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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the “primary hitting surface” as described in the specification. Figure 1 generally shows a pickleball paddle with a paddle face, but does not depict “a primary hitting surface comprising of a smaller surface area than a remaining area of the paddle”. Reference number 102 in Figure 1, which is reproduced below, points to a face of the paddle, but not to a defined “primary hitting surface” with a smaller surface area than a remaining area of the paddle.
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Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 6 is objected to because of the following informalities: In line 2 it appears that “rang” should read –range--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-6 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.
In claim 1, lines 4-5 it is unclear what the limitation “comprises of a narrow composition” means. Accordingly, the limitation is indefinite and the broadest reasonable interpretation has been applied to the limitation. Further, the term “narrow” in claim 1 is a relative term which renders the claim indefinite. The term “narrow” 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. The metes and bounds of “narrow” are unclear. Accordingly, the broadest reasonable interpretation has been
applied to the limitation.
The term “primary” in claims 1 and 3 is a relative term which renders the claim indefinite. The term “primary” 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. The metes and bounds of the “primary hitting surface” are unclear. What constitutes a primary hitting surface is open to a person’s opinion that thus indefinite. Note that the applicant has failed to establish any structural difference between the “primary hitting surface” and the remaining area of the paddle. Consequently, the broadest reasonable interpretation has been applied to the limitation.
The term “optimal” in claim 3 is a relative term which renders the claim indefinite. The term “optimal” 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. The metes and bounds of “optimal” are unclear. What constitutes “optimal” is open to a person’s opinion that thus indefinite. Consequently, the broadest reasonable interpretation has been applied to the limitation.
In claim 5, it is unclear how a pickleball paddle can have a negative diameter. Thus, the broadest reasonable interpretation has been applied to the limitation.
In claim 6, line 1 the limitation “comprises of at length” is unclear and indefinite.
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) 1 and 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haut (US2023/0293961A1) in view of Beazer (US2025/0375679A1).
With respect to claim 1, Haut teaches a pickleball training system comprising: a paddle (100) comprising: a handle (103); a midsection (102/107), wherein the midsection is thinner than the handle and comprises of a narrow composition (figures 1-7).
With respect to claim 1, Haut does not teach a primary hitting surface comprising of a smaller surface area than a remaining area of the paddle.
However, Beazer teaches a primary hitting surface (point of impact) comprising of a smaller surface area than a remaining area of the paddle (figures 1-8; and paragraphs 43-60). Note that the point of impact of a ball having the size(s) described by Beazer on the surface(s) of the paddles described by Beazer is intrinsically going to be a smaller area than a remaining area of the paddle.
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the smaller paddle playing surface of Beazer on the paddle of Haut in order to force the trainee to focus on eye-hand coordination because the area for impacting the ball is considerably less than that on a conventional racket. Thus, after considerable practice with the pickleball training paddle, the trainee is trained to better focus on the ball hitting the paddle and is more likely to hit the ball with the center part of the regular pickleball paddle rather than along one of the edges.
With respect to claim 3, Beazer teaches wherein the primary hitting surface (a point of impact near the center of the paddle playing surface) is centrally located (broadest reasonable interpretation) on the paddle optimal for returning a ball (figures 1-8; and paragraphs 43-60).
With respect to claim 4, Beazer teaches a sweet spot in the primary hitting surface, wherein the sweet spot is centrally located (broadest reasonable interpretation) to provide for increased focus and difficulty of returning the ball (paragraphs 46-47).
With respect to claim 5, Beazer teaches that the paddle has a width of 5 to 6.5 inches (paragraphs 7, 43, and 45), but fails to explicitly teach that the paddle comprises of a −4.25 inch diameter at its widest width. However, it is the examiner’s position that the width of the paddle is merely an obvious design choice. The artisan would have been motivated to use a width of 4.25 inches or less in order to increase the difficulty of the training paddle and aid the player in developing the desired level of eye-hand coordination.
With respect to claim 6, Beazer teaches a pickleball paddle with a length within a range of 12 inches long to 13.75 inches long (paragraph 5). It is the examiner’s position that it would have been obvious to utilize the length of a convention pickleball paddle on the smaller diameter paddle of Beazer in order to form a paddle with the desired length.
Claim(s) 1 and 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marvin (US2017/0021247A1) in view of Haut (US2023/0293961A1).
With respect to claim 1, Marvin teaches a pickleball training system comprising: a paddle (50) comprising: a handle (30); and a primary hitting surface (central portion 54) comprising of a smaller surface area than a remaining area of the paddle (figures 2 and 5A).
With respect to claim 1, Marvin does not a midsection, wherein the midsection is thinner than the handle and comprises of a narrow composition.
However, Haut teaches a midsection (102/107), wherein the midsection is thinner than the handle and comprises of a narrow composition (figures 1-7).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the narrow midsection of Haut on the paddle of Marvin in order to create a place to rest one's finger, making for a more comfortable and natural feel.
With respect to claim 3, Marvin teaches wherein the primary hitting surface (central portion 54) is centrally located (broadest reasonable interpretation) on the paddle optimal for returning a ball (figure 5A; and paragraph 32).
With respect to claim 4, Marvin teaches a sweet spot in the primary hitting surface, wherein the sweet spot (central portion 54) is centrally located (broadest reasonable interpretation) to provide for increased focus and difficulty of returning the ball (figure 5A; and paragraphs 27 and 32).
With respect to claim 5, Marvin teaches that the combined length and width of a paddle cannot exceed 24 inches (paragraph 19), but fails to explicitly teach that the paddle comprises of a −4.25 inch diameter at its widest width. However, it is the examiner’s position that the width of the paddle is merely an obvious design choice. The artisan would have been motivated to use a width of 4.25 inches or less in order to form a paddle with the desired width.
With respect to claim 6, Marvin teaches the combined length and width of a paddle cannot exceed 24 inches (paragraph 19), but fails to explicitly teach a pickleball paddle with a length within a range of 12 inches long to 13.75 inches long (paragraph 5). However, it is the examiner’s position that the length of the paddle is merely an obvious design choice. The artisan would have been motivated to use a length within a range of 12 inches long to 13.75 inches long in order to form a paddle with the desired length.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haut and Beazer as applied to claim 1 above, and further in view of Franco et al. (CA-2399354 A) (hereafter Franco).
With respect claim 2, Haut and Beazer do not teach wherein the paddle comprises of a solid piece of textured plastic with wood-grain style texture.
However, Franco teaches a solid piece of textured plastic with wood-grain style texture (figure 1; and paragraphs 8-11 and 16-21).
At the time of filing the claimed invention it would have been obvious to form the collective paddle of Haut and Beazer from a solid piece of textured plastic with wood-grain style texture as taught by Franco in order to form a paddle that is resistant to humidity and heat, therefore being suitable for indoor and outdoor applications, does not chip when cut and has a high impact strength, resistant to UV, is dimensionally stable, does not crack or scratch and requires no maintenance, is easy to clean when necessary to do so, and has the appearance of wood.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marvin and Haut as applied to claim 1 above, and further in view of Franco et al. (CA-2399354 A) (hereafter Franco).
With respect claim 2, Marvin and Haut do not teach wherein the paddle comprises of a solid piece of textured plastic with wood-grain style texture.
However, Franco teaches a solid piece of textured plastic with wood-grain style texture (figure 1; and paragraphs 8-11 and 16-21).
At the time of filing the claimed invention it would have been obvious to form the collective paddle of Marvin and Haut from a solid piece of textured plastic with wood-grain style texture as taught by Franco in order to form a paddle that is resistant to humidity and heat, therefore being suitable for indoor and outdoor applications, does not chip when cut and has a high impact strength, resistant to UV, is dimensionally stable, does not crack or scratch and requires no maintenance, is easy to clean when necessary to do so, and has the appearance of wood.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KILEY SHAWN STONER whose telephone number is (571)272-1183. The examiner can normally be reached on Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KILEY S STONER/ Primary Examiner, Art Unit 1735