OFFICE ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant filed a claim set on 9/5/2024 and 9/12/2024. Claims 1–20 are pending.
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.
Claims 9 and 20 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 9 and 20, there is no support for the reinforcing member to contact each wall of the four walls of the strip(s) (or prism(s)). As seen in every figure, the reinforcing member is wrapped around and contacts at most three walls of the strips.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 4, there is no antecedent basis for the foam on a first side.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1–3, 5–7, 10 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 11–12, 14–15 and 17 of co-pending application No. 19/243,939 (reference application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 1 is anticipated by claim 1 of the reference application, except for the:
claimed handle portion which would have been obvious to have provided in a connected manner to the head portion of the reference application’s “pickleball paddle”, so that the paddle can be effectively swung by a pickleball player.
claimed edge of the core which is essentially inherent with the reference application’s core – the core’s first surface could represent a top, the core’s second surface could represent a bottom and any portion therebetween would thus qualify as an “edge”.
Claim 2 describes limitations taught by claim 11 of the reference application.
Claim 3 describes limitations taught by claim 12 of the reference application.
Claim 5 describes limitations taught by claim 14 of the reference application.
Claim 6 describes limitations taught by claim 15 of the reference application.
Claim 7 is anticipated by claim 1 of the reference application, except for the:
claimed each strip has a rectangular cross-section, which would have been obvious to have provided with that of the reference application given that it calls for “at least one section of the plurality of sections has a cross-section that is rectangular”.
Claim 10 describes limitations taught by claim 17 of the reference application.
Claim 13 describes limitations taught by claim 9 of the reference application (four sections).
Claims 8 and 16–19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 9 and 14 of co-pending Application No. 19/243,939 in view of US 2016/0193793 (Filippini).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 8 would have been obvious to have provided, given that Filippini teaches a sports paddle that includes strips having rectangular cross-sections, as sectioned from a prospective perpendicular to the connected handle such as shown in FIGs. 7 and 8A.
Claim 16 would have been obvious to have provided, given that Filippini teaches a sports paddle that includes strips having rectangular cross-sections in shapes that qualify as prisms, such as shown in FIGs. 7 and 8A.
Claim 17 describes limitations taught by claim 3 of the reference application.
Claim 18 describes limitations taught by claim 14 of the reference application.
Claim 19 describes limitations taught by claim 9 of the reference application (four sections).
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of co-pending Application No. 19/243,939 in view of US 2022/0040937 (Simmons).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 11 would have been obvious to have provided, given that Simmons teaches a perimeter edge tube in FIG. 5 which is filled with foam, per ¶ 0040.
Claim Objections
Claims 12 and 14–15 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY D CARLSON whose telephone number is (571) 272-6716. The examiner can normally be reached Mon-Fri 7:30 am to 5:00 pm, off 1st Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached on (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
Prosecution Insights