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 .
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 1-10 are 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.
The claims are replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. Note the format of the claims in the patents cited. The claim terms are exceedingly unclear and the claims are rife with antecedent basis issues, making it difficult to determine what is attempting to be claimed. Many specific examples are given below, but applicant is required to thoroughly review the claims and correct any similar issues.
The preamble of claim 1 (lines 1-3) is unclear. It is unclear what structure is attempting to be claimed here, if any. It is also unclear why elements are claimed in the alternative. The term “applied to” in the preamble makes it unclear if these elements are intended to be positively recited, or only that the pad structure is intended to be positively recited and is “configured to” mate with or mount on these components. It is also unclear why the term “a single nail” is used, when no nails appear to exist in the application. This appears to be referring to item 42, which is a grommet, not a nail. Appropriate correction is required.
Claim 1 lines 4-6 are unclear. These lines recite a slider having an end “configured to be corresponsive to...”. It is unclear what “corresponsive to” is intended to mean, structurally. Elements are again recited in the alternative, which also makes the recitations confusing. As best understood, this is intended to recite the top surface of item 1 of applicant’s fig. 3, which “corresponds” only to a damping device 3, not to the sting or the racquet frame, therefore, it is unclear why the string and the racquet frame are also in this section. Further, these lines then go on to recite “another end with a primary junction,” however, this appears to be referencing the bottom surface of item 1. It is unclear why the term “primary junction” is used, and what, exactly, it is intended to mean. The bottom of item 1 is an angled surface, a sliding surface, or just a surface. A junction is an intersection of multiple parts. Therefore, this terminology appears to be unclear. Appropriate correction is required.
Claim 1 lines 7-9 are equally unclear. Line 7 recites that a second slider is “installed at the other end.” This lacks antecedent basis and is also confusing. Which end is the other end of the first slider? These lines then recite a “secondary junction” which is again a confusing term, but is presumably the top sliding surface of item 2 as shown in fig. 3. Further, these junctions are described in applicant’s specification as items 10 and 20, which are only shown in applicant’s fig. 3. Since the other figures are devoid of items 10 and 20, which are the “junctions,” the drawings provide little assistance in attempting to understand what is being claimed. Line 8 again recites “the other end,” which lacks antecedent basis and is additionally confusing. This appears to be a different “other end?” This seems to be attempting to reference the bottom surface of item 2, which, as shown in applicant’s fig. 1, “corresponds” to the racquet frame and not the string, again making it unclear why string was recited in the alternative here. Appropriate correction is required.
Claim 1 lines 10-12 are generally unclear. It is unclear if the recitation of “or” was intended to be “and,” in line 10, since, presumably, both of the recited functions are performed by the device. It is also unclear what the recitation of “filtering out specific amplitude and enhance or comply with a specific pound of force” is intended to mean. It is unclear how simply providing a sliding surface is somehow specific to an amplitude or would provide force “compliance” and what “specific force,” is attempting to be complied with. Appropriate correction is required.
Claims 2-10, line 1 recite “the pad string,” which lacks antecedent basis. Presumably this was intended to recite “the pad structure.” Appropriate correction is required.
The term “substantially” in claim 2 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 6 recites “the bore of the first slider and the bore of the second slider,” which lacks antecedent basis. Claim 6 depends from claim 4 which only recited a bore in the alternative in either the first slider, second slider, or outer side; therefore, no bore of both a first and second slider is required by the claims. Appropriate correction is required.
Claims 7 and 8 are generally confusing. Claim 7 recites, in the alternative, either a lower portion or a substrate. Since any item would have a “lower portion” it is unclear what is being claimed here. Further, claim 8 then defines elements of the lower portion and the substrate, when only one or the other was previously claimed. This lacks proper antecedent basis. Appropriate correction is required.
Claims 9 and 10 are generally confusing as the corresponding parts of the first and second sliders appear to have been flipped, which would appear to be in conflict with claim 1. It is unclear why, in claims 9 and 10, the first slider now corresponds to the racquet frame and the second slider engages with the string. Applicant appears to be claiming parts of the embodiment of applicant’s fig. 3 in claim 1 and then different embodiments in claims 9 and 10, which use the same terms for opposing parts, making the claims confusing. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yanahara (US PGPub. No. 2006/0166767 A1).
In Reference to Claims 1 and 3
Yanahara teaches (Claim 1) A pad structure, applied to a damping device and a racket frame (items 5 and 24, fig. 7) or a racket frame with a through hole and a string, and the through hole being provided with a single nail for passing a string (portion of item 24 through item 5; also note it is unclear what is attempting to be claimed in this preamble, whether or not these are intended to be alternate components, and whether or not they are intended to be positively claimed), and the pad structure comprising:
at least one first slider (item 13A, fig 7), having an end configured to be corresponsive to the bottom of the damping device or the string (top of item 13A provides surface for string 2, fig. 7) or the racket frame and another end with a primary junction (bottom surface of item 13A, which slides along item 13B; also note it is unclear what “primary junction” is intended to mean); and at least one second slider (item 13B, fig. 7), installed at the other end of the first slider (unclear what “other end” is intended to mean, second slider mates with first slider, fig. 7) and having an end with a secondary junction and opposite to the primary junction of the first slider (top surface of item 13B, opposite to bottom surface of item 13A, fig. 7, again these “junctions” are not entirely clear), and the other end configured to be corresponsive to the racket frame or the string (bottom surface of item 13B corresponds to racquet frame, fig. 7, again note that “other end” is unclear); wherein, the first slider and the second slider provides a suspension of the string or the primary junction and the secondary junction form a guide angle for filtering out specific amplitude and enhance or comply with a specific pound of force (sliders suspend string 2, fig. 7; again note much of this is unclear).
(Claim 3) wherein the first slider and the second slider are in a shape freely selected from the group consisting of a triangular shape and a trapezium shape, or a combination thereof (fig. 7, item 13A has a triangular shape, and 13B has a trapezium shape), and the primary junction of the first slider and the secondary junction of the second slider opposite to each other are tilted with an angle relative to the racket frame (junction between surfaces of items 13A/B are tilted with respect to frame 5, fig. 7).
Claim Rejections - 35 USC § 103
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 2, 4, 6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yanahara in view of Sines et al. (US Patent No. 5,257,781).
In Reference to Claim 2
Yanahara teaches all of claim 1 as discussed above.
Yanahara further teaches (Claim 2) wherein the first slider and the second slider are in a shape freely selected from the group consisting of a rectangular shape, a square shape and a triangular shape or a combination thereof (fig. 7, item 13A has a triangular shape, and 13B has a trapezium shape), and the primary junction of the first slider and the secondary junction of the second slider opposite to each other are substantially [tilted] to the racket frame (fig. 7, mating surfaces between items 13A and 13B are opposite to each other).
Yanahara fails to teach the junctions being horizontal to the racquet frame of claim 2.
Sines teaches (Claim 2) slider junctions that are horizontal with respect to a racquet frame (fig’s 5 and 7, surface 60 and mating surface of item 55 interface in a plane that is horizontal to frame 22).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the racquet frame sliders of Yanahara with the feature of making the junction horizontal to the frame as taught by the racquet frame sliders of Sines for the purpose of more evenly distributing the applied force of the strings to the slider / rocker as taught by Sines (column 4 lines 7-29), making the device perform more evenly and reliably, making the device more attractive to the users.
In Reference to Claims 4 and 6
Yanahara teaches all of claim 1 as discussed above.
Yanahara fails to teach the features of claims 4 and 6.
Sines teaches (Claim 4) wherein [a] first slider or [a] second slider or an outer section of the first slider and the second slider is provided with a bore for passing the string and configured to be corresponsive to the through hole of the racket frame (fig’s 3-5, 7, and 8, items 78, through item 50; column 5 lines 29-47);
(Claim 6) wherein the bore of the first slider and the bore of the second slider are in a shape including but not limited to the shape of a semicircular hole or a circular hole (fig’s 7-10, circular holes, note that only one of a hole in any of the sliders or an outer section is required by the claims).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the racquet frame sliders of Yanahara with the feature of providing a hole in the slider as taught by the racquet frame sliders of Sines for the purpose of more securely holding the sliders to the frame of the racquet as taught by Sines (column 5 lines 29-47), making the device more durable, more reliable, and more attractive to the users.
Further, the examiner notes that it has been held that changes in shape are obvious matters of engineering design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since through holes that would mate with strings are taught in the prior art, merely claiming a shape of through hole that would work equally well, without evidence that the particular shape of the hole is significant, is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 9
Yanahara teaches all of claims 1 and 3 as discussed above.
Yanahara further teaches (Claim 9) wherein the first slider [or] the second slider are in a triangular shape (fig. 7), and an end of the first slider is configured to be corresponsive to the racket frame (fig. 7, racquet frame side of item 13B, also note which are now first and second sliders is confusing), [];
Yanahara fails to teach an end of a slider with vertical wall blocks and a string slot.
Sines teaches (Claim 9) [a] second slider is provided with two vertical wall blocks and a string slot engaging with the string (fig’s 3-6, item 80, and vertical walls surrounding item 80, fig’s 3-6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the string pad structure of Yanahara with the feature of walls and a string slot as taught by the string pad structure of Sines for the purpose of more securely and reliably mounting the string therewithin as taught by Sines (column 5 lines 1-12), making the device easier to install, more reliably mounted, and more attractive to the users.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yanahara in view of Kapheim et al. (US Patent No. 10,004,950 B1).
In Reference to Claim 5
Yanahara teaches all of claim 1 as discussed above.
Yanahara fails to teach the feature of claim 5.
Kapheim teaches (Claim 5) wherein [a] first slider or [a] second slider or an outer side of the first slider and the second slider is provided with a side recess and configured to be corresponsive the through hole of the racket frame and the string passing out from the through hole (fig’s 3, 6B, and 9, at items 98 / 110 / 112).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the string pads of Yanahara with the feature of side recesses as taught by the string pads of Kapheim for the purpose of more securely locating and affixing the pads in a controlled manner as taught by Kapheim (column 3 lines 1-16), making the device more reliable, more customizable, and more attractive to the users.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yanahara in view of Kitchen (US Patent No. 8,888,616 B1).
In Reference to Claims 7 and 8
Yanahara teaches all of claims 1 and 3 as discussed above.
Yanahara further teaches (Claim 7) wherein the first slider or the second slider is in a trapezium shape (fig. 7, item 13B) and comprises a lower level portion disposed at a lower triangle of the first slider or a substrate portion disposed at a lower triangle of the second slider (lower portion of either item 13B, or 13A; note it is unclear what is being claimed here);
Yanahara fails to teach two different materials, and it appears this is what is attempting to be claimed, though the examiner notes that it is unclear from the claim language.
Kitchen teaches (Claims 7/8) different levels of materials (column 11 lines 43-55); wherein [a] lower level portion is made of a hard material, and [a] substrate portion is made of a soft material or a hard material (column 11 lines 43-55).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the string pad structure of Yanahara with the feature of different layers of material with the outermost / lower / bearing layer being a harder material as taught by the string pad structure of Kitchen for the purpose of modifying / optimizing the available compression of the device, yielding a desired string elongation upon impact as taught by Kitchen (column 11 lines 43-55), creating more reliable and more desirable striking characteristics, making the device more attractive to the users.
Allowable Subject Matter
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. See numerous 112 issues above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/ Primary Examiner, Art Unit 3711