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 08/07/2026 has been entered. Claims 2-16, 18-22 are pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The recitation in claim 20 of “the front comprising an exposed adhesive surface and a pickleball adhered thereto during pickleball match play” is directed to new matter and does not comply with the written description requirement because the recited limitation is not supported by applicant’s originally filed disclosure (claims, specification, drawings filed 05/03/2024). Applicant’s originally filed disclosure does not support a pickle ball stop device that comprises/includes a pickleball. Paragraphs 1 and 8 of the originally filed disclosure (specification) describe a pickleball stop device for securing/stopping errant pickleball balls that includes a resilient material having a front and a back, wherein the back is secured to a boundary of the pickleball court and/or an outer court of the pickleball court and the front has an exposed adhesive surface "for adhering a pickleball ball thereto." See also Spec. para. 28 ("The exposed adhesive surface 140 remains exposed and is for adhering a pickleball ball 10 thereto."), Fig. 1. As such, the original disclosure describes a device that stops/secures a pickleball ball including a resilient material having an exposed adhesive surface. In other words, the original disclosure does not support a device that stops/secures a pickleball ball including both a resilient material having an exposed adhesive and an adhered pickleball ball, as currently recited by claim 1. Accordingly, for the foregoing reasons, independent claims 20-21 do not comply with the written description requirement under 35 U.S.C. § 112(a).
Claim Objections
Claim 14 is objected to because of the following informalities:
The recitation in claim 14 of “and the front exposed wherein the front comprises an exposed adhesive surface; commencing a pickleball match with the exposed adhesive surface exposed; and adhering one or more pickleball balls to the adhesive surface by rolling the one or more pickleball balls across the pickleball court onto the exposed adhesive surface wherein the one or more pickleball balls are stopped by the adhesive surface during the pickleball match and wherein the pickleball ball stop device is crossable by a pickleball participant” should be changed to --and the front exposed; wherein the front comprises an exposed adhesive surface; commencing a pickleball match with the exposed adhesive surface exposed; and adhering one or more pickleball balls to the adhesive surface by rolling the one or more pickleball balls across the pickleball court onto the exposed adhesive surface; wherein the one or more pickleball balls are stopped by the adhesive surface during the pickleball match; and wherein the pickleball ball stop device is crossable by a pickleball participant--.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Sieber (6029729) in view of Stringfield (20210220722).
Regarding claim 20, Sieber (Figures 1-3) teaches a resilient material comprising a front and a back (See fig. 1, Part No. 1) (Col. 2, Lines 59-67; Col. 7, Lines 18-22), the front comprising an exposed adhesive surface (Col. 2, Lines 59-67; Col. 3, Lines 5-13).
Sieber does not teach a pickleball court, the pickleball court comprising: a pickleball boundary surrounding a pickleball inner court and separating said pickleball inner court from a pickleball outer court, the back secured to the pickleball boundary or the pickleball outer court.
Stringfield (Figures 1-14) teaches a pickleball court, the pickleball court comprising: a pickleball boundary surrounding a pickleball inner court and separating said pickleball inner court from a pickleball outer court (Para. 0028, 0043), the back secured to the pickleball boundary or the pickleball outer court (Para. 0028, 0043).
It is noted that the claim recitation of “a participant crossable resilient material” and “the front comprising… a pickleball adhered thereto during a pickleball match play” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art. The prior art is fully capable of performing the recited intended use limitation because the limitation “participant crossable resilient material” is directed to a (human) participant being able to cross the resilient material. The prior art is fully capable of performing the recited intended use limitation because the limitation “the front comprising… a pickleball adhered thereto during a pickleball match play” is directed to a player/participant placing a ball on the front of the resilient material. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Sieber with a pickleball boundary surrounding a pickleball inner court as taught by Stringfield as a means of applying adhesive tape atop a surface such that boundary lines for a court, field or other line or boundary-defined game, sport or activity can be at least temporarily applied to a surface (Stringfield: Para. 0028, 0043).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Sieber in view of Stringfield, further in view of Hackenberger (20190321713).
Regarding claim 21, the modified Sieber (Figures 1-3) teaches a resilient material comprising a front and a back (See fig. 1, Part No. 1) (Col. 2, Lines 59-67; Col. 7, Lines 18-22).
The modified Sieber does not teach the back of the resilient material is secured to the pickleball court by friction between the back of the resilient material and the pickleball court.
Hackenberger (Figures 1-3) teaches the back of the material is secured to the pickleball court by friction between the back of the material and the pickleball court (Para. 0025).
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 Sieber with the back of the resilient material is secured to the pickleball court by friction between the back of the material and the pickleball court as taught by Hackenberger as a means of providing layout of lines on a non-skid surface (Hackenberger: Para. 0025).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Hutter (20200109535) in view of Stringfield (20210220722).
Regarding claim 20, Hutter (Figures 1-6) teaches a resilient material comprising a front and a back (Para. 0022-0024), the front comprising an exposed adhesive surface (104) (Para. 0026).
Hutter does not teach a pickleball court, the pickleball court comprising: a pickleball boundary surrounding a pickleball inner court and separating said pickleball inner court from a pickleball outer court, the back secured to the pickleball boundary or the pickleball outer court.
Stringfield (Figures 1-14) teaches a pickleball court, the pickleball court comprising: a pickleball boundary surrounding a pickleball inner court and separating said pickleball inner court from a pickleball outer court (Para. 0028, 0043), the back secured to the pickleball boundary or the pickleball outer court (Para. 0028, 0043).
It is noted that the claim recitation of “a participant crossable resilient material” and “the front comprising… a pickleball adhered thereto during a pickleball match play” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art. The prior art is fully capable of performing the recited intended use limitation because the limitation “participant crossable resilient material” is directed to a (human) participant being able to cross the resilient material. The prior art is fully capable of performing the recited intended use limitation because the limitation “the front comprising… a pickleball adhered thereto during a pickleball match play” is directed to a player/participant placing a ball on the front of the resilient material. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Hutter with a pickleball boundary surrounding a pickleball inner court as taught by Stringfield as a means of applying adhesive tape atop a surface such that boundary lines for a court, field or other line or boundary-defined game, sport or activity can be at least temporarily applied to a surface (Stringfield: Para. 0028, 0043).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Hutter in view of Stringfield, further in view of Hackenberger (20190321713).
Regarding claim 21, the modified Hutter (Figures 1-6) teaches a resilient material comprising a front and a back (Para. 0023-0024, 0026).
The modified Hutter does not teach the back of the resilient material is secured to the pickleball court by friction between the back of the resilient material and the pickleball court.
Hackenberger (Figures 1-3) teaches the back of the material is secured to the pickleball court by friction between the back of the material and the pickleball court (Para. 0025).
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 Hutter with the back of the resilient material is secured to the pickleball court by friction between the back of the material and the pickleball court as taught by Hackenberger as a means of providing layout of lines on a non-skid surface (Hackenberger: Para. 0025).
Allowable Subject Matter
Claims 14-16, 18-19, 22, and 2-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record (Sieber (6029729), Stringfield (20210220722), Hackenberger (20190321713), Shau (20030073519), Hedgepath (20050143200), Pinelli (20070294804), Hutter (20200109535)) does not teach the recitation in claim 14 of “a method comprising the steps of: applying a pickleball ball stop device to a pickleball court by positioning and securing the resilient material onto the pickleball court with the back secured to a surface of the pickleball court and the front exposed; wherein the front comprises an exposed adhesive surface; and adhering one or more pickleball balls to the adhesive surface by rolling the one or more pickleball balls across the pickleball court onto the exposed adhesive surface; wherein the one or more pickleball balls are stopped by the adhesive surface during the pickleball match”.
Response to Arguments
Applicant's arguments filed 08/07/2026 (directed to claims 20-21) have been fully considered but they are not persuasive.
Applicant argues that claim 20 overcomes the prior art of record because claim 20 has been amended to include the claim recitations of “a participant crossable resilient material” and “the front comprising… a pickleball adhered thereto during a pickleball match play”, this is not found persuasive because the recited limitations are directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the prior art. The prior art is fully capable of performing the recited intended use limitation because the limitation “participant crossable resilient material” is directed to a (human) participant being able to cross the resilient material. The prior art is fully capable of performing the recited intended use limitation because the limitation “the front comprising… a pickleball adhered thereto during a pickleball match play” is directed to a player/participant placing a ball on the front of the resilient material. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
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
