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 of Group I (claims 1-17 and 20) in the reply filed on 7/13/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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) 1-5, 14-15, 17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thurman et al. (US 2021/0252356A1) (hereafter Thurman).
With respect to claim 1, Thurman teaches a pickleball paddle (2020) comprising: a handle portion (30); a head portion (2040) coupled to the handle portion, the head portion comprising: an outer frame (bumper 48 forming an outer perimeter of the head) extending about an opening (volume inside the outer frame); a perforate core (2072-1) within the opening; and a core flexor (2072-2/2172-2) extending between the perforate core and the handle portion within the opening (figures 23A-B and 24A-B; and paragraphs 138-145).
With respect to claim 2, Thurman teaches wherein the core flexor completely encircles the perforate core within the opening (figures 23A-B and 24A-B).
With respect to claim 3, Thurman teaches wherein the core flexor comprises a foamed layer (figures 24A-B; and paragraph 144).
With respect to claim 4, Thurman teaches wherein the perforate core comprises a honeycomb core (figures 23A-B and 24A-B; and paragraphs 138-145).
With respect to claim 5, Thurman teaches wherein the foam layer completely encircles the honeycomb core within the opening (figures 24A-B; and paragraph 144).
With respect to claim 14, Thurman teaches wherein the pickleball paddle has a combined maximum length and maximum width less than or equal to 24 inches. wherein the core flexor comprises a foam layer and wherein the outer frame comprises a tube forming a loop extending about the opening, the loop having end portions forming portions of the handle portion (paragraph 239).
With respect to claim 15, Thurman teaches wherein the perforate core comprises a honeycomb core (figures 23A-B and 24A-B; and paragraphs 138-145).
With respect to claim 17, Thurman teaches wherein the outer frame comprises an outer surface and a groove extending into and along the outer surface (paragraph 306).
With respect to claim 20, Thurman teaches a pickleball paddle (2020) comprising: a handle portion (30); and a head portion (2040) coupled to the handle portion, the head portion comprising: an outer frame extending (bumper 48 forming an outer perimeter of the head) about an opening (volume inside the outer frame); a core (2072-1) within the opening; and a foam layer (2172-2) encircling the core within the opening (figures 23A-B and 24A-B; and paragraphs 138-145).
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) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thurman.
With respect to claim 16, Thurman is silent with respect to the width of the foam layer; however, it is the examiner’s position that the width is an obvious design choice. The artisan would have been motivated to utilize a foam with a width of at least 10 mm in order to provide the desired amount of cushioning.
Claim(s) 6-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thurman as applied to claim 1 and 3-5 above, and further in view of Radcliffe (WO2025/090772A1).
With respect to claims 6-8, Thurman does not teach wherein the outer frame comprises a tube; wherein the tube is hollow; and wherein the outer frame comprises a loop extending about the opening, the loop having end portions forming portions of the handle portion.
However, Radcliffe teaches wherein the outer frame comprises a tube (figure 3A; and paragraph 64); wherein the tube is hollow (figure 3A; and paragraph 64); and wherein the outer frame comprises a loop extending about the opening, the loop having end portions forming portions of the handle portion (figure 3A; and paragraph 64).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the frame of Radcliffe on the paddle of Thurman in order to form a paddle with a lightweight and unitary frame.
With respect to claim 9, Thurman teaches a yoke (4142) between the opening and the handle portion, wherein the foam layer extends between the yoke and the honeycomb core (figures 24A-B and 45; and paragraphs 138-145 and 202). The foam of Thurman would extend between the yoke and the honeycomb core when the yoke is implemented in order to hold the core in place and provide cushioning.
With respect to claim 10, Thurman is silent with respect to the width of the foam layer; however, it is the examiner’s position that the width is an obvious design choice. The artisan would have been motivated to utilize a foam with a width of at least 10 mm in order to provide the desired amount of cushioning.
With respect to claim 11, it is the examiner’s position that the collective pickleball paddle of Thurman and Radcliffe satisfies the standards set forth in November 2023 USA Pickleball Equipment Standards Manual. However, if the applicant can prove the collective pickleball paddle does not satisfy these standards then it is the examiner’s position that it would have been obvious to modify the collective paddle into compliance to allow the collective paddle of the prior art to be usable in USAPA sanctioned events. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02.
With respect to claim 12, Thurman teaches wherein the pickleball paddle has a combined maximum length and maximum width less than or equal to 24 inches (paragraph 239).
With respect to claim 13, Thurman teaches a first face plate (44) spanning the opening over a first face of the honeycomb core and over a first face of the foam layer; a second face plate (44) spanning the opening over a second face of the honeycomb core and over a second face of the foam layer, wherein the first face plate and the second face plate have faces facing away from the opening (figures), but fails to teach that the faces having a maximum kinetic coefficient of friction less than or equal to 0.1875 when tested pursuant to protocol IAW ASTM D1894-14. However, it is the examiner’s position that it would have been obvious to the artisan implement a maximum coefficient of kinetic friction of a less than or equal to 0.1875 and have a
surface roughness less than 40 microns, which are USAPA Equipment Standards, in order to allow the collective paddle of the prior art to be usable in USAPA sanctioned events.
Prior Art
Note that WO2026/020016A1 and US2022/0040937A1, which are cited on the attached form-892, also teach surrounding a core of a pickleball paddle with a foam.
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.
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, 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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