DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed 07/21/2025 has been entered. Claims 1-20 are pending in the application.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Battis (6273835).
Regarding claim 1, Battis (Figures 1-11) teaches a cover for an item of sporting equipment, the cover comprising: a viscoelastic sleeve (10, 10’) (Col. 5, Lines 58-67; Col. 6, Lines 1-16) configured to couple to the item of sporting equipment, wherein a friction force between the viscoelastic sleeve and the item of sporting equipment retains the viscoelastic sleeve on the item of sporting equipment (Col. 6, Lines 1-16), wherein the viscoelastic sleeve comprises a composite material comprising one or more fillers selected from a group consisting of natural fibers, synthetic fibers (Col. 5, Lines 11-18), boron nitride nanotubes, carbon nanotubes, and graphene.
Regarding claim 2, Battis (Figures 1-11) teaches the viscoelastic sleeve is configured to be expanded prior to being slid onto the item of sporting equipment (Col. 6, Lines 5-16).
Regarding claim 3, Battis (Figures 1-11) teaches the viscoelastic sleeve is configured to fixedly couple to the item of sporting equipment (Col. 6, Lines 5-16).
Regarding claim 9, Battis (Figures 1-11) teaches the item of sporting equipment is a field hockey stick (Fig. 1, Part No. 40) (Col. 3, Lines 46-49), a lacrosse stick, a tennis racquet, or a bat.
Regarding claim 10, Battis (Figures 1-11) teaches a pre-taped hockey stick comprising: a hockey stick comprising a shaft and a blade (Se e fig. 1); and a viscoelastic wrap (10, 10’) (Col. 5, Lines 58-67; Col. 6, Lines 1-16) coupled to the blade of the hockey stick, wherein the viscoelastic wrap comprises a composite material comprising one or more fillers selected from a group consisting of natural fibers, synthetic fibers (Col. 5, Lines 11-18), boron nitride nanotubes, carbon nanotubes, and graphene.
Regarding claim 11, Battis (Figures 1-11) teaches the viscoelastic wrap is fixedly coupled to the blade of the hockey stick (Col. 6, Lines 1-16).
Regarding claim 12, Battis (Figures 1-11) teaches the viscoelastic wrap comprises opposing sheets of viscoelastic material (10, 10’) coupled to opposing surfaces of the blade (Col. 6, Lines 1-16).
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 4-5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Battis in view of Wells (20090324862).
Regarding claim 4, Battis (Figures 1-11) teaches a viscoelastic sleeve (10, 10’) (Col. 5, Lines 58-67; Col. 6, Lines 1-16).
Battis does not teach the viscoelastic sleeve comprises a sheet with a plurality of perforations defined therein.
Wells (Figures 1-8) teaches the viscoelastic sleeve (Para. 0029, 0036) comprises a sheet with a plurality of perforations (Fig. 2, Part No. 52) (Para. 0036) defined therein.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with a plurality of perforations defined therein as taught by Wells so as to permit heat transfer therethrough (Wells: Para. 0036).
Regarding claim 5, the modified Battis (Figures 1-11) teaches the viscoelastic sleeve (10, 10’) (Col. 5, Lines 58-67; Col. 6, Lines 1-16) comprises a web of joined elongated members (Fig. 1, Part No. 12, 18, 22) (Col. 3, Lines 46-56).
Regarding claim 15, Battis (Figures 1-11) teaches a viscoelastic wrap (10, 10’) (Col. 5, Lines 58-67; Col. 6, Lines 1-16).
Battis does not teach apertures of the viscoelastic wrap have a width in a range of 0.01 to 0.1 mm.
Wells (Figures 1-8) teaches a viscoelastic wrap (Para. 0029, 0036) having apertures (Fig. 2, Part No. 52) (Para. 0036), the apertures inherently having a width (though a specific value is not disclosed).
Where 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 (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the combination of Battis and Wells with apertures of the viscoelastic wrap have a width in a range of 0.01 to 0.1 mm as a means of finding optimum or workable ranges by routine experimentations (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with apertures as taught by Wells so as to permit heat transfer therethrough (Wells: Para. 0036).
Claim 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Battis in view of Gurijala (20210008840).
Regarding claim 6, Battis (Figures 1-11) teaches a viscoelastic sleeve (10, 10’) (Col. 5, Lines 58-67; Col. 6, Lines 1-16), the sleeve formed from an elastomer (Col. 3, Lines 57-63).
Battis does not teach the viscoelastic sleeve comprises a self-healing material.
It is noted that applicant’s specification (Para. 0050) discloses: “in some embodiments, the viscoelastic sleeve 10 may be comprised of a self-healing material. In some embodiments, the viscoelastic sleeve 10 comprises a vitrimer elastomer. Vitrimers are cross-linked polymeric materials that can behave differently at different temperatures. For example, the network topology of a vitrimer may be rearranged, while retaining its cross-link density and insolubility in solvents, at all temperatures. Vitrimers are therefore capable of shape reconfiguration, i.e., welding, and self-healing, due to associative covalent network reactions that occur above a Vitrimer transition temperature (Tv). This principle can enable the viscoelastic sleeve 10 to self-heal when damaged by thermally induced, or light induced topology rearrangements, via the associative network exchange reactions.”
Gurijala (Figures 1-4) teaches using a vitrimer (Para. 0048, 0079) material (Para. 0081) for reinforcement of sports equipment (Para. 0081).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with a self-healing material as taught by Gurijala as a means of simple substitution of one known element (an elastomer used for sports equipment) for another (a vitrimer used for sports equipment) to obtain predictable results (an elastomeric/stretchable material used for sports equipment) (See: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)).
Regarding claim 7, Battis (Figures 1-11) teaches a viscoelastic sleeve (10, 10’) (Col. 5, Lines 58-67; Col. 6, Lines 1-16) comprises an elastomer (Col. 3, Lines 57-63).
Battis does not teach the viscoelastic sleeve comprises a vitrimer elastomer.
Gurijala (Figures 1-4) teaches using a vitrimer (Para. 0048, 0079) material (Para. 0081) for reinforcement of sports equipment (Para. 0081).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with a vitrimer elastomer as taught by Gurijala as a means of simple substitution of one known element (an elastomer used for sports equipment) for another (a vitrimer used for sports equipment) to obtain predictable results (an elastomeric/stretchable material used for sports equipment) (See: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Battis in view of Lammer (20100125013).
Regarding claim 8, Battis (Figures 1-11) teaches the viscoelastic sleeve (10, 10’) comprises a composite material (Col. 5, Lines 11-20).
Battis does not teach the one or more fillers is selected from a group consisting of boron nitride nanotubes, carbon nanotubes, and graphene, whereby an operational temperature range of the viscoelastic sleeve is extended.
Lammer (Figure 10) teaches the one or more fillers is selected from a group consisting of boron nitride nanotubes, carbon nanotubes, and graphene (Para. 0044), whereby an operational temperature range of the viscoelastic sleeve is extended.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with the one or more fillers is selected from graphene as taught by Lammer as a means of selecting a known material (graphene) based on its suitability for its intended use (a sleeve for sporting equipment) (See: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Battis.
Regarding claim 13, Battis (Figures 1-11) teaches the opposing sheets of viscoelastic material inherently have a thickness (though a specific value is not disclosed).
Battis does not teach the opposing sheets of viscoelastic material have a thickness in a range of 0.01 mm to 0.1 mm.
Where 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 (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with the opposing sheets of viscoelastic material have a thickness in a range of 0.01 mm to 0.1 mm as a means of finding optimum or workable ranges by routine experimentations (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Regarding claim 14, Battis (Figures 1-11) teaches the opposing sheets of viscoelastic material inherently have a thickness (though a specific value is not disclosed).
Battis does not teach the opposing sheets of viscoelastic material have a thickness of less than 0.1 mm.
Where 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 (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with the opposing sheets of viscoelastic material have a thickness of less than 0.1 mm as a means of finding optimum or workable ranges by routine experimentations (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Battis in view of Wells (20090324862).
Regarding claim 16, Battis (Figures 1-11) teaches a method of applying a hockey stick blade cover to a hockey stick blade, the method comprising: expanding a viscoelastic sleeve in at least a first direction and a second direction (Col. 6, Lines 7-9); wherein the second direction is perpendicular to the first direction; sliding the expanded viscoelastic sleeve over a blade of a hockey stick (Col. 6, Lines 7-9); and releasing the viscoelastic sleeve, thereby allowing the viscoelastic sleeve to contract (Col. 6, Lines 7-9).
Battis does not teach the viscoelastic sleeve comprises an elastomer with apertures such that expanding the viscoelastic sleeve creates a web pattern.
Wells (Figures 1-8) teaches the viscoelastic sleeve comprises an elastomer with apertures such that expanding the viscoelastic sleeve creates a web pattern (Para. 0036).
It is noted that the prior art of Wells (Para. 0036) discloses: “sleeve 10 may be constructed of a flexible elastic material… the sleeve may be formed with a plurality of apertures 52 through the walls of the sleeve to permit heat transfer therethrough as illustrated in FIG. 2”, so that “expanding the viscoelastic sleeve creates a web pattern” as claimed.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with the viscoelastic sleeve comprises an elastomer with apertures as taught by Wells so as to permit heat transfer therethrough (Wells: Para. 0036).
Regarding claim 17, the modified Battis (Figures 1-11) teaches expanding the viscoelastic sleeve comprises expanding the viscoelastic sleeve from an undeformed configuration (Col. 6, Lines 7-9) to a first deformed configuration (Col. 6, Lines 7-9), wherein releasing the viscoelastic sleeve comprises releasing the viscoelastic sleeve from the first deformed configuration to a second deformed configuration (Col. 6, Lines 7-9), and wherein the viscoelastic sleeve encloses a greater volume when in the first deformed configuration than in the second deformed configuration (Col. 6, Lines 7-9).
The modified Battis does not teach expanding the viscoelastic sleeve from an undeformed configuration to a first deformed configuration such that the apertures are nonuniformly distributed in the web pattern.
Wells (Figures 1-8) teaches expanding the viscoelastic sleeve from an undeformed configuration to a first deformed configuration such that the apertures are nonuniformly distributed in the web pattern (Para. 0036).
It is noted that the prior art of Wells (Para. 0036) discloses: “sleeve 10 may be constructed of a flexible elastic material… the sleeve may be formed with a plurality of apertures 52 through the walls of the sleeve to permit heat transfer therethrough as illustrated in FIG. 2”, so that expanding the viscoelastic sleeve from an undeformed configuration to a first deformed configuration results in “the apertures are nonuniformly distributed in the web pattern” as claimed.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Battis with apertures that are nonuniformly distributed in a web pattern as taught by Wells so as to permit heat transfer therethrough (Wells: Para. 0036).
Regarding claim 18, the modified Battis (Figures 1-11) teaches the viscoelastic sleeve encloses a greater volume when in the second deformed configuration than in the undeformed configuration (Col. 6, Lines 7-9).
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Battis in view of Gurijala (20210008840) and Cole (20170239533).
Regarding claim 19, Battis (Figures 1-11) teaches a method of manufacturing an item of sporting equipment, the method comprising applying a viscoelastic material (10, 10’) (Col. 5, Lines 58-67; Col. 6, Lines 1-16) comprising an elastomer to the item of sporting equipment.
Battis does not teach a Vitrimer elastomer, and an additive manufacturing process selected from a group consisting of liquid additive manufacturing, stereolithography, powder additive manufacturing, or selective laser sintering.
Gurijala (Figures 1-4) teaches using a vitrimer (Para. 0048, 0079) material (Para. 0081) for reinforcement of sports equipment (Para. 0081).
Cole (Figures 1-4) teaches applying a cover (128) (Para. 0019) to a sports implement using an additive manufacturing process selected from a group consisting of liquid additive manufacturing, stereolithography, powder additive manufacturing, or selective laser sintering (Para. 0027).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Battis with a self-healing material as taught by Gurijala as a means of simple substitution of one known element (an elastomer used for sports equipment) for another (a vitrimer used for sports equipment) to obtain predictable results (an elastomeric/stretchable material used for sports equipment) (See: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)), and to provide Battis with an additive manufacturing process as taught by Cole as a means of applying a cover to a sports implement using laser sintering (Cole: Para. 0027).
Regarding claim 20, the modified Battis (Figures 1-11) teaches the viscoelastic material is a composite material comprising, one or more fillers selected from a group consisting of natural fibers, synthetic fiber (Col. 5, Lines 11-20), nanoparticles, boron nitride nanotubes (BNNTs), carbon nanotubes (CNTs), or graphene.
Response to Arguments
Applicant's arguments filed 07/21/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art of Battis does not teach the recitation in claim 1 of “the viscoelastic sleeve comprises a composite material comprising one or more fillers selected from a group consisting of natural fibers, synthetic fibers, boron nitride nanotubes, carbon nanotubes, and graphene”, this is not found persuasive because Battis (Col. 5, Lines 11-18) discloses: “FIG. 10 is a cross-sectional view of the sleeve having a fabric or fiber weave layer 50 with a rubberized elastomeric coating layer 52 bonded thereto. The fiber weave layer 50 can be braided, knit, woven or anything of the like and made of any individual or combination of fabric-like materials such as Kevlar.RTM., Spectra.RTM., Vectron.RTM., Lycra.RTM., polyester, nylon, fiberglass, Dacron.RTM., and cotton although other fabric materials could be used”. It is noted that Kevlar is a synthetic fiber, and cotton is a natural fiber, so that the prior art of Battis teaches the recited limitation of claim 1. Applicant argues that the fiber of Battis are not fillers. This is not found persuasive because claims are interpreted using a broadest reasonable interpretation (BRI). Under BRI, a filler is defined to mean “a thing put in a space or container to fill it”. It is noted that the fibers of Battis fill a space and are therefore a filler under BRI.
Applicant argues that the prior art of Battis does not teach the recitation in claim 16 of “the viscoelastic sleeve comprises an elastomer with apertures such that expanding the viscoelastic sleeve creates a web pattern”, this is not found persuasive because Claim 16 is rejected under 35 USC over Battis in view of Wells. The prior art of Wells (Para. 0036) discloses: “sleeve 10 may be constructed of a flexible elastic material… the sleeve may be formed with a plurality of apertures 52 through the walls of the sleeve to permit heat transfer therethrough as illustrated in FIG. 2”, so that “expanding the viscoelastic sleeve creates a web pattern” as claimed.
Applicant argues (to claims 19-20) that a skilled person would have had no reason to combine Battis, Gurijala, and Cole and the combination would not result in the claimed invention, this is not found persuasive because obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the prior art of Battis, Gurijala, and Cole are directed to sports equipment and provide some teaching, suggestion, or motivation to combine the prior art either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
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.
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/C.G./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711