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 Amendment
The Amendment filed January 15th, 2026 has been entered. Claims 1-9 pending in the application. Claim 1 has been amended and Claims 2-9 remain as originally filed. Applicant’s amendments to claim 1 has been considered in its entirety. The amendments to the claims have not overcome the rejections set forth in the Non-Final Rejection mailed December 23, 2025. The rejection of claims 1-9 under 35 U.S.C. § 103 is maintained in updated as set forth below to address the amended claim language.
Information Disclosure Statement
No information disclosure statement (IDS) has been submitted with the January 15, 2026 reply.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Forsyth (US 2,640,698 A) in view of Gait (US 2009/0011874 A1).
Regarding claim 1, Forsyth discloses a paddle (bat) comprising a planar paddle face, a grip, and a neck region connecting the two. Forsyth teaches a blade (11) having opposed, substantially parallel striking surfaces (12, 13) designed to strike a ball during play, consistent with a “planar paddle face” as claimed (Col. 2, lines 22-27). These surfaces extend along a plane between lateral edges and present front and rear surfaces for ball striking, as shown in Figures 1-2 and described in the detailed disclosure. Forsyth further teaches a handle (10) that extends from the blade and is “of greater thickness than the blade” and “projects… in longitudinal alignment therewith,” clearly suggesting that is aligned parallel to the face and sized to receive the user’s fingers around the lateral surfaces (Col. 2, lines 29-32). Thus, Forsyth teaches a grip extending along an axis parallel to the plane of the face and sized to receive the user’s fingers around the lateral surfaces.
The neck region is identified as neck area (15), where the handle merges into the base of the blade (Col. 2, lines 32-34). The neck includes shoulder portions (18) and laterally extending finger rests (19) forming “finger grooves” that intersect across the neck region (Col. 3, lines 23-26; Col. 5, lines 6-15). These groves serve as finger recesses designed to accommodate the player’s index finger during use. Forsyth explains that one of these finger rests are positioned so that one “will be in position for engagement by the forefinger of the hand when the handle is gripped,” and that the finger rests prevent the finger from slipping off the adjacent edge of the striking face during play (Col. 2, lines 47-52; Col. 3., lines 1-8). The disclosure goes further by describing anatomical compatibility: the bat is “normally gripped between the thumb on one side and the first knuckle joint between the base of the forefinger and the first metacarpus bone” (Col. 3, lines 51-55). This demonstrates that the finger grove is recessed sufficiently to receive the finger structure and is dimensioned to enable engagement with the index finger during play.
However, Forsyth does not expressly disclose that the finger recess is formed as a concave pocket that is displaced inwardly and laterally to face laterally outward between a lateral edge of the paddle face and the grip, as recited in amended claim 1. Forsyth’s finger grooves run diagonally across the striking face surfaces and the rests taper downwardly toward the striking faces (Col. 3, lines 23-26; Figs. 3-7).
Gait discloses a lacrosse head having an ergonomic throat. The lacrosse head of Gait comprises (1) a frame/scoop forming the head – the operative ball-contacting portion of the implement; (2) an ergonomic throat connecting the frame (head) and the handle/stick - corresponding structurally to the "neck joining the face to the grip" recited in claim 1; and (3) a handle receiving section (20) for attachment to the lacrosse stick. The throat (12) is a defined, discrete structural zone between the head and the handle and is a narrower cross section then the diverging sidewalls of the head. Gait teaches that the ergonomic throat includes a contoured surface (22) that “is concaved leading to ergonomic ridge (24)” and “combined with the concave nature of the throat” such that “a user may grasp closely on the surface of the improved throat while maintaining great control of a lacrosse stick while manipulating the lacrosse head and will be substantially precludes from sliding upward on the lacrosse head by the ergonomic ridge” ([0034], Figs. 1-3). A second embodiment teaches multiple contoured surfaces (22) and ergonomic ridges (24) in the throat so that “a player may closely grip lacrosse head (10) with their fingers following within the ridges and contours on ergonomic throat (12)” ([0036] , Figs. 4-6). Claim 3 of Gait expressly recites that “the concave surface is sized to fit a user’s forefinger,” directly establishing that the concave feature in the throat/neck region is dimensioned to receive and accommodate the index finger during play.
Gait is analogous art to the claimed pickleball paddle. Lacrosse and pickleball are both active ball sports in which a player uses a hand-held implement comprising a head, a neck/throat, and a handle to control a ball. Both the lacrosse head of Gait and the pickleball paddle of the instant application share similar structural topology (head/face, neck/throat, and handle) and both address the same problem of providing ergonomic finger accommodation in the neck/throat region to improve the player’s grip stability, control, and comfort.
However, neither Forsyth or Gait expressly teach an axial length of at least ½ inch and less than 1 ½ inches, and a laterally extending depth of at least one-half inch inside the lateral extent of the grip. Forsyth teaches finger rests at the shoulder region specifically dimensioned to accommodate the forefinger and the first knuckle joint between the base of the forefinger and the first metacarpus bone (Col. 3, lines 51-55). Gait teaches concave surfaces sized to fit the forefinger (Claim 3). The claimed dimensional ranges fall within the range of dimensions reasonably associated with the anatomy of a human index finger resting on a concave recess. The Federal Circuit 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 relative 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), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). Because the claimed dimensions serve only to size the recess to receive the player’s index finger (the same function expressly taught by both Forsyth and Gait) selecting dimensions within the claimed ergonomic range constitutes an obvious matter of routine design optimization yielding predictable results. Applicant does not assert any criticality to the specific dimensional ranges or any unexpected result from their selection.
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Forsyth to provide a concave pocket in the neck region facing laterally outward, as taught by Gait, because Gait demonstrated that providing concave surfaces in the throat/neck region of a hand-held ball-sport implement (sized to fit the player’s forefinger) yields improved grip stability, control, and comfort which aligns with the objective of Forsyth finger rests. Forsyth already locates its finger rests at the lateral shoulder portions (18) of the neck, at the junction between the lateral edge of the blade (face) and the grip. Incorporating Gait’s teaching of concave, forefinger-sized surfaces into the lateral shoulder region of Forsyth’s neck (the location Forsyth designates for finger placement) would naturally produce a concave pocket displaced inwardly and laterally between the lateral edge of the paddle face and the grip, facing laterally outward, as recited in amended claim 1. Such a modification represents the application of a known ergonomic neck-grip solution (Gait) to an existing paddle design (Forsyth) at the location Forsyth itself identifies for finger accommodation, and the combination yields predictable results. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding claim 2, Forsyth teaches bilateral (opposed) shoulder portions (18) and finger rests (19) on each lateral side of the neck, “disposed at substantially equal, widely diverging oblique angles” forming symmetrically bilateral finger receiving structures on both sides of the bat (Claims 1-4; Col. 4, lines 23-26; Col. 5, lines 9-15). Gait teaches contoured surfaces (22) and ridges (24) accommodating one or multiple fingers. Applying the combination set forth above with respect to claim 1, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply Gait’s concave surface teaching to both lateral shoulders of Forsyth’s neck, given Forsyth’s explicit disclosure of bilateral shoulder features. The dimensional limitations recited in claim 2 are also addressed by the rationale set forth above with respect to claim 1.
Claims 3, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Forsyth (US 2,640,698 A) in view of Gait (US 2009/0011874 A1), as applied to claims 1 above, and further in view of Brents et al. (US 2022/0032141 A1).
Claims 3, 5 and 6 depend from claim 1 and therefor incorporate all the limitations of amended claim 1 taught by Forsyth and Gait as set forth above. However, the combination of Forsyth and Gait does not disclose the following limitations:
a neck formed of a material having a specific stiffness greater than 20 and a modulus of elasticity greater than 60 (claim 3);
a neck comprising at least one axially extending tubular shaft joining the handle and face (claim 5); or
a neck comprising at least two axially extending tubular shafts separated within the plane joining the handle to the face (claim 6).
Regarding claim 3, Brents teaches a pickleball paddle frame fabricated from aluminum, graphite, or stiff polymeric materials ([0065]) and discloses frame stiffness values between 20 and 60 using the industry-recognized Babolat's Racquet Diagnostic Center (RDC) scale ([0065] - [0066]). The RDC is used in racket sports to measure a racket's key characteristics, including frame stiffness, weight, swingweight, and stringbed deflection, assigning a numerical "RA" rating (lower number = more flexible, higher number = stiffer). While Brents expresses stiffness using the RDC scale rather than explicit modulus values, claim 3 does not require any particular test method or unit of measurement. Brents therefore teaches selecting materials and structural configurations to achieve desired stiffness characteristics in the neck region.
Regarding claim 5, Brents explicitly teaches that the frame of the paddle can include “at least one frame member” which is “a cylindrical or tubular body formed at the proximal end of the frame and forming a body for the handle portion” ([0039], Figs. 4A, 4B, 5A, 5B). This teaching corresponds to a tubular shaft extending axially between the paddle’s handle and head, with the tubular frame member providing the structural connection from the handle to the head region.
Regarding claim 6, Brents discloses an embodiment in which the frame preferably represents a pair of frame members that extend co-terminously into the handle portion ([0039], Figs. 4A, 4B, 5A, 5B). Figure 5A shows two such tubular frame members separated by an opening forming a throat. Each of these frame members is tubular and spaced apart laterally, thereby teaching at least two axially extending tubular shafts separated within the plane joining the handle and the face.
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 ergonomic paddle of Forsyth, as modified by Gait, by incorporating the tubular frame construction and stiffness-driven material selection taught by Brents, because Brents provides a known and predictable approach for implementing a rigid, durable, and manufacturable neck/handle structure. The modification applies Brents’ structural teachings to the paddle of Forsyth while maintaining the finger-recess geometry already disclosed in Forsyth. Such a combination represents the application of known structural solutions to an existing ergonomic paddle configuration and yields predictable results.
Claims 4, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Forsyth (US 2,640,698 A) in view of Gait (US 2009/0011874 A1), as applied to claim 1 above, and further in view of Taylor (US 2018/0104555 A1).
Claims 4, 7 and 8 depend from claim 1 and therefor incorporate all the limitations of amended claim 1 taught by Forsyth and Gait as set forth above. However, the combination of Forsyth and Gait does not disclose the following limitations:
a neck material selected from the group consisting or fiber reinforced polymers and aluminum;
a paddle face that is a high-pressure laminate; or
the lateral edges of the laminate are rimmed by a protecting frame having greater resilience than the laminate face.
Regarding claim 4, Taylor explicitly identifies graphite/carbon fiber laminates and aluminum as suitable materials for paddle and handle structures ([0007], [0047]). Graphite is a constituent of fiber-reinforced polymers (FRPs), and therefor Taylor teaches materials falling within the claimed group consisting of fiber-reinforced polymers and aluminum.
Regarding claim 7, Taylor describes paddle faces made of carbon fiber skin laminates composed of multiple epoxy-impregnated cloth layers ([0047]). Such laminate constructions are formed using pressure-based curing processes inherent in epoxy composite manufacturing and therefor constitute high-pressure laminates.
Regarding claim 8, Taylor teaches a “sound reducing edge or cap” formed of rubber, an elastomeric material, or a polymer material ([0036], [0045]) that is bonded to the paddle to protect the edges of the laminate layers. These materials are inherently more resilient than rigid carbon-fiber laminate faces.
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 ergonomic paddle of Forsyth, as modified by Gait, by incorporating the material selections, laminate face construction, and resilient edge structure taught by Taylor because these features represent well known and predictable design choices in the field of sports paddles. Fiber-reinforced polymer and aluminum materials are commonly used for paddle necks to achieve known strength-to-weight and stiffness characteristics; high-pressure laminate faces are routinely employed to provide controlled impact response and durability; and resilient edge frames or caps are widely used to protect laminate edges from damage during play and reduce impact noise. Applying these known constructions from Taylor to the paddle of Forsyth constitutes the substitution of know elements for their established purposes and yields predictable results without changing the basic function of the paddle.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Forsyth (US 2,640,698 A) in view of Gait (US 2009/0011874 A1), as applied to claim 1 above, and further in view of Taylor (US 2018/0104555 A1), and further in view of Brents et al. (US 2022/0032141 A1).
Claim 9 depends from claim 1 and therefor incorporate all the limitations of amended claim 1 taught by Forsyth and Gait as set forth above. However, the combination of Forsyth and Gait does not disclose that the paddle conforms to the 2021 equipment standards promulgated by the International Federation of Pickleball (IFP), or a paddle weight greater than 5 ounces.
Taylor teaches that pickleball paddles must comply with “USAPA specifications,” which govern paddle dimensions, deflection limits, and other performance requirements ([0006]). Because the USAPA and IFP jointly publish and coordinate equipment standards, a person of ordinary skill in the art would have understood Taylor as instructing compliance with the applicable IFP equipment standards, including 2021 standards.
However, Taylor does not disclose a specific paddle weight, nor does Taylor teach that the paddle has a weight greater than 5 ounces. Taylor focuses on laminate construction, material selection, and structural reinforcement, but is silent with respect to the overall mass of the paddle.
Brents teaches pickleball paddles having weights between approximately 7.5 and 8.3 ounces ([0097]), which satisfies the limitation that the paddle be greater than 5 ounces in weight.
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 ergonomic paddle of Forsyth, as modified by Gait, to conform to applicable equipment standards as taught by Taylor and to further configure the paddle to have a weight greater than 5 ounces as taught by Brents, because regulation-compliant pickleball paddles are required to meet both performance standards and minimum mass requirements to ensure durability, stiffness, and predictable play characteristics. The combination applies well-known regulatory and structural constraints to the paddle of Forsyth, as modified by Gait, and yields predictable results.
Response to Arguments
Applicant's arguments filed January 15, 2026 have been fully considered but they are not persuasive.
Applicant argues that Forsyth does not properly teach a recess “displaced inwardly from a lateral extent of the grip” because Forsyth’s shoulder portions (18) and finger rests (19) provide a recess displaced in a perpendicular direction from the defined lateral direction of the claims (i.e., the plane of the paddle face), rather than from the “lateral extent of the grip” as originally recited. Applicant contends that while Forsyth’s ridge does not extend to the center of the paddle and is therefore inwardly displaced from the grip at that point, that inward displacement is not a displacement from the “lateral extent of the grip” but rather a displacement perpendicular to the lateral extent.
This argument is not persuasive for two independent reasons.
First, the argument fails under the broadest reasonable interpretation of the original claim language. Original claim 1 recited “a finger recess displaced inwardly from a lateral extent of the grip.” Under BRI, “a lateral extent of the grip” refers to the outer lateral boundary of the grip as measured in the plane of the paddle face (i.e., the side edge of the grip). Forsyth expressly teaches shoulder portions (18) that extend laterally at the base of the blade, forming the outer lateral boundaries of the neck/grip junction, with upstanding finger rests (19) fixed along those shoulders (Col. 2, lines 29-34; Col. 5, lines 6-15; Figs. 1-7). The finger groove formed between the finger rests is recessed relative to those laterally extending shoulders, that is, it is displaced inwardly from the outer lateral boundary of the grip defined by the shoulder portions (18). Forsyth further confirms that the finger rests (19) are located at a position “well beyond normal reach of the player’s thumb” and are reduced in height as they approach the neck (15), forming a recess that accommodates the forefinger’s first knuckle joint and metacarpal (Col. 3, lines 51-55). The mere fact that Forsyth’s groove also has a diagonal orientation across the face does not negate the fact that the groove structure as a whole is displaced inwardly from the lateral extent of the shoulder to receive the index finger. Applicant’s reading of the original claim language would import a directional limitation, that the displacement must be exclusively and purely lateral.
Second, applicant’s amendment itself demonstrates that the original claim language was broad enough to be distinguished only through amendment, not through arguments. The applicant did not transverse the original rejection by demonstrating that Forsyth is wholly outside the scope of the original claim 1, rather, applicant amended claim 1 to add more specific limitations “and laterally,” “to form a concave pocket,” and “facing laterally outward” as a means of clarifying the geometry intended. The decision to amend, rather than to rest solely on argument, is an implicit acknowledgement that the original claim language was subject to the examiner’s reading. In any event, the fact that an applicant amends to add specificity does not retroactively establish that the original claim was outside the scope of the prior art.
The rejection of claims 1 and 2 is accordingly maintained. The rejection of claim 1, as explained above, has been updated by the addition of Gait as a secondary reference to address the new “concave pocket … facing laterally outward” limitations introduced by the amendment. Forsyth remains the primary reference and continues to supply the base paddle structure including the planar face, grip, neck, and finger recess adapted to receive the index finger at the lateral shoulder region. Gait supplies the specific concave pocket geometry facing laterally outward, as now required by amended claim 1. The combination of Forsyth and Gait renders amended claim 1 unpatentable for the reasons stated in the rejections above.
Applicant further argues that Forsyth, while acknowledged as analogous art, “suggests a grip intended for table tennis paddles” and for that reason “would not suggest modifications taught by the present invention suitable for a different grip appropriate for pickleball players,” and “does not suggest that this grip might be desirable” for the sport of pickleball.
This argument is not persuasive. Under MPEP 2141.01(a), a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Forsyth satisfies both prongs. With respect to the first prong, the relevant field of endeavor is that of hand-held sporting implements used to strike a ball, comprising a planar striking face, a neck joining the face to a handle, and a handle/grip. A table tennis paddle and a pickleball paddle are structurally similar in all relevant aspects. Both have a flat striking surface for hitting a ball in the air, both have a planar face, a neck region, and a handle, and both are classified under CPC class A63B 59/00. The two paddles are so closely related in structure that one of ordinary skill in the art of paddle design would consider them to be within the same field of endeavor. Applicant’s concession that Forsyth is ”analogous art” implicitly acknowledges this.
With respect to the second prong, the problem addressed by the instant invention is providing ergonomic finger accommodation in the neck region of a paddle for improved grip, stability, control, and comfort during play. Forsyth expressly addresses this identical problem in a structurally similar product. The fact that the ball used in each game differs, or that the specific grip conventions may vary between sports, does not alter the underlying biomechanical problem being solved, how to configure the neck region of a paddle to receive and stabilize the players index finger. A person of ordinary skill in the art would not be limited to consulting only pickleball-specific references when solving a problem of finger placement ergonomics, as that problem is common in all paddle, racket/racquet, bat and stick sports and products of analogous structure such as tools, brushes, etc.
Applicant’s argument is not supported by any technical evidence, comparative biomechanical analysis, or declaration establishing that pickleball grips differ materially from table tennis grips in a manner that would render Forsyth’s teaching inapplicable.
The rejections are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DuBois US (U.S. Patent No. 4717151 A) discloses a racquet handle for tennis, racquetball, and squash in which a concavity is formed on the lateral side of the grip to accommodate the index finger.
Millon et al. (U.S. Patent No. 5,651,744 A) discloses a lacrosse stick in which the player's forefinger is positioned against or below the throat area of the lacrosse head.
Stowell et al. (U.S. Patent No. 4974286 A) discloses a universal handle for hand-held implements in which opposing lateral sides of the handle adjacent its upper end each have a concave depression defining a grip site which the user’s forefinger and thumb can be pressed.
Drake et al. (U.S. Patent Application Publication No. 2009/0011875 A1) discloses a squash racquet grip in which raised ridges define a forefinger receiving recess.
Bozikis et al. (EP 1,875,993 B1) teaches a razor handle having a neck portion in the vicinity of the head, where each side surface of the neck includes a concave portion designed for hand grasping with the index finger positioned close to the razor head in the neck region.
Brittin (U.S. Patent No. 424,954 A) a table knife in which the sides of the bolster (the junction between the blade and handle e.g., neck) are provided with concave depressions forming finger rests.
Kowalke (WO 2015/119748 A1) teaches a table tennis paddle comprising a narrow neck portion with a finger notch in the neck for registering the paddle position in the player’s hand.
Hagey (U.S. Patent No. 5,924,941) teaches a contoured hand grip for a racquet in which a knob structure engages the index finger segment between the second and third knuckles, with the grip assembly mounted on the racquet neck.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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ANDREW JAMES ELLIOTT
Examiner
Art Unit 3711
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711