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 .
Claims 1-16 have been examined.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “Provided is,” etc.
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 9-16 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.
Claims 9-16 describe the invention in terms of a particular user (e.g. positively including a player’s hand, thumb finger, index finger). Therefore, whether a device falls within the scope of the claim cannot be ascertained until a particular user engages the device. Consequently, the claim is indefinite. Ex parte Brummer, 12 USPQ2d 1653 (BdPatApp & Inter 1989). For purposes of examination, Examiner will consider the references to the user to be intended use of the sports grip. Examiner further reminds applicant that a recitation with respect to the manner in which an apparatus is intended to be employed does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claim. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); In re Yanush, 477 F.2d 958, 177 USPQ 705 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 168 USPQ 530 (CCPA 1971); In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 136 USPQ 458 (CCPA 1963); Ex parte Masham, 2 USPQ2d 1647 (BdPatApp & Inter 1987).
Further, As to Claim 9, it is unclear whether the claim is drawn to the combination or subcombination. In particular, the preamble of the claim implies the subcombination of the sports grip while line 2 in the body of the claim positively includes a bat. For this Office action only, it will be considered that these claims are drawn to the subcombination.
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)(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.
Claims 1-3, 5-9, and 11-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim (US Patent Application Publication 2024/0130450).
1. Kim discloses a sports grip, comprising:
a main body (Fig 2) comprising:
a flap (21,22) extending in a longitudinal direction,
at least two lobes (23,24) extending in opposite transverse directions, and
an elevated portion (12) extending from the main body, the elevated portion comprising an opening (11) for receiving a player's finger.
2. Kim discloses the sports grip of claim 1, wherein the elevated portion is a step portion (Fig 2).
3. Kim discloses the sports grip of claim 1, wherein the elevated portion is a convex portion (Fig 4).
5. Kim discloses the sports grip of claim 1, wherein the main body has uniform thickness (Par. 0008: “the feeling of grip is evenly conveyed by being configured with a predetermined, constant thickness”).
6. Kim discloses the sports grip of claim 1, wherein a first thickness of the main body at the flap is less than a second thickness of the main body at the elevated portion (Figs 4 and 6).
7. Kim discloses the sports grip of claim 1, wherein the main body is made from a resiliently deformable material ({ar. 002: “shock-absorbing material”).
8. Kim discloses the sports grip of claim 7, wherein the resiliently deformable material is selected to absorb vibration (Par. 008: “shock absorption”).
9. Kim discloses the sports grip of claim 8, wherein the resiliently deformable material increases friction between the player's hand and a bat (Par. 008: “feeling of grip”).
11. Kim discloses the sports grip of claim 1, wherein the opening receives a player's thumb finger (Fig 3).
12. Kim discloses the sports grip of claim 11, wherein the main body is arranged in a first position with the elevated portion proximate a tip of the player's thumb finger (Fig 3).
13. Kim discloses the sports grip of claim 11, wherein the main body is arranged in a second position with the elevated portion proximate a base of the player's thumb finger (Fig 3).
14. Kim discloses the sports grip of claim 1, wherein the opening is capable of receiving a player's index finger.
15. Kim discloses the sports grip of claim 14, wherein the main body is capable of being arranged in a first position with the elevated portion proximate a base of the player's index finger.
16. Kim discloses the sports grip of claim 14, wherein the main body is capable of being arranged in a second position with the elevated portion proximate a tip of the player's index finger.
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 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of First (US Patent Application Publication 2020/0352261).
4. Kim discloses the sports grip significantly as claimed, but does not disclose wherein the convex portion is elliptical.
First discloses a similar protective batting aid to be worn on a user’s finger, wherein the batting aid has a resiliently deformable body defining an elliptical hole therein (Fig 2C) which is sized and shaped to conform to a user’s thumb when gripping a bat. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the convex portion of Kim to have the hole be elliptical as taught by First in order to more properly and comfortably accommodate a user’s thumb while in a gripping position.
10. Kim discloses the sports grip significantly as claimed, but does not disclose wherein the resiliently deformable material is one of one of silicone, synthetic rubber, natural rubber, and thermoplastic elastomer.
First discloses a similar protective batting aid to be worn on a user’s finger, wherein the batting aid has a resiliently deformable body made of material selected from a group including: injectable rubber, Sorbothane®, silicone rubber, and silicone (Par. 0016) which provides enhanced friction where the resiliently deformable flap and handle of the bat make contact while the handle of the bat is held (Par. 0018). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the resiliently deformable material of the grip of Kim to specifically be made of silicone as taught by First to enhance the frictional properties of the batting aid.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lomedico, Cohen, Richard, and Frost all disclose similar batting aids made of resiliently deformable material to be worn in the area of a user’s hand between the thumb and index finger to aid in the gripping and performance of a bat.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA T KENNEDY whose telephone number is (571)272-8297. The examiner can normally be reached M-F 7a-4:30p MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LoAn Jimenez can be reached at (571) 272-4966. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA T KENNEDY/Primary Examiner, Art Unit 3784 2/10/2026