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
Applicant filed an amend to claim 1 (and therefore dependent claims 2-19) on 12/19/2025 after a decision by the Patent Trial and Appeal Board (PTAB). (See PTAB decision of 11/20/2025 entering a new ground of rejection for claims 1-19). Applicant’s amendment has reopened prosecution (See MPEP: 37 CFR 41.50(b)(1)).
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 1-11, 13-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sieber (6029729) in view of Stringfield (20210220722).
Regarding claim 1, 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).
It is noted that the claim recitations of “a pickleball ball stop device” and “for adhering a pickleball ball thereto” 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. 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)).
Sieber does not teach the back secured to a pickleball court.
Stringfield (Figures 1-14) teaches the back secured to a pickleball court (Para. 0028, 0043).
It is noted that Stringfield (Para. 0028) discloses: “according to some example embodiments, the tape T comprises, for example, 1-2 inch wide masking or painter's tape. Optionally, other tapes, adhesive rolls or other spools or receptacles of material, for example marking material, can be provided as desired”.
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 the back secured to a pickleball 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).
Regarding claim 2, 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 is releasably secured to the pickleball court.
Stringfield (Figures 1-14) teaches the back is releasably secured to the pickleball court (Para. 0028, 0043).
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 is releasably secured to the pickleball 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).
Regarding claim 3, 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 pickleball court comprises a pickleball boundary surrounding a pickleball inner court and separating the pickleball inner court from a pickleball outer court.
Stringfield (Figures 1-14) teaches the pickleball court comprises a pickleball boundary surrounding a pickleball inner court and separating the pickleball inner court from a pickleball outer court (Para. 0027, 0043) (See fig. 2-3).
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 pickleball court comprises 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).
Regarding claim 4, 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 boundary.
Stringfield (Figures 1-14) teaches the back of the resilient material is secured to the pickleball boundary (Para. 0027, 0043) (See fig. 2-3).
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 boundary 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).
Regarding claim 5, 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 in the pickleball outer court outside of the pickleball inner court.
Stringfield (Figures 1-14) teaches the back of the resilient material is secured in the pickleball outer court outside of the pickleball inner court (Para. 0027, 0043) (See fig. 2-3).
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 in the pickleball outer court outside of the 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).
Regarding claim 6, 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 resilient material surrounds a majority of a perimeter of the pickleball inner court.
Stringfield (Figures 1-14) teaches the resilient material surrounds a majority of a perimeter of the pickleball inner court (Para. 0027, 0043) (See fig. 2-3).
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 resilient material surrounds a majority of a perimeter of the 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).
Regarding claim 7, 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 resilient material is in independent sections, such that it is discontinuous about the perimeter of the pickleball inner court.
Stringfield (Figures 1-14) teaches the resilient material is in independent sections (See fig. 2-3 and 12-14) (Para. 0027, 0043).
It is noted that Stringfield (Para. 0043) discloses: “once the user U reaches the next corner marker 60, the user cuts the tape T as close to the inner corner of the corner marker 60 as possible and reapplies the end of a new tape strip to the end of the prior tape strip before rolling the taping device 10 to the subsequent corner marker. The user U repeats these steps as necessary to create the desired boundaries. Thereafter, the user U can similarly apply tape to define the centerlines and non-volley lines (see FIG. 2). Optionally, other hand tools, such as for example a putty knives, scissors, box cutters, etc., may be used to assist in applying and/or severing the tape as needed”.
It is noted that the claim recitation of “such that it is discontinuous about the perimeter of the pickleball inner court” is directed to the arrangement of the resilient material on a surface. Providing the combination of Sieber and Stringfield with material sections that are “discontinuous about the perimeter of the pickleball inner court” would have been obvious as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court held that changing a position of a part/element of a device would not have modified operation of the device).
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 resilient material is in independent sections 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 as desired by a user (Stringfield: Para. 0028, 0043).
Regarding claim 8, 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 resilient material is continuous about the perimeter of the pickleball inner court.
Stringfield (Figures 1-14) teaches the resilient material is continuous about the perimeter of the pickleball inner court (See fig. 2-3) (Para. 0028, 0043).
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 resilient material is continuous about the perimeter of the 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 as desired by a user (Stringfield: Para. 0028, 0043).
Regarding claim 9, the modified Sieber (Figures 1-3) teaches the back comprises an adhesive, and the adhesive of the back is the same as an adhesive of the adhesive surface of the front (Col. 2, Lines 59-67; Col. 7, Lines 18-22).
It is noted that the claim recitation of “for securing the resilient material to the pickleball court” 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. 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)).
Regarding claim 10, the modified Sieber (Figures 1-3) teaches the front and the back of the resilient material are covered by adhesive (Col. 2, Lines 59-67; Col. 7, Lines 18-22).
The modified Sieber does not teach all surfaces of the resilient material are covered by an adhesive.
It is noted that the claim recitation of “all surfaces of the resilient material are covered by an adhesive” is directed to the arrangement of the adhesive on the claimed resilient material. Providing the combination of Sieber and Stringfield with all surfaces of the resilient material are covered by an adhesive would have been obvious as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court held that changing a position of a part/element of a device would not have modified operation of the device). 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 all surfaces of the resilient material are covered by an adhesive as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 11, the modified Sieber (Figures 1-3) teaches the resilient material is a polymeric material (Col. 7, Lines 17-20).
It is noted that the claim recitation of “may be rolled up into a roll and unrolled onto the pickleball court” 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. 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)).
Regarding claim 13, 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 resilient material is secured about a perimeter of a pickleball inner court except for one or more lateral sides between a non-volley line of the pickleball court and a net of the pickleball court, the one or more lateral sides being perpendicular to the net in a direction of the net extending across the pickleball inner court.
It is noted that the claim recitation of “the resilient material is secured about a perimeter of a pickleball inner court except for one or more lateral sides between a non-volley line of the pickleball court and a net of the pickleball court, the one or more lateral sides being perpendicular to the net in a direction of the net extending across the pickleball inner court” is directed to the arrangement of the resilient material on a surface. Providing the combination of Sieber and Stringfield with the limitations of claim 13 would have been obvious as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court held that changing a position of a part/element of a device would not have modified operation of the device). 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 resilient material is secured about a perimeter of a pickleball inner court except for one or more lateral sides between a non-volley line of the pickleball court and a net of the pickleball court as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 14, the modified Sieber (Figures 1-3) teaches unrolling a continuous length of the resilient material from a roll of the resilient material (Col. 7, Lines 58-61).
The modified Sieber does not teach a method of applying and using the pickleball ball stop device of claim 1, the method comprising the steps of: unrolling a continuous length of the resilient material from a roll of the resilient material onto the pickleball court; and positioning the continuous length of the resilient material onto the pickleball court with the back secured to a surface of the pickleball court and the front exposed.
Stringfield (Figures 1-14) teaches a method of applying and using the pickleball ball stop device of claim 1, the method comprising the steps of: unrolling a continuous length of the resilient material from a roll of the resilient material onto the pickleball court (Para. 0028, 043); and positioning the continuous length of the resilient material onto the pickleball court with the back secured to a surface of the pickleball court and the front exposed (See fig. 2-3) (Para. 0028, 0043).
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 unrolling a continuous length of the resilient material from a roll of the resilient material onto the pickleball 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 as desired by a user (Stringfield: Para. 0028, 0043).
Regarding claim 15, the modified Sieber (Figures 1-3) teaches removing a removable film covering the adhesive surface from the adhesive surface to expose the adhesive surface (Col. 2, Lines 19-31).
It is noted that Sieber (Col. 2, Lines 19-31) discloses: “for this reason, an adhesive tape which is adhesive on both sides and has a certain minimum thickness, in order, on the one hand, to be able to compensate at least partially for the irregularities in said wall regions and, on the other hand, to have sufficient strength to allow the core-type skirting boards to be retained on the wall sections, has been developed. This adhesive tape is used, for example, in buildings made of prefabricated concrete elements. (9) The conventional method which has been used up until now for applying such an adhesive tape has been a manual one. For manual application of such an adhesive tape, that side which is not coated with a protective layer is applied to the wall and pressed on by hand”.
Regarding claim 16, the modified Sieber (Figures 1-3) teaches unrolling a continuous length of the resilient material from a roll of the resilient material (Col. 7, Lines 58-61).
The modified Sieber does not teach cutting the continuous length of the resilient material to a length corresponding to at least a part of a pickleball boundary that defines a pickleball inner court.
Stringfield (Figures 1-14) teaches cutting the continuous length of the resilient material to a length corresponding to at least a part of a pickleball boundary that defines a pickleball inner court (Para. 0043).
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 cutting the continuous length of the resilient material to a length corresponding to at least a part of a pickleball boundary 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 as desired by a user (Stringfield: Para. 0028, 0043).
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).
It is noted that the claim recitation of “for adhering a pickleball ball thereto” 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. 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)).
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 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 12 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 12, 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).
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 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 17 is rejected under 35 U.S.C. 103 as being unpatentable over Sieber in view of Stringfield, further in view of Shau (20030073519).
Regarding claim 17, the modified Sieber (Figures 1-3) teaches unrolling a continuous length of the resilient material from a roll of the resilient material (Col. 7, Lines 58-61).
The modified Sieber does not teach adhering one or more pickleball balls to the adhesive surface by rolling the one or more pickleball balls across the adhesive surface wherein the one or more pickleball balls are stopped by adhering the one or more pickleball balls to the adhesive surface.
Shau teaches adhering one or more pickleball balls to the adhesive surface by rolling the one or more pickleball balls across the adhesive surface wherein the one or more pickleball balls are stopped by adhering the one or more pickleball balls to the adhesive surface (Para. 0014-0015).
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 rolling the one or more pickleball balls across the adhesive surface as taught by Shau as a means of using an adhesive surface to stop balls in a game (Shau: Para. 0014-0015).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sieber in view of Stringfield, further in view of Hedgepath (20050143200).
Regarding claim 18, the modified Sieber (Figures 1-3) teaches unrolling a continuous length of the resilient material from a roll of the resilient material (Col. 7, Lines 58-61).
The modified Sieber does not teach the step of: rerolling the resilient material into the roll of the resilient material for reuse.
Hedgepath (Figures 1-16) teaches rerolling the resilient material into the roll of the resilient material for reuse (Para. 0055).
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 rerolling the resilient material into the roll of the resilient material for reuse as taught by Hedgepath as a means of rolling a sports training material for storage and/or transport (Hedgepath: Para. 0055).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Sieber in view of Stringfield, further in view of Pinelli (20070294804) and Hedgepath (20050143200).
Regarding claim 19, the modified Sieber (Figures 1-3) teaches removing a removable film covering the adhesive surface from the adhesive surface to expose the adhesive surface (Col. 2, Lines 19-31)..
The modified Sieber does not teach the step of: reapplying the film covering to the adhesive surface, covering the adhesive surface; and rerolling the resilient material into the roll of the resilient material.
Pinelli teaches reapplying the film covering to the adhesive surface (Para. 0021), covering the adhesive surface (Para. 0021).
Hedgepath (Figures 1-16) teaches rerolling the resilient material into the roll of the resilient material (Para. 0055).
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 reapplying the film covering to the adhesive surface as taught by Pinelli as a means of saving a peel-off layer to reapply it to the adhesive (Pinelli: Para. 0021), and to provide the modified Sieber with rerolling the resilient material into the roll of the resilient material for reuse as taught by Hedgepath as a means of rolling a sports training material for storage and/or transport (Hedgepath: Para. 0055).
Claims 1-11, 13-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hutter (20200109535) in view of Stringfield (20210220722).
Regarding claim 1, Hutter (Figures 1-6) teaches a resilient material comprising a front and a back (Para. 0023-0024), the front comprising an exposed adhesive surface (104) (Para. 0026). The examiner notes that Hutter teaches the concept of using adhesive means to form a perimeter around an area and having an exposed adhesive surface to capture elements. What the adhesive means captures has no bearing on the structural limitations for the resilient material as the exposed adhesive means is capable of capturing any element that comes into contact with the exposed adhesive surface.
It is noted that the claim recitations of “a pickleball ball stop device” and “for adhering a pickleball ball thereto” 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. 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)).
Hutter does teach the concept of attaching the resilient material band to the perimeter of various areas (paragraph 16) but does not teach the backing material specifically secured to a pickleball court.
Stringfield (Figures 1-14) teaches the back secured to a pickleball court (Para. 0028, 0043).
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 the back secured to a pickleball 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).
Regarding claim 2, 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 is releasably secured to the pickleball court.
Stringfield (Figures 1-14) teaches the back is releasably secured to the pickleball court (Para. 0028, 0043).
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 is releasably secured to the pickleball 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).
Regarding claim 3, 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 pickleball court comprises a pickleball boundary surrounding a pickleball inner court and separating the pickleball inner court from a pickleball outer court.
Stringfield (Figures 1-14) teaches the pickleball court comprises a pickleball boundary surrounding a pickleball inner court and separating the pickleball inner court from a pickleball outer court (Para. 0027, 0043) (See fig. 2-3).
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 pickleball court comprises 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).
Regarding claim 4, 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 boundary.
Stringfield (Figures 1-14) teaches the back of the resilient material is secured to the pickleball boundary (Para. 0027, 0043) (See fig. 2-3).
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 boundary 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).
Regarding claim 5, 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 in the pickleball outer court outside of the pickleball inner court.
Stringfield (Figures 1-14) teaches the back of the resilient material is secured in the pickleball outer court outside of the pickleball inner court (Para. 0027, 0043) (See fig. 2-3).
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 in the pickleball outer court outside of the 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).
Regarding claim 6, 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 resilient material surrounds a majority of a perimeter of the pickleball inner court.
Stringfield (Figures 1-14) teaches the resilient material surrounds a majority of a perimeter of the pickleball inner court (Para. 0027, 0043) (See fig. 2-3).
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 resilient material surrounds a majority of a perimeter of the 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).
Regarding claim 7, 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 resilient material is in independent sections, such that it is discontinuous about the perimeter of the pickleball inner court.
Stringfield (Figures 1-14) teaches the resilient material is in independent sections (See fig. 2-3 and 12-14) (Para. 0027, 0043).
It is noted that Stringfield (Para. 0043) discloses: “once the user U reaches the next corner marker 60, the user cuts the tape T as close to the inner corner of the corner marker 60 as possible and reapplies the end of a new tape strip to the end of the prior tape strip before rolling the taping device 10 to the subsequent corner marker. The user U repeats these steps as necessary to create the desired boundaries. Thereafter, the user U can similarly apply tape to define the centerlines and non-volley lines (see FIG. 2). Optionally, other hand tools, such as for example a putty knives, scissors, box cutters, etc., may be used to assist in applying and/or severing the tape as needed”.
It is noted that the claim recitation of “the resilient material is in independent sections, such that it is discontinuous about the perimeter of the pickleball inner court” is directed to the arrangement of the resilient material on a surface. Providing the combination of Hutter and Stringfield with sections of resilient material “that it is discontinuous about the perimeter of the pickleball inner court” would have been obvious as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court held that changing a position of a part/element of a device would not have modified operation of the device).
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 resilient material is in independent sections 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 as desired by a user (Stringfield: Para. 0028, 0043).
Regarding claim 8, 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 resilient material is continuous about the perimeter of the pickleball inner court.
Stringfield (Figures 1-14) teaches the resilient material is continuous about the perimeter of the pickleball inner court (See fig. 2-3) (Para. 0028, 0043).
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 resilient material is continuous about the perimeter of the 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 as desired by a user (Stringfield: Para. 0028, 0043).
Regarding claim 9, the modified Hutter (Figures 1-6) teaches the back comprises an adhesive, and the adhesive of the back is the same as an adhesive of the adhesive surface of the front (Para. 0023).
It is noted that the claim recitation of “for securing the resilient material to the pickleball court” 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. 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)).
Regarding claim 10, the modified Hutter (Figures 1-6) teaches the front and the back of the resilient material are covered by adhesive (Para. 0023).
The modified Hutter does not teach all surfaces of the resilient material are covered by an adhesive.
It is noted that the claim recitation of “all surfaces of the resilient material are covered by an adhesive” is directed to the arrangement of the adhesive on the claimed resilient material. Providing the combination of Hutter and Stringfield with all surfaces of the resilient material are covered by an adhesive would have been obvious as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court held that changing a position of a part/element of a device would not have modified operation of the device). 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 all surfaces of the resilient material are covered by an adhesive as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 11, the modified Hutter (Figures 1-6) teaches the resilient material is a polymeric material (Para. 0001, 0014, 0026).
It is noted that the claim recitation of “may be rolled up into a roll and unrolled onto the pickleball court” 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. 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)).
Regarding claim 13, 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 resilient material is secured about a perimeter of a pickleball inner court except for one or more lateral sides between a non-volley line of the pickleball court and a net of the pickleball court, the one or more lateral sides being perpendicular to the net in a direction of the net extending across the pickleball inner court.
Stringfield (Figures 1-14) teaches cutting the resilient material to create desired boundaries (See fig. 2-3) (Para. 0028, 0043).
It is noted that Stringfield (Para. 0043) discloses: “once the user U reaches the next corner marker 60, the user cuts the tape T as close to the inner corner of the corner marker 60 as possible and reapplies the end of a new tape strip to the end of the prior tape strip before rolling the taping device 10 to the subsequent corner marker. The user U repeats these steps as necessary to create the desired boundaries. Thereafter, the user U can similarly apply tape to define the centerlines and non-volley lines (see FIG. 2). Optionally, other hand tools, such as for example a putty knives, scissors, box cutters, etc., may be used to assist in applying and/or severing the tape as needed”.
It is noted that the claim recitation of “the resilient material is secured about a perimeter of a pickleball inner court except for one or more lateral sides between a non-volley line of the pickleball court and a net of the pickleball court, the one or more lateral sides being perpendicular to the net in a direction of the net extending across the pickleball inner court” is directed to the arrangement of the resilient material on a surface. Providing the combination of Hutter and Stringfield with the limitations of claim 13 would have been obvious as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court held that changing a position of a part/element of a device would not have modified operation of the device). 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 resilient material is secured about a perimeter of a pickleball inner court except for one or more lateral sides between a non-volley line of the pickleball court and a net of the pickleball court as a means of mere rearrangement of parts (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
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 using an adhesive tape to create desired areas on a surface as taught by Stringfield as a means of cutting the resilient material to create desired boundaries (Stringfield: Para. 0043, 0028).
Regarding claim 14, the modified Hutter (Figures 1-6) teaches unrolling a continuous length of the resilient material from a roll of the resilient material (Para. 0026).
The modified Hutter does not teach a method of applying and using the pickleball ball stop device of claim 1, the method comprising the steps of: unrolling a continuous length of the resilient material from a roll of the resilient material onto the pickleball court; and positioning the continuous length of the resilient material onto the pickleball court with the back secured to a surface of the pickleball court and the front exposed.
Stringfield (Figures 1-14) teaches a method of applying and using the pickleball ball stop device of claim 1, the method comprising the steps of: unrolling a continuous length of the resilient material from a roll of the resilient material onto the pickleball court (Para. 0028, 043); and positioning the continuous length of the resilient material onto the pickleball court with the back secured to a surface of the pickleball court and the front exposed (See fig. 2-3) (Para. 0028, 0043).
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 unrolling a continuous length of the resilient material from a roll of the resilient material onto the pickleball 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 as desired by a user (Stringfield: Para. 0028, 0043).
Regarding claim 15, the modified Hutter (Figures 1-6) teaches removing a removable film covering (105) (Para. 0022) the adhesive surface from the adhesive surface to expose the adhesive surface (Col. 2, Lines 19-31).
Regarding claim 16, the modified Hutter (Figures 1-6) teaches unrolling a continuous length of the resilient material from a roll of the resilient material (Para. 0026).
The modified Sieber does not teach cutting the continuous length of the resilient material to a length corresponding to at least a part of a pickleball boundary that defines a pickleball inner court.
Stringfield (Figures 1-14) teaches cutting the continuous length of the resilient material to a length corresponding to at least a part of a pickleball boundary that defines a pickleball inner court (Para. 0043).
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 cutting the continuous length of the resilient material to a length corresponding to at least a part of a pickleball boundary 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 as desired by a user (Stringfield: Para. 0028, 0043).
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).
It is noted that the claim recitation of “for adhering a pickleball ball thereto” 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. 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)).
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 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 12 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 12, 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).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Hutter in view of Stringfield, further in view of Shau (20030073519).
Regarding claim 17, the modified Hutter (Figures 1-6) teaches unrolling a continuous length of the resilient material from a roll of the resilient material (Para. 0026).
The modified Hutter does not teach adhering one or more pickleball balls to the adhesive surface by rolling the one or more pickleball balls across the adhesive surface wherein the one or more pickleball balls are stopped by adhering the one or more pickleball balls to the adhesive surface.
Shau teaches adhering one or more pickleball balls to the adhesive surface by rolling the one or more pickleball balls across the adhesive surface wherein the one or more pickleball balls are stopped by adhering the one or more pickleball balls to the adhesive surface (Para. 0014-0015).
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 rolling the one or more pickleball balls across the adhesive surface as taught by Shau as a means of using an adhesive surface to stop balls in a game (Shau: Para. 0014-0015).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hutter in view of Stringfield, further in view of Hedgepath (20050143200).
Regarding claim 18, the modified Hutter (Figures 1-6) teaches unrolling a continuous length of the resilient material from a roll of the resilient material (Para. 0026).
The modified Hutter does not teach rerolling the resilient material into the roll of the resilient material for reuse.
Hedgepath (Figures 1-16) teaches rerolling the resilient material into the roll of the resilient material for reuse (Para. 0055).
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 rerolling the resilient material into the roll of the resilient material for reuse as taught by Hedgepath as a means of rolling a sports training material for storage and/or transport (Hedgepath: Para. 0055).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hutter in view of Stringfield, further in view of Pinelli and Hedgepath.
Regarding claim 19, the modified Hutter (Figures 1-6) teaches removing a removable film covering (105) (Para. 0022) the adhesive surface from the adhesive surface to expose the adhesive surface (Col. 2, Lines 19-31).
The modified Hutter does not teach the step of: reapplying the film covering to the adhesive surface, covering the adhesive surface; and rerolling the resilient material into the roll of the resilient material.
Pinelli teaches reapplying the film covering to the adhesive surface (Para. 0021), covering the adhesive surface (Para. 0021).
Hedgepath (Figures 1-16) teaches rerolling the resilient material into the roll of the resilient material (Para. 0055).
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 reapplying the film covering to the adhesive surface as taught by Pinelli as a means of saving a peel-off layer to reapply it to the adhesive (Pinelli: Para. 0021), and to provide the modified Hutter with rerolling the resilient material into the roll of the resilient material for reuse as taught by Hedgepath as a means of rolling a sports training material for storage and/or transport (Hedgepath: Para. 0055).
Conclusion
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/C.G./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711