DETAILED ACTION
Claim Rejections - 35 USC § 112
1. 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 15, 17-18, 20 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.
Claim 15 recites the limitation "the lateral edge" of the main body. There is insufficient antecedent basis for this limitation in the claim.
Claims 17-18 and 20 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 17-18 and 20 each recite a “perimeter edge” of the main body. Claim 15 recites a “lateral edge” of the main body. These terms appear to be capturing the same structure, but are labeled as distinct claim elements, thus creating an indefinite scope. Applicant should provide clarity to this issue.
Claim Rejections - 35 USC § 103
2. 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.
3. Claims 1-5, 7-15, 17-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Marshall (US Pub. No. 2022/0088449) in view of Heiman (US Pat. No. 4,685,675) and further in view of Petitti, Jr. (US Pat. No. 4,200,285).
With respect to claims 1-3, 5, 7-14, Marshall teaches a weight adjustable pickleball paddle system 10 comprising: a main body including opposing playable faces 14, 16; a handle 28 attached to the main body; a component receptacle 32 located in a lateral edge 18 of the main body and between the playable faces 14, 16; and a weighted component 30 dimensioned to be accommodated within the component receptacle 32, wherein the component receptacle 32 has a cavity shaped to secure the weighted component 30 therein unless manually manipulated for removal from the cavity (“releasably receive and retain” – paragraph [0025]; See also paragraph [0026]), wherein the component receptacle 32 has a threaded cavity to receive the weighted component 30 threadingly (paragraph [0026]); wherein the component receptacle secures the weighted component via a surface frictional fit (paragraph [0026]); wherein: the weighted component 30 is a first weighted component among a plurality of weighted components equal in size to the first weighted component (i.e. the different weight is provided by using different materials – paragraph [0025]), and the weighted components 30 of the plurality of weighted components are groupable by different weight amounts (“the inserts 30 may be provided in sets of different weights to be interchangeably used as needed” – paragraph [0025]); wherein the component receptacle 32 is a first component receptacle, and wherein the paddle further comprises a second receptacle 32 located symmetrically opposite the first component receptacle (Fig. 3); wherein the component receptacle 32 is a first component receptacle, and wherein the paddle further comprises a second component 32 receptacle located in a grouping with the first component receptacle 32 (Fig. 3); wherein: the component receptacle 32 is a first component receptacle in a first group of component receptacles 32, and the paddle further comprises a second component receptacle in a second group of component receptacles 32 (Fig. 3); wherein: the first group of component receptacles 32 is located on a first lateral side of the main body, and the second group of component receptacles is located on a second lateral side of the main body, symmetrically oppositely disposed from the first group of component receptacles (Fig. 3), wherein: the component receptacles in the first group of component receptacles are evenly spaced along a first lateral side of the main body, and the component receptacles in the second group of component receptacles are evenly spaced along a second lateral side of the main body (Fig. 3).
Marshall teaches wherein the weighted component 30 includes: a first surface (of elongate body portion) that extends in a first direction, and a second surface (of the head portion) that intersects the first surface such that the second surface extends in a second direction that is substantially perpendicular to the first direction, wherein the weighted component is dimensioned to be accommodated within the component receptacle, such that: the first surface engages an inner surface of the component receptacle (Fig.’s 1-4). Marshall does not expressly teach wherein the second surface engages a side surface of the component receptacle that extends from the first surface, substantially perpendicular, to the lateral edge of the main body. However, analogous art reference Heiman teaches this feature to be known in the art – (Fig.’s 2, 7-8; column 1; teaching weight 2a head portion to be countersunk into side surface of the component receptacle that extends substantially perpendicular from the first surface to the lateral edge of the hitting frame). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize a weight component and receptacle arrangement as taught by Heiman within the paddle of Marshall. The rationale to combine is to utilize a known weighting arrangement that produces a frame with the weight flush therein. The proposed modification has a reasonable expectation of success as Marshall expressly contemplates a countersunk arrangement of the weight – paragraph [0026].
Per MPEP 2114 - 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the structure of Marshall as modified by Heiman is capable of being used as intended by the claims.
Lastly, Marshall does not expressly teach an edge guard as claimed. However, analogous art reference Petitti teaches that it is known to provide an edge guard 20 shaped to surround a perimeter of a main body of a ball hitting frame (Fig’s 1-4). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add the removable edge guard of Petitti to the paddle system of Marshall. The rationale to combine is to provide customization of the weighting using a known technique. The edge guard 20 can be used in practice sessions and then removed during game sessions. This will expectantly speed up the players stroke velocity. Alternatively, the edge guard can also be used during games since heavier paddles often provide more control to a player. The proposed modification has a reasonable expectation of success as it comports with the primary purpose of Marshall. The combination is considered to teach the following: wherein the edge guard is shaped to surround a perimeter of the main body and cover over the component receptacle. Notably Petitti recognizes that groove 29 can be specifically adjusted to accommodate different rim configurations. Examiner further notes the elastic nature of element 20 – “resilient characteristics” (column 4, lines 50-51).
With respect to claim 4, Marshall teaches wherein the weighted component 30 includes: a head portion, and a body portion that extends from the head portion, a protrusion (i.e. threads – Fig.’s 3-4) extending laterally from the body portion, the component receptacle 32 has a cavity shaped to receive the body portion with the protrusion on the weighted component, and the weighted component is secured to the component receptacle via a rotational twist at the head portion (Fig.’s 1-3; paragraph [0026]; See also MPEP 2114 - In re Schreiber).
With respect to claims 15, 17-18, 20, Marshall teaches a weight adjustable sports equipment system 10 comprising: a main body; a handle 28 attached to the main body; a weighted component 30 dimensioned to be accommodated on and within the main body; wherein the main body has a perimeter edge 18 that is bound by opposing playable faces 14, 16; and the weighted component 30 is accommodated within the perimeter edge 18 between opposing playable faces 14, 16; wherein the system further comprises a component receptacle 32 located between the opposing playable faces 14, 16 and shaped to accommodate the weighted component 30 therein; wherein the weighted component 30 is accommodated within one of a plurality of component receptacle locations 32 distributed along a perimeter edge of the main body (Fig.’s 1-3; paragraphs [0024]-[0026]; See also MPEP 2114 - In re Schreiber).
Marshall does not expressly teach an inner surface, and a side surface that extends substantially perpendicular from the inner surface to a lateral edge of the main body. However, analogous art reference Heiman teaches this feature to be known in the art - (Fig.’s 2, 7-8; column 1; teaching weight 2a head portion to be countersunk into side surface of the component receptacle that extends substantially perpendicular from an inner surface to lateral edge of the hitting frame). The rationale to combine is the same as stated above.
Lastly, Marshall does not expressly teach an edge guard as claimed. However, analogous art reference Petitti teaches that it is known to provide an edge guard 20 shaped to surround a perimeter of a main body of a ball hitting frame (Fig’s 1-4). The rationale to combine is the same as stated above.
4. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Marshall (US Pub. No. 2022/0088449) in view of Heiman (US Pat. No. 4,685,675) and further in view of Petitti, Jr. (US Pat. No. 4,200,285) and even further view of Roake (US Pub. No. 2006/0030420).
With respect to claim 6, Marshall teaches wherein the weighted component 30 includes: a head portion, and a body portion that extends from the head portion (Fig.’s 1-3). Marshall fails to expressly teach an internal hollow space within the body portion. However, Roake, directed to the analogous art of adjustable weighting, teaches that it is known to provide an internal hollow space 104 within a body portion of a weighted component 96’ (Fig. 14). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to combine this feature into Marshall. The rationale to combine is set forth in Roake – modify the weight of the weight component without having to modify the size of the weight (paragraph [0028]). The proposed modification has a reasonable expectation of success as the primary purpose of Marshall is not frustrated by the combination.
Response to Arguments
5. Applicant’s arguments with respect to claims 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
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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, 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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
