DETAILED ACTION
This Office Action is in response to Applicants application filing received on February 20, 2024. Claim(s) 1-20 is/are currently pending in the instant application. The application claims priority to Taiwan application 112126434 filed on July 14, 2023.
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 .
Information Disclosure Statement
The Examiner acknowledges the Applicants filing of IDS references on February 20, 2024. The references have been considered at this time. A copy of the annotated IDS sheet is included in this correspondence.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1, 5, 7, 9, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of copending Application No. 18/597429 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming the same invention
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 can be drawn to claims 1, 2, and 4 of co-pending application 18/597429; specifically A paddle racket with segmented cores, comprising a plate body, the plate body comprising: a core, the core defining at least two ball-striking response parts adjacent to each other, a segment gap being formed between any two of the at least two ball-striking response parts;
a frame, the frame being disposed on a periphery of the core; and
two surface layers, the two surface layers being spaced apart from each other and respectively assembled on the core and the frame, and the two surface layers corresponding to the at least two ball-striking response parts.
wherein the at least two ball-striking response parts are further provided with a plurality of components, the components have the first response parameters, the components are arranged with one another, the components extend between corresponding frame edges of the frame, and the two surface layers are assembled on the components of the core.
wherein the frame has a second response parameter, the components with the first response parameters and the frame with the second response parameter are made of different materials, the first response parameter and the second response parameter are stiffness.
Claim 5 can be drawn to claim 4 of co-pending application 18/597429; wherein the frame has a second response parameter, the components with the first response parameters and the frame with the second response parameter are made of different materials, the first response parameter and the second response parameter are stiffness.
Claim 7 can be drawn to claim 3 of co-pending application 18/597429; wherein the components are either arranged longitudinally with one another, or arranged transversely with one another, or arranged obliquely with one another, or arranged with one another in a combination of the above arrangements, a component gap is further provided between any two of the components, the components are made of either honeycomb structure or rib structure, the components are made of either carbon fiber material, hard plastic material or hard foam material.
Claim 9 can be drawn to claim 5 of co-pending application 18/597429; wherein the frame is made of either polyethylene (PE) or ethylene-vinyl acetate (EVA) copolymer, and the two surface layers are made of either a carbon fiber or a glass fiber.
Claim 10 can be drawn to claim 6 of co-pending application 18/597429; wherein further comprising a grip body, the grip body being formed by extending longitudinally or by connecting longitudinally from a bottom side of the frame of the plate body, the grip body being further assembled with a handle, and the handle being made of a synthetic rubber.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thurman et al. U.S. Publication 2021/0252356 A1 (hereafter Thurman).
Regarding claim 1, Thurman discloses a core (see at least Fig. 25A, 2072-1; core area of paddle), the plate body defining a first ball-striking response part and a second ball-striking response part adjacent to each other in corresponding to the core, the first ball-striking response part being located at a central part of the core, the first ball-striking response part and the second ball-striking response part respectively having a first response parameter and a second response parameter different from each other (see at least Fig. 26, layer 2072-1 and crossbeams 2374-1/2/3, ball striking parts are adjacent to each other),
a frame, the frame being disposed on a periphery of the core (see at least Fig. 25A, [0145] 2072-2 tubular body sublayer around the core 2072-1); and two surface layers, the two surface layers being spaced apart from each other and respectively assembled on the core and the frame (see at least [0145, Fig. 25B, faceplates 44 and 46 assembled around the core 2072-1 and the tubular body (e.g. frame) 2072-2), the two surface layers corresponding to the first ball-striking response part and the second ball-striking response part (see at least [0143] sublayers 2072 may be formed from material having the same color or may be formed from the same material different material having different colors. The differing colors, when in combination with a translucent faceplate 44, 46 may further assist in the user identifying the boundaries of the different sublayers 2070-2 to assist in determining how to position a paddle when striking a pickleball such that the ball is struck with a desired result in a given game circumstance.).
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.
Claim(s) 2-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thurman et al. U.S. Publication 2021/0252356 A1 (hereafter Thurman).
Regarding claim 2, Thurman discloses wherein the plate body defines a third ball-striking response part in corresponding to the frame, the two surface layers correspond to the third ball-striking response part, the first ball-striking response part with the first response parameter and the third ball-striking response part with a third response parameter are made of different materials, the second ball- striking response part with the second response parameter and the third ball-striking response part with the third response parameter are made of a same material, the first response parameter, the second response parameter and the third response parameter are stiffness (see at least Fig. 24A/B [0144] Sublayer 2072-1 forms the central region or portion of the head portion 2140. Sublayer 2172-2 comprises a layer of material omitting open cells or lattices. In one implementation, sublayer 2172 comprise a closed cell foam material. In another implementation, sublayer 2172-2 comprises a solid polymer. Sublayer 2172-2, may provide enhanced stiffness or weight distribution. In other implementations, sublayers 2172-2 and/or 2072-1 can be formed of a wood, a plastic, a closed cellular material, a composite material, an alloy, and combinations thereof. And Fig. 25A, 36A/B, [0182] sublayers 3270-3 and 3270-4 may have different material geometries such as different densities of cells/lattices providing different degrees of stiffness. As a result, the sublayers 3270-2 and 3270-3, forming inner layer 3242, provide different regions of different coefficients of restitution to enhance the ball striking performance of the face of head 3240 adjacent faceplates 46. In the example illustrated, sublayers 3270-3 and 3270-4 form a series of concentric rings forming a target and providing different annular regions of stiffness.), the embodiments of the reference disclose a frame in Fig. 25A and a core with multiple different materials in Fig. 36A/B therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the frame and core paddle with the multiple types of materials taught in a separate embodiment as combining prior elements is known to yield predictable results (KSR A)
Regarding claim 3, Thurman discloses wherein the second ball-striking response part is located at a position away from the central part of the core, and the second ball-striking response part is further located on two sides of the first ball-striking response part (see at least Fig. 46, [0209] Regions 4250-2 and 4250-3 may have the same general construction as region 4250-1. Region 4250-2 contains a vertical and longitudinal center point 4251 of head 4240. Regions 4250-1, 4250-2 and 4250-3 have the same general degree of stiffness or response to vertical compressive loads. In some implementations, these regions may have different lattices, lattices with different unit cell geometries, different unit cell sizes and/or different unit cell strut diameters. [0210] Regions 4250-4, 4250-5 and 4250-6 have the same general geometry and generally have two surfboard shapes on opposite sides of regions 4250-2 and 4250-3 while being joined to opposite sides of region 4250-1. Each of such regions can have a construction that provides a greater degree of stiffness in response to vertical compression loads as compared to the degree of stiffness found in region 4250-1. In the example illustrated, regions 4250-5 have a degree of stiffness in response to vertical compression loads that is greater than the degree of stiffness in response to vertical compression loads of regions 4250-4 and 4250-6. In the example illustrated, regions 4250-5 contain points 4251-5 which are horizontally aligned with center point 4251 and which are transversely spaced from the axial centerline 4255 (which intersects center point 4251) of head 4240 by distance D of at least 0.75 inch and no greater than 1.25 inches. The area of the paddle may include different stiffness and material at different areas of the paddle).
Regarding claim 4, Thurman discloses wherein the second ball-striking response part is partially located at the central part of the core, the second ball-striking response part is partially located at a position away from the central part of the core, and the second ball-striking response part is further located on a peripheral side of the first ball-striking response part (see at least Figs. 46 and 47 [0209] Regions 4250-2 and 4250-3 may have the same general construction as region 4250-1. Region 4250-2 contains a vertical and longitudinal center point 4251 of head 4240. Regions 4250-1, 4250-2 and 4250-3 have the same general degree of stiffness or response to vertical compressive loads. In some implementations, these regions may have different lattices, lattices with different unit cell geometries, different unit cell sizes and/or different unit cell strut diameters [0216] FIG. 47 illustrates pickleball paddle 4320, a specific example of pickleball paddle 4220, wherein the different regions are formed by different lattices formed by arrangements of cubic unit cells produced from an iterative topology optimization analysis.).
Regarding claim 5, Thurman discloses wherein the first ball-striking response part with the first response parameter and the second ball-striking response part with the second response parameter are made of different materials, the first response parameter and the second response parameter are stiffness (see at least [0115] By selectively filling certain cells/cavities 1250 with different materials, different portions of inner layer 1242 may provide the paddle with different stiffnesses, coefficients of restitution, feel, weight distribution and performance parameters customized to a player's skill level or preferences. In addition, by selectively filling certain cells/cavities 1250 with different materials and by using a plate 44 and/or 46 having translucent properties in at least selected regions, ball striking cues, designs and logos may be provided).
Regarding claim 6, Thurman discloses wherein the first ball-striking response part is further provided with a plurality of first components, the first components have the first response parameters, the first components are arranged with one another, the first components extend between corresponding frame edges of the frame, the first ball-striking response part further comprises at least two response blocks, a segment gap is further formed between any two of the at least two response blocks, the at least two response blocks are further provided with the first components, the segment gap is further provided with a filler, the filler has a coefficient of elasticity, and the filler is further a rubber band with the coefficient of elasticity (see at least Fig. 36A/B [0180] sublayers 3270-1 3270-2 may also have different geometries and/or may be formed from different materials. and [0083] the inner layer 42 can be formed of a urethane foam, polypropylene, Nomex® polycarbonamide material, ethylene vinyl acetate (EVA), aluminum, balsa, corrugated cardboard, a rubber, polyethylene, polyvinyl chloride, a polyethylene vinyl acetate, other polymeric foams, other lightweight elastic foams, other types of wood, other metallic alloys, and combinations thereof. In some implementations, the cells of inner layer 42 may be filled or injected with a different material. For example, in one implementation, the cells of inner layer 42 may be injected with a foam material. In some implementations, selected portions of inner layer 42 may have their cells filled or injected with material, such as a foamed material or other selected portions of inner layer 42 have empty or unfilled cells. In one implementation, first selected portions may have cells filled with a first material, such as a first foamed material, second selected portions may have cells filled with a second material such as a second different foamed material and third portions having empty void cells. In such implementations, the selective filling of cells at selected locations may provide different stiffness levels and coefficient of restitution and different portions of the face of the paddle 20 to optimize performance and feel.).
Regarding claim 7, Thurman discloses wherein the first components are either arranged longitudinally with one another, or arranged transversely with one another, or arranged obliquely with one another, or arranged with one another in a combination of the above arrangements, the first components are made of either honeycomb structure or rib structure, the first components are made of either carbon fiber material, hard plastic material or hard foam material (see at least Figs. 25A, 26 [0141] sublayers 2072 are each formed from a same material having a same chemical composition, with different geometries. In the example illustrated, sublayers 2072 are each formed from a same material having honeycomb cells, wherein sublayers 2072 have differing densities of honeycomb cells. In other implementations, sublayers 2072 are formed from a same material having a single nonorthogonal lattice geometry/architecture, wherein sublayers 2072 have different densities of the lattice, different densities of cells. In other implementations, sublayers 2072 may be formed with different densities of cells, one or more orthogonal lattices, and/or out of different materials. and [0145] FIG. 24C sublayer 2172-2 is a tubular body formed of fiber composite material, similar to a composite tennis racquet frame. In one implementation, the sublayer 2172-2 is one elongate tube of fiber composite material that is molded into the shape of the perimeter of the head portion 2140 and [0083] the inner layer 42 can be formed of a urethane foam, polypropylene, Nomex® polycarbonamide material, ethylene vinyl acetate (EVA), aluminum, balsa, corrugated cardboard, a rubber, polyethylene, polyvinyl chloride, a polyethylene vinyl acetate, other polymeric foams, other lightweight elastic foams, other types of wood, other metallic alloys, and combinations thereof. In some implementations, the cells of inner layer 42 may be filled or injected with a different material. For example, in one implementation, the cells of inner layer 42 may be injected with a foam material. In some implementations, selected portions of inner layer 42 may have their cells filled or injected with material, such as a foamed material or other selected portions of inner layer 42 have empty or unfilled cells. In one implementation, first selected portions may have cells filled with a first material, such as a first foamed material, second selected portions may have cells filled with a second material such as a second different foamed material and third portions having empty void cells. In such implementations, the selective filling of cells at selected locations may provide different stiffness levels and coefficient of restitution and different portions of the face of the paddle 20 to optimize performance and feel.).
Regarding claim 8, Thurman discloses wherein the second ball-striking response part is further provided with second components, the second components have the second response parameters, and the second components are made of either polyethylene (PE) or ethylene-vinyl acetate (EVA) copolymer (see at least [0090] nonorthogonal lattice 150 comprises a polymer such as rigid polyurethane. In other implementations, lattice 50 may be formed from other materials such as thermoplastic polyurethane, polypropylene, Nomex® polycarbonamide material, ethylene vinyl acetate (EVA), polyethylene, polyvinyl chloride, a polyethylene vinyl acetate, polyamide, acrylonitrile butadiene styrene (ABS), poly ether (ether) ketone, polylactic acid, acrylate-based polymeric system mimicking one of the aforementioned polymers, other polymeric materials, other lightweight elastomeric, thermoplastic or thermoset materials, and combinations thereof.).
Regarding claim 9, Thurman discloses wherein the frame is made of either polyethylene (PE) or ethylene-vinyl acetate (EVA) copolymer, and the two surface layers are made of either a carbon fiber or a glass fiber (see at least [0082] ach of the different multilevel cellular layers may be formed from a material such as polypropylene, polyurethane, polyester, thermoplastic polyurethane (TPU), polyamide, other rigid polymer or glass/carbon filled polymer composite.).
Regarding claim 10, Thurman discloses wherein further comprising a grip body, the grip body being formed by extending longitudinally or by connecting longitudinally from a bottom side of the frame of the plate body, the grip body being further assembled with a handle, and the handle being made of a synthetic rubber (see at least Fig. 26 or 36A, handle 30 [0206] As should be appreciated, handle 4230 may have a separately attached outer grip in the form of an outer wrap or sleeve of a gripping material such as leather, synthetic leather, rubber, synthetic rubber, an elastomeric material or other material.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art generally refers to pickleball paddles or paddle rackets including methods and apparatus of construction and design.
U.S. Publication 2022/0032141 A1 - A pickleball paddle. The paddle includes a ball striking portion, or head, and a handle. A first planar face resides on a first side of the head, and a second planar face resides on a second side of the head opposite the first side. The paddle also includes a transition portion comprising a frame. In one aspect, the frame comprises two members that extend into the handle, and that also extend up to the head and form a hoop around the head. Preferably, the frame forms an open throat at the transition section, between the two frame members. The first planar face has a control response and a power response, while the second planar face also has a control response and a power response. In one arrangement, the control response of the first face is greater than the control response of the second face.
U.S. Publication 2023/0149784 A1 - A lightweight paddle capable of improving surface flatness includes a paddle body and a handle connected to the paddle body. The paddle body includes a substrate layer and two face plates. The substrate layer is formed with a groove. An elastic member is embedded in the groove. When the two face plates are glued to the substrate layer, the groove of the substrate layer provides a deformation space for the elastic member, which can make the outer surface of the elastic member flush with the surface of the substrate layer. The overall weight of the product can be reduced effectively, so the paddle is more lightweight.
U.S. Publication 2017/0021247 A1 - Certain embodiments of the present disclosure describe a paddle that may be used for racquet sports. The paddle includes a handle and a blade portion. The blade portion includes a core layer that is formed from at least two different materials. The density, rigidity, and location of the materials used to form the core layer may be altered to provide the paddle with desired playing characteristics.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DYLAN C WHITE whose telephone number is (571)272-1406. The examiner can normally be reached M-F 7:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached at (571)272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DYLAN C WHITE/Primary Examiner, Art Unit 3625 February 21, 2026