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 .
Status of Claims
Claims 1-13, filed 5/1/2023, are pending and are currently under examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/15/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 6-8 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.
Claim 8 recites “wherein the biodegradable handgrip comprises a cross-sectional width of approximately,” but fails to specify any numerical value, range or unit of measurement, or other objective boundary for the recited cross-sectional width. As written, the claim does not inform a person of ordinary skill in the art, with any reasonable certainty, of the scope of the claimed invention. The term “approximately” is also a relative term that must modify a definite value or range in order to provide a clean claim scope. In the absence of such a value or range, the scope of the claim cannot be determined.
Claims 6 and 7 recite that the biodegradable handgrip comprises an "approximately rectangular strip". The term "approximately" is a relative term that lacks objective boundaries. The specification does not define what constitutes an "approximately rectangular" shape, nor does it provide dimensions, tolerances, figures, or other objective criteria by which one of ordinary skill in the art could determine the scope of the claimed shape with reasonable certainty.
Claim Rejections - 35 USC § 102
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.
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. (FP 7.08.aia)
Claims 1, 3, 4-7, and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marcus et al. (US 2014/0343214 A1).
Regarding claim 1, Marcus teaches a biodegradable handgrip. Marcus discloses controllably degradable overgrips formed from degradable thermoplastic polyurethane (TPU), which is a petroleum-based polymer (Abstract; [0003]). Marcus further teaches that a biodegradable additive is blended with the petroleum-based material, wherein a catalyst is dispersed throughout the thermoplastic polyurethane to control hydrolytic breakdown of the polymer (Abstract; [0029]. Marcus additionally discloses that the overgrips are configured to wrap around a shaft, as the overgrips are applied to handles of racquets, bats, clubs, tools, and other hand-held devices ([0016]; Fig. 1). Regarding claim 3, Marcus teaches that the petroleum-based material of the biodegradable handgrip of claim 1 comprises polyurethane.
Regarding claim 4, Marcus teaches that the biodegradable handgrip of claim 1 comprises a sleeve shape and is configured to wrap around a shaft by sliding over the shaft. Marcus expressly discloses that "overgrips (100) may be designed as straps (for winding on the handle) or as sleeves (for rolling over the handle)" ([0017]). A sleeve designed for rolling over a handle inherently rolling over a handle inherently wraps around the shaft by sliding over the shaft, as opposed to being spirally wound.
Regarding claim 5, Marcus teaches that the biodegradable handgrip of claim 4 comprises an adhesive material on an inner side of the sleeve shape. As set forth in the rejection of claim 4 above, Marcus discloses sleeve-shaped overgrips configured to wrap around a shaft by rolling or sliding over the handle ([0017]). Marcus further teaches that tackifying resins may be added to the polymer component to adjust and control an adhesive profile of the overgrip including “hot melt adhesives, laminating adhesives, pressure sensitive adhesives, etc.” ([0019], [0021], [0032-0033]). Paragraph [0033] specifically teaches the use of pressure-sensitive adhesives selected to impart adhesive properties suitable for securing the overgrip during use. Additionally, paragraph [0035] explains that overgrips with added tackifying resin exhibit enhanced adhesiveness that lasts significantly longer, including under conditions of heat and moisture during play, thereby improving the overgrips ability to remain secured to the handle over time. To the extent Applicant may argue that the disclosed adhesiveness relates only to tactile surface feel, Marcus’s disclosure of pressure-sensitive adhesives and enhanced adhesiveness for maintaining grip placement during use would be understood by one of ordinary skill in the art as relating to adhesion between the overgrip and the underlying handle, not merely surface tack perceived by the user. Under the broadest reasonable interpretation, an adhesive profile configured to secure a sleeve-type overgrip to a handle necessarily corresponds to adhesive material present on the inner surface of the sleeve that contacts the shaft during installation and use.
Regarding claim 6, Marcus teaches that the biodegradable handgrip of claim 1 comprises an approximately rectangular strip. Marcus explains that the term “overgrip” is to be understood to include “any tape-like or pad-like article that may be used as a gripping interface at a gripping part of any device" ([0016]). Marcus further illustrates tape-like overgrips applied to various handles in Figure 1. A tape-like strap necessarily comprises an elongated strip having a length greater than its width and a generally rectangular geometry when laid flat. Under the broadest reasonable interpretation, a tape-like overgrip corresponds to an “approximately” rectangular strip as recited in claim 6.
Regarding claim 7, Marcus teaches that the biodegradable handgrip of claim 6 comprises an adhesive material on a first side of the approximately rectangular strip. As set forth in the rejection of claim 6 above, Marcus discloses overgrips in the form of tape-like articles, including approximately rectangular strips configured to be wound around a handle ([0016]-[0017], Fig. 1). Marcus further teaches that tackifying resins may be added to the polymer component to adjust and control an adhesive profile of the overgrip, including “hot melt adhesives, laminating adhesives, pressure sensitive adhesives, etc.” ([0019], [0021], [0032-0033]). Paragraph [0033] specifically teaches the use of pressure-sensitive adhesives selected to impart adhesive properties suitable for securing the overgrip during use. Additionally, paragraph [0035] explains that overgrips with added tackifying resin exhibit enhanced adhesiveness that lasts significantly longer, including under conditions of heat and moisture during play, thereby improving the overgrips ability to remain secured to the handle over time. To the extent Applicant may argue that the disclosed adhesiveness relates only to tactile surface feel, Marcus’s disclosure of pressure-sensitive adhesives and enhanced adhesiveness for maintaining grip placement during use would be understood by one of ordinary skill in the art as relating to adhesion between the overgrip and the underlying handle, not merely surface tack perceived by the user. Under the broadest reasonable interpretation, an adhesive profile configured to secure a tape-like, rectangular overgrip wound around a handle necessarily corresponds to adhesive material present on a first side of the strap that contacts the underlying surface during installation.
Regarding claim 10, Marcus teaches that the biodegradable handgrip of claim 1 comprises a racquet base grip. As set forth in the rejection of claim 1 above, Marcus discloses biodegradable handgrips formed of degradable thermoplastic polyurethane and configured to wrap around a shaft. Marcus further expressly discloses that the overgrips “may be used on different handles (90), such as racquet handles (e.g., racquets for tennis, badminton, squash, etc.)” and that the overgrips “may be designed for single-handed use (as e.g., in as racquet sports)” ([0016], [0017], Claim 20). As illustrated in Figure 1, the disclosed overgrips are applied directly to racquet handles and function as the gripping interface on the racquet handle.
Regarding claim 11, Marcus teaches that the biodegradable handgrip of claim 1 comprises a racquet overgrip. As set forth in the rejection of claim 1 above, Marcus discloses biodegradable handgrips formed of degradable thermoplastic polyurethane and configured to wrap around a shaft. Marcus expressly discloses “controllably degradable overgrips” and further states that the disclosed overgrips “may be used on different handles (90), such as racquet handles (e.g., racquets for tennis, badminton, squash, etc.)” ([0016]). Marcus additionally discloses that the overgrips “may be designed for single-handed use (as e.g., in as racquet sports)” and illustrates racquet overgrips applied to racquet handles in Figure 1 ([0017], Fig. 1).
Regarding claim 12, Marcus teaches that the biodegradable handgrip of claim 1 comprises a golf club grip. As set forth in the rejection of claim 1 above, Marcus discloses biodegradable handgrips formed of degradable thermoplastic polyurethane and configured to wrap around a shaft. Marcus expressly discloses “controllably degradable overgrips” and further states that the disclosed overgrips “may be used on different handles (90), such as racquet handles such as … bat and club handles (e.g., hockey sticks, baseball bats, cricket bats, golf clubs, etc.)” ([0016], Fig. 1). Marcus further explains that the term “overgrip” is to be understood in a general sense to include “any tape-like or pad-like article that may be used as a gripping interface as a gripping part of any device ([0016]). Additionally, Marcus discloses that overgrip dimensions and mechanical properties may be adjusted according to the specific handle and use ([0017]). The examiner notes that there is no positive structural limitation to the golf club as the claim recites that the handgrip comprises a golf club grip which the examiner is interpreting as being directed towards the intended use of the grip. In particular, the claim does not recite the handgrip wraps around a golf club shaft. Furthermore, the handgrip is wrapping around a shaft structurally which Marcus teaches.
Regarding claim 13, Marcus teaches that the biodegradable handgrip of claim 1 comprises a hand tool grip. As set forth in the rejection of claim 1 above, Marcus discloses biodegradable handgrips formed of degradable thermoplastic polyurethane and configured to wrap around a shaft. Marcus expressly discloses “controllably degradable overgrips” and further states that the disclosed overgrips “may be used on different handles (90), such as … tool handles (e.g., garden tools such as shovels, clippers, hoes, trowels and pruners, working tools such as hammers and mallets, cleaning tools, etc.” ([0016]). Additionally, Marcus discloses that overgrip dimensions and mechanical properties may be adjusted according to the specific handle and use ([0017]). The examiner notes that there is no positive structural limitation to the hand tool as the claim recites that the handgrip comprises a hand tool grip which the examiner is interpreting as being directed towards the intended use of the grip. In particular, the claim does not recite the handgrip wraps around a shaft of a hand tool to structurally define the tool Furthermore, the handgrip is wrapping around a shaft structurally which Marcus teaches.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Marcus et al. (US 2014/0343214 A1).
Regarding claim 2, Marcus teaches that the biodegradable handgrip of claim 1 includes a biodegradable additive in an amount that may be adjusted to control degradability while maintaining required physical, chemical, and engineering properties. As set forth in the rejection of claim 1 above, Marcus discloses biodegradable handgrips formed of degradable thermoplastic polyurethane blended with a biodegradable additive and configured to wrap around a shaft. Marcus expressly teaches that the onset timing of hydrolytic breakdown of the polymer component “may be set to be about one year” and that “shorter or longer timings may be achieved by respective adaptation of catalyst types and amounts” ([0029]). Marcus further teaches that “the percentile proportions of the reactants may be modified within a range of ca. 2% as long as required physical, chemical and engineering properties as well as the hydrolytic breakdown rate are maintained within specified values” ([0029]). Thus, Marcus expressly recognizes the amount of biodegradable additive as a result-effective variable.
Claim 2 recites that the biodegradable additive comprises between 0.2 percent and 4 percent by weight of the biodegradable handgrip. Where the general conditions of a claim are disclosed by the prior art, “it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, "[a] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Here, Marcus’s disclosure that reactant proportions may be modified within approximately 2% while maintaining performance encompasses values that are within or close to the claimed range and established a prima facie case of obviousness. In such circumstances, the Federal Circuit has explained that “[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . .. In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range” In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Accordingly, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to select a biodegradable additive amount between 0.2% and 4% by weight as a matter of routine optimization. The instant application does not provide any explanation, comparative data, or evidence establishing that the lower bound (0.2%) or the upper bound (4%) is critical, nor does it demonstrate that the claimed range produces unexpected results relative to additive amounts outside the claimed range. In the absence of such evidence, and absent any teaching away in Marcus, the selection of the claimed range amounts to routine optimization of a known result effective variable, with a reasonable expectation of success.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Marcus et al. (US 2014/0343214 A1) in view of EcoGrip® non-patent literature (NPL).
Regarding claim 9, Marcus teaches biodegradable handgrips formed of degradable thermoplastic polyurethane and configured to wrap around or roll over a shaft (Abstract, [0016], [0017]). Marcus further teaches that the overgrips “may be designed according to the specific use with respect to overgrip dimension and overgrip mechanical and chemical properties” ([0016]). However, Marcus does not teach handgrips comprising at least one color additive.
The EcoGrip® website explicitly teaches EcoGrip® biodegradable overgrips available in multiple different colors, which necessarily requires incorporation of one or more color additives or pigments into the polymer material.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the biodegradable overgrip taught by Marcus to include at least one color additive in the biodegradable overgrip taught by Marcus to provide aesthetic variation and product differentiation, as demonstrated by the EcoGrip® non-patent literature. The addition of color additives to polymeric articles is a routine aesthetic design choice yielding predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JAMES ELLIOTT whose telephone number is (571)272-5496. The examiner can normally be reached Mon - Fri 7:30 -5:00.
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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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ANDREW JAMES ELLIOTT
Examiner
Art Unit 3711
/ANDREW JAMES ELLIOTT/Examiner
Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711