DETAILED ACTION
This Office action is responsive to communication received 10/28/2024 – application papers received, including Power of Attorney and IDS.
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 .
Drawings
The drawings were received on 10/28/2024. These drawings are acceptable.
Priority
The effective filing date of this application is equal to the actual filing date, which is 10/28/2024.
Status of Claims
Claims 1-24 are pending.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a pickleball paddle having an enlarged sweet spot area, classified in A63B 59/42;
II. Claims 11-16, drawn to a pickleball paddle for dampening vibrations when striking a ball, classified in A63B 60/54;
III. Claims 17-24, drawn to a pickleball paddle having an edge guard that maximizes usable handle length, classified in A63B 60/06.
The inventions are independent or distinct, each from the other because:
Inventions I, II and III are directed to related pickleball paddles. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j).
In the instant case, the inventions as claimed have a different function or effect. Invention I is directly solely to establishing the location of the center of gravity with respect to the geometry of the pickleball paddle. Invention II is directed solely to a vibration dampener feature and its associated material makeup and orientation with respect to various segments of the pickleball paddle. Invention III is directed solely to construction of an edge guard and its connection to the handle and the head portions of the paddle.
Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants. The claims of Invention I, Invention II and Invention III are not obvious variants of one another, as none of the limitations associated with the center of gravity and sweet spot recited in Invention I are recited in either Invention II or Invention III. Likewise, the claimed characteristics of the vibration dampener associated with Invention II are absent from the claims of Invention I and Invention III. Finally, the claimed requirements for the edge guard that is a part of Invention III are absent from the claims of Invention I and Invention II.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: Inventions I, II and III would require a different field of search (e.g., searching different classes / subclasses or electronic resources and employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Michael Berkowitz (Reg. No. 39607) on July 28, 2026, a provisional election was made without traverse to prosecute the invention of Invention I (claims 1-10). Affirmation of this election must be made by applicant in replying to this Office action.
Claims 11-24 have been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections - Minor
Claim 1 is objected to because of the following informalities:
In line 7, --a-- should precede “perimeter”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-10 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not adequately disclose how the skilled artisan would have arrived at the claimed requirement of “a center of gravity approximately two thirds of the height of the head from the base end thereof to define a sweet spot area”. How where considerations of the weight of each of the pickleball paddle, core and handle taken into account when determining the location of the center of gravity? What procedures were used to locate the center of gravity? At present, the specification contains a single reference to center of gravity in paragraph [0012], without further elaborating on how the claimed “two-thirds” distance is obtained. Although the specification mentions that the location of the sweet spot area depends upon the geometry of the paddle and the inclusion or exclusion of the handle structure, there is no guidance provided for the skilled artisan to understand how the center of gravity is located within the sweet spot area nor how or even if the center of gravity coincides with the maximum width of the head. Other than identifying an axis intersecting the maximum width points on the paddle, there is no explanation as to how the size of the sweet spot has been calculated such that the horizontal axis is positioned to extend through the sweet spot. Not only does the specification not include any specific mass criteria or density values for the materials that are used for any of the paddle, the handle and the core, but also the specification does not adequately describe the relationship among the various mass values. While a broad disclosure is made regarding the relocation of the center of gravity when a handle is attached, there is no way to understand how a location of the center of gravity was achieved with respect to the height of the head.
Claim Rejections - 35 USC § 112(b)
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 8 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 8, “the first face” and “the second face” lack proper antecedent basis. Note that these elements are positively recited in claim 2. Note that claim 8 depends from claim 6, which depends from claim 1.
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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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2017/0021247 to Marvin in view of US PUBS 2021/0252356 to Thurman et al (hereinafter referred to as “Thurman”) and also in view of US PUBS 2023/0218961 to Huang and also in view of an article in Pickleball Science titled “Where is the Sweet Spot”, and dated July 1, 2022, and having pages 1-17, and retrieved from the Internet at https://pickleballscience.org/where-is-the-sweet-spot/ (hereinafter referred to as “Pickleball Science”).
As to independent claim 1, Marvin shows a pickleball paddle having an enlarged sweet spot (i.e., paragraph [0016]) comprising:
a. a head (40) for striking a ball, the head (40) having a base end (i.e., adjacent an intersection of the paddle and the handle 30) and a height (i.e., the length of the paddle 40 from generally the point where the handle meets the paddle to the opposite end of the paddle where the paddle top edge is flat); and
b. a handle (30) extending from the base end of the head (40) and including a grip portion designed to be grasped by the hand of a user (i.e., paragraph [0024]).
Marvin does not explicitly disclose “a center of gravity located approximately two thirds of the height of the head from the base end thereof to define a sweet spot area” along with “the head including … the left and right side edges curving outwardly and away from each other as they extend downwardly from opposite ends of the top edge to reach a maximum width of the head defined by a horizontal axis line, and thereafter the left and right side edges curving inwardly and towards each other as they extend towards the base end of the head” and also does not show “wherein the horizontal axis line is positioned such that it extends through the sweet spot area”. Note that Marvin does recognize that both the density distribution of material selected for the construction of the paddle and the center of balance (i.e., center of gravity) of a paddle may alter the size of the sweet spot and that adjustments may be made to optimize the location of the sweet spot to improve the overall striking characteristics of the paddle (i.e., see paragraphs [0006], [0020] – [0022] and [0027]). Here, Thurman presents various designs for a pickleball paddle (i.e., FIGS. 37A, and FIGS. 41-45; paragraphs [0063] and [0201] – [0202]). Here, at least FIG. 41 in Thurman shows a pickleball paddle (3740) having a head (3741) wherein the left and right side edges curve outwardly and away from each other as they extend downwardly from opposite ends of the top edge to reach a maximum width of the head, with a horizontal axis line being depicted at the maximum width, and thereafter the left and right side edges curve inwardly and towards each other as they extend towards the base end of the head (3741). In addition, the reference to Huang explains that the location of a balance spot (i.e., the center of gravity) on a pickleball paddle may be altered to customize the overall feel of the paddle, with consideration of the sizing of the paddle head and overall paddle length (i.e., paddle head plus handle) along with the weight distribution of the paddle (i.e., paragraph [0017] and [0022] – [0024]). In addition, Pickleball Science meticulously explains that the location of the sweet spot is only indirectly based upon the size and shape of the paddle, with weight and inertia of the paddle being the direct factors affecting the establishment of the location of a sweet spot. Pickleball Science further identifies that the center of gravity of the paddle will lie on a longitudinal centerline of the paddle (i.e., see more specifically pages 4-6 and 10-12 of the article). In view of the combined teachings in Thurman, Huang and Pickleball Science, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to provide a diverse shape to the paddle in Marvin, as initially taught by Thurman, and to move the center of gravity father away from the handle (i.e., arrange for a head-heavy or top-heavy paddle configuration) for improved control and enhanced feel for a player in order to customize the weight distribution of the paddle according to the needs of a player, whereby Huang and Pickleball Science teach that several variables may be used to calculate the location of the center of gravity of the paddle for improved playability. Moreover, the claimed “two-thirds of the height of the head” is not deemed critical. Here, the “two-thirds of the height of the head” requirement for the location of the center of gravity is mentioned only once in paragraph [0012] of the specification, with no further elaboration provided. Also, insofar as the claimed “horizontal axis line”, it is noted that Marvin explains that at least in one embodiment the expanded sweet spot is located in the central portion (54), which is depicted in FIG. 5B and explained in paragraph [0027]. As such, an imaginary horizontal axis line would extend across the sweet spot (i.e., across portion 54). Moreover, and as highlighted hereinabove, Thurman shows a maximum width defined by a horizontal axis line that extends across a central portion of the paddle. When modified with the teachings in Thurman, the Marvin paddle would thus have included left and right side edges curving outwardly and away from each other as they extend downwardly from opposite ends of the top edge to reach a maximum width of the head defined by a horizontal axis line, and thereafter the left and right side edges curving inwardly and towards each other as they extend towards the base end of the head and would have also included the horizontal axis line positioned such that it extends through the sweet spot area.
As to claim 2, Marvin shows the head includes a first face (i.e., top face) having a planar surface and an opposing second face (i.e., bottom face) having a planar surface for striking a ball. See paragraphs [0023] and [0028]. In one instance, the planar core itself may be considered to include first and second faces while in a different embodiment and interpretation the planar core may be provided with first and second coverings that are situated atop the first and second faces, respectively, of the core, wherein the first and second coverings may be considered to be first and second face.
As to clam 3, the paddle in Marvin conforms to rules set forth by the International Federation of Pickleball, which states that the hitting surfaces cannot include holes (i.e., paragraph [0017]). Even considering that hole(s) are cut into the paddle core, these hole(s) are refilled with materials of diverse density and the end result is a paddle with no holes (i.e., paragraph [0028]).
As to claim 4, Marvin explains a scenario in which the sweet spot may be located near the center of the paddle (i.e., paragraph [0027]), in which case a vertical and horizontal centerline intersecting the center of the paddle would define a center point. Similarly, the skilled artisan would have been able to locate an axis of the sweet spot for those situations in which the sweet spot is relocated due to an increase or decrease in the density of materials or due to a change in the arrangement or patterns of different materials used to form the planar core (i.e., see paragraph [0033]). In addition, the claimed vertical axis and the horizontal axis are simply imaginary reference lines that may be established to locate a sweet spot on any paddle member.
As to claim 6, in Marvin, a core layer (50) resides between the first face and the second face.
As to claim 7, the core layer (50) in Marvin is formed of a cellular material (i.e., paragraph [0025]).
As to claim 8, in Marvin, the handle, the core layer, the first face, and the second face are integrally formed as a single unitary body. See paragraph [0024]. In one interpretation in which the planar core is considered to include first and second faces, the handle (30) and blade (40) may be integrally formed.
As to claim 9, in Marvin, the first and second faces are formed of a fiberglass or carbon fiber material (i.e., paragraph [0023]).
As to claim 10, in Marvin, the top edge (i.e., the edge of the paddle farthest from the handle tip) is a straight edge. See FIGS. 1, 2 and 5A-5C.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2017/0021247 to Marvin in view of US PUBS 2021/0252356 to Thurman et al (hereinafter referred to as “Thurman”) and also in view of US PUBS 2023/0218961 to Huang and also in view of an article in Pickleball Science titled “Where is the Sweet Spot”, and dated July 1, 2022, and having pages 1-17, and retrieved from the Internet at https://pickleballscience.org/where-is-the-sweet-spot/ (hereinafter referred to as “Pickleball Science”) and also in view of US PUBS 2023/0149784 to Lee.
As to claim 5, Marvin, as modified by Thurman, Huang and Pickleball Science, does not explicitly disclose that the sweet spot is “circular in shape”. Again, note that Marvin does recognize that both the density distribution of material selected in constructing the paddle and the center of balance (i.e., center of gravity) of a paddle may alter the size of the sweet spot and that adjustments may be made to optimize the location of the sweet spot to improve the overall striking characteristics of the paddle (i.e., see paragraphs [0006], [0020] – [0022] and [0027]). Lee shows an arrangement in which a sweet spot area is defined by the area occupied by an elastic member (13) contained within a groove pattern (101). Lee explains that the shape of the groove (101 and the elastic material (13), while depicted as square, may be a circular shape, with the size and location of the sweet spot being arranged to provide a better ball rebound effect (i.e., paragraph [0018]). In view of the teaching in Lee, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the paddle in Marvin by providing a circular shape to the sweet spot area for identifying an area on the pickleball paddle upon which impact with the sweet spot would have provided for an enhanced player experience by being able to hit the ball within a general location that is able to provide an increase in the amount of ball rebound.
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Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIG. 2 and the shape of the paddle in Kirkconnell;
Note FIG. 1 in Forsyth;
FIG. 4 in Marks provides a paddle design including left and right side edges curving outwardly and away from each other as they extend downwardly from opposite ends of the top edge of the paddle to reach a maximum width of the head;
Myrhum discusses moving the center of gravity away from the handle and closer to the top of the paddle (col. 4, lines 22-27);
See the Abstract of Li, describing that a location of the center of gravity may be adjusted;
Wang locates a center of gravity generally near the center of the paddle;
Marshall explains that the weight and center of gravity may be adjusted;
See FIGS. 3 and 4 in Trieu;
Document SK-500132022-A3 details the current state of the art of paddle design on translated page 2; and
Becker shows a paddle, of interest.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571)-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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