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 .
Applicant’s response to the office action of 8/12/2025 and filing of RCE is acknowledged on 11/04/2025.
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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 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.
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 1-16 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.
Claims 1 and 16 disclose the phrase “within a longitudinal distance of no more than 5 cm from each other along the longitudinal axis” is unclear as to how the distance is measured (for example, center-to-center, edge-to-edge, or between closest points)?. Additionally, the functional language “so that the at least two protruding bodies can be simultaneously engaged by adjacent fingers” introduces subjective user-dependent limitations and fails to provide objective boundaries for determining the metes and bounds of the claim. Since claims 2-15 directly or indirectly depend on rejected claim 1, all claims are rejected under 112. Regarding claim 5, how is the distance recited measured (for example, center-to-center, edge-to-edge, or between closest points)?
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “fastening means for fastening the band to a racket handle” in claim 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The specification discloses corresponding structure for performing this function. Specifically, the specification descries the fastening means as: an elastic ban; and male and female parts, as shown in Figure 2. The elastic band with cooperating male and female fastening components constitutes sufficient structure clearly linked to the claimed fastening function.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Vienings (DE 102020120963 A1) in view of Bertucci (US Patent No. 4072311)
Regarding claim 1, Vienings discloses a grip device for a racket (see Figures 1-4) comprising at least two externally protruding bodies (A1, A2, A3, A4), a primary body (A1) and a secondary body (AB), extending from the outer surface of a racket handle which racket handle has a central longitudinal axis (see Figures 1A-1C), the at least two externally protruding bodies are circumferentially distanced from each other around the racket handle and positioned within a longitudinal distance (see all Figures) the at least two protruding bodies can be simultaneously engaged by adjacent fingers of a user’s hand (the protrusions are capable of being engaged as recited). It is noted that Vienings teaches that the cross section of the racket could be octagonal, round, polygonal or non-polygonal in shape (see the description section of the reference). It is also noted that Vienings’ device can guide “a user's hand into a desired grip position can be achieved with just one of the protrusions A1, A2, A3, A4, A5 or A6. Depending on how many and which of the bulges A1, A2, A3, A4, A5 and A6 are attached to the grip section 17, a number of desired grip positions can be supported or greater flexibility can be achieved” (see the description section of the specification).
Vienings does not explicitly disclose if the protruding bodies are no more than 5 cm from each other as recited. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide any working distance including 5 cm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Vienings does not disclose if the primary body could be either a quadrilateral or a triangular construction. It is noted that Applicant’s specification discloses that the protruding body to be quadrilateral or triangular body as comprising 6 or 5 surfaces disclosed in the summary section of the specification. Bertucci is one example of a racket handle that teaches the use of protrusion that has multiple surfaces (6 surfaces as shown in Figure 2). It would have been obvious to one of ordinary skill in the art to provide the Vienings device with protrusion that has multiple surfaces as taught by the Bertucci device in order to provide a compact smooth attachment not having a bulky configuration with sharp edges which could cause injury to a player as stated (see column 1 lines 23-26 of the Bertucci reference).
Regarding claim 2, grip device according to claim 1, wherein depending on whether the construction is quadrilateral or triangular the primary body comprises five or six surfaces (see Figures 1-5 of the Bertucci reference).
a first surface faces the racket handle (the bottom surface touching the handle as shown in Figure 1-3 of Bertucci),
a second surface faces away from the racket handle and is of same/similar shape as the first surface and is of same or smaller area (the top surface opposite of the surface that touches the handle as shown in Figures 1-3),
a third and a fourth surfaces connect the first and the second surfaces, where the third surface is at least partly facing in direction towards the racket head and extends along a straight line or a slightly curved line in an angle alfa relative to the longitudinal axis, and where the fourth surface is at least partly facing in direction away from the racket head and extends along a straight line or a slightly curved line in an angle beta relative to the longitudinal axis (the side surfaces between the top and bottom surface as identified above. See Figures 1-5).
Regarding claim 3, wherein a fifth surface connects the first and second surface and the third and fourth surface and is facing away from the racket head, the fifth surface is curved and adapted to accommodate the gap between an index finger and a middle finger (the vertically angled two surfaces as shown in Figure 3 the Bertucci reference).
Regarding claim 4, the primary reference teaches the use of multiple protruding bodies (see Figures 1-4) and the secondary reference teaches the use of protrusion that could have a quadrilateral construction. However, it would have been obvious to a person of ordinary skill in the art to provide protrusions on a grip device with surfaces of different sizes and oriented toward the racket head. Varying surface sixes represents a predictable design choice to accommodate the natural positioning and relative strength of different fingers, thereby improving grip comfort and control. Further, orienting the protrusions toward the racket head merely aligns the grip features with the primary direction of applied force during a swing, which predictably enhances resistance to slippage and torque. Such modifications involve routine optimization of known grip features to improve stability and performance, and therefore would have been obvious.
Regarding claims 5 and 7, the references as combined do not explicitly disclose a distance being 5 and 25 mm as recited. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide any working distance including the recited range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, the device comprising three externally protruding bodies extending from the outer surface of the racket handle and being located circumferentially distanced from each other (see A1-A4 of the Bertucci reference).
Regarding claim 8, wherein the primary and/or secondary externally protruding bodies comprises releasable fastening means at a first surface facing the racket handle allowing attaching/detaching of the protruding body at different positions (the Vienings reference discloses a sleeve 38 that could have a flexible or elastic material, such as silicone or rubber, and can have a polygonal or round cross-section. The sleeve 38 can thus adapt to the cross-sectional shape of the handle section 37 when it is attached. If such a sleeve 38 has a slightly smaller diameter than the grip portion 37, a tight fit on the grip portion 37 can be achieved by stretching the sleeve 38 when it is applied” and this indicates that the sleeve is attachable and detachable and this feature is considered as at the same time being capable of being considered as being releasable fastening means of the protruding bodies as recited).
Regarding claim 9, the references as combined do not explicitly disclose wherein the primary and secondary bodies are not identical, not in shape nor in size. It would have been obvious to one of ordinary skill in the art before the effective filing to provide such features since varying the size of protruding grip elements constitutes a predictable design modification and routine optimization of known grip features. It is well understood that different fingers apply different amounts of force and occupy different positions along a handle. Modifying the size of the protrusions to correspond to ergonomic considerations, while maintaining their general shape, would have been an obvious matter of design choice to improve comfort, fit, and grip performance. Such a modification merely involves adjusting dimensions of known elements to achieve expected results, namely enhanced stability and user control. Absent a showing of criticality or unexpected results associated specifically with the non-identical sizes, the claimed feature represents nothing more than an obvious variation of the prior art grip structures.
Regarding claim 11, Bertucci does not explicitly disclose if the primary and/or secondary externally protruding bodies comprises releasable fastening means at the first surface facing the racket handle allowing attaching/detaching of one or all of the protruding bodies at different positions. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the protruding bodies releasable since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Regarding claim 12, Vienings discloses a band or wrap comprising means for fastening of the band or wrap to the racket handle (cylindrical sleeve 38). Vienings discloses the sleeve (38) can consist of “a flexible or elastic material, such as silicone or rubber, and can have a polygonal or round cross-section. The sleeve 38 can thus adapt to the cross-sectional shape of the handle section 37 when it is attached. If such a sleeve 38 has a slightly smaller diameter than the grip portion 37, a tight fit on the grip portion 37 can be achieved by stretching the sleeve 38 when it is applied”. This characteristic of the sleeve is considered as a fastening means as recited.
Regarding claim 13, further comprising means defining the angular position of the grip device relative to the racket, which means may comprise a line or a point defined as either a depression or an elevation or another tactile or visual indication of angular position (as shown in Figures 1-2 of the Vienings’ device, multiple protrusions are disclosed A1-A6 that can be considered as an elevation, tactile or visual indication as recited).
Regarding claims 14-15, wherein the racket handle or a surface such as a band attached to the racket handle comprises corresponding fastening means (Vienings discloses the sleeve (38) can consist of “a flexible or elastic material, such as silicone or rubber, and can have a polygonal or round cross-section. The sleeve 38 can thus adapt to the cross-sectional shape of the handle section 37 when it is attached. If such a sleeve 38 has a slightly smaller diameter than the grip portion 37, a tight fit on the grip portion 37 can be achieved by stretching the sleeve 38 when it is applied”. This characteristic of the sleeve is considered as a fastening means as recited).
Regarding claim 16, see rejections of claims 1 and 8 above.
Response to Arguments
Applicant’s arguments with respect to claims 1-16 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas J. 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.
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/NINI F LEGESSE/Primary Examiner, Art Unit 3711