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 .
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 12, 14-16, 18 and 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 and 16-19 of U.S. Patent No. 11,975,250 (hereinafter refers as ‘250) in view of Rettberg US 2006/0160640 (“Rettberg”).
Above claim 12, recites all the limitations of claim 16 of ‘250 namely, “A method for making a lacrosse stick, comprising: laying up composite material to form a handle portion having a rearward end portion and a forward end portion; attaching a first ply stackup to a first side of the forward end portion of the handle portion and a second ply stackup to a second side of the forward end portion of the handle portion, wherein the first and second ply stackups are stiffer than the composite material layup, and wherein the first ply stackup provides a first tab reinforcing member and the second ply stackup provides a second tab reinforcing member; further laying up the composite material around the first and second ply stackups to further form the handle portion and to form a stop member, a juncture, a first fork member, and a second fork member, wherein the first ply stackup defines a first tab of the first tab reinforcing member protruding from the first fork member in a forward direction away from the handle portion and the second ply stackup defines a second tab of the second tab reinforcing member protruding from the second fork member in the forward direction, wherein the first tab reinforcing member of the first ply stackup extends from, and is enclosed within, the handle portion, the juncture, and the first fork member until protruding from the first fork member to define the first tab wherein the second tab reinforcing member of the second ply stackup extends from, and is enclosed within, the handle portion, the juncture, and the second fork member until protruding from the second fork member to define the second tab, applying heat and pressure to the composite material layups to integrally form the handle portion, the stop member, the juncture, the first fork member, and the second fork member into a juncture-handle portion around the first and second ply stackups, wherein the first tab reinforcing member of the first ply stackup and the second tab reinforcing member of the second ply stackup are components separate from the integrally formed handle portion, stop member, juncture, first fork member, and second fork member; placing the juncture-handle portion in a mold that defines a cavity corresponding to a head portion of the lacrosse stick, wherein the cavity encloses the first tab and the second tab; placing moldable material into the cavity to form the head portion, wherein the moldable material flows around and attaches to the first tab and the second tab, wherein the molded material of the head portion is disposed adjacent to the raised edge and defines a second portion of the interlocking connection, wherein the interlocking connection connects the head portion and the juncture-handle portion; and removing the attached head portion and the juncture-handle portion from the mold”, except ,wherein a distal forward end of the first fork member defines a raised edge that protrudes from a surface of the first tab and defines a first portion of an interlocking connection.
However, Rettberg discloses wherein a distal forward end of a first fork member defines a raised edge that protrudes from a surface of a first tab and defines a first portion of an interlocking connection (construed as indention/s 14 and projection/s 16 of first member 20 (Figs. 1 and 2; [0021] and [0022]) to interlock with corresponding indention/s 28 and projection/s 26 of second member 30 (Figs. 3 and 4; [0023] and [0024]), to connect a lacrosse head thereto (Figs. 5-7; [0026]).
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 ‘250 wherein a distal forward end of the first fork member defines a raised edge that protrudes from a surface of the first tab and defines a first portion of an interlocking connection for the reason that a skilled artisan would have been motivated using known mechanical interlocking means to insure a firm connection thereto while forming the lacrosse head.
Claim 14 recite the same limitations as claim 17 of the ‘250.
Claim 15 recite the same limitations as claim 18 of the ‘250.
Claim 16 recite the same limitations as claim 19 of the ‘250.
Above claim 18, recites all the limitation of claim 1 of ‘250, namely” A lacrosse stick, comprising: a juncture-handle portion including: a throat member, a first fork member extending from the throat member in a forward direction, a second fork member extending from the throat member in the forward direction, a handle portion extending from the throat member in a rearward direction, and a first tab protruding beyond a distal forward end of the first fork member, wherein the first tab defines a first opening that extends through the first tab in a direction lateral to the forward direction, and a head portion made of a molded material and including: a first sidewall portion molded over the first tab and extending from the first fork member in the forward direction, a second sidewall portion extending from the second fork member in the forward direction, and a transverse wall portion connecting the first sidewall portion and the second sidewall portion opposite to the juncture-handle portion, wherein the molded material of the head portion is disposed inside the first opening of the first tab to provide a mechanical connection between the head portion and the juncture-handle portion, wherein the molded material of the head portion is disposed adjacent to the raised edge and defines a second portion of the interlocking connection, wherein the first portion of the interlocking connection is interlocked with the second portion of the interlocking connection, and wherein the head portion is more flexible than the juncture-handle portion”, except ,wherein the distal forward end of the first fork member defines a raised edge that protrudes from a surface of the first tab and defines a first portion of an interlocking connection.
However, Rettberg discloses wherein a distal forward end of a first fork member defines a raised edge that protrudes from a surface of a first tab and defines a first portion of an interlocking connection (construed as indention/s 14 and projection/s 16 of first member 20 (Figs. 1 and 2; [0021] and [0022]) to interlock with corresponding indention/s 28 and projection/s 26 of second member 30 (Figs. 3 and 4; [0023] and [0024]), to connect a lacrosse head thereto (Figs. 5-7; [0026]).
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 ‘250 and wherein the distal forward end of the first fork member defines a raised edge that protrudes from a surface of the first tab and defines a first portion of an interlocking connection for the same reasons discussed above.
Claim 19 recite the similar limitations as claim 9 of the ‘250.
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, 8-10 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rogers et al US 7,736,251 (“Rogers”) in view of Rettberg US 2006/0160640 (“Rettberg”).
As per claim 1, Rogers discloses a lacrosse stick (10)(Figs. 1-4; 3:11-6:32), comprising:
a juncture-handle portion (forked end 16 structure)(Figs. 1-3B; 3:47-4:26) including:
a throat member, a first fork member extending from the throat member in a forward direction, a second fork member extending from the throat member in the forward direction (forked end 16 comprising two tines 22a and 22b (i.e. first and second forked member)(Figs. 2A and 2B; 3:47-63); the forked and also define a throat member (52)(Figs. 3A and 3B; 4:12-33),
a handle portion extending from the throat member in a rearward direction (component 20 extending from base/shoulder 28/30 of the throat/end fork to receive handle, shaft 12)(Figs. 1-2B; 3:30-46), and a first tab protruding beyond a distal forward end of the first fork member wherein the distal forward end of the first fork member defines the first tab and defines a first portion of an interlocking connection (construed as any blunt ends 26a and 26b, protruding from each fork, 22a and 22, respectively)(Figs. 2A and 2B; 3:47-62; note Fig. 4 in conjunction to 5:6-19 as the tabs, ends 26a/b are providing an interlocking connection while the fork overmolded the head frame),
a head portion made of a molded material and including: a first sidewall portion molded over the first tab and extending from the first fork member in the forward direction, a second sidewall portion extending from the second fork member in the forward direction (head 18 with side walls 46)(Figs. 1-3B and 3:60-4:46) and the head is molded over the forks (22a-22b) and the tabs 26a-26b)(Fig. 4A; 5:6-20) ,and a transverse wall portion connecting the first sidewall portion and the second sidewall portion opposite to the juncture-handle portion (distal end 36;scoop)(Figs. 1 and 3A-4; 3:63-4:11); wherein the molded material of the head portion is disposed adjacent to the edge and defines a second portion of the interlocking connection (construed as the portion of head 18 to be interlocked with the fork 16-to- tabs 26a/26b)(Fig. 4; 5:6-20); and wherein the first portion of the interlocking connection (any one of the ends 26a/b of the fork16 ) is interlocked with the second portion (of the head frame 18) of the interlocking connection (Fig. 4);
wherein the juncture-handle portion and the head portion define a pocket frame having a front side and a rear side, wherein when the lacrosse stick is viewed from a side view with the front side of the pocket frame facing up, the edge of the first fork member and the molded material of the head portion meet at a seam that is disposed on at least one of an outside outwardly-facing surface of the pocket frame or an inside pocket-facing surface of the pocket frame and extends from the front side of the pocket frame to the rear side of the pocket frame to provide the interlocking connection on at least one of the outside outwardly -facing surface or the inside pocket-facing surface (note Fig. 4 in conjunction to 5:5:6+ as the frame 18 (forming the pocket of the lacrosse head) is position in such position and the seam formed therefrom (shown in deashed line in Fig. 4), and wherein the head portion is more flexible than the juncture-handle portion (note at least 1:53-2:31 (as the summary of the invention) as well as 3:47-4:11, 4:33-47 and 6:1-9 as the head is more flexible than the handle-juncture portion 16; note in particular 6:1-9 as the flexible material forming the head 18 comparing to the more stiffer material forming the fork end 16 (5:57-67).
Rogers is not specific regarding wherein the distal forward end of the first fork member defines a raised edge that protrudes from a surface of the first tab and defines a first portion of an interlocking connection.
However, Rettberg discloses wherein a distal forward end of a first fork member defines a raised edge that protrudes from a surface of a first tab and defines a first portion of an interlocking connection (construed as indention/s 14 and projection/s 16 of a first member 20 (Figs. 1 and 2; [0021] and [0022]) to interlock with corresponding indention/s 28 and projection/s 26 of a second member 30 (Figs. 3 and 4; [0023] and [0024]), to connect a lacrosse head thereto (Figs. 5-7; [0026]).
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 Rogers ‘ wherein the distal forward end of the first fork member defines a raised edge that protrudes from a surface of the first tab and defines a first portion of an interlocking connection for the reason that a skilled artisan would have been motivated using known mechanical interlocking means to insure a firm connection thereto while forming the lacrosse head.
Within the modified Rogers- Rettberg while the fork with the tabs (as taught by Rogers) defines a raised edge (as taught by Rettberg) the molded material of the head portion is disposed adjacent to the raised edge and defines the second portion of the interlocking connection.
As per claim 8, with respect to wherein the seam is disposed on both the outside outwardly-facing surface of the pocket frame and the inside pocket-facing surface of the pocket frame, note Rogers’ Fig. 4 as the connection of the fork 16/tabs26a/26b provides such a seam. Also, note Rettberg’s Figs. 5-7 as the connection of the first member 20 with the second member 30 via the tab’s raised edge formed an interlocking connection with a seam thereof.
As per claim 9, with respect to wherein the molded material of the head portion is flush with the raised edge at the seam to provide a smooth transition, note Rogers’ Fig. 4 as the connection of the fork 16/tabs26a/26b provides such smooth transition. Also, note Rettberg’s Figs. 5-7 as the connection of the first member 20 with the second member 30 via the tab’s raised edge formed smooth transition.
As per claim 10, with respect to wherein the interlocking connection comprises an interlock opening and an interlock projection, and wherein the raised edge of the first fork member defines on the juncture-handle portion one of the interlock opening or the interlock projection, and the molded material of the head portion defines on the head portion the other of the interlock opening or the interlock projection, within the modified Rogers by the teachings of Rettberg, as the tabs are with raises edge as projection 16 and 26 (i.e., interlocking projection) to be fit with complementary indentations 14 and 28 (i.e., interlocking opening; e.g., Rettberg’s Figs. 1-7),to overmolded the fork 16 with the frame head 18 (e.g., Rogers’ Fig.4), in such manner.
As per claim 18, Rogers discloses a lacrosse stick (10)(Figs. 1-4; 3:11-6:32), comprising:
a juncture-handle portion (forked end 16 structure)(Figs. 1-3B; 3:47-4:26) including:
a throat member, a first fork member extending from the throat member in a forward direction, a second fork member extending from the throat member in the forward direction (forked end 16 comprising two tines 22a and 22b (i.e. first and second forked member)(Figs. 2A and 2B; 3:47-63); the forked and also define a throat member (52)(Figs. 3A and 3B; 4:12-33),
a handle portion extending from the throat member in a rearward direction (component 20 extending from base/shoulder 28/30 of the throat/end fork to receive handle, shaft 12)(Figs. 1-2B; 3:30-46), and a first tab protruding beyond a distal forward end of the first fork member (construed as any blunt ends 26a and 26b, protruding from each fork, 22a and 22, respectively)(Figs. 2A and 2B; 3:47-62; Fig. and 5:6-19),
a head portion made of a molded material and including: a first sidewall portion molded over the first tab and extending from the first fork member in the forward direction, a second sidewall portion extending from the second fork member in the forward direction (head 18 with side walls 46)(Figs. 1-3B and 3:60-4:46) and the head is molded over the forks (22a-22b) and the tabs 26a-26b)(Fig. 4A; 5:6-20) ,and a transverse wall portion connecting the first sidewall portion and the second sidewall portion opposite to the juncture-handle portion (distal end 36;scoop)(Figs. 1 and 3A-4; 3:63-4:11); wherein the molded material of the head portion is disposed adjacent to the edge and defines a second portion of the interlocking connection (construed as the portion of head 18 to be interlocked with the fork 16-to- tabs 26a/26b)(Fig. 4; 5:6-20); and wherein the first portion of the interlocking connection (any one of the ends 26a/b of the fork16 ) is interlocked with the second portion (of the head frame 18) of the interlocking connection (Fig. 4);
wherein the molded material of the head portion is disposed first tab to provide a mechanical connection between the head portion and the juncture-handle portion (note Fig. 4 in conjunction to 5:6-19 as the tabs, ends 26a/b are providing an interlocking connection while the fork overmolded the head frame); wherein the molded material of the head portion is disposed adjacent to the edge and defines a second portion of the interlocking connection, wherein the first portion of the interlocking connection is interlocked with the second portion of the interlocking connection (note Fig. 4 in conjunction to 5:6-19 as the tabs, ends 26a/b are providing an interlocking connection while the fork overmolded the head frame; as the head portion 18 is adjacent to the tabs/fork 16); and wherein the head portion is more flexible than the juncture-handle portion (note at least 1:53-2:31 (as the summary of the invention) as well as 3:47-4:11, 4:33-47 and 6:1-9 as the head is more flexible than the handle-juncture portion 16; note in particular 6:1-9 as the flexible material forming the head 18 comparing to the more stiffer material forming the fork end 16 (5:57-67).
Rogers is not specific regarding wherein the first tab defines a first opening that extends through the first tab in a direction lateral to the forward direction and wherein the distal forward end of the first fork member defines the first tab and defines a first portion of an interlocking connection.
Rogers is not specific regarding wherein the molded material of the head portion is disposed inside the first opening of the first tab to provide a mechanical connection between the head portion and the juncture-handle portion, and wherein the molded material of the head portion is disposed adjacent to the raised edge and defines a second portion of the interlocking connection, wherein the first portion of the interlocking connection is interlocked with the second portion of the interlocking connection.
With respect to tab defines a first opening that extends through the first tab in a direction lateral to the forward direction, Rettberg discloses tabs (such as projections 16 and/or 26 with apertures 18 (Fig. 2; [0024]) and 34 (Fig. 4; [0024]), respectively.
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 Rogers’ tab defines a first opening that extends through the first tab in a direction lateral to the forward direction for the reason that a skilled artisan would have been motivated using known technique to reduce weight in the formed of apertures thereof to reduce user’s fatigue yet insure the tabs are sturdy enough to provide a firm connection thereof while forming the lacrosse head.
With respect to the raised edge of the tab, Rettberg discloses wherein a distal forward end of a first fork member defines a raised edge that protrudes from a surface of a first tab and defines a first portion of an interlocking connection (construed as indention/s 14 and projection/s 16 of a first member 20 (Figs. 1 and 2; [0021] and [0022]) to interlock with corresponding indention/s 28 and projection/s 26 of a second member 30 (Figs. 3 and 4; [0023] and [0024]), to connect a lacrosse head thereto (Figs. 5-7; [0026]). 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 Rogers ‘ wherein the distal forward end of the first fork member defines a raised edge that protrudes from a surface of the first tab and defines a first portion of an interlocking connection for the same reasons discussed above with respect to claim 1.
With the modified Rogers by the teachings of Rettberg while the fork-tabs are including an opening and a raised edge (as taught by Rettberg), the molded material of the head portion is disposed inside the first opening of the first tab to provide a mechanical connection between the head portion and the juncture-handle portion, and wherein the molded material of the head portion is disposed adjacent to the raised edge and defines a second portion of the interlocking connection, wherein the first portion of the interlocking connection is interlocked with the second portion of the interlocking connection.
As per claim 19, with respect to wherein the juncture-handle portion and the head portion define a pocket frame having a front side and a rear side, and wherein when the lacrosse stick is viewed from a side view with the front side of the pocket frame facing up, the raised edge of the first fork member and the molded material of the head portion meet at a seam that extends from the front side of the pocket frame to the rear side of the pocket frame to provide the interlocking connection, note Rogers’ Fig. 4 as the connection of the fork 16/tabs26a/26b provides such a seam. Also, note Rettberg’s Figs. 5-7 as the connection of the first member 20 with the second member 30 via the tab’s raised edge formed an interlocking connection with a seam thereof.
As per claim 20, with respect to wherein the molded material of the head portion extends beyond the raised edge of the first fork member in the rearward direction to form a flange that adheres to an outer surface of the juncture-handle portion, note Rogers’ Fig. 4 as the connection of the fork 16/tabs26a/26b provides such interlocking connection while the head frame 18 extend beyond the edge of the tabs (within the modified Rogers -Rettberg such eds would have been a raised edge, as taught by Rettberg) to connect to the juncture handle portion (e.g., Rogers’ Fig. 4).
Allowable Subject Matter
Claims 2-7 and 11 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 12-17 allowed.
As allowable subject matter has been indicated with respect to claims 12-17, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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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/A.A.K/Examiner, Art Unit 3711 12/15/2025
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711