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 Objections
Claims 1 and 3 are objected to because of the following informalities:
In Claim 1, line 4, “plastic stripas an edge” should be “plastic strip as an edge”
In Claim 3, line 1, “whereina patter layer” should be “wherein a pattern layer”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (US 20240189679) in view of Official Notice.
Regarding Claim 1
Davis teaches:
A pickleball racket(100) with cloth or leather, comprising a body(102) composed of a base material layer(118) and two panels(120,122), wherein the two panels are respectively superimposed on both surfaces of the base material layer(Fig 3; P[0065]), an outer peripheral surface of the body(peripheral edge of 102,110; Fig 1-2) is wrapped with a strip as an edge(104; Fig 1-2), and the body includes a racket body(110) and a handle(112) integrally connected with the racket body(Fig 1-2; P[0065]); wherein an outer surface(144) of each of the two panels is covered with cloth(“twill weave flax fabric”, “cloth material”; P[0074-0076], P[0079]), and the cloth is located on an outer surface of the racket body(visually apparent in Fig 3).
Davis fails to explicitly teach:
The strip forming the edge is made of plastic
Official Notice is taken that constructing various components of pickleball rackets using “plastic” is old and well established in the business of paddle sports and is asserted to be a well-known expedient or common knowledge by those of skill in paddle sport art for their use in providing high durability, lightweight, cost-effectiveness, and being easily formed into complex shapes, among other advantages. Further, use of which is capable of instant and unquestionable demonstration as being well-known so as to defy dispute as demonstrated by the art of record. MPEP 2144. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to provide a plastic strip of material forming the edge of the paddle for the purposes of providing high durability, lightweight performance, cost-effectiveness, and easily formed into complex shapes to follow the edge profile of the paddle.
In Regard to Claim 2
Davis teaches:
The pickleball racket with the cloth or the leather of claim 1(see rejection of claim 1 above), wherein the cloth is bonded and fixed on the outer surface of each of the two panels through glue(P[0080]).
In Regard to Claim 3
Davis teaches:
The pickleball racket with the cloth or the leather of claim 1(see rejection of claim 1 above), wherein a pattern layer is printed on the cloth(“weave pattern”; P[0007], P[0075]).
Furthermore, the limitation “is printed” is a product-by-process limitation. Regarding the limitation "is printed” above, in accordance with MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product (in this case the pattern layer), does not depend on its method of production (i.e. being printed on the cloth), In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985). Further, where a product by process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the two. See In re Maoris, 218 USPQ 289 (Fed. Cir. 1983) Additionally, it has been held in re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). “[I]t is the patentability of the product claimed (in this case the pattern layer) and not of the recited process steps (in this case printing on the cloth) which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” (see MPEP 2113).
In Regard to Claim 4
Davis teaches:
The pickleball racket with the cloth or the leather of claim 1(see rejection of claim 1 above), wherein the base material layer is made of a cellular material(P[0072]).
In Regard to Claim 5
Davis teaches:
The pickleball racket with the cloth or the leather of claim 1(see rejection of claim 1 above), wherein each of two panels is a fiberglass panel or a carbon fiber panel(P[0038], P[0073]).
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20180104555 A1
TAYLOR; CHARLES E.
US 11925843 B1
Bicanic; Nikola Vladimir et al.
US 20250288878 A1
Barnes; Thomas
The above references are cited for teaching pickleball rackets with features similar to the instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P WOLCOTT whose telephone number is (571)272-9837. The examiner can normally be reached M-F 8:00am-4:30pm.
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/BRIAN P WOLCOTT/Primary Examiner, Art Unit 3711