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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 9/14/2023 was/were considered by the examiner.
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 1-8 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 is unclear in that it recites “substantially”. Applicant attempts to define the term with “And the term “substantially” refers to up to 80% or more of an entirety.” This definition fails since “up to 80%” would encapsulate 0-80% and “or more” would include 80-100%. Thus, the definition fails to meaningfully define the scope of meaning. As such, the term remains a relative term because the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2-8 are unclear for their dependency.
Claim 2 is NOT unclear by reciting “approximately” because it is defined in the specification. However, it is unclear because “stiffness” is measured by the equation BE=ExI, where BS is bending stiffness of a cantilevered beam, E is the modulus of elasticity and I is the moment of inertia. The moment of inertial is dependent on cross sectional shape. Since there is no “standard lacrosse shaft” shape the variable can’t be determined or compared to. Further, the elastic deformation” is different for each material. There is no “standard lacrosse shaft” material. Also, since market for lacrosse shafts evolves or shifts it is impossible to determine that limitation.
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.
Claim(s) 1, 3-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dorfi US 5048843.
Regarding claim 1, Dorfi discloses a padded lacrosse stick comprising:
a lacrosse head (14);
a lacrosse shaft (12), wherein the lacrosse shaft is operatively associated with the lacrosse head (Fig. 1);
a head padding (42) enveloping a substantial portion of the lacrosse head; and
a shaft padding (32,34) enveloping a substantial portion of the lacrosse shaft.
Regarding claim 3, Dorfi further discloses a throat connector (24) that operatively associates the lacrosse head to the lacrosse shaft.
Regarding claim 4, Dorfi further discloses that an elastic connector (base portion of 42) interconnecting adjacent proximal ends of the head padding.
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Regarding claim 5, Dorfi further discloses an end cap (30) joined to a proximal end of the lacrosse shaft so that an outer surface of the end cap is substantially flush with an outer surface of the shaft padding (34).
Regarding claim 7, Dorfi further discloses that the substantial portion of the lacrosse head includes a scoop of the lacrosse head (Fig. 1).
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) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Dorfi US 5048843.
Regarding claim 6, Dorfi does not teach that the head and shaft paddings have a thickness of approximately five millimeters.
It has been held, see Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Since applicant has not disclosed that having the padding be approximately 5 millimeters solves any stated problem or is for any particular purpose above offering a cushioning effect and it appears that padding of Dorfi would perform equally well at 5 millimeters as claimed by applicant, absent persuasive evidence that the particular configuration of the claimed limitation is significant, it would have been an obvious matter of design choice, before the effective filing date of the claimed invention, to modify thickness dimension of Dorfi by utilizing 5 millimeters as claimed for the purpose of offering an acceptable cushioning effect for the user. See MPEP 2144.04 (IV)(A), Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Dorfi US 5048843 in view of Tucker US 20020198070.
Regarding claim 8, Dorfi does not teach that a head stiffness of the lacrosse head is substantially greater than the shaft stiffness.
Tucker teaches a lacrosse stick wherein “the stiffer the material of the head, the less the head flexes or ‘gives’ in response to tension on the pocket” and “impact with the ball causes a trampoline effect” therefore “a manufacture could use a more flexible, dampening head material to reduce the trampoline effect”. Thus, the stiffness of the lacrosse head is a result effective variable. Thus, it would have been an obvious matter of design choice, before the effective filing date of the claimed invention, to modify head material and thus its stiffness as taught by Dorfi by utilizing a material with a stiffness that is greater than the shafts as claimed in order to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II)(A).
Conclusion
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/BRIAN O PETERS/Primary Examiner, Art Unit 3745