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(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 2 and 5 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 2 recites the limitation "the other of the inner circumferential surface and the outer circumferential surface" in line 23; this is interpreted as there being two inner circumferential surfaces and two outer circumferential surfaces. There is insufficient antecedent basis for this limitation in the claim. Considering that claim 2 is a dependent claim of claim 1, there is only one inner circumferential surface and one outer circumferential surface defined in Claim 1. The examiner is interpreting claim 2 to only have one inner circumferential surface and one outer circumferential surface.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “transverse” in claim 5 appears to be “in parallel,” while the plain and ordinary meaning is “a position or direction that is at an angle of 90-degrees to something else.” The term is indefinite because the specification does not clearly redefine the term. Fig. 7 depicts the first portion 223 of second channel 222 in parallel (not transverse) with the second portion 224 of second channel 222.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 200977381), in view of Schjolin (SE 544130), further in view of Miyata (JP 11648194).
Regarding Claim 1, Lin teaches a paddle racket, including: a frame body (10), including a frame wall (inner wall of 10 and Figure 1) and a handle (12) connected to the frame wall (Figure 1), the frame wall having an inner circumferential surface and defining a receiving space (Figure 1); a three-dimensional web core (20), disposed in the receiving space and including an outer circumferential surface facing the inner circumferential surface (Figure 1), including a plurality of channels (16) disposed through the three-dimensional web core in a thickness direction of the three-dimensional web core; two striking surface portions (15), disposed on two opposing sides of the three-dimensional web core (Claim 1 and Figures 1-3), each of the two striking surface portions including a plurality of through holes (last limitation of Claim 1 and Figures 1-3), the plurality of through holes corresponding to and being in communication with parts of the plurality of channels (last limitation of Claim 1 and Figures 1-3).
Lin does not expressly disclose a plurality of double-sided adhesive layers, connecting the outer circumferential surface of the three-dimensional web core to the inner circumferential surface of the frame wall and connecting the two striking surface portions to the two opposing sides of the three-dimensional web core.
However, Schjolin discloses the use of an adhesive layer between the striking surface and core (pg.6, lines 24-25, Figs. 1-4) for connecting the two striking surface portions (10) to the two opposing sides of a paddle core (2), indirectly indicating the use of a double-sided adhesive. Schjolin also teaches through-holes (11) on the striking surface that are aligned with the channels (5) of a paddle racquet. Furthermore, Miyata clearly discloses a double-sided adhesive for applying a rubber striking-surface on a table tennis racket (paragraph 6 of Background of Invention, Figures 1-4). Therefore, it would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to provide the paddle of Lin with the features of the double-sided adhesion of the striking surface to the web core as taught by Schjolin and Miyata, as well as to connect the outer circumferential surface of the three-dimensional web core to the inner circumferential surface of the frame wall to use a known connecting means.
Regarding Claim 2, Lin teaches a paddle racket wherein one of the inner circumferential surface (Figure 1, inner wall of 10 is concave) and the outer circumferential surface includes an annular convex surface (Figure 1, outer wall of 20 is convex). The following limitation of Claim 2, “the other of the inner circumferential surface and the outer circumferential surface includes an annular concave surface” is indefinite, as indicated in the aforementioned 112(b) rejection, because there is only one inner and one outer circumferential surface for the frame based on Claim 1 of the instantly claimed invention.
Lin does not disclose that the annular convex surface and the annular concave surface are connected by one of the plurality of double-sided adhesive layers. However, Lin discloses that the frame body (10) encloses the striking part (14), which consists of the three-dimensional web core (20) and the striking surfaces (15) (Abstract lines 1-3 and Figures). Lin also teaches that the striking surfaces 15 can be set separately from the frame body (10), where the peripheries of the striking surfaces are covered in the frame body (10) (paragraph 7, in the Utility Model Content section). Although Lin does not disclose a clear means of connecting the inner circumferential surface of the frame body (10) with the outer circumferential surface of the web core, it would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to use any connecting means known in the art, including a double-sided adhesive, which is commonly available, such as that disclosed by Schjolin (pg.6, lines 24-25, Figs. 1-4) and Miyata (paragraph 6 of Background of Invention, Figures 1-4).
Regarding Claim 3, Lin teaches a resiliently deformable three-dimensional web core (20). Lin uses foam, which is inherently resiliently deformable, as the three-dimensional web core. Furthermore, the specification of the instantly claimed invention indicates the use of foam as a resiliently deformable web core (pg.5, lines 15-18).
Regarding Claim 4, Lin discloses a plurality of channels (16) corresponding to and being in communication with the plurality of through holes (Figures), and the channels are disposed through the three-dimensional web core (20) in the thickness direction (Figures 1 and 2). Lin does not disclose those channels to include a plurality of first channels and a plurality of second channels corresponding to and being in communication with the plurality of through holes, and the plurality of first channels, and the plurality of second channels extending through the three-dimensional web core in a direction inclined to the thickness direction (applicant usage of “inclined” is interpreted based on Fig.4 of the instantly claimed invention). However, simply adding another set of secondary channels is not an inventive concept. Therefore, it would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to add another set of secondary channels, similar to the first channels as a matter of duplication of parts. See in re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) where it was held that the mere duplication of parts has not patentable significance unless a new and unexpected result is produced.
Considering another interpretation of Lin, Lin discloses three layers of the three dimensional web core (21: 22: 21, which indicate low-density-foam : high-density-foam : low-density-foam) in the specified sequence. The channels (16) formed through each layer of the foam core of Lin can be interpreted as first, second, and third channels. This is another reasoning as to why it would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to add multiple layers of channels (16) in the web core in the thickness direction that were in communication with the through holes on the striking surface (15).
Regarding Claim 5, Lin discloses a plurality of channels (16) penetrating through the three-dimensional web core (Fig.2). Lin does not disclose a first portion and a second portion of the plurality of second channels being transverse to each other and overlapping with each other in the thickness direction (the term “transverse” is indicating “parallel” based on Fig.7 of the instantly claimed invention). However, it would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to identify first and second portions of the second channel, which is merely implying another form of channels that are similar to the first channels disclosed as a matter of duplication of parts as discussed supra.
Regarding Claim 6, Lin discloses that the three-dimensional web core (20) further includes a plurality of curved walls (perimeter of the channels (16), Figures), the plurality of curved walls define the plurality of first channels (perimeter of channels (16), Figures). Lin does not disclose the plurality of second channels, and that the plurality of curved walls including a plurality of perforations disposed therethrough and in communication with the plurality of first channels and the plurality of second channels. However, curved walls are inherent to the shape of channels, and perforations are another form of channels (albeit miniscule). The examiner is taking the position that Lin shows a plurality of channels 16 wherein each separate channel could read on a channel so that there are a plurality of first and second channels as claimed. Alternatively, the examiner takes the position that adding channels/perforations are merely a matter of duplication of parts as discussed supra.
Regarding Claim 9, Lin does not disclose at least one of the plurality of double-sided adhesive layers between each of the two striking surface portions and one of the two opposing sides of the three-dimensional web core including a first adhesive side and a second adhesive side, where the first adhesive side is adhered to the three-dimensional web core, the second adhesive side is adhered to the striking surface portion, and the adhesion of the second adhesive side is greater than the adhesion of the first adhesive side. However, Schjolin discloses the use of an adhesive layer (pg.6, lines 23-25) for releasably connecting (Abstract-Schjolin) the two striking surface portions (10) to the two opposing sides of a paddle core (2); Schjolin also discloses through-holes (11) on the striking surface that are aligned with the channels (5) of a paddle racquet. Furthermore, Miyata discloses a double-sided adhesive where the adhesion of a second adhesive side (2) is greater than the adhesion of a first adhesive side (4) for applying a rubber striking-surface on a table tennis racket for ease of removal (paragraph 6 of Background of Invention, Figures 1-4). It would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to provide the paddle of Lin with the features taught by Schjolin, and Miyata to use known connecting means to connect elements and to apply appropriate or varying adhesive forces as needed.
Regarding Claim 10, Lin does not disclose at least one of the plurality of double-sided adhesive layers between the inner circumferential surface and the outer circumferential surface including a first adhesive side and a second adhesive side, where the first adhesive side is adhered to the inner circumferential surface, the second adhesive side is adhered to the outer circumferential surface, and the adhesion of the second adhesive side is greater than the adhesion of the first adhesive side. However, Lin discloses that the frame body (10) encloses the striking part (14), which consists of the three-dimensional web core (20) and the striking surfaces (15) (Abstract lines 1-3 and Figures). Furthermore, Miyata discloses a differential adhesive where a second adhesive side (2) is greater than the adhesion of a first adhesive side (4) for applying a rubber striking-surface on a table tennis racket for ease of removal (paragraph 6 of Background of Invention, Figures 1-4). Therefore, this is not an inventive concept; the same differential adhesive applied between the striking surface and core can be applied between the inner circumferential surface of the frame body and outer circumferential surface of the web core. It would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to provide the paddle of Lin with the features taught by Schjolin, and Miyata to use known connecting means to connect elements and to apply appropriate or varying adhesive forces as needed.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 200977381), in view of Schjolin (SE 544130), and Miyata (JP 11648194) further in view of Filippini (US 10377093)
Regarding Claim 7, the modified Lin does not disclose that the two opposing sides of the three-dimensional web core includes a plurality of ribs, the two striking surface portions and the plurality of ribs are connected by the double-sided adhesive layer, and each of the plurality of ribs has a width smaller than one half a diametric dimension of each of the plurality of channels. However, Filippini discloses that the two opposing sides (Figure 9) of the three-dimensional web core (38) include a plurality of ribs (46) (Figure 9), the two striking surface portions (36,37) and the plurality of ribs (46) are connected (col. 8, lines 28-30; Figure 9), and that a varying rib thickness can be used (col. 4, line 67 and col. 5, line 1-3 and Figs. 3-5), which can be interpreted to include that each of the plurality of ribs can have a width smaller than one half a diametric dimension of each of the plurality of channels. It would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to have modified Lin in view of Schjolin and Miyata with the teachings of Filippini, to provide a paddle racket with a three-dimensional web core consisting of a plurality of any-sized ribs on both sides, while connecting the surface portions to the ribs of the core using a double-sided adhesive.
Regarding Claim 8, the modified Lin discloses a three-dimensional web core (20) that defines a diametric direction (Figure 1). The modified Lin does not disclose at least one of the plurality of ribs continuously extending from side to side between the two opposing sides of the three-dimensional web core in a direction parallel to the diametric direction, and parts of the plurality of ribs extending in intervals between the two opposing sides of the three-dimensional web core in a direction parallel to the diametric direction. However, Filippini discloses at least one of the plurality of ribs continuously extending from side to side between the two opposing sides of the three-dimensional web core in a direction parallel to the diametric direction (Figs. 8D and 9; and column 2, lines 63-67 continuing into column 3, lines 1-3). There is no novelty or inventive concept in this claim. It would have been obvious to one of skill in the art, before the effective filing date of the instantly claimed invention, to provide the paddle of the modified Lin with the rib features of the foam core disclosed by Filippini, resulting in high strength to weight properties (Abstract-Filippini) as desired by the applicant based on the specification (pg.1, lines 13-16).
Conclusion
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/SABA N. ALI/Patent Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711