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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPub 2024/0009532 to Liu et al (hereinafter “Liu”) in view of US PGPub 2021/0252356 to Thurman et al. (hereinafter “Thurman”).
Regarding claim 1, Liu discloses a pickleball paddle (Figures), comprising: carbon fiber (para. [0020]), wherein the carbon fiber forms a single body head and handle (102, Fig. 2); and a foam piece (14) covering the carbon fiber handle (Fig. 2), wherein: the carbon fiber runs all the way to the edges of the head (Fig. 2); and a plastic strip (103) is applied to the edges of the carbon fiber head to define the boundaries of the paddle (Fig. 2).
Liu does not expressly disclose the strip being rubberized paint. However, Thurman teaches a pickleball paddle using a rubberized paint (see para. [0087] – “bumper 48 may be a layer that is coated about the peripheral edge” and “materials from which bumper 48 may be formed include…rubber”). It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the instantly claimed invention, to modify the plastic strip edge of Liu with the rubber coating (paint) edge as taught by Thurman, since this would have been a simple substitution of one known element (rubber coating edge) for another (plastic strip edge) that would have provided predictable results (clean, but protecting, edge of the paddle).
Regarding claim 2, Liu further discloses an adhesive applied to the foam piece covering the raw carbon fiber handle (para. [0013]).
Regarding claim 3, Liu further discloses a top grip layer (15) wrapping around the foam piece and secured by the adhesive (Fig. 2 and para. [0013]).
Claims 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPub 2024/0009532 to Liu et al (hereinafter “Liu”) in view of US PGPub 2021/0252356 to Thurman et al. (hereinafter “Thurman”), as applied to claims 1-3 above, and further in view of NPL - https://www.ronbus.com/A-Review-of-Raw-Carbon-Fiber-Technologies-Part-3_b_4.html?srsltid=AfmBOorWf4rXQ1btLF5J8xACyEMfiTYcB6MWBSZHeysUG6SLJ56F_qu7 – “A Review of Raw Carbon Fiber Technologies: Part 3” – 8/19/2023 by Austin.
Regarding claims 4-9, Liu, as modified by Thurman, discloses the structure of the paddle and the normal operative steps to assemble that paddle read on the claims below, but do not expressly teach thermoforming the paddle shape (which is what the claim limitations below are reciting…as supported by Applicant’s own specification).
However, as taught by Austin, thermoforming is not new to the manufacturing of pickleball paddles, and would be obvious to one of skill in the art to have manufactured the paddle in that manner (see cited NPL).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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Nicholas J. Weiss
Supervisory Patent Examiner
Art Unit 3781
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711