DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 1-14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Arnanz (US D1097017 S) in view of Case Law and Shellman (US 3674268 A).
Regarding claim 1, Arnanz teaches 1. A paddle comprising: a head including: See Fig. 1, a pair of oppositely facing playing surfaces, and an opening passing through both of the pair of oppositely facing playing surfaces, the opening extending bilaterally across a central axis through the head of the paddle; and See Fig. 1 and 3, a handle attached to the head. See Fig. 1. Shellman teaches an upper two thirds portion of the pair of oppositely facing playing surfaces is continuous See Fig. 1 noting the continuous upper surface of the paddle. It would have been obvious at the time of the invention to modify Arnanz with the continuous upper surface of Shellman as the use of known technique to improve similar devices (methods, or products) in the same way is an indication of obviousness (C).
Regarding claim 2, Arnanz teaches 2. The paddle according to claim 1, wherein the opening is confined within the lower third portion of the head. See Fig. 1 which shows the opening in the lower third portion.
Regarding claim 3, Arnanz teaches 3. The paddle according to claim 1, wherein the opening does not extend into an area including an upper two thirds portion of the paddle. See Fig. 1 which shows the opening not extending into an upper two thirds portion of the paddle.
Regarding claim 4, Arnanz teaches 4 The paddle according to claim 1, wherein the opening is sized to extend across a width of the head in a range from 25% to 85% of an entire width dimension of the paddle. See Fig. 1 which shows the opening with a width. Reference 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), the Federal Circuit 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.
Regarding claim 5, Arnanz teaches 5. The paddle according to claim 1, wherein the opening has an average width ranging from 1.5 inches to 5 inches. See Fig. 1 which shows the opening with a width. Reference 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), the Federal Circuit 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.
Regarding claim 6, Arnanz teaches 6. The paddle according to claim 1, wherein the opening has an average height ranging from 0.5 inches to 3 inches. See Fig. 1 which shows the opening with a width. Reference 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), the Federal Circuit 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.
Regarding claim 7, Arnanz teaches 7. The paddle according to claim 1, wherein the opening is shaped as a triangular shape. See Fig. 1 which shows the opening with a shape. Additionally, the court held that “the configuration of a claimed apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant”. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Regarding claim 8, Arnanz teaches 8. The paddle according to claim 1, wherein the opening is shaped as a company logo. See Fig. 1 which shows the opening with a shape. Additionally, the court held that “the configuration of a claimed apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant”. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Regarding claim 9, Arnanz teaches 9. A paddle comprising: a head including a playing surface; See Fig. 1, an opening passing through playing surface, the opening extending bilaterally across a central axis through the head of the paddle, and the opening being confined within a lower third portion of the playing surface of the head; and See Fig. 1 and 3 which shows the opening in the lower third portion., a handle attached to the head. See Fig. 1. Shellman teaches an upper two thirds portion of the pair of oppositely facing playing surfaces is continuous See Fig. 1 noting the continuous upper surface of the paddle. It would have been obvious at the time of the invention to modify Arnanz with the continuous upper surface of Shellman as the use of known technique to improve similar devices (methods, or products) in the same way is an indication of obviousness (C).
Regarding claim 10, Arnanz teaches 10. The paddle according to claim 9, wherein the opening extends in a throat of the paddle. See Fig. 1 which shows the opening extending into what the examiner considers to be the throat of the paddle.
Regarding claim 11, Arnanz teaches 11. The paddle according to claim 9, wherein a sweetspot of the paddle is displaced upward toward a top end of the head due to the opening. See Fig. 1 given the art contains the same structure, the examiner considers the sweetspot of the paddle to be a function of the apparatus which the apparatus is capable of achieving.
Regarding claim 12, Arnanz teaches 12. The paddle according to claim 9, wherein the paddle the opening reduces air resistance on the head of the paddle. See Fig. 1 the opening will help reduce the air resistance on the head of the paddle.
Regarding claim 13, Arnanz teaches 13. The paddle according to claim 9, wherein an average height of the opening is about 2 inches. See Fig. 1 which shows the opening with a width. Reference 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), the Federal Circuit 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.
Regarding claim 14, Arnanz teaches 14. The paddle according to claim 9, wherein an average width of the opening is about 4 inches. See Fig. 1 which shows the opening with a width. Reference 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), the Federal Circuit 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.
Regarding claim 15, Arnanz teaches 15. The paddle according to claim 9, wherein the playing surface of an upper two thirds portion of the head is continuous. See Fig. 1 which shows a continuous upper two thirds of the head of the paddle.
Regarding claim 16, Arnanz teaches 16. A paddle comprising: a head including a playing surface; See Fig. 1, an opening passing through playing surface, the opening extending bilaterally across a central axis through the head of the paddle, and the opening having an average width ranging from 1.5 inches to 5 inches, and an average height ranging from 0.5 inches to 3 inches; and See Fig. 1 and 3 which shows the opening with a width and a height, a handle attached to the head. See Fig. 1. The examiner notes that the opening width. Reference 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), the Federal Circuit 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. Shellman teaches an upper two thirds portion of the pair of oppositely facing playing surfaces is continuous See Fig. 1 noting the continuous upper surface of the paddle. It would have been obvious at the time of the invention to modify Arnanz with the continuous upper surface of Shellman as the use of known technique to improve similar devices (methods, or products) in the same way is an indication of obviousness (C).
Regarding claim 17, Arnanz teaches 17. The paddle according to claim 16, wherein a perimetric shape of the opening is one of triangular, rhomboidal, or circular. See Fig. 1 which shows the opening with a shape. Additionally, the court held that “the configuration of a claimed apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant”. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Regarding claim 18, Arnanz teaches 18. The paddle according to claim 16, wherein the opening extends no higher on the head than approximately 33% from the handle upward. See Fig. 1 which shows the height extending as claimed.
Regarding claim 19, Arnanz teaches 19. The paddle according to claim 16, wherein the opening extends no wider than 85% of a lateral width of the head. See Fig. 1 which shows the width extending as claimed.
Regarding claim 20, Arnanz teaches 20. The paddle according to claim 16, wherein a perimetric shape of the opening is non-triangular, non-rhomboidal, and non-circular. See Fig. 1 which shows the opening with a shape. Additionally, the court held that “the configuration of a claimed apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant”. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Response to Arguments
The applicant argues for the patentability of the newly amended claim limitations. The examiner has amended the grounds of rejection as presented above incorporating a new reference to more clearly meet the claimed limitations.
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 JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
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.
/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
Prosecution Insights