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 .
Election/Restriction
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/23/2026. (FP 8-06).
Specification
The disclosure is objected to because of the following informalities:
In p. 1, line 11, “convention” should be “conventional”.
In p. 1, line 16, “force to against” should be “force against”.
In p. 2, line 21, “convention” should be “conventional”.
In p. 7, line 10 “being disposed the” should be “being disposed with the”.
Appropriate correction is required.
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.
Claims 1-10 are 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 claims 1-2, 4-6, and 9, the phrases "but not limits to" and “but not limiting to” render the claims indefinite because it is unclear what the true metes and bounds of the claim limitations are. See MPEP § 2173.05. Applicant is recommended to remove these phrases from the claim language.
Regarding claims 1 and 2, the phrase “the lateral wall member and the two lateral wall members” in line 10, p. 1 and line 2, p. 2 contradicts previous “or” statements for one or two lateral walls in the claims. Thus, the claims are unclear because three walls in total (one lateral wall and two lateral walls) is never claimed. The examiner recommends correcting the “and” statement in line 10, p. 1 and line 2, p. 2 to “or” if this aligns with what Applicant intended, and is how the examiner will be interpreting the claims in this office action. Otherwise, clarification is required.
Regarding claim 3, it is unclear how the “the second main body arranged in the opposite direction and formed at the bottom end of the first main body is integrally formed” and still able to rotate “to be adjusted from 0 degree to positive or negative 180 degrees” as stated in dependent claim 2. The device would be incapable of movement to achieve these angles if it is rigid and integrally formed. Clarification is required.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1154822 (hereinafter “Kirschbaum”) in view of US 4368886 (“hereinafter “Graf”).
Regarding claim 1, Kirschbaum discloses a device capable of generating superposed shock waves, applied in a racket having a racket frame and having a racket string with a plurality of warp strings and a plurality of weft strings mutually woven to compose a string bed (Fig. 5), and characterized in including: at least one first main body (Fig. 1, 2), formed as a hard medium (Para. 0002), wherein a lateral wall member is convexly formed at one side or two sides thereof (See annotated Fig. 1 below), a first string slot having an opening at a top end is formed at an inner side of the lateral wall member or the center of the two lateral wall members (See annotated Fig. 1 below), a recess is formed at the bottom end of the first string slot (See annotated Fig. 1 below), an arrangement of the lateral wall member or the two lateral wall members includes, but not limits to, a full segment or a middle segment of the first main body or a front segment and a rear segment in a staggering status or a rear segment and a front segment in a staggering status (See annotated Fig. 1 below);
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Kirschbaum does not disclose a soft medium, disposed in the first string slot of the first main body and allowing the racket string to be fastened. However, Graf, in the analogous art of racket stringing, discloses a device that has soft absorbent pads for reducing friction between string crossing points (Fig. 2, 5). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to include a soft medium, such as an absorbent pad, to reduce friction between strings and prevent wear.
Regarding claim 2, modified Kirschbaum further discloses that the bottom end of the first main body (Kirschbaum, Fig. 1, 2) is disposed with a second main body (Kirschbaum Fig. 1, 3) which is a hard medium (Kirschbaum, Para. 0002) and arranged in an opposite direction, and a lateral wall member is convexly formed at one side or two sides thereof. (Kirschbaum, See annotated Fig. 1 above), a second string slot having an opening at a bottom end is formed at an inner side of the lateral wall member or the center of the two lateral wall members (Kirschbaum, See annotated Fig. 1 above), a recess is formed at the bottom end of the second string slot, the second string slot is provided with the soft medium allowing the racket string to be fastened (Graf, Fig. 2, 5); an angle defined between the first main body and the second main body (Kirschbaum, para. 0029), an arrangement of the lateral wall member and the two lateral wall members includes, but not limits to, a full segment or a middle segment of the second main body or a front segment and a rear segment in a staggering status or a rear segment and a front segment in a staggering status. Reasons for combining teachings of Graf with Kirschbaum are as stated supra in claim 1.
Kirschbaum does not expressly say that the angle between the two bodies is able to be adjusted from 0 degree to positive or negative 180 degrees with respect to the racket string being staggered. However, adjustability, where needed, is not a patentable advance. Because there is an art-recognized need for adjustment while stringing rackets, it would be obvious to incorporate a design that accommodates multiple string intersection angles. See MPEP 2144 – In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954). The examiner is interpreting the angle between the first and second body as being determined prior to be formed as claim 3 defines the bodies being integrally formed. As stated above, this adjustment with the integrally formed limitation in claim 3 made the claim indefinite.
Regarding claim 3, modified Kirschbaum further discloses that the second main body arranged in the opposite direction and formed at the bottom end of the first main body (Kirschbaum Fig. 1, 3). The examiner is interpreting Kischbaum to show a unitary structure as shown in fig 1 which reads on being integrally formed. If there is any doubt with this interpretation, the examiner notes that the use of one-piece construction instead of the structure disclosed in the Kirschbaum embodiment would be a matter of obvious engineering choice. See MPEP 2144 – In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Further, the limitation of “integrally formed” is a product-by-process limitation, and as such patentability is not dependent upon method of production. Thus, there is no patentable distinction between the main bodies being integrally formed or not. See MPEP 2113 - In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. In this case, Kirschbaum teaches the final product with its unitary structure as noted above which reads on applicant’s final product. Lastly, the examiner does not see how the integral limitation is compatible with earlier limitations in previous claims. See 35 U.S.C. 112(b) rejection supra.
Regarding claims 4 and 5, modified Kirschbaum discloses all the limitations of claims 1 and 2, and another embodiment of Kirschbaum discloses that the bottom end of the first main body is disposed with a first node plate having, but not limiting to, a round shape (Fig. 6, 7 annotated below). Under broadest reasonable interpretation, this block below the body can be considered a node plate and acts as a spring element “responsible for cushioning of the strings against each other” (Para. 0029). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to include an additional “node plate” component to increase the dampening effect to absorb more of the shock felt when striking a ball.
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Regarding claim 6, modified Kirschbaum discloses all the limitations of claim 5. However, while Kirschbaum discloses a node plate-like component (Kirschbaum, Fig. 6 annotated above), it does not disclose that the second main body is disposed with a second node plate having, but not limiting to, a round shape. Regarding the “not integrally formed” limitation, the examiner is interpreting this as a product-by-process claim limitation. The patentability of a product does not depend on its method of production, and thus the node structure remains obvious in view of Kirschbaum as stated supra, regardless if it is formed integrally or non-integrally. See MPEP 2113 - In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The examiner notes that modified Kirschbaum teaches the final product with the two bodies each having a node plate via duplication of parts. The examiner notes that duplication of parts (ie. two node plates instead of one) has no patentable significance unless a new and unexpected result is produced. In the instant case, increasing the number of node plates would increase the area/material between the strings, thus further increasing the cushioning of the strings which would be obvious. See MPEP 2144 - In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Allowable Subject Matter
Claims 7-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 7-8 would be allowable for disclosing a device capable of generating superposed shock waves with four corners of the first node plate of the first main body are formed with notches.
Kirschbaum teaches multiple embodiments of an intermediate member for racket strings (Figs. 1, 1 and 6, 7). Secondary reference, Graf, teaches the use of a soft material within string slots (Fig. 2, 5). However, while these combined teachings teach core aspects of Applicant’s invention, such as double-sidedness for insertion at racket string intersection points, they do not go so far as to describe notches in the corners of node plates. It would be improper to assert that this shape is merely a design choice, as Applicant’s spec provides details as to the criticality for this shape, such as wind resistance (Applicant’s spec, p. 12, lines 5-7). Therefore, the combination of features is considered to be allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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.
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/S.M.B./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711