DETAILED ACTION
Claim Objections
1. Claim 1 is objected to because of the following informalities: “the smallest outer diameter” should be amended to “a[the] smallest outer diameter”; “the thickness of said carbon fiber layer” should be amended to “a[the] thickness of the carbon fiber layer”; “the total thickness of said grip section” should be amended to “a[the] total thickness of said grip section”. Appropriate correction is required.
Claims 5-7 are objected to because of the following informalities: “the total length set by said shock absorbing member” should be amended to “a[the] total length set by said shock absorbing member”; “the total length of said grip section” should be amended to “a[the] total length of said grip section”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
2. 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 1-9 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 1-7 each recite a range that uses the character “~”. As this character is often used to signify an approximation, it is unclear what the range scope is. The specification uses the same character but is inconsistent using “about” to describe the ranges. Applicant should provide clarity to this issue and consider using a solid dash “-“ when reciting a range of numbers. For examining purposes, the ranges will be considered as exact ranges, and not approximations as the claims do not use “about” to describe the ranges. Claims 8-9 are rejected based on their dependency to 1.
Claims 1-9 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. The term “basically” divided in claim 1 is a relative term which renders the claim indefinite. The term is not defined by the claim, 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 2-9 are rejected based on their dependency to 1.
Claims 2-3 and 6 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. Regarding claim 2, the phrase "wherein preferably the thicknesses … " renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 8-9 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. The recitation in claims 8-9 of “wherein said carbon fiber layer has a consistent thickness in the grip section, and a thickness gradually reducing” is unclear and indefinite. A person ordinary skill in the art cannot properly ascertain the metes and bounds of this limitation. It is unclear if “consistent” was intended to be “constant”. More notably, it is unclear if the thickness being recited is intended to be a different thickness than the thickness of the carbon fiber layer established in base claim 1. Applicant should ensure proper and consistent antecedent basis for the thickness of the carbon fiber layer.
Claim Rejections - 35 USC § 103
3. 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
4. Claims 1-2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Shigeo (JP 2014068698) in view of Higginbotham et al. (US Pat. No. 6,761,653).
With respect to claims 1-2, Shigeo teaches a composite bat 1, comprising: a bat body made of aluminum, said bat body being basically divided into a grip section (“grip portion”) with the smallest outer diameter (Fig. 1), a gradually expanding section (“taper portion”) and a hitting section (“hitting ball portion”) according to changes in the outer diameter thereof, said grip section being in the shape of a hollow tube (Fig. 1), said grip section having one end thereof provided with a grip end cap (Fig. 1) and an opposite end thereof connected to said gradually expanding section, said gradually expanding section being connected between said hitting section and said grip section and gradually expanding from said grip section toward the outer diameter of said hitting section (Fig. 1); and a carbon fiber layer 3 covering the outside of the aluminum of said bat body in said grip section (“carbon fiber layer … that is overlapped on the outer surface of the grip portion”),
Shigeo does not expressly teach wherein the aluminum is an alloy. However, analogous art reference Higginbotham teaches that this feature to be known in the art - column 4, line 1 teaching the use of aluminum alloy for the bat frame material. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to use an aluminum alloy material. The rationale to combine is to keep the overall weight of the bat at a level that promotes high swing speed and good rebound performance
Lastly, Shigeo teaches wherein the carbon fiber layer is 1 mm, but fails to disclose wherein the thickness of said carbon fiber layer accounts for 15~30% of the total thickness of said grip section. Analogous art reference Higginbotham teaches that it is known to size a bat frame section with a carbon fiber outer layer to have a thickness of 15~30% of the total thickness of the frame – column 3, lines 64-67; column 4, lines 1-5. A person ordinary skill in the art would find it obvious to provide a thickness profile as taught by Higginbotham in Fig. 1 to the grip portion of the bat disclosed by Shigeo. The overall weight of the bat would be reduced, strength is added from the carbon fiber layer and the grip portion will be protected from denting. The proposed modification is considered to have a reasonable expectation of success as the primary purpose of Shigeo is not frustrated by the modification.
With respect to claim 8, Shigeo teaches wherein said carbon fiber layer 3 has a consistent thickness in said grip section, and a thickness gradually reducing toward said gradually expanding section (Fig. 1, 3A; examiner’s interpretation of Shigeo as meeting this limitation comports with applicant’s Fig. 3; Per MPEP 2111, the Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard: The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.”).
5. Claims 3-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Shigeo (JP 2014068698) in view of Higginbotham et al. (US Pat. No. 6,761,653) and further in view of Hebreo et al. (US Pub. No. 2003/0232671).
With respect to claims 3-7, Shigeo as modified above fails to expressly teach a shock absorbing member as claimed. However, analogous art reference Hebreo et al. teaches that it is known to position a shock absorbing member set inside a grip section, said shock absorbing member having a hardness rating of 50A-70A (paragraph [0019]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to position a shock absorbing member into the grip portion of Shigeo + Higginbotham as taught by Hebreo. The rationale to combine is to mitigate unwanted vibrations experienced the batter. While the shock absorbing member inherently comprises a total length. Hebreo does not expressly provide this value. However, per MPEP 2144.05, 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). In the instant case, bat provided by Shigeo + Higginbotham + Hebreo would operate as intended with a size as claimed. Moroever, the length of the shock absorbing member is a known result effective variable for damping effectiveness at prescribed frequencies – See Hebreo at paragraph [0021]; See also Shomo (US Pat. No. 4,660,832), cited as an extrinsic reference, teaching the length to proportional affect the shock and absorbent reduction at column 5, lines 1-5; See also Chang (US Pat. No. 6,254,501), cited as an extrinsic reference, teaching that too much resilient member within the handle will increase disadvantageously increase the weight – column 1, lines 6-11. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal shock absorbing length, including within the claimed range, via routine experimentation. The motivation to modify the length is to provide a desired damping level and weighting of the grip. Further, the applicant does not place criticality to the claimed range such that any unexpected result is achieved.
With respect to claim 9, Shigeo teaches wherein said carbon fiber layer 3 has a consistent thickness in said grip section, and a thickness gradually reducing toward said gradually expanding section (Fig. 1, 3A; examiner’s interpretation of Shigeo as meeting this limitation comports with applicant’s Fig. 3; Per MPEP 2111, the Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard: The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.”).
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711