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 Objections
Claims 7 and 18 objected to because of the following informalities: the letter C as a reference character should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m). Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng US 5,944,618 (“Cheng”).
As per claim 1, Cheng discloses A Training sport implement shaft (club shaft 10)(Fig. 2; 3:18-65; 4:18-5:60), comprising:
a first end (end 20 of grip 12)(Fig. 2; 3:18-35),
a second end (end 48 of tip 16)(Fig. 2; 3:55-65), and a bat middle portion having a bat handle portion and a bat barrel portion (construed as middle portion between grip portion 12 and tip portion 16 to include portions of grip 12-body 14-tip 16)(Fig. 2) ,wherein the bat middle portion connects the bat first end with the bat second end (Fig. 2), and wherein the bat handle portion includes a grip collar (control section 18)(Fig. 2; 3:37-54), wherein the grip collar (18) includes a first collar end separated from a second collar end via a collar center (section 18 includes conically tapered portions 26-28-30)(Fig. 2; 3:37+) , wherein the first collar end includes a first collar end diameter, the second collar end includes a second collar end diameter and the collar center includes a collar center diameter (diameters of respective portions 26-28-30)(Fig. 2) ,wherein the collar center diameter is larger than the first collar end diameter and the second collar end diameter (diameter “36” is a central diameter and larger than first and second diameter; e.g., larger than diameter “32” and diameter “38”)(Fig. 2), wherein the first collar end is separated from the collar center via a first grip collar structure surface (Fig. 2),wherein the first grip collar structure surface includes a first curved portion having a First Radius approximately equal to (Fig. 2), and wherein the second collar end is separated from the collar center via a second grip collar structure surface (Fig. 2), wherein the second grip collar structure surface includes a tapered surface which tapers annularly inward (e.g., of section 26)(Fig. 2) and wherein the bat handle portion includes a handle-barrel end and the bat barrel portion includes a barrel-handle end, wherein the handle-barrel end and the barrel- handle end are separated by a handle-barrel connecting surface wherein the handle- barrel connecting surface is concavely curved (construed as the concave-curve section between end portion 14 and end portion 18 at junction 34)(Fig. 2).
With respect to the device as “A Baseball Training Bat” as recites in the preamble, it is noted that it has been held that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
With respect to the term “bat”, such construed as “an intended use” of the device has been “a bat”, and to that end, it is further noted that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The examiner takes the position that Cheng’s device is fully configure to be used as “bat” to strike a ball and alike.
Cheng is not specific regarding wherein the a First Radius approximately equal to 1 inch, +15%.
Cheng is not specific regarding the connecting surface concavely curved at an angle of about 8º to about 10º,±15%.
Although, Cheng is not specific regarding such dimensions as claimed, it is noted that it has been held that 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, 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). 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 Cheng’s device with such dimensions as claimed 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. In this case the device of Cheng would have not operate differently with the dimension as claimed and would function appropriately with the claimed dimension to include grip means, that is suitable to be grasp by a variety of users’ for different age, size, skill, and alike, for practice swinging of the sport implement.
Further, it appears that applicant places no criticality on the range claimed, and merely indicates that the range “may” be within the claimed dimension and one of ordinary skill would have concluded that such dimensions are an obvious for allowing different users’ size, skill and alike, to be able to grasp the device.
As per claim 2, Cheng discloses wherein the tapered surface is tapered at an angle a, in Fig. 2 regarding the tapered surface of section 26.
Cheng is not specific regarding wherein the angle a is about 31º± 15%.
The examiner takes the position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1. 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 Cheng’s angle as claimed or the reason that a skilled artisan would have been motivated as an obvious modification of dimension that would not perform differently with such angle as claimed.
As per claim 3, Cheng discloses wherein the second grip collar structure surface further includes a second curved portion having a Third Radius, in Fig. 2 regarding the second grip collar structure including such radius as claimed, of the tapered section 26.
Cheng is not specific regarding wherein the Third Radius is about 2 inches,±15%. The examiner takes the position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1.
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 Cheng’s third radius as claimed or the reason that a skilled artisan would have been motivated as an obvious modification of dimension that would not perform differently with such radius as claimed.
As per claim 4, with respect to wherein the grip collar structure surface includes a Second Radius, note Cheng Fig. 2 regarding the tapered sections 30 to include such radius. Cheng is not specific regarding wherein the Second Radius is about to 0.20 inches, ± 15%. The examiner takes the position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1.
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 Cheng’s second radius as claimed or the reason that a skilled artisan would have been motivated as an obvious modification of dimension that would not perform differently with such radius as claimed.
As per claim 5, Cheng discloses wherein the shaft is constructed from at least one of a wood material and a composite material (such as wood, 4:18-39; and composite material/s 5:42-60).
As per claim 6, with respect to wherein the middle portion ranges between about inches in length and about inches in diameter note Fig. 2 in conjunction to 4:18-40 as the size of the shaft and the different sections.
Cheng is not specific regarding the length is between about 14 inches,±15% in and about 0.98 to about 1.172 inches in diameter,±15%. The examiner takes the position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1. 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 Cheng’s middle portion as claimed or the reason that a skilled artisan would have been motivated as an obvious modification of dimension that would not perform differently with such middle portion as claimed.
As per claim 7, Cheng discloses wherein the collar center includes a collar center diameter (C) equal to at least one of about inches in Fig. 2 regarding the center collar diameter 36. Cheng is not specific regarding (C) equal to at least one of about 1.3 inches,±15%, about 1.75 inches,±15% and about 2.2 inches,±15%. The examiner takes the position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1.
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 Cheng’s center collar diameter as claimed or the reason that a skilled artisan would have been motivated as an obvious modification of dimension that would not perform differently with such center collar diameter as claimed.
As per claim 8, Cheng discloses wherein the handle includes a handle length of between about inches 8-10 inches (4:41-52 in conjunction to Fig. 2). Cheng is not specific regarding the handle length of between about 14 inches,±15% and about 19 inches,±15%. The examiner takes the position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1.
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 Cheng’s handle length as claimed or the reason that a skilled artisan would have been motivated as an obvious modification of dimension that would not perform differently with such handle as claimed.
As per claim 9, Cheng discloses wherein the bat barrel includes a bat barrel length ranging between 17 inches to 26 inches and between 13 inches to 20 inches (the length of main body 14 as portions 40 and 42)(Fig. 2; 4:53-64)
As per claim 10, Cheng discloses wherein the training device includes a training length that ranges from between 33 inches to 46 inches (4:18-22). Cheng is not specific regarding bat length that ranges from between about 28 inches,±15% and about 34 inches,±15%. The examiner takes the position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1.
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 Cheng’s bat length as claimed or the reason that a skilled artisan would have been motivated as an obvious modification of dimension that would not perform differently with such bat length as claimed.
As per claim 11, since the claim’s limitations are very similar to claim 1, the examiner states that claim 11 is rejected over Cheng for the same reasons discussed above with respect to claim 1. Since there is no apparent different structural and/or functional limitations of the device of claim 1 and the device of claim 10, 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.
As per claim 12, with respect to wherein the first collar end is separated from the collar center via a first grip collar structure surface, wherein the first grip collar structure surface includes a curved portion having a First Radius and wherein the second collar end is separated from the collar center via a second grip collar structure surface, wherein the second grip collar structure surface includes a tapered surface which tapers annularly inward, note Fig. 2 in conjunction to 3:37+ regarding diameters of respective portions 26-28-30; and diameter “36” is a central diameter and larger than first and second diameter; e.g., larger than diameter “32” and diameter “38”.
Cheng is not specific regarding wherein the a First Radius approximately equal to 1 inch, +15%. The examiner maintains his position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1.
As per claim 13, Cheng discloses wherein the tapered surface is tapered at an angle a, in Fig. 2 regarding the tapered surface of section 26.
Cheng is not specific regarding wherein the angle a is about 31º± 15%.
The examiner maintains his position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claims 1 and 2.
As per claim 14, Cheng discloses wherein the second grip collar structure surface further includes a second curved portion having a Third Radius, in Fig. 2 regarding the second grip collar structure including such radius as claimed, of the tapered section 26. Cheng is not specific regarding wherein the Third Radius is about 2 inches,±15%. The examiner maintains his position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claims 1 and 3.
As per claim 15, with respect to wherein the grip collar structure surface includes a Second Radius, note Cheng Fig. 2 regarding the tapered sections 30 to include such radius. Cheng is not specific regarding wherein the Second Radius is about to 0.20 inches, ± 15%. The examiner maintains his position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claims 1 and 4.
As per claim 16, Cheng discloses wherein the shaft is constructed from at least one of a wood material and a composite material (such as wood, 4:18-39; and composite material/s 5:42-60).
As per claim 17, with respect to wherein the middle portion ranges between about inches in length and about inches in diameter note Fig. 2 in conjunction to 4:18-40 as the size of the shaft and the different sections. Cheng is not specific regarding the length is between about 14 inches,±15% in and about 0.98 to about 1.172 inches in diameter,±15%. The examiner t maintains his position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claims 1 and 6.
As per claim 18, Cheng discloses wherein the collar center includes a collar center diameter (C) equal to at least one of about inches in Fig. 2 regarding the center collar diameter 36. Cheng is not specific regarding (C) equal to at least one of about 1.3 inches,±15%, about 1.75 inches,±15% and about 2.2 inches,±15%. The examiner maintains his position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claims 1 and 7
As per claim 19, with respect to wherein at least one of, the handle includes a handle length of between about 14 inches, +15% and about 19 inches, +15%, and the bat barrel portion includes a bat barrel length of between 13 inches, +15% and about 16 inches, +15%, Cheng discloses wherein the bat barrel includes a bat barrel length ranging between 17 inches to 26 inches and between 13 inches to 20 inches (the length of main body 14 as portions 40 and 42)(Fig. 2; 4:53-64) and wherein the handle includes a handle length of between about inches 8-10 inches (4:41-52 in conjunction to Fig. 2). Cheng is not specific regarding the handle length of between about 14 inches,±15% and about 19 inches,±15%. The examiner maintains his position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claims 1 and 8.
As per claim 20, Cheng discloses wherein the training device includes a training length that ranges from between 33 inches to 46 inches (4:18-22). Cheng is not specific regarding bat length that ranges from between about 28 inches,±15% and about 34 inches,±15%. The examiner maintains his position that such modification to Cheng would have been obvious for the same reasons discussed above with respect to claim 1 and 10.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.K/Examiner, Art Unit 3711 12/30/2025
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711