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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/20/2025 has been entered.
Claims 9-10 have been cancelled.
Claims 1-8 and 11-22 have been examined.
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive.
Initially, regarding Applicant’s argument that referred to sections of the Filippini reference are not included in the provisional application, Examiner notes that, as advanced in the rejection below, the Filippini provisional application provides proper disclosure of the claimed limitations as previously presented. More specifically, Paragraphs 0012 and 0021 of the provisional application explicitly teach the provision of an “applicable textured surface face/skin 200…[which] may be removed and replaced with a new textured face/skin 200 without having to replace the entire paddle 100”. The previous Office Action, as well as the instant Office Action, both refer to the applicable paragraphs in the provisional application. Therefore, the subject matter therein qualifies as prior art.
Further, regarding Applicant’s position that the Filippini reference being nonenabling, Examiner respectfully disagrees and again points to MPEP 716.07 which states: “Since every patent is presumed valid (35 U.S.C. 282 ), and since that presumption includes the presumption of operability (Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C. Cir. 1935), examiners should not express any opinion on the operability of a patent. Affidavits or declarations attacking the operability of a patent cited as a reference must rebut the presumption of operability by a preponderance of the evidence. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). Since in a patent it is presumed that a process if used by one skilled in the art will produce the product or result described therein, such presumption is not overcome by a mere showing that it is possible to operate within the disclosure without obtaining the alleged product. In re Weber, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969). It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker. The failures of experimenters who have no interest in succeeding should not be accorded great weight. In re Michalek, 162 F.2d 229, 74 USPQ 107 (CCPA 1947); In re Reid, 179 F.2d 998, 84 USPQ 478 (CCPA 1950)”.
The statements by Applicant regarding the brief/fleeting mention of a removable and replaceable face/skin and the disclosures purported failure to teach or enable the removal and replacement does not provide the required preponderance of evidence that it would not be within the skill of one of ordinary skill in the art to obtain the desired cured textured face/skin through routine experiments and adaptations.
Applicant further argues that:
Nygren has a limited scope of providing a protector shield and that the protector shield is not a performance enhancing feature and teaches away from the claimed invention
The rapid loss of surface texture and disposal issues of entire pickleball paddles was a problem that was identified by the inventors of the present application, which is not identified in any of the cited prior art references
Examiner respectfully disagrees and reminds applicant that it has been held that simply that there are differences between two references is insufficient to establish that such references "teach away" from any combination thereof. In re Beattie, 974 F.2d 1309, 1312-13, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) and also that “We will not read into a reference a teaching away from a [proposed modification when] no such language exists” See Dystar Textilfarben GmbH& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,1364 (Fed Cir. 2006).
Furthermore, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); see Ex parte Wright Appeal 2006-000003, slip op. at 8 (BPAI Apr. 6, 2006) (informative opinion); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Finally, in response to Applicant’s argument that the Examiner’s conclusion of obviousness is based upon improper hindsight reasoning, Applicant is reminded that it has also been held that "it should be too well settled now to require citation or discussion that the test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
In this case, the Provisional Application of Filippini explicitly discloses the identification of the problem of a “worn surface texture [which] can be removed and replaced with a new texture without having to replace the entire paddle” (Par. 0012). Nygren, as advanced in the rejection below, teaches a similar pickleball playing implement having first and second surface layers (150) secured to a paddle (120) such that an outer surface of such first and second surface layers are removably attached using a pressure sensitive adhesive (Par. 0019) which allows the surface layer to be removed from the paddle and replaced with a substitute layer (Par. 0005 and 0047). One of ordinary skill in the art would recognize the advantage of applying such a pressure sensitive adhesive to alternative removable layers, such as the textured skin of Filippini, to allow the skin to be easily removed and replaced. In other words, the knowledge of removable, textured skins and pressure sensitive adhesives being applied to removable pickleball paddle skins was known in the art and not gleaned only from applicant’s disclosure.
Applicant further argues:
Applicant disagrees that the Hammet reference actually discloses a unidirectional layer as that term is known in the art. The Hammet reference discusses in paragraph [0021] "The weave of the second layer 18 has its unidirectional cloth oriented ..." (emphasis added) and also states in several locations "unidirectional woven,” which are contradictory statements. Unidirectional layers (or plies) have all fibers oriented in the same direction, while woven layers/plies have their fibers oriented in different directions, typically 90 degrees relative to each other. Applicant thus respectfully disagrees that Hammet actually discloses a true unidirectional layer of fibers
Examiner respectfully disagrees and points to Applicants disclosure (Par. 0013) which explicitly states that “the layers of carbon fiber reinforced polymers are unidirectional; the layers of carbon fiber reinforced polymers are woven”. Accordingly, it is unclear as to how the unidirectional woven carbon fiber layer of Hammet has “all fibers oriented in the same direction, while woven layers/plies have their fibers oriented in different directions”, but the unidirectional carbon fiber layer of the instant device (which is explicitly disclosed as being woven) strictly has all fibers oriented in the same direction.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4, 5, 12, 13, 15, 16, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Filippini (Provisional Application 63/401803 as provided by Applicant) in view of Nygren (US Patent Application Publication 2022/0266106).
1. Filippini discloses a playing implement for a paddle (100) comprising:
a surface plate (200) having an inner side and an outer side, wherein the surface plate is comprised of at least one layer of material having a textured surface on the outer side (Par. 0012 and 0021);
wherein said surface plate is configured to removably attach the surface plate to a paddle (Par. 0012 and 0021) and
wherein the surface plate is comprised of at least one layer of material having a textured surface on the outer side (Par. 0012 and 0021);
wherein the outer side comprises a playing surface and wherein the outer side opposes the inner side (Fig 2).
However, Filippini does not explicitly disclose at least one of a differential adhesive or a pressure sensitive adhesive disposed on the inner side of the surface plate.
Nygren teaches a similar pickleball playing implement having first and second surface layers (150) secured to a paddle (120) such that an outer surface of such first and second surface layers a are removably attached using a pressure sensitive adhesive (Par. 0019) which allows the surface layer to be removed from the paddle and replaced with a substitute layer (Par. 0005 and 0047). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the surface plates of Filippini to be removably attached using a pressure sensitive adhesive as taught by Nygren with a reasonable expectation of success to provide the ability to replace the paddle surfaces without having to replace the whole paddle, thus extending the life thereof.
2 and 4. Filippini discloses the playing implement significantly as claimed, but do not disclose wherein the surface plate further comprises a tab disposed at a lower end portion of the surface plate.
Nygren teaches a similar pickleball playing implement having first and second surface layers (150) covering substantially an entire surface of a paddle (120) including a neck/tab portion (115) such that an outer surface of such first and second surface layers a are removably attached using a pressure sensitive adhesive (Par. 0019) which allows the surface layer to be removed from the paddle and replaced with a substitute layer (Par. 0005 and 0047). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the surface plates of Filippini to be larger and include a tab portion as taught by Nygren with a reasonable expectation of success to completely cover the playing surface of the panel.
12 and 21. Filippini discloses a paddle comprising:
a core portion (210);
a handle (140 ) connected to the core portion; and
a surface plate (200) having an inner side and an outer side, wherein the surface plate is comprised of at least one layer of material having a textured surface on the outer side (Par. 0029);
wherein said surface plate is configured to removably attach the surface plate to a paddle (Par. 0019 and 0021), and
wherein the surface plate is comprised of at least one layer of material having a textured surface on the outer side
wherein the outer side comprises a playing surface and wherein the outer side opposes the inner side (Fig 2).
However, Filippini does not explicitly disclose at least one of a differential adhesive or a pressure sensitive adhesive disposed on the inner side of the surface plate.
Nygren teaches a similar pickleball playing implement having first and second surface layers (150) secured to a paddle (120) such that an outer surface of such first and second surface layers a are removably attached using a pressure sensitive adhesive (Par. 0019) which allows the surface layer to be removed from the paddle and replaced with a substitute layer (Par. 0005 and 0047). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the surface plates of Filippini to be removably attached using a pressure sensitive adhesive as taught by Nygren with a reasonable expectation of success to provide the ability to replace the paddle surfaces without having to replace the whole paddle, thus extending the life thereof.
13 and 15. Filippini discloses the playing implement significantly as claimed, but do not disclose wherein the surface plate further comprises a tab disposed at a lower end portion of the surface plate.
Nygren teaches a similar pickleball playing implement having first and second surface layers (150) covering substantially an entire surface of a paddle (120) including a neck/tab portion (115) such that an outer surface of such first and second surface layers a are removably attached using a pressure sensitive adhesive (Par. 0019) which allows the surface layer to be removed from the paddle and replaced with a substitute layer (Par. 0005 and 0047). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the surface plates of Filippini to be larger and include a tab portion as taught by Nygren with a reasonable expectation of success to completely cover the playing surface of the panel.
16. Filippini discloses the playing implement of claim 1, wherein the textured surface of the at least one layer of material is provided by at least one of carbon fiber, graphite, fiberglass, Kevlar, and composite materials (Par. 0012 and 0021).
Claims 5, 6, 8, 11, 16, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Filippini in view of Nygren as applied to Claims 1, 2, 4, 5, 12, 13, 15, 16, and 21 above, and further in view of Li et al (WO 2024/112661 A2).
Examiner Note: With regards to Claims 5 and 16 as advanced above, Examiner maintains the position that the textured surface of Filippini is provided by the material of the textured skin. If, arguendo, this is not taught (a position not taken by the Examiner), Li et al teach this feature as follows:
As to Claims 5, 6, 8, 16, 17, and 19. Filippini discloses the playing implement significantly as claimed, but do not disclose wherein the textured surface of the at least one layer of material is provided by layers of carbon fiber reinforced polymers that are woven.
Li et al teach a similar pickleball playing implement having playing surfaces (112, 118) on either side of a paddle having a roughened texture thereon which “can help a player generate spin, and create an increased amount of angular momentum resulting in the ball travelling with higher angular velocities” (Par. 00059). Li et al further teach that this texture may be formed on the playing surfaces “by making the outer surfaces 111, 119 from woven, high-grade raw carbon fiber” (Par. 00057). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the removable surfaces of Filippini to have the texture provided by woven carbon fiber as taught by Li et al to simply create a roughened surface texture to allow a player to generate spin on a ball.
As to Claims 11 and 20, Filippini discloses the playing implement significantly as claimed, but do not disclose wherein the textured surface is created by a peel-ply film.
Li et al teach a similar pickleball playing implement having playing surfaces (112, 118) on either side of a paddle having a roughened texture thereon which “can help a player generate spin, and create an increased amount of angular momentum resulting in the ball travelling with higher angular velocities” (Par. 00059). Li et al further teach that this texture may be formed on the playing surfaces “by applying an additional layer of a fabric material, such as a peel ply fabric, on the outer surfaces 111, 119. In embodiments, the peel ply fabric is a woven fabric, nylon, or polyester, which, during the cure cycle of the manufacturing process, absorbs some of the matrix epoxy resin, for instance, and becomes an integral part of the laminate of each layer 112, 118. Following the cure cycle, the peel ply fabric is peeled off or otherwise removed from the first layer 112 and the second layer 118, which fractures the resin between the peel ply fabric and the outer surfaces 111, 119, respectively, and which leaves a fresh, clean, roughened surface of matrix epoxy resin (Par. 00057). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the removable surfaces of Filippini to have the texture applied thereon via a peel-ply film as taught by Li et al to simply create a roughened surface texture to allow a player to generate spin on a ball.
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Filippini in view of Nygren and Li et al as applied to Claims 5, 6, 8, 11, 16, 17, 19, and 20 above, and further in view of Hammet (US Patent Application Publication 2024/0382812).
Examiner note: Applicant’s first disclosure of the carbon fiber reinforced polymers being unidirectional was set forth in parent application 18/217617 (with a priority date of 7/3/2023) and therefore the provisional application of the Hammet publication predates this disclosure and is effective prior art.
Filippini in view of Nygren and Li et al disclose the playing implement significantly as claimed, but do not disclose wherein the textured surface of the at least one layer of material is provided by layers of unidirectional carbon fiber reinforced polymers.
Hammet discloses a similar pickleball paddle having a surface layer (16) comprising unidirectional woven carbon fiber. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the surface layer of Filippini in view of Nygren and Li et al to have the carbon fiber reinforced polymers to be unidirectional as taught by Hammet to provide desired strength, weight, and texture to the surface of the paddle skin.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Filippini (Provisional Application 63/401803 as provided by Applicant) in view of Nygren (US Patent Application Publication 2022/0266106) and Hammet (US Patent Application Publication 2024/0382812).
22. Filippini discloses a playing implement for a paddle (100) comprising:
a surface plate (200) having an inner side and an outer side, wherein the surface plate is comprised of at least one layer of material having a textured surface on the outer side (Par. 0012 and 0021),
wherein said surface plate is configured to removably attach the surface plate to a paddle (Par. 0012 and 0021), and
wherein the outer side comprises a playing surface and wherein the outer side opposes the inner side (Fig 2).
However, Filippini does not explicitly disclose at least one of a differential adhesive or a pressure sensitive adhesive disposed on the inner side of the surface plate.
Nygren teaches a similar pickleball playing implement having first and second surface layers (150) secured to a paddle (120) such that an outer surface of such first and second surface layers a are removably attached using a pressure sensitive adhesive (Par. 0019) which allows the surface layer to be removed from the paddle and replaced with a substitute layer (Par. 0005 and 0047). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the surface plates of Filippini to be removably attached using a pressure sensitive adhesive as taught by Nygren with a reasonable expectation of success to provide the ability to replace the paddle surfaces without having to replace the whole paddle, thus extending the life thereof.
Furthermore, Filippini does not explicitly disclose wherein the textured surface of the at least one layer of material is provided by layers of unidirectional carbon fiber reinforced polymers.
Hammet discloses a similar pickleball paddle having a surface layer (16) comprising unidirectional woven carbon fiber. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the surface layer of Filippini to have the carbon fiber reinforced polymers to be unidirectional as taught by Hammet to provide desired strength, weight, and texture to the surface of the paddle skin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA T KENNEDY whose telephone number is (571)272-8297. The examiner can normally be reached M-F 7a-4:30p MST.
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/JOSHUA T KENNEDY/Primary Examiner, Art Unit 3784 10/30/2025