DETAILED ACTION
This Office action is in response to amendments received 22 May 2026.
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 .
Drawings
The drawings were received on 12 July 2023. These drawings are accepted.
Claim Objections
Claim 13 is objected to because of the following informalities: Regarding claim 13, line 2, “window covered” should be changed to window is covered. Appropriate correction is required.
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 Cottey et al. (US 2010/0048333 A1).
Regarding claim 1, Cottey discloses a composite molded sports paddle [2] (see paragraph 0001: “paddle tennis racket,” and paragraph 0002: “carbon fiber reinforced plastics material in a molding press”), comprising: a head [4] with a paddle face (see paragraph 0001: “paddle tennis racket;” wherein paddle tennis rackets have a solid, unstrung racket face); a handle [6, 8] comprising a shaft [6]; and a transition area [8] between the head [4] and the handle [6, 8], wherein the transition area [8] includes a ball dwell control mechanism [12, 20] (see paragraph 0009: “improved racket allowing an excellent damping effect and ball acceleration”) (paragraphs 0001-0002, 0009, 0061, 0064-0065, and Figures 1-4). Regarding the interpretation that the handle comprises both the handle and the transition area, this seems to be similar interpretation by the applicant since the specification discloses that “the window 420…will pass through the entire handle 130e” but Figures 6A-6B show that the window [420] passes through the transition area [440] with the handle [130e] being below the transition area [440]; therefore the handle [130e] must also comprise the transition area [440] if the window [420] is considered to pass through the handle [130e]. This interpretation is particularly required for claim 14.
Regarding claim 12, Cottey discloses the composite molded sports paddle of claim 1, wherein the transition area [8] includes a front (side facing the viewer in Figure 4), a rear (side opposed to the viewer in Figure 4), and opposite facing lateral sides [A, B] (see annotated Figure 4 below for all reference letters), and the ball dwell control mechanism [12, 20] comprises the transition area [8] including at least one of a slot and a window [12] on at least one [A] of the opposite facing lateral sides [A, B] of the transition area [8] of the paddle [2] (paragraphs 0061, 0064, Figures 1-3, and annotated Figure 4 below).
PNG
media_image1.png
466
407
media_image1.png
Greyscale
Regarding claim 14, Cottey discloses the composite molded sports paddle of claim 1, wherein the transition area [8] includes a front (side facing the viewer in Figure 4), a rear (side opposed to the viewer in Figure 4), and opposite facing lateral sides [A, B], the head [4] includes a plane (an x-y plane passing through longitudinal axis [10] in Figure 1), and the ball dwell control mechanism [12, 20] includes a window [12] on at least one [A] of the opposite facing lateral sides [A, B] of the transition area [8] of the paddle [2] that passes through an entirety of the handle [6, 8] in the same plane as the plane (an x-y plane passing through longitudinal axis [10] in Figure 1) of the head [4] (paragraphs 0061, 0064, Figures 1-3, and annotated Figure 4 above; wherein the indentation [12] passes through the plane of the head and an entirety of the handle [6, 8] from front to back).
Regarding claim 15, Cottey discloses a method of using the composite molded sports paddle of claim 1, comprising hitting a ball with the paddle face (see paragraph 0001: “paddle tennis racket;” wherein paddle tennis rackets have a solid, unstrung racket face) and using the ball dwell control mechanism [12, 20] to manage dwell time (see paragraph 0009: “an improved racket allowing an excellent damping effect and ball acceleration”) upon ball and paddle impact (paragraphs 0001, 0009, 0061, 0064-0065, and Figures 1-4).
Regarding claim 21, Cottey discloses the method of claim 15, wherein the transition area [8] includes a front (side facing the viewer in Figure 4), a rear (side opposed to the viewer in Figure 4), and opposite facing lateral sides [A, B]; wherein the transition area [8] includes at least one of a slot and a window [12] on at least one [A] of the opposite facing lateral sides [A, B] of the transition area [8] of the paddle [2], and using the ball dwell control mechanism [12, 20] includes using at least one of the slot and the window [12] on at least one [A] of the opposite facing lateral sides [A, B] of the transition area [8] of the paddle [2] to mechanically aid in creating a paddle that is softer and more flexible on ball impact compared to a paddle without the slot or window [12] (paragraphs 0009, 0018, 0061, 0064-0065, Figures 1-3, and annotated Figure 4 above).
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.
Claims 1, 12-15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Pai (US 2008/0254921 A1) in view of Cottey.
Regarding claim 1, Pai discloses a sports racket (Figure 1), comprising: a head [10] with a face; a handle [20, 30] comprising a shaft [30]; and a transition area [20] between the head [10] and the handle [20, 30], wherein the transition area [20] includes a ball dwell control mechanism [24] (paragraphs 0005, 0010, 0024-0031, and Figures 1-4). Regarding the interpretation that the handle comprises both the handle and the transition area, this seems to be similar interpretation by the applicant since the specification discloses that “the window 420…will pass through the entire handle 130e” but Figures 6A-6B show that the window [420] passes through the transition area [440] with the handle [130e] being below the transition area [440]; therefore the handle [130e] must also comprise the transition area [440] if the window [420] is considered to pass through the handle [130e]. This interpretation is particularly required for claim 14. Pai does not disclose the racket being a composite molded sports paddle wherein the head has a paddle face. Cottey, however, teaches a similar a composite molded sports paddle or racket [2] (see paragraph 0001: “paddle tennis racket,” and paragraph 0002: “carbon fiber reinforced plastics material in a molding press”), comprising: a head [4] with a paddle face (see paragraph 0001: “paddle tennis racket;” wherein paddle tennis rackets have a solid, unstrung racket face) (paragraphs 0001-0002, 0061, and Figure 3). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize Pai’s connecting segment [20] in conjunction with a composite molded sports paddle comprising a head with a paddle face rather than a stringed racket because Cottey discloses that flexible connecting segments [8] can be used in conjunction with a multitude of composite molded sporting devices such as tennis rackets, squash rackets, badminton rackets, racquet ball rackets, or paddle tennis rackets to dampen vibrations and allow for improved ball acceleration (paragraphs 0001-0002, 0009, 0061, and Figures 1-4). This amounts to a simple substitution of one known element for another to obtain predictable results.
Regarding claim 12, the modified Pai discloses the composite molded sports paddle of claim 1, wherein the transition area [20] includes a front [C] (see annotated Figure 1 below for all reference letters), a rear [D], and opposite facing lateral sides [E, F], and the ball dwell control mechanism [24] comprises the transition area [20] including at least one of a slot and a window [24] on at least one of the opposite facing lateral sides [E, F] of the transition area [20] of the paddle (Figure 1) (paragraphs 0024-0025, 0027-0028, and annotated Figure 1 below).
PNG
media_image2.png
367
462
media_image2.png
Greyscale
Regarding claim 13, the modified Pai discloses the composite molded sports paddle of claim 12, wherein the at least one of the slot and the window [24] is covered along the front and the rear (see [C, D]) of the transition area [20] (paragraph 0028, Figures 2-4, and annotated Figure 1 above).
Regarding claim 14, the modified Pai discloses the composite molded sports paddle of claim 1, wherein the transition area [20] includes a front [C], a rear [D], and opposite facing lateral sides [E, F], the head [10] includes a plane (imagine a plane passing through all strings [11] in Figure 1), and the ball dwell control mechanism [24] includes a window [24] on at least one of the opposite facing lateral sides [E, F] of the transition area [20] of the paddle (Figure 1) that passes through an entirety of the handle [20, 30] in the same plane as the plane (imagine a plane passing through all strings [11] in Figure 1) of the head [10] (paragraphs 0025, 0028, and annotated Figure 1 above).
Regarding claim 15, the modified Pai discloses a method of using the composite molded sports paddle of claim 1, comprising hitting a ball with the paddle face and using the ball dwell control mechanism [24] to manage dwell time upon ball and paddle impact (paragraph 0031).
Regarding claim 21, the modified Pai discloses the method of claim 15, wherein the transition area [20] includes a front [C], a rear [D], and opposite facing lateral sides [E, F]; wherein the transition area [20] includes at least one of a slot and a window [24] on at least one of the opposite facing lateral sides [E, F] of the transition area [20] of the paddle (Figure 1), and using the ball dwell control mechanism [24] includes using at least one of the slot and the window [24] on at least one of the opposite facing lateral sides [E, F] of the transition area [20] of the paddle (Figure 1) to mechanically aid in creating a paddle that is softer and more flexible on ball impact compared to a paddle without the slot or window (paragraphs 0024-0025, 0027-0028, 0031, and annotated Figure 1 above).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Babolat (US 8,002,651 B2), Severa et al. (US D596,682 S), and Janes (US 5,060,944) which all disclose similar racket transition areas with slots/windows.
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.
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
Prosecution Insights