DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-20 are pending.
Claims 21-39 are cancelled.
Drawings
The drawings are objected to because Fig. 1-12 include shading. The use of shading may be used if it aids in understanding the invention and if it does not reduce legibility. Such shading is preferred in the case of parts shown in perspective, but NOT for cross sections. See MPEP § 608.02. In the instant case, legibility is reduced.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,263,388. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Re claim 1 of the pending application and claims 1, 11 and 18 of ‘388, each discloses a sports implement comprising: a main body portion having a first contact surface, a second contact surface, and a sidewall positioned about a perimeter of each of the first and the second contact surfaces; a handle portion extending from the main body portion, the handle portion having a handle axis and a distal end; and an attachable grip member including a grip body portion and a grip end portion, the grip body portion being removably coupled with the distal end of the handle portion,
but ‘388 fails to claim wherein the main body portion and the handle portion cooperate to define an implement dimension value and wherein when the attachable grip member is coupled with the handle portion, the attachable grip member, the handle portion, and the main body portion cooperate to define a grip dimension value.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of he claimed invention to modify the sports implement of ‘388 wherein the main body portion and the handle portion cooperate to define an implement dimension value and wherein when the attachable grip member is coupled with the handle portion, the attachable grip member, the handle portion, and the main body portion cooperate to define a grip dimension value in order to control sizing of the grip with respect to the handle portion and main body portion. Moreover, the claimed implement dimension value and grip dimension value are not structural features, and all sports implements claimed as such inherently contain each value.
Claims 2-13 are rejected as being dependent on a rejected claim.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 6-7, 9, 12-14, 16, 19-21, 23, 25-27, 30-32, 35, 37 of copending Application No. 18/711,780 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Re claim 1 of the pending application and claims 1, 13, 20 and 30 of ‘780, each discloses a sports implement comprising: a main body portion having a first contact surface, a second contact surface, and a sidewall positioned about a perimeter of each of the first and the second contact surfaces; a handle portion extending from the main body portion, the handle portion having a handle axis and a distal end; and a grip member including a grip body portion and a grip end portion, the grip body portion being removably coupled with the distal end of the handle portion,
but ‘780 fails to claim wherein the main body portion and the handle portion cooperate to define an implement dimension value and wherein when the attachable grip member is coupled with the handle portion, the attachable grip member, the handle portion, and the main body portion cooperate to define a grip dimension value.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of he claimed invention to modify the sports implement of ‘780 wherein the main body portion and the handle portion cooperate to define an implement dimension value and wherein when the attachable grip member is coupled with the handle portion, the attachable grip member, the handle portion, and the main body portion cooperate to define a grip dimension value in order to control sizing of the grip with respect to the handle portion and main body portion. Moreover, the claimed implement dimension value and grip dimension value are not structural features, and all sports implements claimed as such inherently contain each value.
Claims 2-13 are rejected as being dependent on a rejected claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-20 of copending Application No. 19/058,183 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Re claim 1 of the pending application and claims 19 and 20 of ‘183, each discloses a sports implement comprising: a main body portion having a first contact surface, a second contact surface, and a sidewall positioned about a perimeter of each of the first and the second contact surfaces; a handle portion extending from the main body portion, the handle portion having a handle axis and a distal end; and a grip member including a grip body portion and a grip end portion, the grip body portion being removably coupled with the distal end of the handle portion,
but ‘183 fails to claim wherein the main body portion and the handle portion cooperate to define an implement dimension value and wherein when the attachable grip member is coupled with the handle portion, the attachable grip member, the handle portion, and the main body portion cooperate to define a grip dimension value.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of he claimed invention to modify the sports implement of ‘183 wherein the main body portion and the handle portion cooperate to define an implement dimension value and wherein when the attachable grip member is coupled with the handle portion, the attachable grip member, the handle portion, and the main body portion cooperate to define a grip dimension value in order to control sizing of the grip with respect to the handle portion and main body portion. Moreover, the claimed implement dimension value and grip dimension value are not structural features, and all sports implements claimed as such inherently contain each value.
Claims 2-13 are rejected as being dependent on a rejected claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 11-12, 17-20 is/are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Re claim 11, claim 11 recites, “the grip body” in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears this language is intended to recite, “the grip body portion” and will be interpreted as such.
Re claim 12, claim 12 recites, “the grip body” in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears this language is intended to recite, “the grip body portion” and will be interpreted as such.
Re claim 17, claim 17 is dependent on itself. It is unclear as to which claim it is intended to depend from. It appears this claim is intended to depend from claim 14 and will be interpreted as such.
Re claim 20, claim 20 recites, “the wrap” in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears this language is intended to recite, “the grip wrap” and will be interpreted as such.
Claims 18-19 are rejected as being dependent on a rejected claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 7, 9, 11-12, 14, 16 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Phelan JR (“Phelan”) (US 2017/0165548).
Re claim 1, Phelan discloses a sports implement (12.1) comprising:
a main body portion (see examiner comments) having a first contact surface (see examiner comments; which receives a ball), a second contact surface (see examiner comments; rear side), and a sidewall (see examiner comments) positioned about a perimeter (Fig. 12) of each of the first and the second contact surfaces (see examiner comments);
a handle portion (see examiner comments) extending from (Fig. 12) the main body portion (see examiner comments), the handle portion (see examiner comments) having a handle axis (1.2) and a distal end (proximate 12.3), wherein the main body portion (see examiner comments) and the handle portion (see examiner comments) cooperate to define an implement dimension value (any dimension thereof); and
an attachable grip member (12.3) including a grip body portion (1.1) and a grip end portion (bottom of 1.1), the grip body portion (1.1) being removably coupled with (via sliding, see Fig. 6 for example) the distal end (bottom of 6.4) of the handle portion (see examiner comments), wherein when the attachable grip member (12.3) is coupled with (Fig. 12, Fig. 5) the handle portion (see examiner comments), the attachable grip member (12.3), the handle portion (see examiner comments), and the main body portion (see examiner comments) cooperate to define a grip dimension value (any dimension thereof).
Re claim 2, Phelan discloses the sports implement of claim 1, wherein the grip body portion (1.1) includes a central cavity (1.4) dimensioned to slidably receive (Fig. 5-6) a portion (bottom of 6.4) of the handle portion (see examiner comments; 6.4).
Re claim 4, Phelan discloses the sports implement of claim 2, wherein the grip body portion (1.1) includes a generally solid member (1.1, Fig. 8) around the central cavity (1.4).
Re claim 7, Phelan discloses the sports implement of claim 2, wherein the grip end portion (bottom of 1.1) cooperates with the distal end (bottom of 5.3; see examiner comments) of the handle (5.3; see examiner comments) to define a secondary finger grip (any finger location per Fig. 5, as five fingers are shown gripping).
Re claim 9, Phelan discloses the sports implement of claim 1, wherein the attachable grip member (1.1; 12.3) is constructed from a resilient material ([0080] disclosing various resilient materials, including at least polyurethane).
Re claim 11, Phelan discloses the sports implement of claim 1, wherein the grip body (1.1) includes an elongated portion (see examiner comments) and an angled ridge (see examiner comments) extending obliquely (Fig. 5) along a plane (Fig. 5) relative to the handle axis (5.5).
Re claim 12, Phelan discloses the sports implement of claim 11, wherein the grip body (1.1) further includes a grip butt (see examiner comments) disposed between (longitudinally) the angled ridge (see examiner comments) and the grip end portion (bottom of 1.1), wherein the grip end portion (bottom of 1.1) is arranged generally perpendicularly to (Fig. 5, as “generally perpendicularly” is broad) the handle axis (5.5).
Re claim 14, Phelan discloses an attachable grip member (1.1) for a sports implement (5.3), the grip member (1.1) comprising:
a grip body portion (body of 1.1) defining a central cavity (1.4) adapted to removably receive (Fig. 5) a handle portion (5.3) of a sports implement (5.3); and
a grip end portion (bottom of 1.1) operably coupled with (Fig. 5) the grip body portion (body of 1.1), wherein the grip end portion (bottom of 1.1) does not protrude a distance beyond (Fig. 5) an end (bottom of 5.3) of the handle portion (5.3) of the sports implement (5.3) when coupled therewith (Fig. 5).
Re claim 16, Phelan discloses the attachable grip member of claim 14, wherein the grip body portion (1.1) includes a generally solid member (1.1, Fig. 8) around the central cavity (1.4).
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) 3, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Phelan JR (“Phelan”) (US 2017/0165548) in view of Roelke (US 2003/0109326).
Re claim 3, Phelan discloses the sports implement of claim 2, but fails to disclose wherein the grip body portion includes a plurality of ribs positioned around the central cavity.
However, Roelke discloses wherein the grip body portion (262) includes a plurality of ribs (272) positioned around the central cavity (within 276).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the sports implement of Phelan wherein the grip body portion includes a plurality of ribs positioned around the central cavity as disclosed by Roelke in order to provide structural integrity to the grip body portion while allowing for use of less material through hollowed sections in between ribs, thus reducing material costs.
Re claim 15, Phelan discloses the attachable grip member of claim 14, but fails to disclose wherein the grip body portion includes a plurality of ribs positioned around the central cavity.
However, Roelke discloses wherein the grip body portion (262) includes a plurality of ribs (272) positioned around the central cavity (within 276).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the attachable grip member of Phelan wherein the grip body portion includes a plurality of ribs positioned around the central cavity as disclosed by Roelke in order to provide structural integrity to the grip body portion while allowing for use of less material through hollowed sections in between ribs, thus reducing material costs.
Claim(s) 5-6, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Phelan JR (“Phelan”) (US 2017/0165548) in view of Force (US 2021/0228962).
Re claim 5, Phelan discloses the sports implement of claim 2, but fails to disclose wherein the central cavity extends through the grip end portion of the attachable grip member.
However, Force discloses wherein the central cavity (within 22) extends through (Fig. 1-3) the grip end portion (bottom of 22) of the attachable grip member (22).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the sports implement of Phelan wherein the central cavity extends through the grip end portion of the attachable grip member as disclosed by Force in order to allow for sliding adjustment along the length of the handle portion.
Re claim 6, Phelan discloses the sports implement of claim 5, Force disclosed wherein the distal end (end of 21/24) of the handle portion (21/24) protrudes outwardly from (Fig. 1-3) the grip end portion (end of 22) of the attachable grip member (22).
Re claim 17, Phelan discloses the attachable grip member of claim 14, but fails to disclose wherein the central cavity extends through the grip end portion of the attachable grip member.
However, Force discloses wherein the central cavity (within 22) extends through (Fig. 1-3) the grip end portion (bottom of 22) of the attachable grip member (22).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the attachable grip member of Phelan wherein the central cavity extends through the grip end portion of the attachable grip member as disclosed by Force in order to allow for sliding adjustment along the length of the handle portion.
Re claim 18, Phelan discloses the attachable grip member of claim of claim 17, wherein the grip body (1.1) includes an elongated portion (see examiner comments) and an angled ridge (see examiner comments) extending obliquely (Fig. 5) along a plane (Fig. 5) relative to the handle axis (5.5).
Re claim 19, Phelan discloses the attachable grip member of claim of claim 18, wherein the grip body (1.1) further includes a grip butt (see examiner comments) disposed between (longitudinally) the angled ridge (see examiner comments) and the grip end portion (bottom of 1.1), wherein the grip end portion (bottom of 1.1) is arranged generally perpendicularly to (Fig. 5, as “generally perpendicularly” is broad) the handle axis (5.5).
Claim(s) 8, 10, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Phelan JR (“Phelan”) (US 2017/0165548).
Re claim 8, Phelan discloses the sports implement of claim 1, but fails to disclose wherein the grip dimension value is equal to the implement dimension value.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sports implement of Phelan wherein the grip dimension value is equal to the implement dimension value, such as by increasing the size of the grip member, to cover more of the handle and offer greater protection thereto. In general, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 10, Phelan discloses the sports implement of claim 1, but fails to disclose wherein the main body portion, the handle portion, and the grip member have a combined length of less than 18".
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sports implement of Phelan wherein the main body portion, the handle portion, and the grip member have a combined length of less than 18" in order to fit smaller sports implements such as tennis rackets or ping pong paddles. In general, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 13, Phelan discloses the sports implement of claim 1, but fails to disclose wherein the grip dimension value is less than 0.5% more than the implement dimension value.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sports implement of Phelan wherein the grip dimension value is less than 0.5% more than the implement dimension value in order to reduce the overall size of the grip member, reducing material costs. In general, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Phelan JR (“Phelan”) (US 2017/0165548) in view of Ward (US 5,867,868).
Re claim 20, Phelan discloses a grip wrap (1.1 being wrapped around 5.3) for a sports implement (5.3), the wrap (1.1) comprising:
an elongated member (1.1) having a first end (top end), a second end (bottom end), an upper portion (the elongated linear portion), and a lower portion (the lower portion);
a gripping protrusion (the bottom at CP in Fig. 6) extending a length of the elongated member (1.1) near the second end thereof (bottom end), the gripping protrusion (the bottom at CP in Fig. 6) including an angled ridge (see examiner comments);
wherein upon wrapping (Fig. 5) the grip wrap (1.1) around a handle (5.3) of the sports implement (5.3), the angled ridge (see examiner comments) is adapted to extend obliquely along a plane relative to (Fig. 5) the handle (5.3) of the sports implement (5.3),
but fails to disclose the elongated member as an elongated sheet.
However, Ward discloses the elongated member (10) as an elongated sheet (10).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the a grip wrap of Phelan with the elongated member as an elongated sheet as disclosed by Ward in order to provide a smaller object, pre-wrapping, for stackability and smaller shipping, saving costs.
Examiner Comments
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747
535
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774
795
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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, Brian Mattei can be reached at (571)270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
Prosecution Insights