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 .
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(s) 1-5, 7, and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marshall (US 2022/0088449A1).
With respect to claim 1, Marshall teaches a pickleball paddle (title), comprising: a paddle head (12) comprising an interior core disposed between a front face plate (14) and a rear face plate (16) (paragraphs 24 and 32, note the teaching of a composite head), the paddle head defining a paddle periphery (figures 1-3, 6-8, and 10); a frame (72/80) comprising an interior frame surface and an exterior frame surface opposite the interior frame surface, wherein the exterior frame surface defines discrete first and second recesses (wells 32) (figures 1, 3, and 10); a first weight strip (broadest reasonable interpretation) (insert 30) disposed in the first recess (well 32); and a second weight strip (broadest reasonable interpretation) (insert 30) disposed in the second recess (well 32).
With respect to claim 1, Marshall does not explicitly teach wherein each of the first weight strip and the second weight strip comprises a strip length of 2.5 to 4.5 inches
However, Marshall teaches that the inserts may be provided in different weights relative to each other either by adjusting their length or by utilizing different metals (paragraph 25).
Accordingly, the length and mass of the weights are effective means of adjusting the mass of the paddle. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
The artisan would have been motivated to adjust the length and mass of the weights of Marshall within the claimed range 2.5 to 4.5 inches in order to form a paddle with the desired weight and/or weight distribution.
With respect to claim 2, Marshall teaches wherein the exterior frame surface further defines discrete third and fourth recesses, the pickleball paddle further comprising a third weight strip disposed in the third recess and a fourth weight strip disposed in the fourth recess (figures 1-3 and 6-8; and paragraphs 25-26).
With respect to claim 3, Marshall teaches wherein each of the first, second, third, and fourth weight strips comprises an equal strip length (figures 1-3 and 6-8; and paragraphs 25-26).
With respect to claim 4, Marshall does not explicitly teach wherein the equal strip length is 3.5 inches.
However, Marshall teaches that the inserts may be provided in different weights relative to each other either by adjusting their length or by utilizing different metals (paragraph 25).
Accordingly, the length of the weights is effective means of adjusting the mass of the paddle. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
The artisan would have been motivated to adjust the length of the weights of Marshall to 3.5 inches in order to form a paddle with the desired weight and/or weight distribution.
With respect to claim 5, Marshall teaches a discrete fifth recess and a fifth weight strip disposed in the fifth recess (figures 1-3 and 6-8; and paragraphs 25-26).
With respect to claim 7, Marshall teaches wherein: each of the first and the second recesses comprises a discrete recess depth (figures 1-3 and 6-8; and paragraphs 25-26 and 31); each of the first and second weight strips comprises a weighted strip thickness; and the weighted strip thickness is substantially equal to the discrete recess depth so that top surfaces of the first and second weight strips are flush with the exterior frame surface surrounding each of the first and second recesses (figures 1-3 and 6-8; and paragraphs 25-26 and 31).
With respect to claim 9, Marshall does not explicitly teach wherein each of the first and second weight strips comprises a mass between 1 gram to 10 grams.
However, Marshall teaches that the inserts may be provided in different weights relative to each other either by adjusting their length or by utilizing different metals (paragraph 25).
Accordingly, the mass of the weights is an effective means of adjusting the mass of the paddle. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
The artisan would have been motivated to adjust the mass of the weights of Marshall within the claimed range of a mass between 1 gram to 10 grams in order to form a paddle with the desired weight and/or weight distribution.
With respect to claim 10, Marshall teaches wherein the frame comprises a first frame component joined to a second frame component (figure 10; and paragraphs 31-32).
Claim(s) 1-5, 7, and 9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Barnes et al. (US 2023/0249042A1) (hereafter Barnes).
With respect to claim 1, Barnes teaches a pickleball paddle (100), comprising: a paddle head (figures) comprising an interior core (core of main body 102) disposed between a front face plate (104) and a rear face plate (104) (figures 1A-C and 3; and paragraphs 19-20), the paddle head defining a paddle periphery (figures 1A-C and 3); a frame (106) comprising an interior frame surface and an exterior frame surface opposite the interior frame surface, wherein the exterior frame surface defines discrete first and second recesses (114); a first weight strip (broadest reasonable interpretation) (112) disposed in the first recess (114); and a second weight strip (broadest reasonable interpretation) (112) disposed in the second recess (114).
With respect to claim 1, Barnes does not explicitly teach wherein each of the first weight strip and the second weight strip comprises a strip length of 2.5 to 4.5 inches.
However, it is the examiner’s position that the length of the strips is merely obvious design choice for adjusting the mass of the paddle. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
The artisan would have been motivated to adjust the length of the weights of Barnes within the claimed range of 2.5 to 4.5 inches in order to form a paddle with the desired weight and/or weight distribution.
With respect to claim 2, Barnes teaches wherein the exterior frame surface further defines discrete third and fourth recesses, the pickleball paddle further comprising a third weight strip disposed in the third recess and a fourth weight strip disposed in the fourth recess (figures 1A-C and 3).
With respect to claim 3, Barnes teaches wherein each of the first, second, third, and fourth weight strips comprises an equal strip length (figures 1A-C and 3).
With respect to claim 4, Marshall does not explicitly teach wherein the equal strip length is 3.5 inches.
However, it is the examiner’s position that the length of the strips is merely obvious design choice for adjusting the mass of the paddle. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
The artisan would have been motivated to adjust the length of the weights of Barnes to 3.5 inches in order to form a paddle with the desired weight and/or weight distribution.
With respect to claim 5, Barnes teaches a discrete fifth recess and a fifth weight strip disposed in the fifth recess (figures 1A-C and 3).
With respect to claim 7, Barnes teaches wherein: each of the first and the second recesses comprises a discrete recess depth (figures 1A-C and 3; and paragraphs 19-21 and 23-24); each of the first and second weight strips comprises a weighted strip thickness; and the weighted strip thickness is substantially equal to the discrete recess depth so that top surfaces of the first and second weight strips are flush with the exterior frame surface surrounding each of the first and second recesses (figures 1A-C and 3; and paragraphs 19-21 and 23-24).
With respect to claim 9, Barnes does not explicitly teach wherein each of the first and second weight strips comprises a mass between 1 gram to 10 grams.
However, it is the examiner’s position that the weight of the strips is merely an obvious design choice for adjusting the mass of the paddle. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
The artisan would have been motivated to adjust the mass of the weights of Barnes within the claimed range of a mass between 1 gram to 10 grams in order to form a paddle with the desired weight and/or weight distribution.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marshall as applied to claim 1 above, and further in view of (Snyder et al. (US2012/0220386A1) (hereafter Snyder).
With respect to claim 6, Marshall teaches the inserts may be made of any material that is practical for giving a desired weight component. As an example, this may include metals and their alloys, elastomers, plastics and the like. Particular metals/alloys which may be preferred include tungsten, steel, bronze, nickel, zinc, and titanium (paragraph 25), but fails to explicitly teach wherein each of the first and second weight strips comprises a tungsten material mixed with a TPE, a TPU, or a polyether block amide.
However, Snyder teaches wherein a weight that comprises a tungsten material mixed with a TPE, a TPU, or a polyether block amide (paragraph 56).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize weight material of Snyder on the apparatus of Marshall in order to obtain a weight with the desired mass and density.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marshall or Barnes as applied to claim 1 above, and further in view of (ES-1298439U) (hereafter ES ‘439).
With respect to claim 8, Marshall or Barnes fail to teach wherein: each of the first and second recesses comprises a discrete recess depth; each of the first and second weight strips comprises a weighted strip thickness; and the weighted strip thickness is greater than the discrete recess depth so that top surfaces of the first and second weight strips protrude from the exterior frame surface surrounding each of the first and second recesses.
However, ES ‘439 teaches wherein: each of the first and second recesses comprises a discrete recess depth (figures 3-5; and the machine translation); each of the first and second weight strips comprises a weighted strip thickness (figures 3-5; and the machine translation); and the weighted strip thickness is greater than the discrete recess depth so that top surfaces of the first and second weight strips protrude from the exterior frame surface surrounding each of the first and second recesses (figures 3-5; and the machine translation).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the protruding weights as taught by ES ‘439 on the apparatus of Marshall or Barnes in order to adjust the center of gravity of the paddle.
Response to Arguments
Applicant's arguments filed 8/11/26 have been fully considered but they are not persuasive.
The applicant argues that Marshall does not teach or suggest a first or second weight strip that comprises a length between 2.5 and 4.5 inches. One of ordinary skill in the art would not expect to successfully arrive at the claimed invention because modifying Marshall in view of the claimed invention would violate the operational principle of Marshall. Although the Examiner alleges it would have been easily conceived by one of ordinary skill in the art to arrive at the claimed invention through simple design modifications, the Examiner does not account for the differences in structures and lack of operational principle to alter Marshall to the claimed invention. Marshall illustrates and teaches small weights that extend radially relative to a center of the paddle, and therefore concentrate mass in relatively small regions around the paddle perimeter. Marshall does not teach using weight strips disposed in recesses of a frame having relatively long strip lengths that distribute mass over larger regions of the paddle perimeter. The small concentrated weights of Marshall create stress risers, whereas the longer weight strips distribute the stress evenly across a larger area, dissipating any stress risers. Additionally, Marshall illustrates and teaches the use of threads on the weights to secure them to the paddle, and therefore the perimeter area that can be occupied by each weight is limited to a width of the panel, which is significantly less than 2.5 inches. Therefore, Marshall would not be modified because it would be counter to the operational principle of how Marshall distributes weight around the perimeter and how it attaches the weights to the paddle.
The applicant also argues that one of ordinary skill in the art would not expect to successfully arrive at the claimed invention because modifying Barnes in view of the claimed invention would violate the operational principle of Barnes. Although the Examiner alleges it would have been an obvious design choice by one of ordinary skill in the art to arrive at the claimed invention through simple design modifications, the Examiner does not account for the differences in structures and lack of operational principle to alter Barnes to the claimed invention. Barnes illustrates and teaches small weights that extend radially relative to a center of the paddle, and therefore concentrate mass in relatively small regions around the paddle perimeter. Barnes does not teach using weight strips disposed in recesses of a frame having relatively long strip lengths that distribute mass over larger regions of the paddle perimeter. The small concentrated weights of Barnes create stress risers, whereas the extended weight strips distribute the stress evenly across a larger area, dissipating any stress risers. Therefore, Barnes would not be modified because it would be counter to the operational principle of how Barnes distributes weight around the perimeter and how it attaches the weights to the paddle.
The examiner respectfully disagrees. It should be noted that the applicant’s argument regarding using relatively long strip lengths to distribute mass over larger regions of the paddle perimeter and/or distributing the stress evenly across a larger area thereby dissipating any stress risers are not commensurate in scope with the claims. The instant claims do not require a particular orientation of the first weight strip and the second weight strip that would result in distribution of mass and/or stress over larger regions of the paddle perimeter. Instead, the claims simply require first and second weight strips disposed in first and second recesses of the exterior of the frame. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Furthermore, the applicant has failed to provide a persuasive argument and/or evidence of unexpected results for the claimed strip length. Accordingly, the examiner maintains that a prima facie case of obviousness has been established over both Marshall and Barnes.
Additional Prior Art
Kimmelman (US20120289366A1) teaches using weighted tapes around the edge of a racket frame.
Allowable Subject Matter
Claims 11-12 and 14-20 are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KILEY SHAWN STONER whose telephone number is (571)272-1183. The examiner can normally be reached on Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KILEY S STONER/ Primary Examiner, Art Unit 1735
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