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
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.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP4778216B2 (hereinafter referred as “JP”).
As per claim1, JP di a racket frame (racket 10; Figs. 1-14; pages 1-13 of the machine translation) comprising: a grip portion (15) ; a shaft portion connected to the grip portion (14)(Fig. 1; page 6, 3rd par.), ; and a face portion connected to the shaft portion (head portion 12)(Fig. 1; page 6, 3rd par.), wherein the face portion, the shaft portion, and the grip portion are arranged to be aligned in a first direction (figs. 1, 6 and 10-13), the face portion comprising an elliptical annular shape in plan view with a circumferential direction that extends along the elliptical annular shape of the face portion (Figs. 1, 6 and 10-13), the face portion includes an inner circumferential surface on an inner side end of the elliptical annular shape of the face portion, an outer circumferential surface on an outer side end of the elliptical annular shape of the face portion (Figs. 1, 6 and 10-13), a tip end portion located on a side opposite to the grip portion in the first direction(Figs. 1, 6 and 10-13), a rear end portion located on a side of the grip portion in the first direction(Figs. 1, 6 and 10-13), and a side end portion located in a second direction orthogonal to the first direction(Figs. 1, 6 and 10-13), the face portion is provided with a plurality of through holes in a circumferential direction of the face portion, each of the plurality of through holes penetrates the inner circumferential surface and the outer circumferential surface of the face portion (plurality of strings holes 18 and including plurality of strings holes 19 with outer hole 19a and inner hole 19b; and plurality of holes 20 with outer holes 20a and inner holes 20b)(Figs. 2, and 9 in conjunction to at least Figs. 1 and 10-13; page 6, 3rd-page 7, 4th par.) , the plurality of through holes include a first hole a second hole, a third hole, and a fourth hole (Figs. 2 and 9; note the examiner’s markings hereinafter in conjunction to Fig. 9), the first hole and the second hole adjacent to each other (Figs. 2 and 9 (as marked)) , the third hole and the fourth hole adjacent to each other(Figs. 2 and 9 (as marked)), and the third hole adjacent to the second hole (Figs. 2 and 9 (as marked)), the first hole and the second hole are arranged in the tip end portion (Figs. 2 and 9 (as marked)) the second hole and the third hole are inclined such that a distance therebetween from the outer circumferential surface toward the inner circumferential surface(Figs. 2 and 9 (as marked)), the third hole and the fourth hole are arranged in the tip end portion and are inclined such that a distance therebetween from the outer circumferential surface toward the inner circumferential surface(Figs. 2 and 9 (as marked)), and the fourth hole is arranged on a side opposite to the second hole with respect to the third hole(Figs. 2 and 9 (as marked)).
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JP is not specific regarding the second hole and the third hole are arranged such that a distance therebetween becomes longer from the outer circumferential surface toward the inner circumferential surface, the third hole and the fourth hole are arranged such that a distance therebetween becomes shorter from the outer circumferential surface toward the inner circumferential surface.
Although JP is not specific regarding such arrangements between the second and the third hole and between the third and fourth hole, it is noted that it has been held that claims which read on the prior art except with regard to the position of the
elements were held unpatentable because shifting the position of the elements would not have modified the operation of the device; see In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950);In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). In this case, such arrangements of the second-third holes and the third-fourth holes would have not changed the function of JP’s holes to receive strings-strings grommet (i.e., protective material 31) to string the racket while the strings holes are at an angle in relative to the circumferential surface of the face. For example, page 8, 5th par.” the angle difference between the parallel string hole 19 and the inclined string hole 20 is a slight difference. Similarly, the string insertion hole through which the horizontal string 22 is inserted. 18, the angle difference between the parallel string hole 19 and the inclined string hole 20 is a slight difference.” . Therefore, 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 to form JP’s second hole and the third hole are arranged such that a distance therebetween becomes longer from the outer circumferential surface toward the inner circumferential surface, the third hole and the fourth hole are arranged such that a distance therebetween becomes shorter from the outer circumferential surface toward the inner circumferential surface for the reason that a skilled artisan would have been motivated merely as a matter of obvious engineering choice that would have not changed the function of the string holes to be drilled in an angle relative to circumferential surface to provide stringing means to the racket.
As per claim 3, with respect to wherein, with respect to a center line of the face portion extending along the first direction, an absolute value of an angle of inclination of the first hole is less than or equal to an absolute value of an angle of inclination of the second hole, and an absolute value of an angle of inclination of the third hole is less than or equal to an absolute value of an angle of inclination of the fourth hole, as marked above with respect to holes “1”-“4”, the examiner construed such claimed absolute angles, at least as “less than”.
As per claims 4, 5, with respect to wherein, with respect to the center line, the absolute value of the angle of inclination of the first hole is less than the absolute value of the angle of inclination of the second hole, and the absolute value of the angle of inclination of the third hole is less than the absolute value of the angle of inclination of the fourth hole (claim 4), and wherein the angle of inclination of each of the first hole and the third hole is more than or equal to 2° and less than or equal to 4° in a counterclockwise direction, and the angle of inclination of each of the second hole and the fourth hole is more than or equal to 3° and less than or equal to 5° in a clockwise direction (claim 5), although JP is not specific regarding such angles as claimed, it is noted that it has been held that claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions. Therefore, 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 to form JP’s with such angles as claimed since it has been held 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”
In 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). In this case the device of Yamanaka would have not operate differently with the dimension as claimed and would function appropriately with the claimed dimension.
Lastly, if there is any doubt regarding the examiner’s interpretations regarding “wherein, with respect to a center line of the face portion extending along the first direction, an absolute value of an angle of inclination of the first hole is less than or equal to an absolute value of an angle of inclination of the second hole, and an absolute value of an angle of inclination of the third hole is less than or equal to an absolute value of an angle of inclination of the fourth hole, as marked above with respect to holes “1”-“4”, the examiner construed such claimed absolute angles, at least as “less than (e.g., claim 3), such modification would have been obvious for similar reasons discussed above with respect to claims 4 and 5.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 3-5 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.K/Examiner, Art Unit 3711 9/8/2026 /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711
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