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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 7, 2025 has been entered.
Claim Rejections - 35 USC § 103
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(s) 1-12, 15-22 and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2021/0252356 to Thurman in view of US Pub No. 2012/0244333 to Aksay.
Regarding Claims 1-12, 15-22 and 24-25
Thurman teaches a pickleball paddle comprising a surface layer covering a “playing surface” and comprising a layer of a fabric including high strength polymeric fibers (Thurman, abstract, paragraph [0085]). Said fabric would necessarily comprise an edge (acoustic fabric edge). Thurman teaches that the fabric layer may include a “shell” and or “waterproofing additive” such as an epoxy resin, paints or clear coats (Id., paragraph [0085]). Thurman teaches that the core may include multiple layers of rigid material, which would necessarily meet the limitations of two hard face layers between opposing outer surfaces of the paddle (Id., paragraph [0082]-[0083]). Thurman teaches that the paddle may comprise an internal layer comprising fibers and sandwiched between two core layers (Id., paragraph [0146]). Thurman teaches the paddle may comprise a honeycomb core (Id., paragraph [0082]). Thurman teaches that the paddle may comprise one or more layers of carbon fiber fabric (board) applied to the outside surface of the paddle (Id.).
Thurman does not teach that the fabric is a graphene infused fabric which contains about 1 to 25% by weight of graphene wherein the graphene infused fabric comprises polymer fibers infused with graphene or durability enhancing agents. However, Aksay teaches polymeric fibers for use in forming composite reinforcing materials and for use in sports equipment comprising between 2 and 20% by weight of graphene (Aksay, abstract, paragraph [0051]). Aksay teaches that the polymeric material may include polyamide 6,6 or polypropylene (Id., paragraph [0013], [0017]). Aksay teaches that fabrics formed from said fibers result in enhanced tensile properties, strength and tenacity (Id., paragraph [0048]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the pickleball paddle of Thurman and to utilize as the fiber material, the graphene infused polymeric material of Aksay, motivated by the desire to form conventional composite reinforcement having improved strength and durability.
Regarding the layer being a “ sound reducing acoustic layer,” “reducing sound generation from the playing surface,” “enhances durability of the sound reducing acoustic layer while maintaining reduction of sound generation from the playing surface” and “reducing a frequency of sound generated to between 500hz to 800hz, although the prior art does not disclose the sound reduction properties, the claimed properties are deemed to naturally flow from the structure in the prior art since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding Claim 25
Regarding the limitation of the fabric being removable from the playing surface of the paddle, this limitation is necessarily met as there are no further structural limitations defined by this property. The fabric may be removed utilizing any method or tool, in any condition and in any number of parts.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO-2022217045 to Davis in view of Aksay.
Regarding Claims 27
Davis teaches a composite paddle comprising an exterior surface comprising a fabric which may be non-woven, polymer fibers and which may be either impregnated or in the alternative, coated, which meets the limitation of unimpregnated non-woven (Davis, abstract, paragraphs [0057]-[0058]).
Davis does not teach that the fabric comprises polymer fibers infused with graphene or durability enhancing agents. However, Aksay teaches polymeric fibers for use in forming composite reinforcing materials and for use in sports equipment comprising between 2 and 20% by weight of graphene (Aksay, abstract, paragraph [0051]). Aksay teaches that fabrics formed from said fibers result in enhanced tensile properties, strength and tenacity (Id., paragraph [0048]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the pickleball paddle of Davis and to utilize as the fiber material, the graphene infused polymeric material of Aksay, motivated by the desire to form conventional composite reinforcement having improved strength and durability.
Regarding the layer being a “ sound reducing acoustic layer,” “reducing sound generation from the playing surface,” “enhances durability of the sound reducing acoustic layer while maintaining reduction of sound generation from the playing surface” and “reducing a frequency of sound generated to between 500hz to 800hz, although the prior art does not disclose the sound reduction properties, the claimed properties are deemed to naturally flow from the structure in the prior art since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Claim Objections
Claims 13, 14, 26 and 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed March 7, 2025 have been fully considered but they are not persuasive. Applicant argues that Thurman does not teach the hard face layers located between the opposing outer surfaces of the paddle and on either side of a core layer. Examiner respectfully disagrees. As set forth above, Thurman teaches this limitation.
Applicant argues that prior art does not teach the claimed unimpregnated nonwoven material. Examiner respectfully disagrees. As set forth above the limitation is taught.
Applicant’s arguments, with respect to claims 26 and 28 have been fully considered and are persuasive.
Conclusion
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786