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 .
Election/Restrictions
Applicant’s election without traverse of Species (5B) (claims 1, 3-5, 9, and 16-19) in the reply filed on 7/13/26 is acknowledged.
Specification
The use of the terms Kevlar and Nomex, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
Claims 5 and 9 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.
Claim 5 contains the trademark/trade name Kevlar. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a tape material and, accordingly, the identification/description is indefinite.
Claim 9 contains the trademark/trade name Nomex. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a core material and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taylor (US 2018/0104555A1).
With respect to claim 1, Taylor teaches a pickleball paddle (title; and figures) comprising: a handle (28); a ball striking blade (contact area of the paddle) formed integrally (handle extending from the core) with the handle (figures 1 and 1A-D; and paragraphs 33-37); the handle and the blade being formed from a core layer sandwiched (22) between outer layers (24/26 or 32/34) to form a unitary body (figures 1 and 1A-D; and paragraphs 33-37); wherein the core layer comprises a thickness which is substantially greater than thickness of the outer layers (figures 1 and 1A-D; and paragraphs 33-37), said thickness of the core layer being shaped along a peripheral part of the blade and body to form an edge extending between the outer layers of the unitary body (figures 1 and 1A-D; and paragraphs 33-37); and one or more layers of flexible edge tape (2) being bonded to an outer surface of the edge to at least extend between the outer layers (figure 1C; and paragraph 8).
With respect to claim 3, Taylor teaches wherein the said one or more layers of the tape to lap over peripheral portions of the respective outer surfaces of the outer layers of the ball striking blade (figure 1C; and paragraph 8).
With respect to claim 9, Taylor teaches wherein the core is formed from one or more of the following materials: polymeric foam, polypropylene, polyurethane, polyurethane foam, polyester, thermoplastic polyurethane (TPU), Polystyrene Foam, polyamide, other rigid polymer or glass/carbon filled polymer composite, urethane foam, polypropylene, Nomex® polycarbonamide material, ethylene vinyl acetate (EVA), aluminum, balsa, corrugated cardboard, polyethylene, polyvinyl chloride, a polyethylene vinyl acetate, polymethacrylimide, other polymeric foams, other lightweight elastic foams, liquid crystal elastomers (LCE), elastic polymers, liquid crystalline polymers, other types of wood, other metallic alloys, and combinations (paragraph 7).
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) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor as applied to claim 1, and further in view of Isshiki et al. (US2023/0112590A1) (hereafter Isshiki).
With respect to claim 4, Taylor does not teach wherein the edge tape is unidirectional such that the tape is fibre reinforced length-wise to provide directional strength along the edge between the outer layers; however, Isshiki teaches an edge tape that is unidirectional such that the tape is fibre reinforced length-wise for use on rackets (figures 1A-1B; and paragraphs 20-95).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize unidirectional fiber-reinforced sheet material of Isshiki on the paddle of Taylor in order to improve impact strength. When the tape of Isshiki is used on the paddle of Taylor there would intrinsically be an improvement in directional strength along the edge between the outer layers. The claim would have been obvious because the substitution of one known material for another material would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See MPEP 2143.
With respect to claim 5, Isshiki teaches wherein the edge tape seam comprises pre-pregnated carbon pre-pregnated carbon, Kevlar or fiberglass and may be a single layer of multiple layers of one material or a combination of materials (paragraphs 115-119).
Claim(s) 16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor as applied to claim 1, and further in view of Thurman et al. (US2021/0252356A1) (hereafter Thurman).
With respect to claim 16, Taylor does not teach wherein the unitary body comprises a shock absorbing layer positioned in between the outer layers.
However, Thurman teaches wherein the unitary body comprises a shock absorbing layer (3270-1,2,3,4) positioned in between the outer layers (44/46) (figures 36A-36B; and paragraph 183).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the foam polymeric foam layer of Thurman on the paddle of Taylor in order to provide different regions of different coefficients of restitution to enhance the ball striking performance
With respect to claim 18, Thurman teaches wherein the shock absorbing is embedded within the core (figures 36A-36B; and paragraph 183).
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor as applied to claim 1, and further in view of Meyer et al. (US2025/0083010A1) (hereafter Meyer).
With respect to claim 16, Taylor does not teach wherein the unitary body comprises a shock absorbing layer positioned in between the outer layers.
However, Meyer teaches wherein the unitary body comprises a shock absorbing layer positioned in between the outer layers (figures 2, 9A-B, 11, and 12A-B; and paragraphs 45-48, 59, and 61-62).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the shock absorbing layers of Meyer on the paddle of Taylor in order to reduce the acoustic signature of the paddle.
With respect to claim 17, Meyer teaches wherein the core is sandwiched between two shock absorbing layers wherein each shock absorbing layer being located below a respective outer layer (figures 2, 9A-B, 11, and 12A-B; and paragraphs 45-48, 59, and 61-62).
With respect to claim 18, Meyer teaches wherein the shock absorbing is embedded within the core (figures 9A-B; and paragraph 59).
Allowable Subject Matter
Claim 19 is 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 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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