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 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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 2021/0252356 to Thurman et al (hereinafter “Thurman”) in view of US Patent 5,374,059 to Huang.
Regarding claim 1, Thurman discloses a pickleball paddle (Figures), comprising a body (20), wherein the body comprises: a substrate layer (42) and two panels (44 and 46), the two panels are respectively stacked on two surfaces of the substrate layer (Figs. 2, 4, 11 and others), and a peripheral side surface of the body is banded with a plastic strip (48) as a whole, to enable an edge of the plastic strip to be flush with an outer surface of the panel (Fig. 11); the body further comprises a racket body (40) and a handle (30) that is integrally connected to the racket body (Figures), wherein a reinforcing board (132; Fig. 2 and para [0089] – “enhanced stiffness and enhanced feel”) is covered on and fastened to an upper surface and a lower surface of the handle respectively (Fig. 2), and an anti-slip band (34; para. [0079]) is attached to an outer surface of the handle.
Thurman does not expressly disclose a foam cotton attached to an outer surface of each reinforcing board. However, providing a racquet/paddle with a foam padding under an outer grip is well-known and widely used in the art for shock absorption.
Huang, for example, teaches an outer grip (16) for a tennis racquet or the like having a open cell felt/textile pad (12) underneath. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention, to provide the grip/handle of Thurman with a foam underlayer, as taught by Huang, in order to improve the shock absorption of the racquet.
Regarding claim 2, the substrate layer is made of a foam honeycomb material (Fig. 22 and para. [0134] of Thurman).
Regarding claim 3, the panel is a glass fiber panel or a carbon fiber panel (para. [0085] of Thurman).
Regarding claim 4, the peripheral side surface is banded with the plastic strip as a whole (para. [0087]), the edge of the plastic strip is fixed by using a fixture, and an upper edge and a lower edge are trimmed, to enable the edge of the plastic strip is flush with the outer surface of the panel.
Thurman teaches that the side surface is banded with the plastic strip (48), but is silent as to the method of banding. The claimed phrase “the edge of the plastic strip is fixed by using a fixture, and an upper edge and a lower edge are trimmed, to enable the edge of the plastic strip is flush with the outer surface of the panel” is being treated as a product by process limitation; that is, that the plastic strip is attached flush to the outer perimeter of the paddle. As set forth in MPEP 2113, product-by-process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113.
Thus, even though Thurman is silent as to the process used to band the plastic strip, it appears that the product in Thurman would be the same or similar as that claimed; especially since both applicant' s product and the prior art product is made of a plastic strip.
Regarding claims 5-7, and the limitations “the reinforcing board is adhered to an upper side surface and a lower side surface of the handle with a solid glue”; “the foam cotton is attached to the outer surface of the reinforcing board by using gun nails”; and “the anti-slip band is attached to the outer surface of the foam cotton with a double-sided adhesive”, the prior art of Thurman, as modified by Huang, is silent to these specific methods of attaching. However, these limitations are being treated as product by process limitations; that is, the structures are merely attached/layered together (these also inherently have to be attached so as to ensure the proper operation of the device). As set forth in MPEP 2113, product-by-process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113.
Thus, even though Thurman, as modified by Huang, is silent as to the process used to attach/adhere the components together, it appears that the product in Thurman, as modified by Huang, would be the same or similar as that claimed; especially since both applicant' s product and the prior art product are composed of the same materials in the same order of layers – all of which need to be stationary under playing conditions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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Nicholas J. Weiss
Supervisory Patent Examiner
Art Unit 3781
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711