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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/28/2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities:
In reference to claim 1, it is suggested to (1) in line 20, amend “an area” to “the area” and (2) in line 21, amend “the ball are” to “the ball is”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In reference to claim 1, the claim has been amended to recite “the first layer is adapted to be temporarily affixed” to a first outer surface of the perforated flexible second layer in lines 6-7. While there is support in the originally filed disclosure the first layer and the second layer may be fused together using adhesive to form a laminated strip of labels that be packaged in a roll and an adhesive layer is located between a second outer surface of the second layer in order to facilitate temporarily affixing the apparatus to sports equipment [00014]. However, there does not appear to be support for the first layer to be temporarily affixed to the first outer surface of the second layer as now required by the claim.
Further, the claim has been amended to recite “portions of the first layer at the area of contact that are not adjacent to the voids transfer kinetic energy between the ball and the bat without being plastically deformed” in lines 24-26. While the originally filed disclosure provides support for portions of the first layer at an area of contact that are not proximate to the voids not being visibly deformed due to the relative incompressibility of the second layer at [00017]). There does not appear to be support for portions of the first layer at the area of contact that are not adjacent to the voids transferring kinetic energy between the ball and the bat as nor required by the claim.
Regarding dependent claims 2-6, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lester (US 2005/0153790) in view of Dunn (US 5,349,893).
In reference to claims 1 and 3-6, Lester teaches a training aid for determining the point of contact between a ball and a hitting instrument ([0002]) (corresponding to an apparatus). The training aid can be adapted to be used in baseball ([0026]).
Lester further teaches the training aid comprises a first sheet that is composed of an opaque and malleable material that is deformed upon impact with a ball, the opaque and malleable material is a metal foil with a thickness of 3/1000 of an inch to 5/1000 of an inch (i.e., 0.0762 to 0.127 mm) ([0018]) (corresponding to a solid flexible first layer characterized by non-resiliency; the first layer characterized by a thickness of 0.006-0.200 mm, inclusive; the first layer comprises a metallic foil).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
A deformable sheet is attached to the first sheet ([0019]; [0020]) (corresponding to a two-layer lamination; a second layer; the second layer disposed against the first layer). An adhesive layer is on a back face of the deformable layer and is coupled to or interfaces with a non-stick sheet having a non-stick surface. The non-stick sheet is removed prior to affixing the training aid to a hitting instrument, the hitting instrument may be a baseball bat, a hockey stick and any other such hitting instrument in which a player desires to measure the striking of a ball ([0007]; [0020]; [0026]). The adhesive on the back face of the deformable sheet is configured to leave little or no adhesive residue on the hitting instrument when the training aid is removed from the hitting instrument ([0020]) (corresponding to a two-layer lamination adapted to flex to conform to a variety of bat diameters and be temporarily affixed to a bat for use as a sports training aid; a second layer characterized by a first outer surface against which the first layer is adapted to be temporarily affixed and a second outer surface adapted to be temporarily affixed directly to the bat).
Lester does not explicitly teach the deformable sheet is perforated, as presently claimed. However, Lester teaches the back of the deformable sheet includes a means for affixing the training aid to the hitting instrument (Abstract; [0020]).
Dunn teaches a structure that when utilized by itself or in conjunction with conventional armor configurations and/or assemblies, will more effectively absorb and dissipate the impact energy from projectiles (col. 1, lines 10-15). The panel includes a rigid metallic or high modulus synthetic resin structure having a multiplicity of joined polygonal cells having 3 to 8 sides (col. 3, lines 10-12). The term “rigid” includes semi-flexible structures capable of being free standing without collapsing (col. 3, lines 10-43). The polygonal cells are open and act as both a kinetic energy absorber and as a spacer to provide an air gap (col. 5, lines 31-36) (corresponding to a perforated flexible second layer; the first outer surface and second outer surface characterized by being parallel and between which a maximum thickness dimension of the second layer is defined and through which air-filled voids are distributed in a regular pattern). The open cells extend through the thickness of the sheet (FIG. 1) (corresponding to the voids formed entirely through the maximum thickness dimension of the second layer).
Dunn further teaches the cells have individual cell diameters of about 0.1 to 1 inch (i.e., 2.54 to 25.4 mm), a wall thickness of about 0.003 to 0.25 inch (i.e., 0.0762 to 6.35 mm) and a core thickness of about 0.025 to 12.0 inches (i.e., 0.635-304.8 mm) (col. 3, lines 16-21) (corresponding to a cross-sectional dimension that defines a closed geometric shape characterized by a diameter in a range of 1.0 mm to 10 mm inclusive; the second layer being characterized by a thickness of 0.02-1.20 mm, inclusive). When the cell diameter is between about 0.1-0.25 inch, which overlaps the presently claimed range, and the wall thickness is between about 0.1-0.25 inch, the wall thickness is at least a distance equivalent to the cell diameter (corresponding to adjacent pairs of voids being spaced apart by at least a distance equivalent to the diameter).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Dunn teaches the sheet is made of rigid metal or high modulus synthetic resin (col. 3, lines 10-11). The high strength modulus resin may be ethylene-acrylate or methacrylate copolymers or polycarbonate and the rigid metal may be aluminum (col. 4, lines 53-60; col. 5, lines 40-45) (corresponding to the second layer comprises polycarbonate, acrylic or metal).
The panels including the structure having the multiplicity of joined polygonal cells are capable of absorbing kinetic energy, are extremely lightweight and are flexible (col. 3, lines 8-10, 36-38; col. 1, 21-23).
In light of the motivation of Dunn, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the deformable sheet of Lester be the rigid metallic or high modulus synthetic resin structure having a multiplicity of joined cells, in order to provide an extremely lightweight layer capable of absorbing kinetic energy.
Lester further teaches the training aid is affixed to the hitting instrument, a player strikes the hitting instrument with a ball and an impression of how the ball was struck is generated on the training aid ([0024]; [0025]) (corresponding to for use as a sports training aid that indicates an area of contact between a bat and a ball that is struck with the bat; an area of contact with the ball are adapted to plasticly deform in response to force associated with striking of the ball with the bat, whereby creating deformations that are indicative of the area of contact and visible to a naked eye).
Lester in view of Dunn discloses the claimed invention except for cells being cylindrical and the shape being a circle. However, it would have been obvious to one having ordinary skill in the art at before the effective filing date of the presently claimed invention to have the cells have a cylindrical circular shape, since it has been held that the configuration was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration claimed was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Lester in view of Dunn teaches the first sheet and the deformable layer are substantially identical to the presently claimed two-layer lamination in composition and structure. Therefore, the deformable layer would intrinsically be flexible and the material and thickness characteristics of the first layer relative to the cross-sectional dimensions of the structured surface of Lester in view of Dunn would intrinsically be selected such that areas of the first sheet adjacent to the reservoirs or channels and within an area of contact with the ball are adapted to plastically deform at least partially into the reservoirs or channels in response to force associated with striking of the ball with the bat, thereby creating permanent deformations that are indicative of the area of contact and visible to a naked eye, and portions of the first sheet at the area of contact that are not adjacent to the reservoirs or channels transfer kinetic energy between the ball and the bat without being plastically deformed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 2, Lester in view of Dunn teaches the limitations of claim 1, as discussed above. Lester teaches an impression on the training aid is generated as a result of a player striking the hitting instrument on which the training aid is affixed ([0024]-[0025]). To determine the amount of force used to strike the ball, the malleable surface of the training aid can be analyzed by using a depth gauge that determines the depth of the strike zone ([0031]) (corresponding to the first layer being adapted to create an indication of force of contact based on depth of the deformations).
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lester in view of Rose (US 4,313,524).
In reference to claims 1 and 3-5, Lester teaches a training aid for determining the point of contact between a ball and a hitting instrument ([0002]) (corresponding to an apparatus). The training aid can be adapted to be used in baseball ([0026]).
Lester further teaches the training aid comprises a first sheet that is composed of an opaque and malleable material that is deformed upon impact with a ball, the opaque and malleable material is a metal foil with a thickness of 3/1000 of an inch to 5/1000 of an inch (i.e., 0.0762 to 0.127 mm) ([0018]) (corresponding to a solid flexible first layer characterized by non-resiliency; the first layer characterized by a thickness of 0.006-0.200 mm, inclusive; the first layer comprises a metallic foil).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
A deformable sheet is attached to the first sheet ([0019]; [0020]) (corresponding to a two-layer lamination; a second layer; the second layer disposed against the first layer). An adhesive layer is on a back face of the deformable layer and is coupled to or interfaces with a non-stick sheet having a non-stick surface. The non-stick sheet is removed prior to affixing the training aid to a hitting instrument, the hitting instrument may be a baseball bat, a hockey stick and any other such hitting instrument in which a player desires to measure the striking of a ball ([0007]; [0020]; [0026]). The adhesive on the back face of the deformable sheet is configured to leave little or no adhesive residue on the hitting instrument when the training aid is removed from the hitting instrument ([0020]) (corresponding to a two-layer lamination adapted to flex to conform to a variety of bat diameters and be temporarily affixed to a bat for use as a sports training aid; a second layer characterized by a first outer surface against which the first layer is adapted to be temporarily affixed and a second outer surface adapted to be temporarily affixed directly to the bat).
Lester does not explicitly teach the deformable sheet is perforated, as presently claimed. However, Lester teaches the back of the deformable sheet includes a means for affixing the training aid to the hitting instrument (Abstract; [0020]).
Rose teaches a laminate structure including a perforated rigid metal face plate (col. 1, lines 64-col. 2, line 6). The perforated rigid metallic or non-metallic face sheet has a plurality of perforations therethrough which range in size from 0.030 inches to 0.15 inches (i.e., 0.762 to 3.81 mm) in diameter (col. 2, lines 7-10) (corresponding to a perforated second layer; through which air filled voids are distributed in a regular pattern; the voids formed entirely through the maximum thickness dimension of the second layer; a diameter in a range of 1.0 mm to 10 mm, inclusive). The principle objective of the perforation size is to provide a rigid sheet with from 15% to 40% actual open area and yet provide sufficient strength to the ultimate sandwich structure for the purpose intended (col. 2, lines 10-14).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Rose further teaches the perforated sheet includes aluminum, titanium or other types of metals or non-metal materials (col. 3, lines 26-27) (corresponding to the second layer comprises metal). FIGS. 1 and 2 show the perforations 20 are cylindrical and define circles, wherein in adjacent pairs of perforations are spaced apart by at least a distance equivalent to the diameter of the perforation (corresponding to cylindrical air-filled voids; a cross-sectional dimension that defines a circle; adjacent pairs of voids being spaced apart by at least a distance equivalent to the diameter of the voids).
In light of the motivation of Rose, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the deformable layer of Lester be the perforated sheet, in order to provide sufficient strength to the training aid for its intended purpose.
Lester in view of Rose teaches the training aid is substantially identical to the presently claimed two-layer lamination in composition and structure. Therefore, the perforated layer would intrinsically be flexible and the material and thickness characteristics of the first layer relative to the cross-sectional dimensions of the perforations and the distance between adjacent perforations of Lester in view of Rose would intrinsically be selected such that areas of the first sheet adjacent to the perforation and within an area of contact with the ball are adapted to plastically deform at least partially into the perforation in response to force associated with striking of the ball with the bat, thereby creating permanent deformations that are indicative of the area of contact and visible to a naked eye, and portions of the first sheet at the area of contact that are not adjacent to the perforations transfer kinetic energy between the ball and the bat without being plastically deformed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 2, Lester in view of Rose teaches the limitations of claim 1, as discussed above. Lester teaches an impression on the training aid is generated as a result of a player striking the hitting instrument on which the training aid is affixed ([0024]-[0025]). To determine the amount of force used to strike the ball, the malleable surface of the training aid can be analyzed by using a depth gauge that determines the depth of the strike zone ([0031]) (corresponding to the first layer being adapted to create an indication of force of contact based on depth of the deformations).
In reference to claim 6, Lester in view of Rose teaches the limitations of claim 5, as discussed above. Lester in view of Rose teaches the first sheet has the thickness of 3/1000 of an inch to 5/1000 of an inch (i.e., 0.0762 to 0.127 mm) (Lester, [0018]). The perforated layer is thicker than the first sheet (Lester, [0019]).
While Lester in view of Rose does not explicitly disclose the thickness of the perforated layer is 0.02-1.20 mm as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to vary the thickness of the perforated layer, including over the presently claimed, in order to ensure the thickness of the perforated layer is larger than the thickness of the first sheet and the training aid is suitable for determining the point of contact between the ball and the hitting instrument.
Response to Arguments
In response to amended claim 6, the previous 35 USC 112(b) rejections of record are withdrawn.
Applicant primarily argues:
“Dunn describes impact-absorbing body armor based on a rigid honeycomb sandwiched between solid plates. A honeycomb sandwich between solid panels is well known for being lightweight, rigid, and suitable for absorbing and dissipating kinetic energy.1 However, those characteristics are undesirable in a baseball contact-indicating sports training aid because they inhibit the flexing required to conform to the shape of the bat. Further, the energy absorption characteristics would create an undesirable mushy or spongy response between the bat and ball as explained in the present disclosure. In contrast, a perforated sheet covered with a foil layer can be flexible, efficiently transfer kinetic energy, and show the point of contact because the foil deforms into the perforations. A prima facie case of obviousness may be rebutted by showing that the cited art, in any material respect, teaches away from the claimed invention. U.S. vs Adams, 383 U.S. 39, 51-2 (1996).”
Remarks, p. 5-6
The examiner respectfully traverses as follows:
As discussed in the rejection above, Lester in view of Dunn discloses a training aid that is attached to a hitting instrument including a first sheet of a deformable metallic material and a second layer of a rigid metallic or high modulus synthetic resin such as polycarbonate having a multiplicity of joined cells. The second layer including cells having individual diameters of 0.1 to 1 inch (i.e., 2.54 to 25.4 mm), a wall thickness of 0.003 to 0.250 inch (i.e., 0.0762 to 6.35 mm) and a core thickness of about 0.025 to 3 inches (i.e., 0.635 to 76.2 mm) (Dunn, col. 3, lines 10-22). All of the dimensions of the cells overlap the presently claimed dimensions of the second layer. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Dunn further teaches the term “rigid” with respect the rigid metallic or high modulus synthetic resin having a multiplicity of joined cells simply means the layer is capable of being free standing without collapsing (col. 3, lines 40-42). Such disclosure does not criticize, discredit, or otherwise discourage the layer from being able to bend/flex to conform to a shape of what the layer is meant to protect. Further, Dunn teaches the layer may be utilized in personal body armor which is meant to be flexible (col. 1, lines 21-23; col. 3, lines 27-31).
While Dunn discloses the panel is capable of absorbing kinetic energy, Dunn does not disclose the layer including the multiplicity of joined cells is meant to permanently compress at locations of contact resulting in a mushy or spongy feeling. Rather, Lester in view of Dunn teaches a training aid including a deformable metallic material and a second layer including a plurality of joined cells, the second layer comprising metal or polycarbonate and having a thickness, individual cell diameter and wall thickness overlapping the presently claimed. Within the overlapping portions of core thickness (i.e., 0.635-1.20 mm), cell diameter (i.e., 2.54-6.35 mm) and wall thickness (i.e., 2.54-6.35 mm) the training aid of Lester in view of Dunn is substantially identical to the presently claimed apparatus in composition and structure. Therefore, the training aid of Lester in view of Dunn would efficiently transfer kinetic energy, and show the point of contact because the foil deforms into the cells.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
It is not clear how the prior art can disclose the same structure as presently claimed comprising the same types and amount of components as presently claimed and not possess the properties claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the reference teaches all of the layers having the same composition and structure as claimed. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Applicant further argues:
“The rejections cite Dunn at column 3, lines 16-21, as teaching a polygonal/honeycomb panel having cells with diameter of 2.54-25.4 mm and wall thickness of 0.0762-6.35 mm. It is implied in the rejections that the upper extreme of the Dunn wall thickness range in combination with the lower extreme of the Dunn cell diameter range teaches the ‘adjacent pairs of voids being spaced apart by at least a distance equivalent to the diameter’ recited in the pending claims. The applicant respectfully disagrees for several reasons. In the cited passage and elsewhere Dunn emphasizes that the cells are part of a hexagonal/polygonal honeycomb matrix that serves the purpose of absorbing kinetic energy. Dunn explains that the honeycomb layer creates an energy absorbing airspace gap. It is understood in the art that the mechanical properties of honeycombs depend on cell geometry. A honeycomb structure created from the upper extreme of the Dunn wall thickness range in combination with the lower extreme of the Dunn cell diameter range would not exhibit low density and high compression or provide an airspace gap because the excessively thick walls would function like a solid layer. More specifically, the resulting layer would have characteristics more like a solid sheet than a honeycomb, e.g., high material density and poor energy absorption. In other words, the configuration would render Dunn unsatisfactory for its intended purpose. If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, there may be no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).
The applicant respectfully suggests that the cell geometry implied in the rejections fails to even define a honeycomb. A honeycomb is a tessellated lattice² of hollow, thin-walled polygon-shaped cells characterized by low density and relevantly high compression and shear properties out-of-plane.3 4 5 The cited cell geometry does not fit that definition. In other words, the cited combination of wall thickness and cell diameter would result in a difference in kind rather than a difference in degree. It follows that a person of ordinary skill in the art would not be motivated to consider such wall thickness and cell diameter combinations.”
Remarks, p. 6-7
The examiner respectfully traverses as follows:
Dunn explicitly teaches the honeycomb structure is a sheet having a multiplicity of polygonal cells and the cells of the polygonal panel may be perforated (claim 1; col. 3, lines 10-col. 5, lines 31-35). Dunn does not disclose the honeycomb structure requires thin walls. Rather, Dunn teaches the wall thickness is about 0.003 to 0.25 inches and a cell diameter is about 0.1 to 1 inch (claim 1).
Dunn teaches the cell diameter and wall thickness overlapping the presently claimed. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, absent evidence to the contrary, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Applicant further argues:
“The applicant also respectfully suggests that the cited combination fails to teach or suggest the limitation that ‘portions of the first layer at the area of contact that are not adjacent to the voids are not plastically deformed’ as recited in claim 1. Dunn teaches that the honeycomb is made of non-resilient materials, so the honeycomb structure would plastically deform in response to impact and any non-resilient layer affixed thereto would similarly plastically deform.
Further to the distinctions between energy-absorbing designs and efficient energy transfer designs, Dunn teaches at column 6, lines 1-3 that the cells are oriented with openings in a direction away from the direction of impact. Such a configuration would prevent the flexible first layer from plastically deforming into the voids as recited in the pending claims.
The motivation for modifying and combining the cited references is described as creating a rigid metal or high modulus resin sheet for absorbing kinetic energy. Such a sheet would be unsuitable for the purposes of the present disclosure, so the motivation is insufficient to justify the modifications described in the rejections. The lamination must conform to the shape of bats of a variety of different diameters and transfer (rather than absorb) kinetic energy so that the striking of the ball with the bat has a natural feel to the batter. Consequently, there would be no reasonable expectation of success of the modifications and combination upon which the rejections rely.”
Remarks, p. 7
The examiner respectfully traverses as follows:
As discussed above, Lester in view of Dunn teaches the first layer is made of a deformable metallic material and a second layer comprising metal or polycarbonate and having a thickness, individual cell diameter and wall thickness overlapping the presently claimed. Within the overlapping portions of core thickness (i.e., 0.635-1.20 mm), cell diameter (i.e., 2.54-6.35 mm) and wall thickness (i.e., 2.54-6.35 mm) the training aid of Lester in view of Dunn is substantially identical to the presently claimed apparatus in composition and structure. Therefore, the training aid of Lester in view of Dunn would intrinsically include portions of the first layer at the area of contact that are not adjacent to the opening of the cell not being plastically deformed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further, Dunn teaches the direction of the cells depends upon the armor in which it is employed (col. 5, 37-38). The cells are open in the direction of impact (claim 2). Therefore, it is clear the cells are oriented with openings in a direction of impact. Such a configuration would not prevent the flexible first layer from plastically deforming into the voids as recited in the pending claims.
Additionally, Lester and Dun are both drawn to laminate structures. Dunn provides proper motivation to combine, namely, in order to provide a lightweight layer capable of absorbing and dissipating kinetic energy. Given that there is proper motivation to combine Lester with Dunn, it is the examiner’s position that there would be a reasonable expectation of success when combining the references.
Therefore, Applicant's arguments filed 01/28/2026 have been fully considered but they are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784