DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Restriction
Applicant's election without traverse of Group I in the reply filed on 12 August 2026 is acknowledged. In an interview with Applicant’s representative on 10 September 2026, Species 1 was elected without traverse. Accordingly, claims 4-7, 13, 31, 32, 41, and 43-45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.
Applicant’s amendments to claim 1 do not overcome the lack of unity of invention between Groups 1 and 2 and between the previously identified species - see the prior art rejections of claim 1 presented herein.
The restriction is made FINAL.
Information Disclosure Statement
The information disclosure statement(s) (IDS(s)) submitted on 09 October 2023 was/were filed before the mailing date of the first action on the merits. The submission(s) is/are in compliance with the provisions of 37 CFR 1.97. It is noted that a copy of Cite No. 1 of the FOREIGN PATENT DOCUMENTS Cite No. 1 has not been filed and, thus, this reference has not been considered.
The information disclosure statement(s) (IDS(s)) submitted on 16 June 2026 was/were filed before the mailing date of the first action on the merits. The submission(s) is/are in compliance with the provisions of 37 CFR 1.97. It is noted that U.S. PATENT APPLICATION PUBLICATIONS Cite Nos. 1, 3, 4, 5, and 7 have an invalid US Publication Number and, thus, these references have not been considered. It is noted that a copy of FOREIGN PATENT DOCUMENTS Cite Nos.2 and 3 have not been filed and, thus, these references have not been considered.
Specification
The disclosure is objected to because of the following informalities:
In the Abstract, line 1, “The present teachings contemplate a” should be changed to --A-- (note: the language of the Abstract should avoid using phrases which can be implied, such as, "This disclosure concerns," "The disclosure defined by this invention," "This disclosure describes," etc - see MPEP 608.01(b)).
Appropriate correction is required.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) except as otherwise indicated in this 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) except as otherwise indicated in this Office action.
There are no limitations deemed to invoke 35 U.S.C. 112(f).
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.
Claims 1-3, 33-36, and 42 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 1, the term “about” (four instances) is a relative term which renders the claim indefinite since it is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Due to dependency, this rejection also applies to claims 2, 3, 33-36, and 42.
In claim 33, the limitation recited as “a nonwoven substrate is located between the first skin and the core layer” renders the claim indefinite since it is duplicative of the combination of antecedent limitations “a substrate interposed between the core layer and the first skin” (claim 2) and “the substrate is a non-woven polymeric fabric” (claim 3).
In claim 35, the limitation recited as “the nonwoven substrate comprises a polymeric material” renders the claim indefinite since it is duplicative of the combination of antecedent limitations “a substrate interposed between the core layer and the first skin” (claim 2) and “the substrate is a non-woven polymeric fabric” (claim 3).
In claim 42, the limitation recited as “a unidirectional weave” renders the claim indefinite since a “weave” inherently involves yarns that are oriented in different directions.
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 of this title, 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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Lutwak (US 2020/0338867) in view of Taylor (US 2018/0104555; cited in an IDS).
In reference to claim 1 (as far as it is clear and definite)
Lutwak discloses:
A paddle (see par. [0088] indicating applicability of the disclosed sandwich construction materials to paddles) comprising:
a striking portion (i.e., the large surface/portion of a paddle) defining a central axis,
a handle portion (inherent to a paddle), and
a sandwich structure comprising:
a core layer (520 or 620); and
a first skin (i.e., top layer 510 or 610) coupled with the core layer, the first skin comprising:
a first fabric layer (i.e., a layer of top layer 510 or 610 - see pars. [0046] and [0053] stating that the respective layer 510 or 610 is formed of “one or more layers…”) comprising one or more flax and/or hemp fibers (see pars. [0046] and [0053]) and having a weight of from about 50 to about 200 gsm (see pars. [0046] and [0053]); and
a second fabric layer (i.e., a layer of top layer 510 or 610, apart from first fabric layer - see pars. [0046] and [0053] stating that the respective layer 510 or 610 is formed of “one or more layers…”) comprising one or more natural fibers (see pars. [0046] and [0053]) and having a weight of from about 50 to about 200 gsm (see pars. [0046] and [0053]) coupled with the first fabric layer.
Lutwak does not disclose:
a tapered portion contiguous with both the handle portion and the striking portion.
Taylor discloses:
a paddle (see any figure) comprising a striking portion, a handle portion, and a tapered portion contiguous with the striking portion and the handle portion.
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 paddle of Lutwak to include a tapered portion, as disclosed by Taylor, for the purpose of optimizing it for surface area and weight based on its desired performance (note: a paddle can have various uses).
In reference to claim 2
Lutwak in view of Taylor addresses:
The paddle of claim 1, further comprising a substrate (i.e., the bottom one of top layers 610 - see Lutwak Figure 6 showing two of top layers 610) interposed between the core layer (Lutwak - 620) and the first skin (i.e., the top one of the Lutwak top layers 610), the substrate configured to facilitate coupling of the core layer and the first skin.
Claims 2, 3, 33-36, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Lutwak in view of Taylor and Park et al. (US 11,090,899 - hereafter referred to as Park). (note: the instant rejection of claim 2 uses a different consideration of limitations than presented above in the claim 2 rejection of Lutwak in view of Taylor)
In reference to claim 2
Lutwak in view of Taylor addresses:
The paddle of claim 1.
Lutwak in view of Taylor does not address:
further comprising a substrate interposed between the core layer and the first skin, the substrate configured to facilitate coupling of the core layer and the first skin.
Park discloses:
a composite material comprising a core, a substrate (i.e., a powder coated layer), and a skin, and a substrate formed of polymeric material disposed therebetween to promote adhesion (see col.21:ll.26-29).
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 paddle of Lutwak in view of Taylor to include a substrate formed of polymeric material disposed between the core and the first skin, as disclosed by Park, for the purpose of promoting adhesion of these layers/elements.
In reference to claim 3
Lutwak in view of Taylor and Park addresses:
The paddle of claim 2, wherein: the core layer (Lutwak - 520 or 620) is a honeycomb structure including one or more cells; and the substrate is a non-woven polymeric fabric (Park), the non-woven polymeric fabric configured to prevent a resin from seeping into the one or more cells of the honeycomb structure (note: the phrase configured to prevent a resin from seeping is considered as a statement of intended use/result that does not structurally limit the claimed invention; furthermore, it is noted that the powder-coated layer of Park is capable of preventing at least some amount of seepage).
In reference to claim 33 (as far as it is clear and definite)
Lutwak in view of Taylor and Park addresses:
The paddle of claim 3, wherein a nonwoven substrate (Park) is located between the first skin (Lutwak) and the core layer (Lutwak).
In reference to claim 34
Lutwak in view of Taylor and Park addresses:
The paddle of claim 3, a second skin (i.e., 530 or 630 - Lutwak Figures 5 and 6).
Lutwak in view of Taylor and Park, as previously combined, does not address:
a nonwoven substrate is located between the second skin and the core layer.
As described above in the rejection of claim 2, Park discloses a composite material comprising a core, a substrate (i.e., a powder coated layer), and a skin, and a substrate formed of polymeric material disposed therebetween to promote adhesion (see col.21:ll.26-29).
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 paddle of Lutwak in view of Taylor to include a substrate formed of polymeric material disposed between the core and the second skin, as disclosed by Park, for the purpose of promoting adhesion of these layers/elements.
In reference to claim 35 (as far as it is clear and definite)
Lutwak in view of Taylor and Park addresses:
The paddle of claim 33, wherein the nonwoven substrate (Park) comprises a polymeric material (see Park col.2:ll.2-4).
In reference to claim 36
Lutwak in view of Taylor and Park addresses:
The paddle of claim 33, wherein the nonwoven substrate (Park) comprises a polypropylene (see Park col.2:ll.2-4) or polyester material.
In reference to claim 42 (as far as it is clear and definite)
Lutwak in view of Taylor and Park addresses:
The paddle of claim 3, wherein the first fabric layer (Lutwak), the second fabric layer (Lutwak), or both include a unidirectional weave (see Lutwak col.4:ln.67 through col.5:ln.1, col.5:ll.9-10, col.6:ll.50-51, and col.6:ll.62-63).
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Thurman et al. (US 2021/0252356 - hereafter referred to as Thurman; see the provisional application filed 62/978,101 filed 18 February 2020) in view of Bouvier (FR 2932392 A; see previous copy/translation).
In reference to claim 1 (as far as it is clear and definite)
Thurman discloses:
A paddle comprising:
a striking portion (see Figure 1A) defining a central axis,
a handle portion (30), and
a tapered portion (see Figure 1A) contiguous with both the handle portion and the striking portion;
a sandwich structure comprising:
a core layer (42); and
a first skin (44) coupled with the core layer, the first skin comprising:
a first fabric layer (i.e., one of the plies in a multi-ply construction - see par. [0085]) comprising one or more flax and/or hemp fibers (i.e., hemp - see par. [0085]); and
a second fabric layer (i.e., another one of the plies, different from first fabric layer, in a multi-ply construction - see par. [0085]) comprising one or more natural fibers (i.e., hemp - see par. [0085]).
Thurman does not disclose:
the first and second fabric layers having a weight of from about 50 to about 200 gsm.
Bouvier discloses:
a paddle for a ball sport comprising fiber-reinforced layers (11) having a basis weight of 200 gsm.
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 paddle of Thurman to make the first and second fabric layers have a weight of 200 gsm, as disclosed by Bouver, for the purpose of imbuing a desired ball-striking feel to the paddle.
In reference to claim 2
Thurman in view of Bouvier addresses:
The paddle of claim 1, further comprising a substrate (i.e., the bottom one of the plies of Thurman forming the first fabric) interposed between the core layer (Lutwak - 620) and the first skin (i.e., the top one of the Lutwak top layers 610), the substrate configured to facilitate coupling of the core layer and the first skin.
Claims 2, 3, and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over Thurman in view of Bouvier and Park. (note: the instant rejection of claim 2 uses a different consideration of limitations than presented above in the claim 2 rejection of Thurman in view of Bouvier)
In reference to claim 2
Thurman in view of Bouvier addresses:
The paddle of claim 1.
Thurman in view of Bouvier does not address:
further comprising a substrate interposed between the core layer and the first skin, the substrate configured to facilitate coupling of the core layer and the first skin.
Park discloses:
a composite material comprising a core, a substrate (i.e., a powder coated layer), and a skin, and a substrate formed of polymeric material disposed therebetween to promote adhesion (see col.21:ll.26-29).
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 paddle of Thurman in view of Bouvier to include a substrate formed of polymeric material disposed between the core and the first skin, as disclosed by Park, for the purpose of promoting adhesion of these layers/elements.
In reference to claim 3
Thurman in view of Bouvier and Park addresses:
The paddle of claim 2, wherein: the core layer (Thurman) is a honeycomb structure (see Thurman par. [0082]) including one or more cells; and the substrate is a non-woven polymeric fabric (Park), the non-woven polymeric fabric configured to prevent a resin from seeping into the one or more cells of the honeycomb structure (note: the phrase configured to prevent a resin from seeping is considered as a statement of intended use/result that does not structurally limit the claimed invention; furthermore, it is noted that the powder-coated layer of Park is capable of preventing at least some amount of seepage).
In reference to claim 33 (as far as it is clear and definite)
Thurman in view of Bouvier and Park addresses:
The paddle of claim 3, wherein a nonwoven substrate (Park) is located between the first skin (Thurman) and the core layer (Thurman).
In reference to claim 34
Thurman in view of Bouvier and Park addresses:
The paddle of claim 3, a second skin (46 - Thurman).
Thurman in view of Bouvier and Park, as previously combined, does not address:
a nonwoven substrate is located between the second skin and the core layer.
As described above in the rejection of claim 2, Park discloses a composite material comprising a core, a substrate (i.e., a powder coated layer), and a skin, and a substrate formed of polymeric material disposed therebetween to promote adhesion (see col.21:ll.26-29).
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 paddle of Thurman in view of Bouvier to include a substrate formed of polymeric material disposed between the core and the second skin, as disclosed by Park, for the purpose of promoting adhesion of these layers/elements.
In reference to claim 35 (as far as it is clear and definite)
Thurman in view of Bouvier and Park addresses:
The paddle of claim 33, wherein the nonwoven substrate (Park) comprises a polymeric material (see Park col.2:ll.2-4).
In reference to claim 36
Thurman in view of Bouvier and Park addresses:
The paddle of claim 33, wherein the nonwoven substrate (Park) comprises a polypropylene (see Park col.2:ll.2-4) or polyester material.
Citations of Pertinent Art
The following art is considered pertinent to Applicant’s disclosure.
Perez et al. (IT 1248346 B) discloses a sports paddle comprising a striking plate having a weight of between 250 and 500 gsm.
Kusunoki et al. (CN 103906623 A) discloses a laminate structure comprising a core and a sheet having a fiber weight of 100 to 800 gsm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER RYAN LEGENDRE whose telephone number is (571)270-3364. The examiner can normally be reached on M-F: 9-5 PM ET.
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/CHRISTOPHER R LEGENDRE/Primary Examiner, Art Unit 3711
