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 .
Response to Arguments
Applicant's arguments filed 2/17/2026 have been fully considered but they are not persuasive. 1. Regarding claims 1,11,16, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, while applicant submits that the prior art doesn’t teach “the thickness of the body continuously increases from the periphery of the body at each of the first recess, the first portion, the second recess, and the second portion to the thickest point within the interior of the periphery,” West (US 6083125 A) in view of Aaron (US 4664381 A) does teach this in Fig 2 of Aaron, where the thickest point is at 28,28a and the thickness continuously increases from apex 26,26A to the knob 28,28A. This is further discussed below in the rejection of the independent claims.
2. Regarding claims 2-9, 12-15, and 17-20 (dependent from claims 1,13, and 26, respectively), applicant argues that these dependent claims are patentable due to the prior art references being unable to remedy the deficiencies of the respective independent claims. However, examiner respectfully disagrees, as these are in regards to dimension ranges/ratios or design choice and will be taught by the previously cited prior art references, as further discussed below in the rejections.
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.
Claim 13 is 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.
Regarding claim 13, it cites the aperture defining a second corner extending between the right surface and the lower surface, the first corner defining a radius between 0.2 inches and 0.4 inches. This lacks antecedent basis, as the second corner is mentioned in line 3 of the claim and examiner understands the second radius range to be applied to the second corner. Examiner suggest amending the claim to read: the aperture defining a second corner extending between the right surface and the lower surface, the second corner defining a radius between 0.2 inches and 0.4 inches.
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.
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.
1. Claims 1, 9-12, 15-16, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over West (US 6083125 A) in view of Aaron (US 4664381 A).
Regarding claim 1, West teaches A handle for a racket (1) including a striking surface (2), the handle comprising: an upper portion positioned below and extending away from the striking surface,
a first arm extending from a first side of the upper portion; a second arm extending from a second side of the upper portion opposite the first side; a body extending from the first arm and the second arm away from the upper portion to a bottom point; an aperture extending through the handle and defined by the upper portion, the first arm, the second arm, and the body, the aperture defining a vertical axis that extends vertically through the aperture bisecting the aperture, the aperture defining a linear lower surface perpendicular to the vertical axis; a first side surface of the handle defined by the first side of the upper portion, the first arm, and the body, the first side surface facing away from the vertical axis, the first side surface extending from the upper portion inwardly towards the vertical axis, and outwardly away from the vertical axis to a first portion defined by the first side of the body; and a second side surface of the handle opposite the first side surface and facing away from the vertical axis, the second side surface defined by the second side of the upper portion, the second arm, and the body, and outwardly away from the vertical axis to a second portion defined by the second side of the body (see annotated Figure 1c. below).
[AltContent: textbox (Vertical axis (longitudinal center axis))]
PNG
media_image1.png
580
244
media_image1.png
Greyscale
[AltContent: textbox (Upper portion (circled))]
[AltContent: textbox (Second side surface)][AltContent: textbox (Second side surface)][AltContent: textbox (First side surface)]
[AltContent: textbox (Second arm)][AltContent: textbox (First arm)]
[AltContent: textbox (Aperture defining a linear lower surface perpendicular to the vertical axis )][AltContent: textbox (aperture)]
[AltContent: textbox (body)]
[AltContent: textbox (Bottom point)]
However, West fails to teach the body defining a thickness that continuously increases from a periphery of the body to a thickest point within an interior of the periphery, a first recess defined by the first arm, a second recess defined by the second arm and wherein the thickness of the body continuously increases from the periphery of the body at each of the first recess, the first portion, the second recess, and the second portion to the thickest point within the interior of the periphery. Aaron teaches this as follows: the principal gripping area 20 (body) continuously increases from a periphery of the body to a thickest point within an interior of the periphery (see Fig.2 below, where the thickness is increasing from the periphery to the thickest point), the first side surface extending from the upper portion inwardly towards the vertical axis into a first recess (29) defined by the first arm, the second side surface extending from the upper portion inwardly towards the vertical axis into a second recess (29a) defined by the second arm and wherein the thickness of the body continuously increases from the periphery of the body at each of the first recess, the first portion, the second recess, and the second portion to the thickest point within the interior of the periphery (the thickness is increasing from apex 26,26A to the thickest point at knob 28,28A, encompassing all of recited structural elements)
[AltContent: textbox (Periphery of the body)][AltContent: textbox (First recess)][AltContent: textbox (Second portion)]
[AltContent: textbox (Continuous increasing thickness)][AltContent: textbox (thickest point within the interior of the periphery)]
PNG
media_image2.png
154
558
media_image2.png
Greyscale
[AltContent: textbox (Second recess)][AltContent: textbox (First portion)]
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified West’s handle with the two recesses and continuous increasing thickness of Aaron to allow for better gripping of the handle to discourage improper gripping techniques, simplify obtaining various accepted gripping techniques and to provide an excellent grasp on the racket and good leverage for ball striking (Aaron, col 4, lines 63-65).
Regarding claim 9, the modified West teaches wherein the first recess (28) and the second recess (28A) are the same distance from the aperture along a horizontal axis perpendicular to the vertical axis (FIG. 2 also shows that the handle made in accordance with the present invention is symmetrical, the side opposite the side shown in FIG. 1 being a mirror image thereof. Thus, there is a knob 28A on the bottom of FIG. 2, the knob 28A being substantially identical to the knob 28, Aaron, col 3, lines 26-31).
Regarding claims 10, 14 the modified West teaches the body defining a front face and an opposing rear face (FIG. 2 also shows that the handle made in accordance with the present invention is symmetrical, the side opposite the side shown in FIG. 1 being a mirror image thereof, Aaron, col 3, lines 26-29), wherein the thickness of the body linearly increases from the periphery of the front face of the body to the thickest point of the body (Aaron, see annotated Fig.2 above as discussed in claim 1). This appreciates the limitations of claim 14 as well.
Regarding claim 11, the modified West teaches all the limitations as discussed above in claim 1, further teaching the additional limitation of the aperture defining a vertical axis (item 7 of West) that extends vertically through the aperture bisecting the aperture (a left and right surface is formed (bisection) shown below), the aperture defining a left surface extending linearly and parallel to the vertical axis and a right surface opposite the left surface extending linearly and parallel to the vertical axis (see annotated Fig 4a of West below)
PNG
media_image3.png
413
274
media_image3.png
Greyscale
[AltContent: textbox (a right surface opposite the left surface extending linearly and parallel to the vertical axis)][AltContent: textbox (a left surface extending linearly and parallel to the vertical axis)]
Regarding claim 12, the modified West further teaches the aperture defining a lower surface extending linearly and perpendicular to the vertical axis, the lower surface extending between the left surface and the right surface (see annotated Fig.4a of West below)
PNG
media_image4.png
364
289
media_image4.png
Greyscale
[AltContent: textbox (Vertical axis)]
[AltContent: textbox (Right surface)][AltContent: textbox (Left surface)]
[AltContent: textbox (Lower surface (perpendicular to the vertical axis))]
Regarding claim 15, the modified West teaches wherein the body defines a first thickness at the periphery of the front face and a second thickness at the thickest point (see annotated Fig 2 of Aaron below),
PNG
media_image5.png
171
440
media_image5.png
Greyscale
[AltContent: textbox (a second thickness at the thickest point)]
[AltContent: textbox (a first thickness at the periphery of the front face)]
however it fails to teach a ratio of the first thickness to the second thickness is between 1:1.3 and 1:1.8.
The Court has held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (Gardner v. TEC Syst, Inc., 725 F.2d 1338 220 USPQ 777 (Fed. Cir. 1984), see MPEP §2144.04 IVA for further clarification). In Gardner v TEC Syst., Inc., Gardner received a patent for an apparatus used to dry ink applied to high-gloss papers by supporting the paper with wet ink over a field of static air. The applied prior art taught the claimed apparatus except for dimensional limitations. The trial Court held the opinion that the dimensional limitations had no impact on the function of the apparatus and no evidence was shown that departing from the claimed dimensions would cause the apparatus to fail.
In the instant case, the modified West teaches a first thickness at the periphery of the front face and a second thickness at the thickest point (see annotated Fig.2 of Aaron above) however, the office acknowledges there is no explicit teaching of a ratio of the first thickness to the second thickness in the modified West. However, the examiner notes that P[0009] of applicant’s specification discusses the claimed present ratio of first thickness to the second thickness, but there is not a sufficient explanation of criticality for any of the claimed ratio. Altering the ratio of the first thickness to the second thickness of the device of modified West would not cause it to operate differently and a person having ordinary skill in the art would have a reasonable expectation of success in making such a modification.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second thickness of the modified West to have the claimed ratio, as it is known in the art to have a handle with two thicknesses for purposes of preventing the racket from slipping from the hand (Aaron, col 3, lines 41-45).
Regarding claims 17-20, the modified West teaches the second portion (Aaron, see Fig 2 above) extending linearly between the aperture and the bottom point of the body along the vertical axis (West, see Fig 1c above) and the first portion (Aaron, see Fig 2 above) extending linearly between the aperture and the bottom point of the body along the vertical axis (West, see Fig 1c above), respectively to each of claims 17-20. However, the modified West doesn’t teach the specific distance percentages as claimed.
In the instant case, the modified West teaches an existing width between the two recesses 29,29a (see Fig 2 of Aaron), however, the office acknowledges there is no explicit teaching of width and ratios of aperture width to recess width in the modified West. However, the examiner notes that P[0005] of applicant’s specification discusses the claimed present aperture width to recess width ratios, but there is not a sufficient explanation of criticality for any of the claimed ranges/ratios.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the width and ratios of aperture width to recess width of the modified West in view of case law for the purpose of tailoring the proportions of the recess width to aperture width of the handle to the particular application in which it is being used. Altering the width and ratios of aperture width to recess width would not cause the device of the modified West to operate differently and a person having ordinary skill in the art would have a reasonable expectation of success in making such a modification.
2. Claims 5,7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over West in view of Aaron, further in view of case law (see Gardner vs TEC as used above).
Regarding claims 5,7, and 8, while the modified West teaches a recess width between the first recess and the second recess along a horizontal axis perpendicular to the vertical axis (width exists between the two recesses of Aaron, as seen above in claim 1), it fails to teach the specific width and ratios of aperture width to recess width as claimed.
In the instant case, the modified West teaches an existing width between the two recesses 29,29a (see Fig 2 of Aaron), however, the office acknowledges there is no explicit teaching of width and ratios of aperture width to recess width in the modified West. However, the examiner notes that P[0005] of applicant’s specification discusses the claimed present aperture width to recess width ratios, but there is not a sufficient explanation of criticality for any of the claimed ranges/ratios.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the width and ratios of aperture width to recess width of the modified West in view of case law for the purpose of tailoring the proportions of the recess width to aperture width of the handle to the particular application in which it is being used. Altering the width and ratios of aperture width to recess width would not cause the device of the modified West to operate differently and a person having ordinary skill in the art would have a reasonable expectation of success in making such a modification.
3. Claims 2 and 6 are rejected under U.S.C. 103 as being unpatentable over West in view of Aaron, further in view of Barnes et al. (US 20230191215), hereinafter Barnes.
The modified West teaches the aperture comprising an upper portion (claim 2) and comprising an aperture width along a horizontal axis perpendicular to the vertical axis (claim 6) (the aperture of West extends horizontally (side-to-side) perpendicular to the longitudinal central axis (vertical axis), it fails to teach defining a radius between 0.4 inches and 0.65 inches (claim 2) and wherein the aperture width is between 0.8 inches and 1.2 inches (claim 6). Barnes teaches a width of the opening ranging from 1.5 to 5 in [0022]. In this prior art, the opening is analogous to the aperture of the claimed invention, as seen below Fig 1.
While Barnes doesn’t teach the specific ranges of the radius and width of the aperture, the examiner notes that P[0003]-[0004] of applicant’s specification discusses the claimed present radius and aperture width ranges, but there is not a sufficient explanation of criticality for any of the claimed ranges.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the aperture radius values as claimed to the apertures of West because such a modification would have been considered a mere design optimization which fails to “patentably distinguish over the prior art". See in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.);
PNG
media_image6.png
316
240
media_image6.png
Greyscale
Fig 1. of Barnes et. al depicting the opening (aperture)
4. Claims 3,4, and 13 are rejected under U.S.C 103 as being unpatentable over West in view of Aaron, further in view of Barnes and Phelan, Jr. et al (US 12263388), hereinafter Phelan.
While the modified West in combination with Barnes, as seen above in Claim 2, teaches the body defining a lower portion including the bottom point (bottom of the handle of West), it fails to teach the lower portion defining a radius between 0.7 inches and 1.1 inches. Phelan teaches a first and second apex having a length between 1 and 3.5 in (col 9, lines 31-33). The distance between these apexes is analogous to the radius of the lower portion of the body in the claimed invention, as seen in Fig 1c below. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists; see MPEP 2144.05 I.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the radius range values as claimed to the lower portion of West as a matter of allowing greater flexibility and improved performance (Phelan, col 9, lines 37-39).
Regarding claim 13, the modified West in combination with Barnes the aperture defining a first corner extending between the left surface and the lower surface, the aperture defining a second corner extending between the right surface and the lower surface (see annotated Fig 4a of West below),
PNG
media_image7.png
85
264
media_image7.png
Greyscale
however it fails to teach the first corner defining a radius between 0.2 inches and 0.4 inches.
Phelan teaches a grip end portion 470 with multiple ends (analogous to first and second corners of claimed invention) where the outer perimeter dimensions art between 3.5 to 9.5 in (col 11, lines 25-28). This is also seen below in Fig 4b. Although the claimed range doesn’t lie within the range of the prior art, there is no criticality given to the narrower claimed range; note MPEP 2114.05 III (A).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the first corner radius values of the further modified West with those of Phelan to increase surface contact with different regions of the user's hand, thereby increasing the user's ability to apply increased amounts of force to the sports implement (Phelan, col 11, lines 22-25).
PNG
media_image8.png
558
665
media_image8.png
Greyscale
Fig 4b. of Barnes et al. depicting a grip 470 with various ends (one being analogous to a first corner)
Regarding claim 16, the modified West teaches all the structural limitations of the claim (as discussed above in claim 1) and further teaches the additional limitations of the claim: an aperture defined by the first arm and the second arm (see annotated Fig 1c of West above in claim 1) , the aperture extending through the handle (see Fig 1c in claim 1 above), the aperture defining a vertical axis that extends vertically through the aperture bisecting the aperture (longitudinal axis in Fig 4a of West); the first portion extending linearly and defining a first angle with respect to a first line parallel to the vertical axis between 0 degrees and 15 degrees (The longitudinal axis of the grip may intersect the mirror plane 4 at an angle of about 16.degree. to 90.degree. (see FIG. 4a), West, col 3, lines 27-29) the first portion extending linearly at least 30% of the distance between the aperture and the bottom point of the body along the vertical axis (as seen in Fig 2 above in claim 1 of Aaron, where the bottom portion of the handle (including item 20) are at least 50% or more of the handle length); the second portion extending linearly and defining a second angle with respect to a second line parallel to the vertical axis between 20 degrees and 40 degrees (the longitudinal axis of the grip may intersects the shaft's longitudinal center axis at an angle of about 5.degree. to 17.degree. (see FIG. 1c), the second portion extending linearly at least 40% of the distance between the aperture and the bottom point of the body along the vertical axis (as seen in Fig 2 above in claim 1 of Aaron, where the bottom portion of the handle (including item 20) are at least 50% or more of the handle length). Further, by incorporating a plane on the surface of the grip that is parallel with the plane of the racquet face, or even better, the conventional quasi-octagonal grip shape, which includes two planes parallel to the racquet face (West, col 4, lines 32-38).
Although the values taught by the prior art lie outside of the claimed ranges, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
As such, the first and second angle, the two distances between the aperture and the bottom point of the body along the vertical axis, with respect to the first and second portion, and the first and second line parallel to the vertical axis is appreciated.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RIA SHARMA whose telephone number is (571)272-0286. The examiner can normally be reached 8:00am- 5pm.
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, Nicholas Weiss can be reached at (571) 270-1775 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RIA SHARMA/Examiner, Art Unit 3711
/BRIAN P WOLCOTT/Primary Examiner, Art Unit 3711