However, Forutanpour never discloses that the football needs to be removed to use the outer ball. Couple this with the functional ability to use the outer ball with the football inside, and the Examiner does not believe that an implicit or explicit teaching away is present.
Regarding Panec, applicant argues the use of Panec on pages 8-9 of the Remarks. Applicant appears to argue a bodily incorporation of Panec and the claimed features. However, it has been held that "the question in a rejection for obviousness on a combination of references is what the secondary reference would teach one skilled in the art and not whether its structure could be bodily substituted in the basic reference structure.” In re Richman, 165 USPQ 509 (CCPA 1970). Panec, regardless of the exact structure, would make it obvious to a POSA that the ball could carry water and release water on impact. Respectfully submitted, the Examiner believes the ability to carry water and separate on impact is obvious at least in light of Forutanpour in view of Panec.
Applicant argues that “The Examiner provides no reasons or bases [sic] for why one of ordinary skill in the art would have found it obvious to convert Forutanpour’s sports ball that is used to store other sports balls into one that would carry water based on the teachings of Panec” (see Remarks, page 9). Respectfully submitted, this blanket and generic statement completely ignores the rejection given above in detail. In also completely dismisses that Forutanpour specifically states that a myriad of other objects can be housed inside the ball (par. [0057]). Applicant argues that the Examiner utilizes “hindsight” in his rejection. Again, respectfully submitted, taking a known product such as the ball in Forutanpour and modifying it for a known purpose, to carry water and release on impact, such as taught by Panec is an obvious and predictable solution (i.e. it is applying a known technique to a known product ready for improvement to yield predictable results).
2. “a connecting member integrally connecting the first petal to the
second petal, wherein the first petal, the second petal, and the
connecting member form an integral injection molded member.”
Next, applicant argues the limitation of “injection molded” as claimed in current claim 21. Applicant specifically cites to Nordt for the premise that “injection molded” creates a distinctive structural characteristic. The Examiner believes that there are two problems with this argument. First, what “distinctive structural characteristics” is applicant arguing is “imparted” by the “injection molded” process? From the Remarks on page 11, applicant appears to argue that “injection molded” connotes “integrally assembled together” (see Remarks, received 11/5/25; applicant arguing that ‘the phrase “injection molded” connotes structure and should be afforded patentable weight”, but noting applicant never really argues what “distinctive structural characteristic” it connotes other than “integral” which applicant already specifically claims prior to “injection molded”). However, Forutanpour already discloses that the components are “integrally assembled together” (noting “integrally” simply means “formed as a unit with another part” under merrim-webster.com, and all of Forutanpour’s figures show this). Second, assuming arguendo that applicant is correct and Nordt does apply, should the Examiner read the language “an integral injection molded member” to read “an integral, integral member” as apparently specifically argued by applicant? Restated, applicant already claims that the member is “integral”, so arguing that “injection molded” also means “integral” would seem redundant.
It should also be noted that Silverson discloses the ability to use injection molding to make an integral silicone object in order to increase production by decreasing curing time (col. 4, lines 52-62) (see Double Patenting Rejection). As such, “injection molding” of an integral silicone toy does not appear to be an inventive step even if, assuming arguendo, the Examiner’s position is flawed.
B. Claim 22
No other arguments are advanced. For claim 22, applicant simply incorporates the claim arguments above with no additional arguments.
C. New Claim 37
Applicant goes on to argue that “Furthermore, Forutanpour teaches away from separation of its sport ball into its portions when a user is using the sports ball” (see Remarks, page 12). Respectfully, applicant also teaches that the portions do not separate when the user is using the toy. Applicant’s toy only separates on impact and not when the user is carrying it. In addition, using applicant’s own logic, if the outer ball was intended to not “separate”, how could a user open the ball to gain access to the inside ball? Rather, it is clear that the outer ball would separate with some force so that a user could gain access to the inner ball. The ability to open on impact would functionally depend on the velocity of the thrown ball, object hit, angle of and impact, location of impact, and the strength of the magnets. However, at some velocity, the magnetic force would be overcome and the two halves would separate. As such, this argument is also not compelling. Again, couple Forutanpour with Panec and the ability of the ball to separate and release water on impact is obvious.
Also, how can “Forutanpour expressly teach away from a sports ball that would be capable of releasing any water upon impact” when, according to applicant, Forutanpour does not disclose holding water? Applicant cannot argue that Forutanpour does not teach holding water, and then turn around and argue that there is an “express teaching away”. Once again, looking at Forutanpour in light of Panec would it make obvious to a person of ordinary skill in the art that the Forutanpour invention could be repurposed to hold water an release upon impact because 1) Forutanpour specifically disclose a ball used for dodgeball that may house internal objects, and 2) Panec discloses a ball that houses water that may be released upon impact.
Nonstatutory Double Patenting Rejection
The non-statutory double patenting rejection is still maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
11/14/25
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711