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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The recitation in the preamble of claim 7 of “the hockey stick according to claim 7” and the recitation in the preamble of claim 12 of “the hockey stick according to claim 12” are of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 7 and 12 are dependent on themselves and are therefore of improper dependent form.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 16-18 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 16-18 recite the limitation “the thermoplastic polymer” in line 1. There is insufficient antecedent basis for these limitations in the claims.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-14 and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krick (20220296975).
Regarding claim 1, Krick (Figures 1-61) teaches a hockey stick capable of multiple reshaping, the hockey stick comprising: a shaft (See fig. 1), the shaft having a first internal area (24) (Para. 0051); a blade, the blade having a curved face (Para. 0055), a heel, a second internal area (56) (Para. 0054) and a toe, the blade being coupled to the shaft (See fig. 1); and wherein each of the shaft and the blade being made of a reinforcing fiber (Para. 0069-0070).
The prior art of Krick is fully capable of performing the claim recitation of “capable of multiple reshaping” as the recited limitation is directed to the intended use of the claimed apparatus.
Regarding claim 2, Krick (Figures 1-61) teaches reinforcing fiber (Para. 0069-0070).
It is noted that the claim recitation of “the reinforcing fiber being formed with a heat and a pressure, wherein the heat and the pressure causing no chemical reaction” is directed to a product made by a process (a product-by-process claim). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The prior art of Krick teaches the final product of a hockey stick made of a reinforcing fiber and therefore meets the claim.
Regarding claim 3, Krick (Figures 1-61) teaches the reinforcing fiber being combined with a thermoplastic polymer (Para. 0069) to create a composite material.
Regarding claim 4, Krick (Figures 1-61) teaches the first internal area being homogeneous material (Para. 0069).
Regarding claim 5, Krick (Figures 1-61) teaches the first internal area consisting of the reinforcing fiber and the thermoplastic polymer (Para. 0069).
Regarding claim 6, Krick (Figures 1-61) teaches the second internal area being homogeneous (Para. 0069).
Regarding claim 7, Krick (Figures 1-61) teaches the homogeneous second internal area consisting of the reinforcing fiber and the thermoplastic polymer (Para. 0069).
Regarding claim 8, Krick (Figures 1-61) teaches the blade comprising a short strand, wherein the short strand is made of reinforcing fibers (Para. 0094).
Regarding claim 9, Krick (Figures 1-61) teaches the shaft having long-strand reinforcing fibers (Para. 0094).
Regarding claim 10, Krick (Figures 1-61) teaches the blade having a curved face (Para. 0055).
It is noted that the claim recitation of “configured to be remolded” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art of Krick. The prior art of Krick is fully capable of performing the recited claim limitation. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 11, Krick (Figures 1-61) teaches the curve of the blade being configured in a different shape (Para. 0055).
Regarding claim 12, Krick (Figures 1-61) teaches the blade having a curved face (Para. 0055).
It is noted that the claim recitation of “configured to be remolded as many times as desired” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art of Krick. The prior art of Krick is fully capable of performing the recited claim limitation. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 13, Krick (Figures 1-61) teaches a shaft (See fig. 1), the shaft having a first internal area (24) (Para. 0051).
It is noted that the claim recitation of “the shaft is configured from a first mold” is directed to a product made by a process (a product-by-process claim). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The prior art of Krick teaches the final product of a shaft and therefore meets the claim.
Regarding claim 14, Krick (Figures 1-61) teaches the blade having a curved face (Para. 0055)
It is noted that the claim recitation of “configured from a second mold” is directed to a product made by a process (a product-by-process claim). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The prior art of Krick teaches the final product of a blade and therefore meets the claim.
Regarding claim 16, Krick (Figures 1-61) teaches the reinforcing fiber being combined with a thermoplastic polymer (Para. 0069).
It is noted that the claim recitation of “configured for post-processing of the shaft” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art of Krick. The prior art of Krick is fully capable of performing the recited claim limitation. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 17, Krick (Figures 1-61) teaches the reinforcing fiber being combined with a thermoplastic polymer (Para. 0069).
It is noted that the claim recitation of “configured for post-processing of the blade” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art of Krick. The prior art of Krick is fully capable of performing the recited claim limitation. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 18, Krick (Figures 1-61) teaches the reinforcing fiber being combined with a thermoplastic polymer (Para. 0069).
It is noted that the claim recitation of “configured for post-processing of the blade” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art of Krick. The prior art of Krick is fully capable of performing the recited claim limitation. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 19, Krick (Figures 1-61) teaches the reinforcing fiber being combined with a thermoplastic polymer (Para. 0069).
It is noted that the claim recitation of “configured to be re-shaping of the blade after initial molding of the blade” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art of Krick. The prior art of Krick is fully capable of performing the recited claim limitation. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Krick in view of Oman (20220001255).
Regarding claim 15, Krick (Figures 1-61) teaches a hockey stick comprising: a shaft (See fig. 1), and a blade (See Fig. 1).
Krick does not teach the first mold is different than the second mold.
It is noted that the claim recitation of “the first mold is different than the second mold” is directed to a product made by a process (a product-by-process claim). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The prior art of Krick teaches the final product of a hockey stick having a shaft and blade and therefore meets the claim. As an alternative rejection, the prior art of Oman is being used to teach a hockey shaft and blade constructed from different molds.
Oman teaches the first mold is different than the second mold (Para. 0072)
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Krick with the first mold is different than the second mold as taught by Oman as a means of constructing a hockey shaft and blade from different molding processes (Oman: Para. 0072).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER GLENN whose telephone number is (571)272-1277. The examiner can normally be reached 9:00 a.m. - 5:00 p.m..
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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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/C.G./Examiner, Art Unit 3711
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711