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 § 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(s) 1-3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonfigli (US 20220296973) in view of Filippini (US 20160193793)
Bonfigli discloses a racquet comprising a handle (e.g. Fig. 1, handle 14), a blade portion connected to the handle portion (e.g. Fig. 1, generally seen at the frame 12 and layers 20, 22, 24, 26), defining a plurality of ineterior walls that define a plurality of complimentary holes therethrough (e.g. through holes 52), comprising at least one core layer (e.g. layer 20), a first outer layer and a second outer layer (e.g. first layers 22, 24, and 26 make up a first outer layer and a complimentary second outer layer made up of layers 22, 24, and 26; see annotated figure below), a rim portion surrounding the blade portion (e.g. seen generally as the frame 12 which surrounds the multiple layers of the blade in Fig. 1), wherein the holes extend throught he first outer layer, core layer, and second outer layer (e.g. Fig. 4 shows through holes 52 which extend through the multilayer blade portion).
PNG
media_image1.png
812
654
media_image1.png
Greyscale
Bonfigli additionally discloses the multiple layers (22, 24, and 26) may be made of carbon fiber (e.g. paragraph 12). Bonfigli fails to teach the specific arrangement of the first and second outer layers each having a sandwich construction of a fiberglass layer, carbon fiber layer, and fiberglass layer.
In a similar field of endeavor, Filippini teaches that it is known to use a variety of materials for a multilayer racquet construction including the interchangeability of fiberglass, carbon fiber, graphite and/or Kevlar being used for face sheets of racquets, and their unique properties of being relatively stiff and low weight. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the system of Bonfigli with a multilayer face arrangement with a fiberglass, carbon fiber, and fiberglass construction, since Filippini teaches that it is known to use various combinations of fiberglass and carbon fiber in a multilayer face arrangement of a racquet since these materials provide for low weight and stiff properties which are desirable for a racquet face (e.g. paragraph 12). Moreover, it has been held that where the general conditions of a claim are disclosed, the selection of a preferred material on the basis of its suitability is within the level of ordinary skill in the art (see in re Leshin 277 F.2d 197; see MPEP 2144.07).
With regard to claim 2, Bonfigli discloses the blade portion of the racquet is generally elliptical (e.g. seen generally in Fig. 1 which shows an elongated circular blade portion). Bonfigli fails to teach the through holes 52 are also elliptical is shape. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the racquet system of Bonfigli with using elliptical shaped holed since it has been held that where the general conditions of a claim are taught by the prior art, mere changes in shape are within the level of ordinary skill in the art (in re Dailey 357 F.2d 669, see MPEP 2144.04 IV B). Additionally, Applicant has not provided any criticality to the elliptical shape of the holes which would lead one or ordinary skill in the art to conclude that any changes in shape would be obvious.
With regard to claim 3, Examiner considers any modified system of Bonfigli which includes an elliptical shaped blade and elliptical shaped holes would also necessarily include an elliptical edge of the elliptical holes. It is unclear to the Examiner how an elliptical hole would not also have an elliptical edge circumscribing the elliptical hole.
With regard to claim 8, Bonfigli discloses the invention as claimed but fails to teach specific dimensions of the fiberglass layers having a density of 200 g/m2. It would have been obvious to one having ordinary skill in the art tat the time the invention was made to modify the system as taught Bonfigli in view of Filippini with the fiberglass layers having a density of 200 g/m2 since such a modification would provide the predictable results of providing a sufficient density and strength for the intended use of the racquet hitting a ball in a paddle sport. Further it would have been obvious to one having ordinary skill in the art at to select a density of 200 g/m2 since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art In re Aller, 105 USPQ 233, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art and since the density of the fiberglass layers are recognized as relating to the stiffness and strength of the racquet/paddle for paddle sports In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 4-5, 11-14, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonfigli in view of Filippini as applied above, further in view of Bertrand et al. (FR 3117881) Examiner will be referring to a Google Patents printout as a translation for this reference.
With regard to claim 4 and 11-12, Bonfigli in view of Filippini as applied above disclose the invention as claimed but fail to teach the elliptical edge having a circumference of approximately 29.84mm.
Bertrand discloses a similar racquet including through holes 30 which are disclosed to have a diameter of ~9-13mm. A diameter of 9-13mm equates to a circumference of 28.26 mm – 40.82 mm. (see translation page 3, which details the diameter of holes 30).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the system as taught by Bonfigli in view of Filippini with selecting a hole diameter in the range of 9-13mm since this is a known range for through holes in a similar racquet and the selection of a hole diameter size would naturally be related to a desired performance variable such as the aerodynamics (ability for the racquet to move through the air without drag).
With regard to claim 5 and 13, Bonfigli in view Filippini and further in view of Bertrand fail to teach specific dimensions of a minor axis of 9.5mm, a major axis diameter of 23.05mm and an elliptical edge circumference of 53.37mm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the system as taught by Bonfigli in view of Filippini and Bertrand with of a minor axis of 9.5mm, a major axis diameter of 23.05mm and an elliptical edge circumference of 53.37mm since it has been held that where the general conditions of a claim are met by the prior art the mere recitation of a specific dimension(s) is within the level of ordinary skill in the art. (see Gardner v TEC Syst. Inc. 725 F.2d 1338).
With regard to claim 14, Bonfigli in view of Filippini and Bertrand disclose the invention as claimed but fail to teach the elliptical holes being oriented such that the major axis of each of the holes is parallel to a vertical axis of the blade portion. As discussed above with respect to claim 2, Examiner considers it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the racquet system of Bonfigli with using elliptical shaped holes oriented with the major axis being parallel to the vertical axis of the blade portion since it has been held that where the general conditions of a claim are taught by the prior art, mere changes in shape are within the level of ordinary skill in the art (in re Dailey 357 F.2d 669, see MPEP 2144.04 IV B). Additionally, Applicant has not provided any criticality to the elliptical shape and the orientation of the elliptical holes with a major axis being parallel to the vertical axis of the blade portion which would lead one or ordinary skill in the art to conclude that any changes in shape would be obvious.
With regard to claim 17-18, Bonfigli discloses the the first and second outer layers being comprised of fiber glass as discussed above similarly with respect to claim 1.
With regard to claim 19, claim 19 recites the same limitation previously addressed with respect to claim 4.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonfigli in view of Filippi as applied above, further in view of Kapheim et al (US 20150024879).
Bonfigli in view of Filippi disclose the invention as claimed but fail to teach the core layer being formed of an EVA foam. Kapheim teaches that it is well known to use EVA foam as a core layer material in racquets (see paragraph 22). It would have been obvious to one having ordinary skill in the art at the time the invention was made to select EVA foam as the core layer material since such a modification would provide the selection of a known material which has been taught to be suitable for the exact same purpose of forming a core layer in a racquet.
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonfigli in view of Fillipi and Bertrand as applied to claim 11 above, and further in view of Kapheim (US 20150024879).
Bonfigli discloses the invention as claimed but fails to teach the core layer being comprised of EVA foam. Kapheim teaches that it is well known to use EVA foam as a core layer material in racquets (see paragraph 22). It would have been obvious to one having ordinary skill in the art at the time the invention was made to select EVA foam as the core layer material since such a modification would provide the selection of a known material which has been taught to be suitable for the exact same purpose of forming a core layer in a racquet.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonfigli in view of Filippi as applied above, further in view of Kodama et al. (US 6,354,963).
With regard to claim 9, Bonfigli discloses the invention as claimed but fails to teach the carbon fiber layer comprises a first carbon fiber sheet and a second carbon fiber sheet oriented perpendicularly to each other.
Kodama teaches that it is known when using carbon fiber to orient strands perpendicular to eachother to provide for overall strength and shock absorption is multiple overlapping planes (see Col. 6, line 40-59). It would have been obvious to one having ordinary skill at the time the invention was made to modify the system of Bonfigli in view of Filippi with the carbon fiber layer comprises a first carbon fiber sheet and a second carbon fiber sheet oriented perpendicularly to each other since such a modification would provide for overall strength and shock absorption is multiple overlapping planes.
With regard to claim 10, Bonfigli in view of Filippi and Kodama disclose the invention as claimed but fail to teach the first carbon fiber sheet and the second carbon fiber sheet both have a density of 180 g/m2, a tensile strength of 3000 MPa, a breaking elongation of approximately 1.5%, and a Young’s modulus of 230 GPa. It would have been obvious to one having ordinary skill in the art tat the time the invention was made to modify the system as taught Bonfigli in view of Filippini with the the first carbon fiber sheet and the second carbon fiber sheet both have a density of 180 g/m2, a tensile strength of 3000 MPa, a breaking elongation of approximately 1.5%, and a Young’s modulus of 230 GPa since such a modification would provide the predictable results of providing a sufficient density and strength for the intended use of the racquet hitting a ball in a paddle sport. Further it would have been obvious to one having ordinary skill in the art at to select the first carbon fiber sheet and the second carbon fiber sheet both have a density of 180 g/m2, a tensile strength of 3000 MPa, a breaking elongation of approximately 1.5%, and a Young’s modulus of 230 GPa since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art In re Aller, 105 USPQ 233, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art and since the density of the fiberglass layers are recognized as relating to the stiffness and strength of the racquet/paddle for paddle sports In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A STOKLOSA whose telephone number is (571)272-1213. The examiner can normally be reached M-F 930AM-530PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Teixeira-Moffat can be reached at 571-272-4390. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794