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 .
Response to Amendment
The amendment filed 03/25/2026 has been entered. Claims 1, 3, 8-21, 24-25 are pending in the application.
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.
Claims 1, 8-9, 15, 17-21, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over in Thurman (20210252356) in view of Fedullo (5301955) and Giegerich (20140221134).
Regarding claim 1,Thurman (‘356) (Figures 24-26) teaches a paddle comprising: a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24; Para. 0145), wherein the paddle portion and the handle portion cooperate to define a first side, a second side, and a channel defined between the first side and the second side and extending about a perimeter of the paddle portion and the handle portion (See fig. 24); a light pipe or a light-diffusing fiber (Fig. 24C, Part No. 2172-2; Para. 0145) disposed in the channel and about the perimeter of the paddle portion.
Thurman does not teach a light source disposed in the handle portion, the light source comprising one or more light emitting devices optically coupled to the light pipe; and a power source and electronics disposed within the handle portion, wherein the power source and the electronics are configured to control operation of the light source between at least an ON state and an OFF state, whereby in the ON state the light pipe is configured to propagate light emitted from the light source along an unbroken length about the perimeter and diffuse the light emitted from the light source outwardly away from the perimeter of the paddle portion.
Thurman (Figures 1-2) teaches providing a perimeter of a paddle with a bumper (Fig. 1-2, Part No. 48) that is made from a translucent material (Para. 0087, 0089).
Fedullo (Figures 1-8) teaches a light source (Fig. 6, Part No. 56) disposed in the handle portion, the light source comprising one or more light emitting devices (Col. 4, Lines 45-66).
Giegerich (Figures 1-2) teaches a power source and electronics disposed within the handle portion (Para. 0036), wherein the power source and the electronics are configured to control operation of the light source between at least an ON state and an OFF state (Para. 0036).
It is noted that Thurman (Fig. 24-26) teaches providing a perimeter of a paddle with a tubular bumper between two faceplates (Thurman: Fig. 24C, Part No. 2172-2; Para. 0145). Thurman (Fig. 1-2) teaches providing a perimeter of a paddle with a translucent bumper between two faceplates (Thurman: (Fig. 1-2, Part No. 48); Para. 0087, 0089). The combined teachings of Thurman, Fedullo, and Giegerich teaches the claim recitation of “the light pipe is configured to propagate light emitted from the light source along an unbroken length about the perimeter and diffuse the light emitted from the light source outwardly away from the perimeter of the paddle portion”.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Thurman (Fig. 24-26) with a translucent perimeter bumper as taught by Thurman (Fig. 1-2) as a means of selecting a known material (a translucent material) based on its suitability for its intended use (a perimeter bumper/strip of a paddle) (See: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)), to provide Thurman with a light source disposed in the handle portion as taught by Fedullo as a means of providing a sports implement with a light source used to illuminate faces and an edge strip of the paddle to aid in playing a game in low light conditions (Fedullo: Col. 4, Lines 45-61), and to provide Thurman with a power source and electronics disposed within the handle portion as taught by Giegerich as a means of disposing electronics used to illuminate a paddle in a handle of the paddle (Giegerich: Col. 3, Lines 54-64).
Regarding claim 8, the modified Thurman (‘356) (Figures 24-26) teaches the light pipe (Fig. 24C, Part No. 2172-2) is received by the channel.
The modified Thurman does not teach a width of the channel is smaller than a diameter of the light pipe such that an interference fit between the light pipe and the channel is formed when the light pipe is received by the channel.
It is noted that the claim recitation of “a width of the channel is smaller than a diameter of the light pipe such that an interference fit between the light pipe and the channel is formed when the light pipe is received by the channel” is directed to the size of the claimed apparatus and also the method/process by which the apparatus is formed. Changing the size of the channel or light pipe would have been obvious to one or ordinary skill in the art because limitations relating to the size of the claimed apparatus is not sufficient to patentably distinguish over the prior art. (See: In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955)).
Additionally, the claim recitation of “a width of the channel is smaller than a diameter of the light pipe such that an interference fit between the light pipe and the channel is formed when the light pipe is received by the channel” is directed to product that is made by a process (a product-by-process claim). The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See: In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). In the instant case, the modified Thurman teaches the final product of a light pipe received in a channel and therefore meets the claim.
Regarding claim 9, the modified Thurman (‘356) (Figures 24-26) teaches a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24).
The modified Thurman does not teach the power source is a rechargeable battery.
Giegerich (Figures 1-2) teaches the power source is a rechargeable battery (Para. 0027).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Thurman with the power source is a rechargeable battery as taught by Giegerich as a means of using a rechargeable battery to provide an electrical current to lights of a sport implement (Giegerich: Para. 0033-0034).
Regarding claim 15, the modified Thurman (‘356) (Figures 24-26) teaches the paddle portion corresponds to a pickleball paddle (Para. 0145).
Regarding claim 17, the modified Thurman (‘356) (Figures 24-26) teaches the paddle portion includes a plurality of internal strength members (Fig. 26, Part No. 2374) (Para. 0150) that define a plurality of cavities.
Regarding claim 18, the modified Thurman (‘356) (Figures 24-26) teaches the plurality of internal strength members comprises a central strength member (Fig. 26, Part No. 2374-1) extending from the handle portion through the paddle portion and a plurality of branching strength members (2374-2, 2374-3) extending from the central strength member outward toward the perimeter of the frame (Para. 0150).
Regarding claim 19, the modified Thurman (‘356) (Figures 24-26) teaches the plurality of branching strength members (2374-2, 2374-3) form a non-perpendicular angle with the central strength member (2374-1) (Para. 0150).
Regarding claim 20, the modified Thurman (‘356) (Figures 24-26) teaches the plurality of branching strength members (2374-2, 2374-3) extend from the central strength member (2374-1) (Para. 0150) in a direction away from the handle portion.
Regarding claim 21, Thurman (‘356) (Figures 24-26) teaches a paddle comprising: a frame including an opaque paddle portion (Fig. 24C, Part No. 44, 46) (Para. 0084) and a handle portion (See fig. 24A) extending from the paddle portion, wherein the paddle portion and the handle portion define a first side, a second side, and a channel (See fig. 24C) defined between the first side and the second side and extending about a perimeter of the frame (See fig. 24C); and a light pipe (Fig. 24C, Part No. 2172-2) (Para. 0145) disposed in the channel about the perimeter of the frame (See fig. 24C).
Thurman does not teach a light source disposed between the first side and the second side; the light pipe disposed in the channel to encapsulate the light source to provide edge lighting about the perimeter of the frame; and a power source and electronics disposed within the handle portion, wherein the power source and the electronics are configured to control operation of the light source between at least an ON state and an OFF state, whereby in the ON state the light pipe is configured to propagate light emitted from the light source along an unbroken length about the perimeter and diffuse the light emitted from the light source outwardly away from the perimeter of the frame.
Thurman (Figures 1-2) teaches providing a perimeter of a paddle with a bumper (Fig. 1-2, Part No. 48) that is made from a translucent material (Para. 0087, 0089).
Fedullo (Figures 1-8) teaches a light source (Fig. 6, Part No. 56) disposed between the first side and the second side (Col. 4, Lines 45-66).
Giegerich (Figures 1-2) teaches a power source and electronics disposed within the handle portion (Para. 0036), wherein the power source and the electronics are configured to control operation of the light source between at least an ON state and an OFF state.
It is noted that Thurman (Fig. 24-26) teaches providing a perimeter of a paddle with a tubular bumper between two faceplates (Thurman: Fig. 24C, Part No. 2172-2; Para. 0145). Thurman (Fig. 1-2) teaches providing a perimeter of a paddle with a translucent bumper between two faceplates (Thurman: (Fig. 1-2, Part No. 48); Para. 0087, 0089). The combined teachings of Thurman, Fedullo, and Giegerich teaches the claim recitation of “the light pipe disposed in the channel to encapsulate the light source to provide edge lighting about the perimeter of the frame” and “whereby in the ON state the light pipe is configured to propagate light emitted from the light source along an unbroken length about the perimeter and diffuse the light emitted from the light source outwardly away from the perimeter of the frame”.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Thurman (Fig. 24-26) with a translucent perimeter bumper as taught by Thurman (Fig. 1-2) as a means of selecting a known material (a translucent material) based on its suitability for its intended use (a perimeter bumper/strip of a paddle) (See: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)), to provide Thurman with a light source disposed between the first side and the second side as taught y Fedullo as a means of providing a paddle with an internal light source so that the paddle can be used in a darkness condition (Fedullo: Col. 4, Lines 62-66), and to provide Thurman with a power source and electronics disposed within the handle portion as taught by Giegerich as a means of disposing electronics used to illuminate a paddle in a handle of the paddle (Giegerich: Col. 3, Lines 54-64).
Regarding claim 24, the modified Thurman (‘356) (Figures 24-26) teaches a paddle comprising a frame including an opaque paddle portion (44, 46) (Para. 0084) and a handle portion extending from the paddle portion (See fig. 24-26).
The modified Thurman does not teach the light source is an optical fiber LED.
Giegerich (Figures 1-2) teaches the light source is an optical fiber LED (Para. 0020, 0036).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Thurman with the light source is an optical fiber LED as taught by Giegerich as a means of providing a light source comprising fiber optic strands/fibers for a paddle (Giegerich: Para. 0020, 0036).
Regarding claim 25, the modified Thurman (‘356) (Figures 24-26) teaches the frame includes a first shell and a second shell securable together to form the channel therebetween (See fig. 24).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over in Thurman in view of Fedullo and Giegerich, further in view of Oister (20040220001).
Regarding claim 3, the modified Thurman (‘356) (Figures 24-26) teaches a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24)
The modified Thurman does not teach the light pipe includes a diffusion cover configured to encapsulate the light source.
Oister (Figures 2-6 and ) teaches the light pipe (Fig. 6, Part No. 16A) includes a diffusion cover (See Fig. 1; Para. 0012) (Fig. 5-6, Part No. 12A and 13A; Para. 0018) configured to encapsulate the light source (Fig. 2-4, Part No. 7; Para. 0018).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Thurman with the light pipe includes a diffusion cover as taught by Oister as a means of providing a channel of a sporting device with a lighting element that is covered by a transparent material (Oister: Para. 0013, 0026-0027).
Claim 10 is are rejected under 35 U.S.C. 103 as being unpatentable over in Thurman (‘356) in view of Fedullo and Giegerich, further in view of Schuyler (4379554).
Regarding claim 10, the modified Thurman (‘356) (Figures 24-26) teaches a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24).
The modified Thurman does not teach the handle portion further comprises two grips, the two grips securable to the opposing sides of the handle portion and configured to enclose the power source disposed within a cavity of the handle portion.
Schuyler (Figures 1-4) teaches the handle portion (Fig. 3, Part No. 30) further comprises two grips (Fig. 3, Part No. 32, 34) (Col. 2, Lines 42-48), the two grips securable to the opposing sides of the handle portion (See fig. 3) and configured to enclose a cavity of the handle portion.
Giegerich (Figures 1-2) teaches the power source disposed within a cavity of the handle portion (Para. 0036).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Thurman with the handle portion further comprises two grips as taught by Schuyler as a means of forming a paddle with an extension that forms a sandwich type handle (Schuyler: Col. 2, Lines 42-48), and to provide the modified Thurman with the power source disposed within a cavity of the handle portion as taught by Giegerich as a means of disposing electronics used to illuminate a paddle in a handle of the paddle (Giegerich: Col. 3, Lines 54-64).
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over in Thurman in view of Fedullo and Giegerich, further in view of Steinberg (4834376).
Regarding claim 11, the modified Thurman (‘356) (Figures 24-26) teaches a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24).
The modified Thurman does not teach the electronics comprise a printed circuit board comprising a button and electronic components electrically coupled to the power source and configured to control operation of the light source in response to activation of the button.
Steinberg (Figures 1-6) teaches the electronics comprise a printed circuit board (Fig. 3, Part No. 94) comprising a button (37) and electronic components electrically coupled to the power source and configured to control operation of the light source in response to activation of the button (Col. 3, Lines 22-31; Col. 5, Lines 22-27).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Thurman with the electronics comprise a printed circuit board comprising a button as taught by Steinberg as a means of providing a sport implement with means to activate a light source used with the sport implement (Steinberg: Col. 3, Lines 22-31; Col. 5, Lines 22-27).
Regarding claim 13, the modified Thurman (‘356) (Figures 24-26) teaches a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24).
The modified Thurman does not teach the handle portion includes a housing having an opening and a button cover positioned within the opening, whereby the button cover enables activation of the button disposed on the printed circuit board.
Steinberg (Figures 1-6) teaches he handle portion includes a housing having an opening (Fig. 3, Part No. 38) (Col. 3, Lines 17-19) and a button cover (36) positioned within the opening, whereby the button cover enables activation of the button (37) disposed on the printed circuit board (94) (Col. 5, Lines 16-21).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Thurman with the button cover enables activation of the button as taught by Steinberg as a means of providing a sport implement with means to activate a light source used with the sport implement (Steinberg: Col. 3, Lines 22-31; Col. 5, Lines 22-27).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over in Thurman in view of Fedullo, Giegerich, and Steinberg, further in view of Polstein (20160158619).
Regarding claim 12, the modified Thurman (‘356) (Figures 24-26) teaches a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24).
The modified Thurman does not teach the printed circuit board further comprises a charger port electrically coupled to the power source to charge the power source when power is connected to the charger port.
Polstein (Figures 1-12) teaches the printed circuit board (Fig. 6, Part No. 56) (Para. 0028) further comprises a charger port (Fig. 3-6, Part No. 50) electrically coupled to the power source to charge the power source when power is connected to the charger port (Para. 0038-0039).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Thurman with a charger port electrically coupled to the power source as taught by Polstein as a means of providing a sports implement with a port for connection of a battery charger assembly for charging a battery (Polstein: 0028, 0038).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over in Thurman (‘356) in view of Fedullo, Giegerich, and Steinberg, further in view of Thurman (20150045153).
Regarding claim 14, the modified Thurman (‘356) (Figures 24-26) teaches a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24).
The modified Thurman (‘356) does not teach activation of the button controls operation of the light source in a plurality of modes comprising: activating the light source to cycle through a plurality of colors, causing the light source to hold the cycling through the plurality of colors on a selected color, and deactivating the light source.
Steinberg (Figures 1-6) teaches activation of the button (37) controls operation of the light source (42-45) in a plurality of modes (Col. 3, Lines 22-31) comprising: deactivating the light source.
Thurman (‘153) teaches activating a plurality of modes comprising: activating the light source to cycle through a plurality of colors (Para. 0037), causing the light source to hold the cycling through the plurality of colors on a selected color (Para. 0037).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Thurman (‘356) with activation of the button controls operation of the light source in a plurality of modes as taught by Steinberg as a means of providing a sport implement with means to activate a light source based on a strength of impact of an object with sport implement (Steinberg: Col. 3, Lines 22-31; Col. 5, Lines 22-27), and to provide the modified Thurman (‘356) with activating the light source to cycle through a plurality of colors as taught by Thurman (‘153) as a means of providing a color changing light indicator to a user of a sport implement based on a hit count associated with the sport implement (Thurman (‘153): Para. 0037).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over in Thurman (‘356) in view of Fedullo and Giegerich, further in view of Gibbs (6168541).
Regarding claim 16, the modified Thurman (‘356) (Figures 24-26) teaches a frame comprising a paddle portion and a handle portion extending from the paddle portion (See fig. 24).
The modified Thurman does not teach the paddle portion corresponds to a ping pong paddle.
Gibbs (Figures 1-3) teaches the paddle portion corresponds to a ping pong paddle (Col. 3, Lines 21-23 and Lines 29-32).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Thurman with the paddle portion corresponds to a ping pong paddle as taught by Gibbs as a means of simple substitution of one known element (a paddle used to play a sports game) for another (a ping pong paddle used to play a sports game) to obtain predictable results (a paddle //used to play a sports game) (See: KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)) (Gibbs: Col. 3, Lines 21-23 and Lines 29-32).
Response to Arguments
Applicant's arguments filed 03/25/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art of record does not teach the recitation in claim 1 of “whereby in the ON state the light pipe is configured to propagate light emitted from the light source along an unbroken length about the perimeter and diffuse the light emitted from the light source outwardly away from the perimeter of the paddle portion”, this is not found persuasive because it is noted that Thurman (Fig. 24-26) teaches providing a perimeter of a paddle with a tubular bumper between two faceplates (Thurman: Fig. 24C, Part No. 2172-2; Para. 0145). Thurman (Fig. 1-2) teaches providing a perimeter of a paddle with a translucent bumper between two faceplates (Thurman: (Fig. 1-2, Part No. 48); Para. 0087, 0089). The combined teachings of Thurman, Fedullo, and Giegerich teaches the claim recitation of “the light pipe is configured to propagate light emitted from the light source along an unbroken length about the perimeter and diffuse the light emitted from the light source outwardly away from the perimeter of the paddle portion”.
Applicant argues that the prior art of record does not teach the recitation in claim 20 of “whereby in the ON state the light pipe is configured to propagate light emitted from the light source along an unbroken length about the perimeter and diffuse the light emitted from the light source outwardly away from the perimeter of the frame”, this is not found persuasive because it is noted that Thurman (Fig. 24-26) teaches providing a perimeter of a paddle with a tubular bumper between two faceplates (Thurman: Fig. 24C, Part No. 2172-2; Para. 0145). Thurman (Fig. 1-2) teaches providing a perimeter of a paddle with a translucent bumper between two faceplates (Thurman: (Fig. 1-2, Part No. 48); Para. 0087, 0089). The combined teachings of Thurman, Fedullo, and Giegerich teaches the claim recitation of “the light pipe disposed in the channel to encapsulate the light source to provide edge lighting about the perimeter of the frame” and “whereby in the ON state the light pipe is configured to propagate light emitted from the light source along an unbroken length about the perimeter and diffuse the light emitted from the light source outwardly away from the perimeter of the frame”.
Applicant argues that providing the prior art of Thurman with the teachings of Fedullo would not be obvious because providing Thurman with the light source disclosed by Fedullo would require redesigning paddle of Thurman, this is not found persuasive because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, providing the paddle of Thurman with a light source as taught by Fedullo would have been obvious as a means of providing a paddle with an internal light source so that the paddle can be used in a darkness condition (Fedullo: Col. 4, Lines 62-66)..
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.
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/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
Prosecution Insights