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.
Claims 9-10 have been cancelled.
Claims 1-8 and 11-22 have been examined.
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive.
Applicant argues:
Obviousness requires more than showing that individual elements were known. There must be some motivation, suggestion or teaching of the desirability of making the specific combination. In re Kotzab, 217 F.3d 1365 (Fed. Cir. 2000). The outstanding claim rejections not only give Filippini too broad of a reading, but they also do not adequately explain why one would have modified Filippini's structure with the teachings of Nygren. Instead, the outstanding claim rejections use impermissible hindsight and Applicant's disclosure as a roadmap to arrive at the claimed invention, as previously set forth in prior responses.
In response to Applicant's argument that the Examiner' s conclusion of obviousness is based upon improper hindsight reasoning, "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). References are evaluated by what they suggest to one versed in the art, rather than their specific disclosures. In re Bozek, 163 USPQ 545 (CCPA 1969).
In this case, as set forth by Applicant, the instant invention is drawn to providing a paddle with a removable surface plate and providing said plate with a textured surface.
As set forth in the outstanding rejection, Nygren teaches a paddle with a protective shield to prevent damage to the gaming paddles during use and that the shield is replaceable, effectively extending the life of the paddle by protecting the paddle from wear and damage (Par. 0006). Therefore the Nygren paddle saves the consumer money and reduces waste in landfills in a similar fashion as the instant invention.
The teaching reference, Chiang, discloses that surface grit can be provided on a face of a paddle ”thereby increasing the friction between the first surface layer (or the second surface layer) and the ball, raising the rotation speed of the ball, and enhancing the ball hitting feeling”. Therefore, one of ordinary skill in the art would recognize that a paddle, such as the one disclosed by Nygren, can be provided with an enhancement, such as surface texture as disclosed in Chiang, in a similar fashion as the instant invention and thus explicitly sets forth an articulated reason as to why one skilled in the art would be motivated to combine the teachings of the prior art
Applicant further argues:
Applicant further reiterates that the claimed invention addressed a problem not identified or appreciated by the cited art: the rapid deterioration of the textured surface of a pickleball paddle. A patentable invention may reside in the discovery of the source of a problem, even where the remedy appears straightforward only after the problem is recognized. In re Sponnoble, 405 F.2d 578, 585 (CCPA 1969). "This is part of the "subject matter as a whole" which should always be considered in determining the obviousness of an invention under 35 U.S.C. § 103." Id. None of the cited references recognized the problem solved by the claimed invention, namely, the rapid deterioration of the textured surface of a pickleball paddle. Instead, both Filippini and TW '119 are concerned with variable surface texture to achieve different levels of spin. And Nygren is merely a protective vinyl cover that degrades the performance of a paddle. One skilled in the art, searching for a solution to the problem of rapidly degrading surface texture, would not seek to combine the teachings of Filippini, TW '119, and Nygren at least because of the disparate problems that each of these references is trying to solve. For at least these reasons, Applicant respectfully requests that the rejection of the pending claims be withdrawn.
Examiner respectfully disagrees and reminds Applicant that the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983).
In this case, Nygren expressly addresses the aforementioned problems of degradation of the paddle faces by providing a replaceable face/shield “to protect the gaming paddle from wear and damage” (Par. 0035).
Applicant finally argues:
To overcome an obviousness rejection, Applicant may rely on evidence of secondary considerations, such as commercial success of the invention. (MPEP 2141, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966)). Further, the Applicant has the burden of proof of establishing a nexus between the claimed invention and the evidence of commercial success. (MPEP 716.03)
After the priority filing of the present application, Applicant has since launched its commercial product that embodies the claimed invention (see https://www.reloadpickleball.com), on or about July 3, 2024. As set forth in the attached inventor affidavit, sales have been steady, and feedback extremely positive based on the feature of a removable playing surface with surface texture, or grit. Since launch of the commercial product, purchasers of the playing implement have overwhelmingly provided feedback that the textured surface (i.e., "grit") with a removably attached surface plate (i.e., replaceable surface) is a product differentiator that has never been available in any prior art pickleball paddles.
Examiner initially notes that In ex parte proceedings before the Patent and Trademark Office, it was held that an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be given any weight. See In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir. 1996) (Inventor’s opinion as to the purchaser’s reason for buying the product is insufficient to demonstrate a nexus between the sales and the claimed invention.). Merely showing that there was commercial success of an article which embodied the invention is not sufficient. Ex parte Remark, 15 USPQ2d 1498, 1502-02 (Bd. Pat. App. & Inter. 1990). See also Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (commercial success may have been attributable to extensive advertising and position as a market leader before the introduction of the patented product); In re Fielder, 471 F.2d 690, 176 USPQ 300 (CCPA 1973) (success of invention could be due to recent changes in related technology or consumer demand; here success of claimed voting ballot could be due to the contemporary drive toward greater use of automated data processing techniques); EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985) (evidence of licensing is a secondary consideration which must be carefully appraised as to its evidentiary value because licensing programs may succeed for reasons unrelated to the unobviousness of the product or process, e.g., license is mutually beneficial or less expensive than defending infringement suits); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986) (Evidence of commercial success supported a conclusion of nonobviousness of claims to an immunometric "sandwich" assay with monoclonal antibodies. Patentee’s assays became a market leader with 25% of the market within a few years. Evidence of advertising did not show absence of a nexus between commercial success and the merits of the claimed invention because spending 25-35% of sales on marketing was not inordinate (mature companies spent 17-32% of sales in this market), and advertising served primarily to make industry aware of the product because this is not kind of merchandise that can be sold by advertising hyperbole.).
Further, aAn affidavit or declaration attributing commercial success to a product or process "constructed according to the disclosure and claims of [the] patent application" or other equivalent language does not establish a nexus between the claimed invention and the commercial success because there is no evidence that the product or process which has been sold corresponds to the claimed invention, or that whatever commercial success may have occurred is attributable to the product or process defined by the claims. Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App. & Inter. 1988). MPEP 716.03(a),
Examiner has considered the affidavit and concluded that Applicants statements in the affidavit regarding positive reviews, general references to replaceable grit, and quotes from various podcasts is insufficient to prove direct correlation to the claimed invention.
Furthermore, Examiner points to MPEP 716.01(d) which states: "Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. V. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., V. The Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997) (showing of unexpected results and commercial success of claimed ibuprofen and pseudoephedrine combination in single tablet form, while supported by substantial evidence, held not to overcome strong prima facie case of obviousness). See In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
In this case, Examiner considers the combination of Nygren and Chiang to establish a strong case of obviousness based on the combined teachings, which is sufficient to outweigh the evidence of obviousness (e.g. purported commercial success based on increased sales and positive reviews).
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
THIS ACTION IS MADE FINAL. 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 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 5/11/2026
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