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 .
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
There are two claim 10. Misnumbered claims 10-20 have been renumbered 11-21, respectively.
Claim 14 is objected to because of the following informalities: Regarding claim 13, line 3, “place” should be changed to plane. Appropriate correction is required.
Election/Restrictions
Applicant’s election without traverse of the species of Figures 6A-6B in the reply filed on 28 January 2026 is acknowledged. The applicant stated that claims 1, 12-15, and 21 (as renumbered) read on the elected species, withdrew claims 2-9 and 16-20 (as renumbered), and cancelled claim 10. Claim 11 (as renumbered) has been withdrawn from further consideration pursuant to 37 CFR 1.142(b) since it depends from withdrawn claim 9 which is drawn to the nonelected species of Figure 4. Similarly, claim 13 (as renumbered) has been withdrawn from further consideration pursuant to 37 CFR 1.142(b) since it depends from withdrawn claim 9 which is drawn to the nonelected species of Figure 4. As such, claims 1, 12, 14-15, and 21 are being examined.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the window passing through an entirety of the handle in the same place/plane as the plane of the paddle face must be shown or the feature(s) canceled from the claim(s). Figure 6A shows the window [420] passing through an entirety of the handle [130e] in the same plane as a plane of the head, but not in the same plane as a plane of the paddle face [170e] which is slightly offset from the plane of the window [420]. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a ball dwell control mechanism in claims 1, 12, 14-15, and 21.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 21 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 21, line 5, “a softer more flexible paddle” is indefinite. It is unclear what the paddle is softer and more flexible in comparison to.
Claim Rejections - 35 USC § 102
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.
Claims 1, 12, 14-15, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (CN 105617629 A using machine translation).
Regarding claim 1, Chen discloses composite molded sports paddle (Figure 1), comprising: a head [A] (see annotated Figures 1-2 below for all reference letters) with a paddle face [B or 2]; a handle [C]; and a transition area [D] between the head [A] and the handle [C], wherein the transition area [D] includes a ball dwell control mechanism [3] (pages 1-2 and annotated Figures 1-2 below). Regarding the recitation in the preamble that the paddle is “molded,” product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
PNG
media_image1.png
407
452
media_image1.png
Greyscale
Regarding claim 12, Chen discloses the composite molded sports paddle of claim 1, wherein the paddle (Figure 1) includes opposite facing sides [E, F] and the ball dwell control mechanism [3] includes at least one of a slot and a window [3] on at least one of the opposite facing sides [E, F] of the paddle (Figure 1) (page 2 and annotated Figures 1-2 above; wherein the finger hole [3] extends from one side [E] of the paddle to the other [F]).
Regarding claim 14, Chen discloses the composite molded sports paddle of claim 1, wherein the paddle face [B] includes a plane [G] and the ball dwell control mechanism [3] includes a window [3] that passes through an entirety of the handle [C] in the same place as the plane [G] of the paddle face [B] (page 2 and annotated Figures 1-2 above).
Regarding claim 15, Chen discloses a method of using the composite molded sports paddle of claim 1, comprising hitting a ball with the paddle face [2] and using the ball dwell control mechanism [3] to manage dwell time upon ball and paddle impact (pages 1-2 and annotated Figures 1-2 above; wherein the finger hole [3] influences the type of swing and thus the dwell time, specifically see page 1: “the forehand is fast-attacking,” “the forehand can be short,” “a backhand fast-breaking shape,” “back-handed ball-cut”).
Regarding claim 21, Chen discloses the method of claim 14, wherein the paddle (Figure 1) includes opposite facing sides [E, F] and the ball dwell control mechanism [3] includes at least one of a slot and a window [3] on at least one of the opposite facing sides [E, F] of the paddle (Figure 1), and using the ball dwell control mechanism [3] includes using at least one of the slot and the window [3] on at least one of the opposite facing sides [E, F] of the paddle to mechanically aid in creating a softer more flexible paddle (page 2: “more flexible”) on ball impact (page 2 and annotated Figures 1-2 above; wherein the finger hole [3] extends from one side [E] of the paddle to the other [F]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Timmermann (US 2,328,366), Schnur (US 2,205,578), Caines (US 2,230,177), Adams (US 2,082,772), Cottey et al. (US 2010/0048333 A1), Kueng (US 2014/0183821 A1), Brents et al. (US 2022/0032141 A1), Barnes et al. (US 2023/0191215 A1), Marshall (US 2022/0088449 A1), Bonfigli (US 2016/0339312 A1), Bird et al. (US D1,029,158 S), Bonfigli (US D952,780 S), Kowalke et al. (US D836,736 S), Zhang (CN 208541766 U), Shen (CN 2684889 Y), Zhong (CN 202497672 U), Scholid (CN 2693306 Y), and Zhao (WO 2019/210809 A1) which all disclose similar sports paddles having slots or windows in the paddle throat or handle.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 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.
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.
/AUDREY B. WALTER/Primary Examiner, Art Unit 3711