DETAILED ACTION
Election/Restrictions
1. Applicant’s election without traverse of Invention I in the reply filed on 12/8/25 is acknowledged. Claims 16 and 19 are withdrawn.
Claim Rejections - 35 USC § 102
2. 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
3. Claims 1-5, 7-15,17-18 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Marshall (US Pub. No. 2022/0088449).
With respect to claims 1-3, 5, 7-15, 17-18 and 20, 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).
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 is capable of being used as intended by the claims.
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).
Claim Rejections - 35 USC § 103
4. 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.
5. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Marshall (US Pub. No. 2022/0088449) in 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.
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.
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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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711