DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
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
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 41-42, 45-51, 55-58, 61-62 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20240424366 A1) in view of Fox (US 20170136325 A1).
Regarding claim 41, Li teaches 41. (New) A method of making a pickleball paddle, the method comprising: forming a sandwich structure including a front surface, a back surface, and a core disposed in-between the front surface and the back surface; See Fig. 2B; (112)(118)(115) wherein the front and back surfaces sandwich the core portion., the core including a perimeter that is recessed from an outer edge of each of front surface and the back surface to define a gap; See Fig. 2B; (115) wherein the core has a recess such as edge tube (121)., inserting a first filler within at least a portion of the gap; the first filler directly contacting at least a portion of the perimeter of the core; and See Fig. 2B; (121) wherein the item 121 may be considered the filler., placing a frame about at least a portion of a perimeter of the sandwich structure. See Fig. 2B; (151) which shows a frame 151 being placed around the perimeter of the sandwich structure.
Fox does teach what the primary reference is silent on including commercially practicable manufacturing methods. See [0044+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Li with Fox to allow a paddle to be manufactured with commercially practical way.
Regarding claim 42, Li teaches 42. (New) The method of claim 41, wherein the gap is formed by removal of at least the portion of the core through one or more edges of the sandwich structure. See Fig. 2B; (151).
Regarding claim 45, Li teaches 45. (New) The method of claim 41, further comprising forming the frame by rolling a sheet of carbon fiber material to form a tube structure. See [0070+] which speaks of the use of fiber-reinforced composites.
Regarding claim 46, Li teaches 46. (New) The method of claim 45, wherein the sheet of carbon fiber material is rolled about a second filler. See [0070+] which speaks of the use of fiber-reinforced composites.
Regarding claim 47, Li teaches 47. (New) The method of claim 46, wherein the second filler includes an expandable foam. See [0070+] which speaks of the use of expandable foam.
Regarding claim 48, Fox teaches 48. (New) The method of claim 41, further comprising heating the sandwich structure and the frame. See [0044+] which speaks of the use of common manufacturing processes to make the paddle which would include heating.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Li with Fox to allow a paddle to be manufactured with commercially practical way.
Regarding claim 49, Fox teaches 49. (New) The method of claim 48, wherein the sandwich structure and the frame are placed in a mold and heated. See [0044+] which speaks of the use of common manufacturing processes to make the paddle which would include heating. Furthermore, Li at [0067+] speaks of the use of mold and [0104+] speaks of the use of heat.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Li with Fox to allow a paddle to be manufactured with commercially practical way.
Regarding claim 50, Fox teaches 50. (New) The method of claim 48, further comprising expanding a filler material via heating of the sandwich structure and the frame. See [0044+] which speaks of the use of common manufacturing processes to make the paddle which would include heating. Furthermore, Li at [0067+] speaks of the use of mold and [0104+] speaks of the use of heat.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Li with Fox to allow a paddle to be manufactured with commercially practical way.
Regarding claim 51, Li teaches 51. (New) The method of claim 41, wherein the frame is placed about the entire perimeter of the sandwich structure. See Fig. 2B.
Regarding claim 55, Li teaches 55. (New) The method of claim 41, wherein the first filler includes at least one of pressurized air, a polymer, a thermoplastic material, a thermoset material, a thermoplastic elastomer, an elastomer, a rubber, a foam, a polymeric foam, and an expandable material. See [0070+].
Regarding claim 56, Li teaches 56. (New) The method of claim 41, wherein the frame includes at least one of carbon, glass, fiberglass, a thermoplastic material, plastic, rubber, and metal. See [0070+].
Regarding claim 57, Li teaches 57. (New) The method of claim 41, wherein the core includes one or more of an open-cell structure or a lattice structure. See [0081+].
Regarding claim 58, Li teaches 58. (New) The method of claim 41, wherein the core includes at least one of polypropylene, aluminum, Nomex, and Kevlar. See [0072+].
Regarding claim 61, Li teaches 61. (New) The method of claim 41, wherein the perimeter of the core that is recessed from the outer edge of each of the front surface and back surface is disposed along a portion of the sandwich structure within a head of the pickleball paddle adjacent to a top end thereof. See Fig. 2B wherein the recess that 121 is in goes around the perimeter as claimed.
Regarding claim 62, Li teaches 62. (New) The method of claim 41, wherein the gap is disposed between the perimeter of the core and the frame. See Fig. 2B which shows the gap that 121 fits in between the perimeter of the core and the frame.
Claims 44, 52-54 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20240424366 A1) in view of Fox (US 20170136325 A1) and Severa (US 20250312666 A1).
Regarding claim 44, Severa teaches 44. (New) The method of claim 41, wherein the gap is between 0.1 mm to 100 mm deep measured from an edge to a center of the sandwich structure. See [0207+] which shows the length W which can easily be utilized for the gap length to be between 5mm to 25 mm. The examiner notes that the gap length is a result effective variable. In Re Aller states that "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (See MPEP 2144.05 II) As such, it would have been obvious to one skilled in the art, at the time of the invention, to modify Li to obtain optimal ranges by routine experimentation.
Regarding claim 52, Severa teaches 52. (New) The method of claim 41, wherein the frame defines a hollow interior portion. See Fig. 43; (6148) which shows a hollow interior portion in the frame.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Li with Severa to allow the frame section to be filled with another material.
Regarding claim 53, Severa teaches 53. (New) The method of claim 52, further comprising inserting a second filler within at least a portion of the hollow interior portion of the frame. See Fig. 43; (6252) which shows the hollow interior portion filled with another material.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Li with Severa to allow the frame section to be filled with another material.
Regarding claim 54, Li teaches 54. (New) The method of claim 53, wherein one or more of the first filler and the second filler includes at least one of pressurized air, a polymer, a thermoplastic material, a thermoset material, a thermoplastic elastomer, an elastomer, a rubber, a foam, a polymeric foam, and an expandable material. See [0070+].
Claim 63 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20240424366 A1) in view of Fox (US 20170136325 A1) and Li '417 (WO 2024076417 A1).
Regarding claim 63, Li '417 teaches 63. (New) The method of claim 62, wherein the first filler directly contacts each of the frame and the perimeter of the core. See Fig. 2A wherein the 149 edge foam layer is the first filler contact the frame and the perimeter as claimed.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Li with Li '417 to provide a fill or cover to the core portion ([00052+]).
Response to Arguments
Applicant's arguments filed 6/18/2026 have been fully considered but they are not persuasive.
The examiner has modified the grounds of rejection above which they view as addressing the arguments presented by the applicant. Regarding the core, the examiner still views the core of the prior art to be capable or reading on the applicants claimed invention under a broadest reasonable interpretation. During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Filippini US 20250018265 A1 - which teaches a paddle with a rim and a central core.
Gosselin US 20250058189 A1 - which teaches a paddle with central cavities that are filled.
Bicanic US 20240181313 A1 - which teaches a paddle with internal cavities.
Fillippini CN 119425036 A - which teaches a paddle with a rim and an internal cavity.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
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