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 .
Response to Amendment
The amendments filed 8/31/2026 have been entered. Claims 1-9 and 11-20 remain pending in the application.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor.
Claims 16, 17, 19 and 20 are rejected as set forth in paragraphs 4-6 of the previous office action (5/29/2026).
Claims 1-9, 11-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor in view of US 20080300068 (hereinafter “Chao”).
Regarding claim 1, Taylor discloses a paddle (Fig. 1, 20) that has a paddle body (Fig. 1, 22) having a first side and an opposing second side (Fig. 1, 24 and 26), wherein the first side and the second side are both generally planar, the paddle body further having an edge (Fig. 1, 30) between the first and second sides and defining a perimeter of the paddle body; and
a peripheral sidewall (Fig. 1, 36) attached about the perimeter of the paddle body, the peripheral sidewall having an inner surface contacting the perimeter of the paddle body and an outer surface facing away from the paddle body;
While Taylor discloses the peripheral sidewall is made of a polymer (Para. 0036), it does not specify that it is non-foam, polyurethane, thermoset material. However, Chao discloses a material made from thermoset polyurethane can be used for a sports racket, which is ideal for parts that are subject to high impact or repetitive loads (Paras. 0132 and 0194). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to make the peripheral sidewall of Taylor using thermoset polyurethane as taught by Chao, as it is a widely known material in the art and able to handle high impact/repetitive loads during play. Additionally, existing case law notes that the selection of a well-known material is not considered patentable. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144 - In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 2, modified Taylor further discloses a skin and adhered to the first side, the second side, and the peripheral sidewall (Taylor: Figs. 1, 1A and 1B, 32 and 34), and wherein the skin attaches the peripheral sidewall to the paddle body (Para. 0035).
Regarding claim 3, modified Taylor further discloses the skin overlaps with a portion of the peripheral sidewall (Taylor: Para. 0035).
Regarding claim 4, modified Taylor further discloses the skin does not overlap with an outer edge of the peripheral member so as to expose at least a portion of the peripheral sidewall (Taylor: Para. 0035).
Regarding claim 5, modified Taylor further discloses the skin is a carbon fiber skin (Taylor: Para. 0034).
Regarding claim 6, modified Taylor does not disclose the peripheral sidewall has a mass that is at least 20% of a mass of the paddle. Taylor inherently teaches a sidewall mass that makes up a percentage of the overall mass of the paddle, but does not expressly disclose its numeric value. However, Taylor does state that a larger mass of edge material will provide more damping effect with an increase in weight and that weight should be considered (i.e. mass relationship is a known variable to impact dampening effect) (Para. 0045). Though a specific mass percentage of the edge is not shown as claimed by the Applicant, it has been held that the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144 - In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As such, one of ordinary skill in the art at the effective filing date would have been able to design a paddle sidewall with the claimed mass percentage through routine experimentation, for example by varying wall dimensions with reasonable expectation of success. Furthermore, it would be obvious to try, such that one would be motivated to optimize mass distribution to enhance dampening effect while maintaining paddle maneuverability. As noted in applicant’s specification (paragraph 35), the peripheral member has significant density and mass ranging from 20 to 70% of the total paddle mass with the substantial mass allowing for effective vibration dampening (same benefit disclosed by Taylor for varying the mass of the peripheral edge). There does not appear to be any criticality or unexpected result from the disclosed percentage mass ranges and it is the examiner’s position that the claimed ranges of mass percentages for the peripheral sidewall are entirely obvious as a matter of optimizing ranges through routine experimentation as discussed supra.
Regarding claim 7, modified Taylor further discloses the inner surface of the peripheral sidewall (Taylor: Fig. 1, 36) includes surface features configured to mate with corresponding cells of the paddle body (Taylor: Fig. 1, 22). Under BRI, the peripheral sidewall and paddle body of Taylor are configured to mate through their complimentary shapes.
Regarding claim 8, modified Taylor further discloses the peripheral sidewall is a single peripheral sidewall that extends about at least a majority of the perimeter of the paddle body. Peripheral wall of Taylor is described as a singular edge or cap (Para. 0035) and is shown to cover the majority of the paddle body perimeter in Fig. 1.
Regarding claim 9, Taylor discloses a paddle (Fig. 1, 20) that has a paddle body (Fig. 1, 22) having a first side and an opposing second side (Fig. 1, 24 and 26), wherein the first side and the second side are both generally planar, the paddle body further having an edge (Fig. 1, 30) between the first and second sides and defining a perimeter of the paddle body;
a peripheral sidewall (Fig. 1, 36) attached about the perimeter of the paddle body, the peripheral sidewall having an inner surface (Fig. 1A right side of 36) contacting the perimeter of the paddle body and an outer surface (Fig. 1A, 42) facing away from the paddle body, wherein the outer surface of the peripheral sidewall defines an outer perimeter of the peripheral sidewall; and
a skin adhered to the first side (Fig. 1A, 32), the second side (Fig. 1A, 34), and the outer surface of the peripheral sidewall (Fig. 1A, 36), wherein the skin has an outer perimeter that does not extend all the way to the outer perimeter of the peripheral sidewall such that a portion of the peripheral sidewall is exposed (Para. 0035).
While Taylor discloses the peripheral sidewall is made of a polymer (Para. 0036), it does not specify that it is non-foam, polyurethane, thermoset material. However, Chao discloses a material made from thermoset polyurethane can be used for a sports racket, which is ideal for parts that are subject to high impact or repetitive loads (Paras. 0132 and 0194). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to make the peripheral sidewall of Taylor using thermoset polyurethane as taught by Chao, as it is a widely known material in the art and able to handle high impact/repetitive loads during play. Additionally, existing case law notes that the selection of a well-known material is not considered patentable. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144 - In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claims 11-12, Taylor does not disclose that the peripheral sidewall makes up a specific percentage of the mass of the paddle. Taylor inherently teaches a sidewall mass that makes up a percentage of the overall mass of the paddle, but does not expressly disclose its numeric value. However, Taylor does state that a larger mass of edge material will provide more damping effect with an increase in weight and that weight should be considered (i.e. mass relationship is a known variable to impact dampening effect) (Para. 0045). Though a specific mass percentage of the edge is not shown as claimed by the Applicant, it has been held that the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144 - In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As such, one of ordinary skill in the art at the effective filing date would have been able to design a paddle sidewall with the claimed mass percentage through routine experimentation, for example by varying wall dimensions with reasonable expectation of success. Furthermore, it would be obvious to try, such that one would be motivated to optimize mass distribution to enhance dampening effect while maintaining paddle maneuverability. As noted in applicant’s specification (paragraph 35), the peripheral member has significant density and mass ranging from 20 to 70% of the total paddle mass with the substantial mass allowing for effective vibration dampening (same benefit disclosed by Taylor for varying the mass of the peripheral edge). There does not appear to be any criticality or unexpected result from the disclosed percentage mass ranges and it is the examiner’s position that the claimed ranges of mass percentages for the peripheral sidewall are entirely obvious as a matter of optimizing ranges through routine experimentation as discussed supra.
Regarding claim 13, modified Taylor further discloses the skin is adhered to the first side, the second side, and the outer surface of the peripheral sidewall via an adhesive (Taylor: Para. 0035).
Regarding claim 14, modified Taylor further discloses the peripheral sidewall is a single peripheral sidewall that extends about at least a majority of the perimeter of the paddle body. Peripheral wall of Taylor is described as a singular edge or cap (Para. 0035) and is shown to cover the majority of the paddle body perimeter in Fig. 1.
Regarding claim 15, modified Taylor further discloses a pair of sidewalls attached to different areas of the edge of the paddle body (Taylor: Fig. 1A, 38 and 40).
Regarding claim 18, modified Taylor discloses the limitations of claim 16 but does not disclose the peripheral sidewall comprises a non-foam, polyurethane, thermoset material. However, Chao discloses a material made from thermoset polyurethane can be used for a sports racket, which is ideal for parts that are subject to high impact or repetitive loads (Paras. 0132 and 0194). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to make the peripheral sidewall of Taylor using thermoset polyurethane as taught by Chao, as it is a widely known material in the art and able to handle high impact/repetitive loads during play. Additionally, existing case law notes that the selection of a well-known material is not considered patentable. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144 - In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Response to Arguments
Applicant’s arguments with respect to claims 1, 10, and 18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Chao discloses using thermoset polyurethane for sports rackets as stated supra in the prior art rejection.
Applicant's arguments with respect to claims 6, 11, 12, 16, and 17 have been fully considered but they are not persuasive. Applicant argues that Taylor does not establish the ratio of peripheral-sidewall mass to total mass as a result effective variable. However, this ratio relies directly on sidewall/edge material mass, which is considered by Taylor as previously pointed out. Further, the paddle of Taylor inherently has a total mass, that of which the sidewall/edge mass takes up a specific percent or ratio. This comparison of values does not suggest novelty – merely, it is another way of suggesting edge/sidewall mass must be considered for engineering design for desired effects (which in Taylor’s case, is dampening). Therefore, a result effective variable is established by Taylor and would be within the realm of ordinary skill for a POSITA to optimize the mass distribution of the paddle for desired dampening/feel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.B./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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