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 § 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, 4-11, 13, 22 and 23 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.
With respect to claim 1, as now amended to recite” wherein the weight of the lacrosse head is increased by about 4% to about 7% relative to a lacrosse head calculated weight based on a weight of the impact modified nylon 12 thermoplastic polyamide polymer without the packing out”, further clarification is require as the comparison of the weight of the lacrosse head (with more material, as of the packing out) to weight of a lacrosse head with “less material” (i.e., without packing out).
With respect to independent claims 9 and 22, same issues as discussed above with respect to claim 1.
Depended claims 4-8, 10-11, 13 and 23, are rejected based upon their dependency to respective independent claims 1, 9 and 22.
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, 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, 4-11, 13, and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bond et al US 2012/0302382 (“Bond”) in view of Sullivan et al US 2014/0256472 (“Sullivan”) OR Applicant Admitted Prior Art (hereinafter referred as “AAPA”), Brine US 4,657,260 (“Brine“) and Guergov US 5,566,743 (“Guergov”)
As per claim 1, Bond discloses a lacrosse head (Figs. 3-10; and pars. [0019]-[0022] and [0032]-[0044]) comprising: opposing sidewalls joined at one end by a throat, the sidewalls diverging generally outwardly, and the sidewalls being connected at another end by a scoop (Fig. 10), wherein the lacrosse head comprises a nylon polymer (the lacrosse head is formed by a custom polymer composition as blend of nylon polymer)([0035]-[0038]).
Bond is not specific regarding the material forming his head is made from a polymeric composition comprising an impact modified nylon 12 thermoplastic polyamide polymer, using packing out, wherein about 60% to about 90% of light passes through the lacrosse head light transmission, and wherein the lacrosse head has a stiffness of less than 40.0 lbf when measured at a temperature between 70°F-75°F.
Bond is not specific regarding and a weight of about 110g to about 170g.
With respect to modified nylon 12 thermoplastic polyamide polymer, wherein about 60% to about 90% of light passes through, Sullivan discloses the use of modified nylon 12 (in [0029], [0030], [0033], [0034] and [0044]) that exhibit such light transparency of about 90% ([0012], [0025]-[0027] and [0074]). Therefore, 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 to form Bond’s polymer material as modified nylon 12 thermoplastic polyamide polymer, wherein about 60% to about 90% of light passes through as taught by Sullivan for the reason that a skilled artisan would have been motivated by Sullivan’s suggestions to use such polymer material within application configure to sustain high impact while playing sport and alike and the results would have been a device that has a glossy and durable surface finish (in at least [0114]).
Such properties within Bond would be much desire as the lacrosse head will result in a durable and pleasing device, suitable to high impact and stress.
In addition, attention to Bond’s [0034] ”The material can be any thermoplastic that satisfies the performance properties discussed herein, including tensile modulus between 1.25 GPa and 2.5 GPa that undergoes a temperature-dependent tensile modulus change of less than about 15% when exposed to a temperature range of 0 C to 40 C, thereby limiting the extent to which said head frame becomes more flexible when the ambient temperature approaches 40 C and less flexible when the ambient temperature approaches 0 C.” Thus, the use of modified nylon 12 thermoplastic polyamide polymer, wherein about 60% to about 90% of light passes through, is such any other well-known polymeric material, that can be utilized within the lacrosse head of Bond to exhibit the same properties of a polymer that provide enough durability to be utilized while forming a lacrosse head.
If there is any doubt regarding, Sullivan’s polymer as modified nylon 12, the examiner notes that AAPA asserts that such material is well-known, as the well-known material or GRILAMID® TR RDS 4863 or any other modification thereof.
AAPA, in [0028] states” “In exemplary embodiments, the impact modified nylon 12 is GRILAMID® TR RDS 4863 from EMS-CHEMIE (Sumter, SC), a thermos-plastic polyamide based on aliphatic and cycloaliphatic blocks.”. Therefore, 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 to form Bond’s polymer material as a modified nylon 12 polyamide polymer as taught by AAPA for the reason that a skilled artisan would have been motivated by Bond’s suggestions to use any well-known polymer material to form is lacrosse head (at least [0034]), whereas a modified nylon 12 polyamide polymer is such a well-known material.
With respect to the stiffens, measure in a temperature, although, Bond is not specific regarding stiffens less than 40.0 lbf measured in temperature between 70ºF-75ºF)(note Bond in at least [0034], [0039], [0041] and [0042] and Fig. 10 regarding the stiffness measured in a given temperature) as mentioned previously, it has been held “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions. Therefore, 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 to form Bond with such dimensions since it has been held that “where the only difference between the
prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device”
see also In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case the device of Bond would have not operate differently with the dimension as claimed and would function appropriately with the claimed dimension. In addition, 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 to form Bond’s lacrosse head with such ratios as claimed for the reason that a skilled artisan would have been motivated in discovering, by routine experimentation, the optimize light transmission as well as the optimize stiffness, thus forming the optimize device, lacrosse head, that includes such properties to be transparent, have good impact strength, excellent durability, and excellent resistance to chemicals (as suggested by Bond and Sullivan). To that end note Bond’s [0034] “In an embodiment of the present invention, an exemplary lacrosse stick head is made from the single-shot injection molding of a custom material that satisfies desired stiffness and flexibility requirements under variable climate conditions.”. Accordingly, such stiffness would have been obvious to achieve based upon the used materials during the molding process.
With respect to a weight of about 110g to about 170g, in the same field of lacrosse heads formed by injection mold using polymeric material, Brine discloses a weight of a lacrosse to be between 4 ounces (e.g., 113 g) to 5.5 ounces (155 g)(3:40-46). Therefore, 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 to form Bond’s head’s weight as claimed for the reason that a skilled artisan would have been motivated by Brine’s suggestions to form a lacrosse head that is of a conventional weight.
With respect to “using packing out”, it is noted that it has been held that even though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself. The patentability of a
product does not depend on its method of production. If the product in the
product-by-process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The examiner takes the position that the final lacrosse head of the modified Bond would have been the same, regardless to the process of making it.
Nonetheless, if there is a doubt regarding such interpretations and in order to expedite prosecution, the examiner notes that in the field of utilizing injection molding process to form a desired part shape, Guergov discloses the use of “packing out” in at least 7:17-29, 14:57-15:5 and 18:7-50. Therefore, 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 to form Bond’s using packing out as taught by Guergov for the reason that a skilled artisan would have been motivated by Guergov’s suggestions that such process of injecting molded using packing out is controlled and produces a shaped part that is relieved of internal stress and thus greatly improved mechanical properties and weight reduced (e.g., 2:1-16). Such properties (e.g., strength- to improve mechanical properties and reduced weight) are much desired within the lacrosse head of Bond as “strong and durable” to sustain the large impact thereof, yet light enough to reduce user’s fatigue.
With respect to “wherein the weight of the lacrosse head is increased by about 4% to about 7% relative to a lacrosse head calculated weight based on a weight of the impact modified nylon 12 thermoplastic polyamide polymer without the packing out”, the examiner takes the position that the prior art includes such properties as such limitations are an outcome of the use of the modified nylon 12 material (as taught by Sullivan and/or AAPA) and the injection molding (as taught by Bond) via “packing out manner” (as taught by Guergov).
As per claim 4, with respect to wherein the lacrosse head can withstand more than 100 impacts prior to failure, wherein the lacrosse head has attained a kinetic energy of about 25 Joules to about 55 Joules prior to each impact, note also Fig. 10 as the lacrosse head is subject to test strain, impact via pneumatic cylinder as the head position upon a fixed box; again note Figs. 3-7 regarding the testing and see also [0040]-[0042] regarding such testing, of Bond. The modified Bond polymeric composition comprising the impact modified nylon 12 thermoplastic polyamide would have such properties to exhibit such withstand such impacts has the device (modified lacrosse head) attained such kinetic energy. Again, as mentioned above, a skilled artisan would have appreciated that the modified lacrosse head of Bond would have exhibited the same results under the same conditions as claimed, since his head is made of the same claimed material (as taught by Sullivan and/or AAPA) via same claimed manner of packing out (as taught by Guergov).
As per claim 5, with respect wherein about 60% to about 80% of light passes through the lacrosse head, note Sullivan’s [0012], [0025] and [0074]. Therefore, 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 to form Bond ‘s about 60% to about 80% of light passes through the lacrosse head for similar reasons discussed above with respect to claim 1.
As per claim 6, Bond is not specific regarding the lacrosse’s head weight about 110g to about 150g. However, Brine discloses a weight of a lacrosse to be between 4 ounces (e.g., 113 g) to 5.5 ounces (155 g)(3:40-46). Therefore, 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 to form Bond’s head’s weight as claimed for the reason that a skilled artisan would have been motivated by Brine’s suggestions to form a lacrosse head that is of a conventional weight.
As per claim 7, with respect to wherein the stiffness is about 20 lbf to about 31 lbf when measured at a temperature between 70°F-75°F, note Bond in at least [0034], [0039], [0041] and [0042] and Fig. 10 regarding the stiffness measured in a given temperature; Bond provides measurements of stiffness (e.g. Figs. 3-5) of his lacrosse head as a variable to different temperature (Figs. 4 and 5). Again, although the modified Bond is not specific regarding such ratio as claimed, the examiner maintains his position that it would have been obvious to discover such properties/ratio as claimed, for the same reasons discussed above with respect to claims 1 and 4.
With respect to wherein the lacrosse head can withstand more than 100 impacts prior to failure, wherein the lacrosse head has attained a kinetic energy of about 25 Joules to about 55 Joules prior to each impact, the modified Bond polymeric composition comprising the impact modified nylon 12 thermoplastic polyamide would have the same properties as the claimed device and thus would have exhibit the same results.
Bond is not specific regarding the lacrosse’s head weight having a weight of about 110 g to about 170 g. However, Brine discloses a weight of a lacrosse to be between 4 ounces (e.g., 113 g) to 5.5 ounces (155 g)(3:40-46). Therefore, 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 to form Bond’s head’s weight as claimed for the reason that a skilled artisan would have been motivated by Brine’s suggestions to form a lacrosse head that is of a conventional weight.
As per claim 8, with respect to wherein the stiffness is about 5 lbf to about 20 lbf when measured at a temperature between 70°F-75°F, note Bond in at least [0034], [0039], [0041] and [0042] and Fig. 10 regarding the stiffness measured in a given temperature; Bond provides measurements of stiffness (e.g. Figs. 3-5) of his lacrosse head as a variable to different temperature (Figs. 4 and 5). Although the modified Bond is not specific regarding such ratio as claimed, the examiner maintains his position that it would have been obvious to discover such properties/ratio as claimed, for the same reasons discussed above with respect to claims 1 and 4.
With respect to wherein the lacrosse head can withstand more than 20 impacts prior to failure, when the lacrosse head has attained a kinetic energy of about 25 Joules to about 55 Joules prior to each impact, the modified Bond polymeric composition comprising the impact modified nylon 12 thermoplastic polyamide would have the same properties as the claimed device and thus would have exhibit the same results.
Bond is not specific regarding the lacrosse’s head weight having a weight of about 100 g to about 130 g. However, Brine discloses a weight of a lacrosse to be between 4 ounces (e.g., 113 g) to 5.5 ounces (155 g)(3:40-46). Therefore, 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 to form Bond’s head’s weight as claimed for the reason that a skilled artisan would have been motivated by Brine’s suggestions to form a lacrosse head that is of a conventional weight.
As per claim 9, Bond discloses a lacrosse head (Figs. 3-10; and pars. [0019]-[0022] and [0032]-[0044]) comprising: opposing sidewalls joined at one end by a throat, the sidewalls diverging generally outwardly, and the sidewalls being connected at another end by a scoop (Fig. 10), wherein the lacrosse head comprises a polymer (the lacrosse head is formed by a custom polymer composition as blend of nylon polymer)([0035]-[0038]).
Bond is not specific regarding his head is made from a polymeric composition comprising an impact modified nylon 12 thermoplastic polyamide polymer using packing out, wherein about 60% to about 90% of light passes through the lacrosse head.
Bond is not specific regarding the weight of the lacrosse head has a weight of about 110 g to about 160 g, or wherein the lacrosse head has a weight of about 100 g to about 125 g; Bond is not specific regarding a stiffness of about 20lbf to about 35lbf when measured at a temperature between 70ºF-75ºF.
With respect to the polymeric composition, Sullivan discloses the use of modified nylon 12 (in [0029], [0030], [0033], [0034] and [0044]) that exhibit such light transparency of about 90% ([0012], [0025]-[0027] and [0074]). Therefore, 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 to form Bond’s polymer material as modified nylon 12 thermoplastic polyamide polymer, wherein about 60% to about 90% of light passes through as taught by Sullivan for the reason discussed above with respect to claim 1. Such properties within Bond would be much desire as the lacrosse head will result in a durable and pleasing device, suitable to high impact and stress.
Also, AAPA asserts that such material is well-known, as the well-known material or GRILAMID® TR RDS 4863 or any other modification thereof (e.g., [0028]). Therefore, 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 to form Bond’s polymer material as a modified nylon 12 polyamide polymer as taught by AAPA for the reason discussed above with respect to claim 1.
With respect to wherein the lacrosse head can withstand more than 100 impacts prior to failure, when the lacrosse head has attained a kinetic energy of about 25 Joules to about 55 Joules prior to each impact, the modified Bond- Sullivan/ AAPA polymeric composition comprising the impact modified nylon 12 thermoplastic polyamide would have the same properties as the claimed device and thus would have exhibit the same results.
With respect to the weight of the lacrosse head, Brine discloses a weight of a lacrosse to be between 4 ounces (e.g., 113 g) to 5.5 ounces (155 g)(3:40-46). Therefore, 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 to form Bond’s head’s weight as claimed for the reason that a skilled artisan would have been motivated by Brine’s suggestions to form a lacrosse head that is of a conventional weight.
With respect to the stiffens, measure in a temperature, although, Bond is not specific regarding the stiffness of about 20lbf to about 35lbf when measured at a temperature between 70ºF-75ºF (note Bond in at least [0034], [0039], [0041] and [0042] and Fig. 10 regarding the stiffness measured in a given temperature) as mentioned previously, it has been held “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions. Therefore, 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 to form Bond with such dimensions since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” see also In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case the device of Bond would have not operate differently with the dimension as claimed and would function appropriately with the claimed dimension. In addition, 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 to form Bond’s lacrosse head with such ratios as claimed for the reason that a skilled artisan would have been motivated in discovering, by routine experimentation, the optimize light transmission as well as the optimize stiffness, thus forming the optimize device, lacrosse head, that includes such properties to be transparent, have good impact strength, excellent durability, and excellent resistance to chemicals (as suggested by Bond and Sullivan). Once again, note Bond’s [0034] “In an embodiment of the present invention, an exemplary lacrosse stick head is made from the single-shot injection molding of a custom material that satisfies desired stiffness and flexibility requirements under variable climate conditions.”. Accordingly, such stiffness would have been obvious to achieve based upon the used materials during the molding process.
With respect to “using packing out”, the examiner maintains his position that the final lacrosse head of the modified Bond would have been the same, regardless to the process of making it. Also, as mentioned above Guergov discloses the use of “packing out” in at least 7:17-29, 14:57-15:5 and 18:7-50. Therefore, 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 to form Bond’s using packing out as taught by Guergov for the reason discussed above with respect to claim 1.
As per claim 10, with respect to wherein about 60% to about 80% of light passes through the lacrosse head, note Sullivan’s [0012], [0025] and [0074]. Therefore, 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 to form Bond’s about 60% to about 80% of light passes through the lacrosse head for similar reasons discussed above with respect to claim 1.
As per claim 11, with respect to wherein the lacrosse head can withstand more than 150 impacts prior to failure, wherein the lacrosse head has attained a kinetic energy of about 25 Joules to about 55 Joules prior to each impact, the modified Bond- Sullivan/ AAPA polymeric composition comprising the impact modified nylon 12 thermoplastic polyamide would have the same properties as the claimed device and thus would have exhibit the same results.
As per claim 13, with respect to wherein to the stiffness is about 20 lbf to about 30 lbf when measured at a temperature between 70°F-75°F, note Bond in at least [0034], [0039], [0041] and [0042] and Fig. 10 regarding the stiffness measured in a given temperature; Bond provides measurements of stiffness (e.g. Figs. 3-5) of his lacrosse head as a variable to different temperature (Figs. 4 and 5).
Although the modified Bond is not specific regarding such ratio as claimed, the examiner maintains his position that it would have been obvious to discover such properties/ratio as claimed, for the same reasons discussed above with respect to claims 1 and 4.
With respect wherein the lacrosse head can withstand more than 200 impacts prior to failure, wherein the lacrosse head has attained a kinetic energy of about 25 Joules to about 55 Joules prior to each impact, the modified Bond- Sullivan/ AAPA polymeric composition comprising the impact modified nylon 12 thermoplastic polyamide would have the same properties as the claimed device and thus would have exhibit the same results.
With respect to the weight is about 130g to about 150g, Brine discloses a weight of a lacrosse to be between 4 ounces (e.g., 113 g) to 5.5 ounces (155 g)(3:40-46). Therefore, 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 to form Bond’s head’s weight as claimed for the reason that a skilled artisan would have been motivated by Brine’s suggestions to form a lacrosse head that is of a conventional weight.
As per claim 22, since the claim’s limitations are very similar to claim 9 (aside from the ratios), the examiner states that claim 22 is rejected over Bond, Sullivan/ AAPA, Miceli and Guergov for the same reasons discussed above with respect to claim 9. It is important to note that such statement by the examiner is not merely to “ignore” the claim’s limitations; rather, the examiner attempts to simplify the above rejection, and not “paste and copy” similar limitations, thus to create unnecessary lengthy Office action.
The examiner maintains his position that it would been obvious to discover such ratios for the same reasons discussed above with respect to at least claim 9.
As per claim 23, with respect to the weight is about 100 g to about 125 g, note Miceli’s [0057] as the weight is range between 80-125 grams.
With respect to the stiffness is about 10 lbf to about 20 lbf when measured at a temperature between 70°F-75°F, note Bond in at least [0034], [0039], [0041] and [0042] and Fig. 10 regarding the stiffness measured in a given temperature; Bond provides measurements of stiffness (e.g. Figs. 3-5) of his lacrosse head as a variable to different temperature (Figs. 4 and 5).
Although the modified Bond- Sullivan/ AAPA is not specific regarding such ratio as claimed, the examiner maintains his position that it would have been obvious to discover such properties/ratio as claimed, for the same reasons discussed above with respect to claims 1 and 4.
With respect to wherein the lacrosse head can withstand more than 35 impacts prior to failure, wherein the lacrosse head has attained a kinetic energy of about 25 Joules to about 55 Joules prior to each impact, the modified Bond- Sullivan/ AAPA polymeric composition comprising the impact modified nylon 12 thermoplastic polyamide would have the same properties as the claimed device and thus would have exhibit the same results.
With respect to the wight, Brine discloses a weight of a lacrosse to be between 4 ounces (e.g., 113 g) to 5.5 ounces (155 g)(3:40-46). Therefore, 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 to form Bond’s head’s weight as claimed for the reason that a skilled artisan would have been motivated by Brine’s suggestions to form a lacrosse head that is of a conventional weight
Response to Arguments
Applicant's arguments filed 3/27/2026 have been fully considered but they are not persuasive.
Applicant argued that the claimed lacrosse head, is not obvious as applicant stated “The claimed characteristics are not simply inherent characteristics of the polymer used to make the lacrosse head” (remarks page 7). Appliance once again argued that the use of the impact modified nylon 12 polymeric material utilizes with a packing out manner results in properties and characteristics not taught by the prior art. Applicant asserted that the results of the weight of the lacrosse head is increased by about 4% to about 7% relative to a lacrosse head calculated weight based on a weight of the impact modified nylon 12 thermoplastic polyamide polymer without the packing out”, is contrary to accepted wisdom and would not have been obvious (remarks pages 11+). The examiner respectfully disagrees.
As argued by the examiner, the claimed subject matter is “a device”, i.e., a lacrosse head, and as set forth above, the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The examiner maintains his position that the final lacrosse head of the modified Bond would have been the same, regardless to the process of making it.
Second, applicant’s arguments as his lacrosse head exhibit mechanical properties not taught by the prior art, is based upon the use of a well-known material (i.e., impact modified nylon 12) via a well-known process of “packing out”, to form his lacrosse head. As argued above, the prior art (Sullivan and/or AAPA) discloses the use of impact modified nylon 12, and the use of a packing out process (as taught by Guergov). The examiner asserts that the prior art would have exhibited the same results under the same conditions as claimed, since the modified lacrosse head of Bond would have been made of the same claimed material (as taught by Sullivan and/or AAPA) and would have been made via a packing out (as taught by Guergov), having same ratio of weight (as taught by Brine).
To that end, the Patent Trial and Appeal Board (mailed 9/18/2025), discussed applicant’s remarks as such packing out of the impact modified nylon 12 would have resulted in unobvious properties, and stated “Additionally, to the extent that any claim recites or requires the lacrosse head to have a specific durability, there is inadequate evidence that a lacrosse head made of a polymeric composition that includes an impact modified nylon 12 thermoplastic polymer formed without packing out would not result in the claimed durability.” (page 9) The Board concluded “Therefore, we determine that the evidence relied upon by the Appellant as demonstrating surprising and unexpected mechanical properties is not strong evidence.” (page 10).
In sum, the examiner asserts that the prior art includes all the structure as claimed and would have exhibit the same mechanical characteristics, as “wherein the weight of the lacrosse head is increased by about 4% to about 7% relative to a lacrosse head calculated weight based on a weight of the impact modified nylon 12 thermoplastic polyamide polymer without the packing out”, as such is an outcome of the use of the modified nylon 12 material (as taught by Sullivan and/or AAPA) via “packing out manner” (as taught by Guergov).
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 AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.K/Examiner, Art Unit 3711 4/24/2026 /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711
Prosecution Insights