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 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 1-16 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 1 recites a variety of material layers, “in a stacked manner,” but does not appear to define a particular order to the layers, making it unclear what specific structure is attempting to be claimed. Without defining any relationship between the layers, or a particular order to the stacking of layers, it is unclear what structure is attempting to be claimed.
Claim 2 and Claim 11 recite “successively arranged in a stacked manner.” Presumably, applicant is attempting to claim a particular arrangement of these layers in these claims, however, these layers could be “successively arranged” in a variety of different ways in a “stacked manner” making the claim limitations unclear. Presumably, applicant is attempting to use the term “successively” to claim the stack of layers being in the order listed in the claim? However, this is not entirely clear from the claims. Some recitation of one layer, then another layer on said one layer, or similar... or, stacked “in the order recited” or some other clarifying language is needed to clarify the scope of what is being claimed. Appropriate correction is required.
Claim 9 recites “the first EVA layer” and “the second EVA layer” which lack proper antecedent basis. Claim 9 depends from claim 8 which depends from claim 1 which did not previously recite first and second EVA layers. Further, it is unclear what “one side of the racket main body” is intended to mean. As best understood from other claims, the EVA layers are intended to be on opposing sides of a core, therefore, it is unclear why they are claimed on “one side” in claim 9. Further still, it is unclear what connection between the outer sleeve and the EVA layers is intending to be claimed. Since all of the components of the paddle body and handle are fixedly connected, simply claiming any portions of the device being “fixedly connected” is inherent as all parts of the paddle are “fixedly connected” together. Presumably applicant is intending to claim some sort of direct connection here, but it is entirely unclear what that connection is and where it is located, specifically. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Reinhall (US PGPub. No. 2025/0170467 A1).
In Reference to Claim 1
Reinhall teaches (Claim 1) A pickleball racket, comprising a racket main body and a handle (fig’s 4A and 4B, items 410 and 420), wherein the handle is connected to one side of the racket main body (fig’s 4A and 4B); the racket main body comprises a carbon fiber layer (paragraph 0033, two carbon fiber layers surrounding a core), a glass fiber layer (paragraph 0066 lines 25-29, “second layer” in paragraph 33 described as “polypropylene or polycarbonate or “similar,” while paragraph 0066 explains second layer may be made of glass fiber), an EVA layer (paragraph 0033, an EVA layer on either side of honeycomb / carbon fiber core) and a PP honeycomb layer, which are arranged in a stacked manner; and the PP honeycomb layer has a honeycomb slot structure (paragraph 0033, honeycomb structure inherently has internal slots, i.e. the cells of the honeycomb; paragraph 0073 describing honeycomb core can be made of PP, also note it is unclear what arrangement / order these layers are intended to be in, if any, in this claim).
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.
Claims 2-10 are rejected under 35 U.S.C. 103 as being unpatentable over Reinhall et al. (US PGPub. No. 2025/0170467 A1).
In Reference to Claim 2
Reinhall teaches all of claim 1 as discussed above.
Reinhall further teaches (Claim 2) wherein the carbon fiber layer comprises a first carbon fiber layer and a second carbon fiber layer (paragraph 0033 on either side of honeycomb core); the glass fiber layer comprises a first glass fiber layer and a second glass fiber layer (paragraph 0033, “second layer” on each side of paddle, noted in paragraph 0066 to be glass fiber); the EVA layer comprises a first EVA layer and a second EVA layer (paragraph 0033, on either side of core and carbon fiber layers); and the first carbon fiber layer, the first glass fiber layer, the first EVA layer, the PP honeycomb layer, the second EVA layer, the second glass fiber layer and the second carbon fiber layer are [] arranged in a stacked manner (paragraph 0033, layers are inherently stacked).
Presumably, applicant is intending to recite the layers in the order recited in the claim before the term “successively,” although the examiner notes that this is not entirely clear.
Regardless, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the layers in the order claimed simply as a matter of engineering design choice, since, it has been held that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). And, that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Reinhall teaches the general conditions of a paddle with a PP honeycomb core that has two EVA layers surrounding it (paragraph 0033), and then providing an outer / external striking surface, which is disclosed to be either glass fiber or carbon fiber, or a combination of both (paragraph 0066). This generally teaches the claimed arrangement as well as provides a purpose for locating the EVA layers closer to the core with the harder striking surfaces surrounding it (paragraphs 0032 and 0036, for the purpose of providing sound dampening while preserving or tailoring ball rebound characteristics), therefore, simply claiming a slightly different arrangement of the external or internal layers that would achieve the same result (sound dampening surrounding core with desired external rebound characteristics), by using the same material layers in a slightly different order is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claims 3-6
The modified device of Reinhall teaches all of claims 1 and 2 as discussed above.
The embodiment of Reinhall used in the rejection fails to teach the additional EVA layers, thicknesses, and hardnesses of claims 3-6.
However, alternate sections of Reinhall teach (Claims 3 / 5) further comprising a third / fourth EVA layer, wherein the third / fourth EVA layer is located between the first / second EVA layer and the PP honeycomb layer (paragraph 0053, two foam layers, when applied to embodiment of paragraph 0033 they would be located on either side of the honeycomb layer providing third and fourth foam layers along with the first and second foam layers described in paragraph 0033), and a thickness of the third / fourth EVA layer is [different] than that of the first / second EVA layer (paragraph 0033 EVA foam layer, paragraph 0053, foam layer can be a plurality of foams of different thicknesses);
(Claim 4) wherein the hardness of the first EVA layer is different from that of the third EVA layer (paragraph 0053 different stiffnesses, “softer” etc.);
(Claim 6) wherein the hardness and thickness of the fourth EVA layer are consistent with those of the third EVA layer (paragraph 0033, EVA layers are disclosed to be the same on either side of the core, making this a double foam layer as described in paragraph 0053 would indicate that each of the additional layers would also be the same on either side of the core).
Although Reinhall generally teaches using a plurality of foam layers in paragraph 0053, which would produce the structure claimed when applied to the disclosed paddle structure of paragraph 0033, as well as teaching that different thicknesses and stiffnesses of this plurality of layers is contemplated; it is not entirely clear that the resultant structure would be exactly what is claimed in terms of where the thicker / thinner / softer / harder layers are located.
Regardless, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have located these foam layers in any desirable layered arrangement simply as a matter of engineering design choice, since, it has been held 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Reinhall teaches that the plurality of layers of foam, thicknesses, and stiffnesses of the foam layers are disclosed to be result effective variables, i.e. a variable that achieves a recognized result (in this case the result of producing an optimized vibration energy and dynamic stress sound dampening as well as creating a desired bounce back), merely changing the thicknesses, stiffnesses, or arrangement and number of foam layers to achieve this result is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 7
The modified device of Reinhall teaches all of claims 1 and 2 as discussed above.
The embodiment of Reinhall used fails to teach a rubber layer of claim 7.
However, alternate teachings of Reinhall disclose (Claim 7) further comprising a [] rubber layer [], wherein [a] rubber layer is located between the first EVA layer and the PP honeycomb layer, and / or [a] rubber layer is located between [a] second EVA layer and the PP honeycomb layer (paragraph 0073, core can include rubber, paragraph 0079, foam layer can include rubber, either of these applied to the embodiment of paragraph 0033 would include a rubber layer in the location claimed).
Again, providing a rubber layer at the core or as one of the foam layers would seem to produce the structure claimed. However, in the event that the location claimed is not clear from the reference, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the layers in the order claimed simply as a matter of engineering design choice, since, it has been held that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). And, that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Since Reinhall discloses all of the materials claimed in a multi-layered paddle, including rubber, merely locating the rubber layer in any desirable location within the paddle layers, or, making one of the already disclosed layers rubber would be an obvious matter of engineering design choice, and is not a patentable advance.
Further, the examiner notes that it has been held that duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Since Reinhall teaches a paddle composed of a variety of layers, and further teaches that several of these layers can be made up of a plurality of additional layers (i.e. the external layer can be multiple layers or plies, paragraph 0066; and, the foam layers can also be made of a plurality of layers, paragraph 0053), merely claiming additional layers is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claims 8-10
Reinhall teaches all of claim 1 as discussed above.
Reinhall further teaches (Claim 8) wherein the handle comprises an inner shaft made of a wooden or metal material (paragraph 0042 lines 4-5) and an outer sleeve made of a rubber material (paragraph 0040 lines 13-14), the inner shaft is fixedly connected to one side of the racket main body, and the outer sleeve sleeves the inner shaft (paragraph 0041 lines 8-13, handle coupled to main body, grip surrounds handle shaft);
(Claim 9) wherein the outer sleeve is fixedly connected to the first EVA layer and the second EVA layer, which are located on one side of the racket main body, along one end of the outer sleeve in an axial direction (paragraph 0041 and 0033, tubular handle is fixedly connected to the paddle body, which includes the EVA layers, therefore the outer sleeve which is connected to the tubular handle is also fixedly connected to the EVA layers);
(Claim 10) wherein a radial dimension of each of both axial ends of the handle is greater than a radial dimension of a middle part (fig. 4B).
The examiner notes that, broadly interpreted, all of what is claimed in claims 8-10 appears to be taught in Reinhall as noted above. However, it is not entirely clear what is attempting to be claimed in claim 9. In the event that some more specific structural connection between the EVA layers and the outer sleeve is intended to be taught, an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the outer sleeve connected directly to the EVA layers simply as a matter of engineering design choice, since, it has been held that making components of a device separable or integral are obvious matters of engineering design choice. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), and that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Since all of the components of the paddle are securely fixed together for use, merely claiming specific fixed connections as opposed to elements fixed together via intermediate components would not produce any new or unexpected results, would not modify the operation of the end product, and is, therefore, not a patentable advance.
The examiner further notes that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Since Reinhall teaches that the grip portion over the tubular handle is intended to enhance the ability of a player to grasp the handle (paragraph 0041), merely claiming rubber or any other known suitable gripping material is an obvious matter of engineering design choice, and is not a patentable distinction.
Claims 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Reinhall et al. (US PGPub. No. 2025/0170467 A1) in view of Zheng (US PGPub. No. 2021/0260452 A1).
In Reference to Claim 11
Reinhall teaches (Claim 11) A pickleball racket, comprising a racket main body and a handle, wherein the handle is connected to one side of the racket main body (fig’s 4A and 4B, items 410 and 420); the racket main body comprises an upper panel, a lower panel (paragraph 0033, “second layer” or “playing surface”), and a first EVA layer (paragraph 0033, “first layer”), a first PP honeycomb layer (paragraph 0033, honeycomb core structure, also note paragraph 0073 noting honeycomb core can be made of PP), a second EVA layer (paragraph 0033, “first layer” is on either side of honeycomb core, making first and second layers), []; the first EVA layer, the first PP honeycomb layer, the second EVA layer, [] are successively arranged in a stacked manner (paragraph 0033); and the first PP honeycomb layer [] each have a honeycomb slot structure (paragraph 0033, honeycomb structure inherently has internal slots, i.e. the cells of the honeycomb; paragraph 0073 describing honeycomb core can be made of PP).
Reinhall fails to teach the second honeycomb layer and third EVA layer of claim 11.
Zheng teaches a second PP honeycomb layer located between [an] upper panel and [a] lower panel (fig. 2 items 31 and 32, paragraph 0024 and 0025).
Alternate teachings of Reinhall disclose a third EVA layer (paragraph 0053).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the layered pickleball paddle construction of Reinhall with the feature of an additional honeycomb layer as taught by the layered pickleball paddle construction of Zheng for the purpose of producing different hitting sounds and handfeels as taught by Zheng (paragraph 0008) creating a paddle that is more interesting and attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided an additional EVA layer as taught by alternate teachings of Reinhall for the purpose of further modifying the bounce and sound dampening effects of the paddle, tailoring the paddle to create the desired characteristics, making the paddle more attractive to the users. The examiner further notes that since Reinhall specifically teaches surrounding the honeycomb core with EVA foam layers for the purpose of sound dampening, it would be obvious to one of ordinary skill in the art to have provided another EVA foam layer when adding an additional honeycomb core to the device, so that all of the cores are surrounded by EVA foam layers.
The examiner further notes that it has been held that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). And, that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Again, since Reinhall teaches the general conditions of a paddle with a PP honeycomb core that has two EVA layers surrounding it (paragraph 0033), and then providing an outer / external striking surface. And, Zheng teaches providing a core with multiple honeycomb layers. This generally teaches the claimed arrangement as well as provides a purpose for locating the EVA layers surrounding the core with the harder striking surfaces external to these components (paragraphs 0032 and 0036, for the purpose of providing sound dampening while preserving or tailoring ball rebound characteristics), therefore, simply claiming a slightly different arrangement of the external or internal layers that would achieve the same result (sound dampening surrounding core with desired external rebound characteristics), by using the same material layers in a slightly different order is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 12
The modified device of Reinhall teaches all of claim 11 as discussed above.
Reinhall further teaches (Claim 12) wherein the upper panel comprises a first carbon fiber layer and/or a first glass fiber layer; the lower panel comprises a second carbon fiber layer and/or a second glass fiber layer; [] (paragraphs 0033 and 0066, noting that outer layers can be glass fiber, carbon fiber, or combinations thereof).
Reinhall fails to specifically teach the layer order claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the layers in the order claimed simply as a matter of engineering design choice, since, it has been held that rearrangement of parts is an obvious matter of engineering design choice where the operation of the device is not modified. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). And, that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Reinhall teaches the general conditions of a paddle with a PP honeycomb core that has two EVA layers surrounding it (paragraph 0033), and then providing an outer / external striking surface, which is disclosed to be either glass fiber or carbon fiber, or a combination of both (paragraph 0066). This generally teaches the claimed arrangement as well as provides a purpose for locating the EVA layers closer to the core with the harder striking surfaces (carbon fiber and glass fiber layers) surrounding it (paragraphs 0032 and 0036, for the purpose of providing sound dampening while preserving or tailoring ball rebound characteristics), therefore, simply claiming a slightly different arrangement of the external or internal layers that would achieve the same result (sound dampening surrounding core with desired external rebound characteristics), by using the same material layers in a slightly different order is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claims 13-16
The modified device of Reinhall teaches all of claims 11 and 12 as discussed above.
Reinhall further contemplates (Claims 13-16) using a variety of different hardnesses and thicknesses for the various layers in order to optimize the sound dampening and rebound characteristics of the paddle (paragraphs 0032, 0033, 0035, 0053, 0063, 0066, and 0067).
Reinhall does not specifically teach the arrangement of layer thicknesses and hardnesses claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made each of the layers the claimed thicknesses and hardnesses simply as a matter of engineering design choice, since, it has been held 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Reinhall teaches a variety of layers including all of the materials claimed, and, that the plurality of layers, thicknesses, and stiffnesses of the layers are disclosed to be result effective variables, i.e. a variable that achieves a recognized result (in this case the result of producing an optimized vibration energy and dynamic stress sound dampening as well as creating a desired bounce back), merely changing the thicknesses, stiffnesses, or arrangement and number of layers to achieve this result is an obvious matter of engineering design choice, and is not a patentable advance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/ Primary Examiner, Art Unit 3711