DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Allowable Subject Matter
Claim 5 is allowed.
Claim 5 includes limitations directed towards 5. The illuminating paddle of claim 1, further comprising: a control unit disposed within at least a portion of the main body to automatically adjust at least one of a brightness level and a volume level based on a force level of the impact of the ball against the main body. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
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, 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Giegerich (US 20140221134 A1) in view of Osborne (US 5672131 A).
Regarding claim 1, Giegerich teaches 1. An illuminating paddle, comprising: a main body to hit a ball; See Fig. 1; (16), a sensor disposed within at least a portion of the main body to detect an impact against the main body; See [0004+], a plurality of central lights disposed on at least a portion of a center of the main body to illuminate in response to the sensor detecting the impact of the ball against the center of the main body; See Fig. 1; (18), a plurality of edge lights disposed on at least a portion of the main body to illuminate in response to the sensor detecting the impact of the ball against the center of the main body; and See Fig. 1; (18).
Osborne does teach what the primary reference is silent on including a speaker disposed on and within at least a portion of the main body to emit at least one sound in response to the sensor detecting the impact of the ball against the center of the main body. See 1:34+.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Giegerich with Osborne to provide feedback to the user indicative of a correct hitting sequence being achieved or not achieved. (See 1:34+).
Regarding claim 3, Giegerich teaches 3. The illuminating paddle of claim 1, wherein the plurality of edge lights are disposed on an entirety of a perimeter of an edge of the main body. See Fig. 1; (18) which shows the lights (18) around the perimeter of the paddle in addition to on the center portion.
Regarding claim 4, Osborne teaches 4. The illuminating paddle of claim 1, wherein the speaker emits the at least one sound as at least one of a sound of applause, a sound of audience cheer, and sweet. See 1:34+ which speaks of multiple different sounds output. The specific type of sound output is considered obvious in view of the disclosure and not considered a patentable advance.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Giegerich with Osborne to provide feedback to the user indicative of a correct hitting sequence being achieved or not achieved. (See 1:34+).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Giegerich (US 20140221134 A1) in view of Crabtree (US 20240181324 A1) and Osborne (US 5672131 A).
Regarding claim 2, Crabtree teaches 2. The illuminating paddle of claim 1, wherein the plurality of central lights, the plurality of edge lights, and the speaker remain off while the sensor detects the impact of the ball outside a boundary of the center of the main body. See [0097+] which speaks of the different zones for sensing impact. The disclosure speaks of changing the light output based on where the ball hits. As such, it would be obvious to eliminate an output as claimed if the ball was sensed to impact outside of the sweet spot zone as described in the disclosure.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Giegerich with Crabtree to allow the output to change based on the zone in which the ball strikes (see [0097+]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yeh US 5409213 A - Which teaches a sports paddle with lights, etc…
Shure US 5377996 A - Which teaches a paddle game with lights, etc…
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711