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 .
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(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, 5-8, 10, 11, 13 and 16-19 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Randolph (US Patent NO. 6,277,040).
Regarding claim 1, Randolph discloses an apparatus (see Figures 1-3), comprising: a shaft having a length (as shown in Figure 1, the bat (2) has a length that measures from the top end to the bottom end), from a first end of the shaft (the end towards the knob (5)) to a second end of the shaft opposite to the first end (the tip top end of the bat as shown in Figure 1), of not less than 10 centimeters (column 1 lines 47-48 discloses that the device is a standard ball bat and this confirms that the length of the bat/shaft is inherently not less than 10 centimeters); and an attachment member attached to the shaft and configured to be removably attached (1) to a handle of a sporting bat (the bottom section of the bat identified as component 4) such that a longitudinal axis of the shaft extends at an angle with respect to a longitudinal axis of the handle that is between, and inclusive of, 0 and 25 degrees (as shown in Figures 1-2, the longitudinal axis of the shaft and the handle are considered to be the same and this can be interpreted as these two sections of the bat as having zero angle).
It should be noted that examiner is giving the broadest reasonable interpretation of the claims as set forth in MPEP 904.01(a). The examiner notes that apparatus claims must be structurally distinguishable from the prior art. SEE MPEP 2114.
Regarding claim 3, wherein the attachment member comprises a first polymeric material (column 3 lines 3-5 discloses “The taper grip 1, when formed from injection molding, can be made from elastomers such as "KRATON.RTM.", "VERSAFLEX.TM.","DYNAFLEX.RTM.". The taper grip 1 can also be formed from compression molding or transfer molding, in which case it can be made from natural or synthetic rubber or a combination of both, such as a natural rubber/styrene butadiene rubber mixture, "31X" extruder rope rubber, or HD-30 cushion gum (both manufactured by BANDAG.RTM.)” . As it is known, KRATON, VERSAFLEX, and DYNAFLEX are considered polymeric materials).
Regarding claim 5, wherein: the handle (4) comprises a knob (5); the attachment member is configured to be removably attached to the knob (1); and the attachment member is configured to be stretched to and/or has a width greater than a maximum width of the knob (column 3 lines 13-15 discloses that the taper grip 1 is resilient enough to stretch over the knob 5).
Regarding claim 6, the attachment member further comprising a portion configured to conform to a shape of the knob when the attachment member is attached to the handle (column 3 lines 13-15 discloses that the taper grip 1 is resilient enough to stretch over the knob 5 and since the attachment member is resilient, it is capable of conforming to the shape of the knob).
Regarding claim 7, wherein the attachment member is made of an attachment member material having a Young's modulus of not greater than 1 and configured to allow the attachment member to be removably attached to and/or removed from the handle by stretching the attachment member material (column 3 lines 3-5 discloses “The taper grip 1, when formed from injection molding, can be made from elastomers such as "KRATON.RTM.", "VERSAFLEX.TM.","DYNAFLEX.RTM.". The taper grip 1 can also be formed from compression molding or transfer molding, in which case it can be made from natural or synthetic rubber or a combination of both, such as a natural rubber/styrene butadiene rubber mixture, "31X" extruder rope rubber, or HD-30 cushion gum (both manufactured by BANDAG.RTM.)” . As it is known, KRATON, VERSAFLEX, and DYNAFLEX are considered polymeric materials and these elastomers are polymeric materials, typically have a very low Young's modulus, often in the range of megapascals (MPa) or even lower, significantly less than 1 GPa).
Regarding claim 8, wherein the angle is between, and inclusive of, 0 and 10 degrees (as shown in Figures 1-2, the longitudinal axis of the shaft and the handle are considered to be the same and this can be interpreted as these two sections of the bat as having zero angle).
Regarding claim 10, the shaft further comprising: a first width at the first end; a second width at the second end that is greater than the first width; and a tapered portion between the first end and the second end (as shown in Figure 1, the bottom end of bat 2 has a first width and the second width at the top end of bat 2 has a greater width than the first width and the middle tapered section as shown in the figure meets the claim limitations).
Regarding claim 11, wherein the shaft and attachment member are shaped to resemble the sporting bat (as shown in Figure 1, a baseball bat is disclosed).
Regarding claim 13, wherein the sporting bat comprises at least one of: a baseball bat, a softball bat, a cricket bat, or any combination thereof (column 2 line 65 discloses that the device could be a baseball or softball bat).
Regarding claim 16, wherein the attachment member surrounds a perimeter of the shaft at the first end (see Figures 1-2. The inner circumference (10) of the attachment member (1) is shown as surrounding a perimeter of the shaft at the first end).
Regarding claim 17, wherein the shaft has a circular cross-section (since the bat overall structure is cylindrical, it clearly has a circular cross-section).
Regarding claim 18, Randolph discloses a system comprising: a shaft having a length (as shown in Figure 1, the bat (2) has a length that measures from the top end to the bottom end), from a first end of the shaft (the end towards the knob (5)) to a second end of the shaft opposite to the first end (the tip top end of the bat as shown in Figure 1), of not less than 10 centimeters (column 1 lines 47-48 discloses that the device is a standard ball bat and this confirms that the length of the bat/shaft is inherently not less than 10 centimeters); and an attachment member configured to be removably attached to (1): the shaft (2); and a handle of a sporting bat (the bottom section of the bat identified as component 4) such that a longitudinal axis of the shaft extends at an angle with respect to a longitudinal axis of the handle that is between, and inclusive of, 0 and 25 degrees when the attachment member is attached to the shaft (as shown in Figures 1-2, the longitudinal axis of the shaft and the handle are considered to be the same and this can be interpreted as these two sections of the bat as having zero angle).
It should be noted that examiner is giving the broadest reasonable interpretation of the claims as set forth in MPEP 904.01(a). The examiner notes that apparatus claims must be structurally distinguishable from the prior art. SEE MPEP 2114.
Regarding claim 19, Randolph discloses a method, comprising: attaching a shaft (2) to an attachment member (1), the shaft having a length, from a first end of the shaft to a second end of the shaft opposite to the first end (as shown in Figure 1, the bat (2) has a length that measures from the top end to the bottom end), of not less than 10 centimeters (column 1 lines 47-48 discloses that the device is a standard ball bat and this confirms that the length of the bat/shaft is inherently not less than 10 centimeters); and removably attaching the attachment member (1) to a handle of a sporting bat such that a longitudinal axis of the shaft extends at an angle with respect to a longitudinal axis of the handle that is between, and inclusive of, 0 and 25 degrees when the attachment member is attached to the shaft and to the handle (as shown in Figures 1-2, the longitudinal axis of the shaft and the handle are considered to be the same and this can be interpreted as these two sections of the bat as having zero angle). During normal use and operation of the Randolph device, the method steps as recited would inherently be performed when assembling the bat to the attachment member.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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
2, 9, 12, 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Randolph.
Regarding claims 2, 9 and 14, Randolph does not explicitly the shaft material having a density of not greater than 1.7 grams per cubic centimeter, the length not being greater than 80 centimeters, the weight of the apparatus not being greater than 0.1 kilograms. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a device that has the listed values, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 12, the attachment element is capable of being positioned at any higher location along handle 4 and depending on the bat (see abstract of Randolph), the along the attachment member the 10 centimeter location could obviously be met. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a device at any working location including the claimed location, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 20, Randolph does not explicitly the shaft material having a density of not greater than 1.7 grams per cubic centimeter. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a device to have a density of not greater than 1.7 grams per cubic centimeter since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claims 4 and 15, are rejected under 35 U.S.C. 103 as being unpatentable over Randolph in view of Van Nguyen (US patent Application Publication No. 2007/0202973).
Randolph does not explicitly disclose wherein the shaft material comprises a second polymeric material different from the first polymeric material and the shaft further comprising a surface material that is different from a material of the handle. Van Nguyen is one example of reference that teaches the use of resilient sleeve 22 (see paragraph 18) over the shaft that is considered as a second polymeric material that is different from a material of the handle. It would have been obvious to one of ordinary skill in the art before the effective filing to provide the Randolph device with a sleeve material (22) as taught by the Van Nguyen device in order to improve the ability of the bat to absorb impacts when the ball contacts the ball as disclosed in paragraph 31 of the Van Nguyen reference.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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/NINI F LEGESSE/
Primary Examiner, Art Unit 3711