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
Claim 12 objected to because of the following informalities: the claim is canceled and no text should be presented (note 37 CFR. 121C(4)”When claim text shall not be presented; canceling a claim”). 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) 1-3, 5-7, 9-11, 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borowsky US 2020/0276486 (“Borowsky”) in view of Wells US 2009/0324862 (“Wells”).
As per claim 1, Borowsky discloses a hockey stick sleeve device configured for protecting a foot of a hockey stick (cover 10)(Figs. 1-10; paragraphs [0009]-[0012] and [0023]-[0027]) , the device comprising:
a sleeve being configured for being positioned on the foot of a hockey stick (Figs. 1-10; [0009], [0023]-[0024] and [0026]), the sleeve having an exterior surface (Figs. 1-10) and an interior surface (Figs. 3, 10; [0024]-[0025]), the exterior surface being a cloth material, the interior surface being an elastic material (the cover 10 is flexible fabric/cloth)([0010] and [0023]) wherein the sleeve is configured for conforming to a shape of the hockey stick such that the sleeve is configured for being positioned on the hockey stick (Figs. 1-10; [0009], [0010] and [0026]) while playing hockey with the hockey stick (the sleeve is configure to be used during a hockey play)([0008], [0009], [0011], [0012], [0024] and [0027]);
an opening of the sleeve being positioned on a first end of the sleeve, the opening being configured for being positioned proximate to an end of the foot of the hockey stick (open end 12)(Figs. 1-10; [0023] and [0026]); and
a tip of the sleeve being positioned on a second end of the sleeve, the tip being configured for being positioned on a toe of the foot of the hockey stick (closed end 13)(Figs. 1-7; [0023] and [0026]).
Borowsky is not specific regarding the elastic material having an adhesive, the adhesive being configured for adhering to the foot of the hockey stick.
However, in the same field of sleeves for hocky blade to be used during a play, Wells discloses adhesive means (layer 38) of sleeve 10 (Figs. 4 and 8; [0034], [0036] and [0040]-[0043]) and the sleeve further includes an inner elastic material ([0010], [0014], [0036] and [0040]).
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 Borowsky’s the elastic material having an adhesive, the adhesive being configured for adhering to the foot of the hockey stick as taught by Wells for the reason that a skilled artisan would have been motivated by Wells’ explicit suggestions to use an adhesive means to a hockey sleeve, while the sleeve is configure to protect the blade during a hockey play.
Lastly, with respect to the inner elastic material, the examiner construed Borowsky’s inner material of the flexible fabric sleeve as such. However, if there is any doubt as such “inner flexible material” is an “elastic material”, the examiner notes that Wells discloses an inner elastic material in [0010], [0014], [0036] and [0040]. 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 Borowsky’s inner material as an elastic material as taught by Wells as it is known to select materials suitable for its intended use; see in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Wells explicitly suggested that such elastic material provide elasticity to allow the sleeve to be stretch over the blade for cover and protection thereof (e.g., [0040]). In addition, attention to Borowsky’ [0026] regarding using elastic material within his sleeve/cover. Such suggestions by Borowsky would have motivated those of ordinary skill in the art to form the inner flexible material of Borowsky’s cover with an elastic inner material for such purposes, to allow a tight grip of the sleeve thereupon the blade, which will be much desired to insure a tight fit between the sleeve and the blade.
As per claim 2, although Borowsky is not specific regarding further comprising the cloth material being a felted fabric, as mention above the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. Borowsky in [0023] states that any known fabric can be used in forming his device, 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 Borowsky’s cloth material as felted fabric for the reason that a skilled artisan would have been motivated in using known material suitable for their intended used as material configure to cover and protect as sport implement, such as an hockey blade.
As per claim 3, Borowsky discloses further comprising the cloth material being liquid resistant, the cloth material being configured for protecting the foot of the hockey stick from moisture and impact damages ([0023]).
As per claim 5, Borowsky discloses further comprising the sleeve having a cavity, the cavity defining a space for the foot of the hockey stick to be nested within (Figs. 2, 3 and 10; [0024] and [0026]).
As per claim 6, with respect to further comprising the elastic material of the interior surface being configured for retaining to the foot of the hockey stick by compression and friction from the adhesive, note Wells’ Figs. 4 and 8 [0034]-[0038] and [0043] regarding the adhesive layer 38 of sleeve 10 to be position upon the hockey blade; also, note [0010], [0014], [0036] and [0040] regarding the elastic inner means of the sleeve.
As per claim 7, with respect to further comprising the sleeve being removable from the foot of the hockey stick, note Borowsky’s [0025] and Wells’ [0042]
As per claim 9, with respect to further comprising the opening being a circular aperture, note Borowsky’s Figs. 2 and 3 regarding opening 12. Also, such configuration would have been merely a matter of user’s choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product was significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1976).
As per claim 10, Borowsky discloses further comprising the opening providing access to the cavity of the sleeve (Figs. 2, 3 and 10; [0024]-[0026]).
As per claim 11, with respect to further comprising the opening having a perimeter, the perimeter being elastic material, wherein the opening being is configured for expanding, note Borowsky’ [0026]” Optionally, the cover 10 can feature an elastic material located in the edge of the upper portion 17 of the cover to allow it to grip the hockey stick shaft a little more tightly.”. 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 Borowsky’s opening with elastic material as explicitly suggested by Borowsky.
As per claim 13, Borowsky discloses further comprising the tip sealing the second end of the sleeve wherein enclosing the cavity of the sleeve (closed end 13)(Figs. 1-7; [0023] and [0026]).
As per claim 14, Borowsky discloses a hockey stick sleeve device configured for protecting a foot of a hockey stick(cover 10)(Figs. 1-10; paragraphs [0009]-[0012] and [0023]-[0027]), the device comprising:
a sleeve being configured for being positioned on the foot of a hockey stick(Figs. 1-10; [0009], [0023]-[0024] and [0026]), the sleeve having an exterior surface and an interior surface(Figs. 1-10), the exterior surface being a cloth material, the cloth material being liquid resistant, the cloth material being configured for protecting the foot of the hockey stick from moisture and impact damages (the cover 10 is flexible fabric/cloth)([0010] and [0023]), the interior surface being an elastic material wherein the sleeve is configured for conforming to a shape of the hockey stick such that the sleeve is configured for being positioned on the hockey stick while playing hockey with the hockey stick (the sleeve is configure to be used during a hockey play)( Figs. 1-10 [0008], [0009], [0011], [0012], [0024] and [0027]) the sleeve having a cavity (Figs. 2, 3 and 10), the cavity defining a space for the foot of the hockey stick to be nested within, the elastic material of the interior surface being configured for retaining to the foot of the hockey stick (Figs. 1-10; [0024]-[0026]) , the sleeve being removable from the foot of the hockey stick (Fig. 2 and 10; [0025]);
an opening of the sleeve being positioned on a first end of the sleeve, the opening being a circular aperture, the opening providing access to the cavity of the sleeve, the opening having a perimeter, the perimeter being elastic material, wherein the opening being is configured for expanding, the opening being configured for being positioned proximate to an end of the foot of the hockey stick (open end 12; configure to include an elastic portion thereof)(Figs. 2, 3, and 10 in conjunction to [0023]-[0025] regarding the opening and access to the cavity; [0026] regarding the elastic opening; with respect to the circular opening, note the examiner discussion with respect to claim 9 above); and
a tip of the sleeve being positioned on a second end of the sleeve, the tip sealing the second end of the sleeve wherein enclosing the cavity of the sleeve, the tip being configured for being positioned on a toe of the foot of the hockey stick (closed end 13)(Figs. 1-7; [0023] and [0026]).
Borowsky is not specific regarding the cloth material being a felted fabric.
Borowsky is not specific regarding and, the elastic material having an adhesive, the adhesive being configured for adhering to the foot of the hockey stick, and retaining to the foot of the hockey stick by compression and friction from the adhesive.
With respect to the cloth as felted material, the examiner maintains his position that the use of such material would have been obvious for the same reasons discussed above with respect to claim 2.
With respect to the adhesive material, Wells discloses adhesive means (layer 38) of sleeve 10 (Figs. 4 and 8; [0034], [0036] and [0040]-[0043]) including an elastic material ([0010], [0014], [0036] and [0040]).
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 Borowsky’s elastic material having an adhesive, the adhesive being configured for adhering to the foot of the hockey stick, and retaining to the foot of the hockey stick by compression and friction from the adhesive as taught by Wells for the reason that a skilled artisan would have been motivated by Wells’ explicit suggestions to use an adhesive means to a hockey sleeve, while the sleeve is configure to protect the blade during a hockey play.
Lastly, with respect to the inner elastic material, the examiner construed Borowsky’s inner material of the flexible fabric sleeve of Borowsky as such. However, if there is any doubt as such “inner flexible material” is an elastic material, the examiner notes that Wells discloses such inner elastic material in [0010], [0014], [0036] and [0040]. 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 Borowsky’s inner material as an elastic material as taught by Wells for the same reasons discussed above with respect to claim 1.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 5-7, 9-11 and 13-15 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.
Applicant’s arguments with respect to the added limitations regarding “wherein the sleeve is configured for conforming to a shape of the hockey stick such that the sleeve is configured for being positioned on the hockey stick while playing hockey with the hockey stick”, are taught by the newly cited reference to Borowsky.
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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/A.A.K/Examiner, Art Unit 3711 9/25/2025 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711