DETAILED ACTION
This Office action is responsive to communication received 11/04/2024 – application papers received, including IDS, and Power of Attorney.
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 .
Status of Claims
Claims 1-15 are pending.
Drawings
The drawings were received on 11/04/2024. These drawings are acceptable.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 U.S.C. § 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.
Claims 1-15 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.
As to claim 1, line 2, after “cue”, it is suggested to insert the term --body--, so that the phrase reads --a billiard cue body--. Otherwise, the expression of simply “a billiard cue” seems misplaced, as the preamble already sets forth a billiard cue. In line 12, is the “solid shaft section” a part of the shaft portion? In lines 13, 15, 16 and 18, the language referring to the respective “joint side cylinder” and “tip side cylinder” should clearly recite that the cylinders are hollow (e.g., “a joint side hollow cylinder”; “a tip side hollow cylinder”) so that the structure is properly established for the subsequent requirement in claim 2 that the plugs are inserted at each opposing end.
As to claim 2, line 1, --the-- should precede “tip”. Also, in line 2, “at each opposing end” should read --at each of the two opposing ends of each of the joint side cylinder and the tip side cylinder-- for properly referencing the corresponding two opposing ends.
Claim 3 shares the indefiniteness of claim 2 (as dependent from claim 1).
As to claim 4, line 2, which “opposing end” is the claim referring to? Note that each of the joint side cylinder and the tip side cylinder have been identified as having two opposing ends. Also, in line 2, --the-- should precede “tip”. In lines 2-3, “the inner diameter of the joint side cylinder and tip side cylinder” lacks proper antecedent basis. Note that an inner diameter of the joint side bore as well as an inner diameter of the tip side bore have been identified in independent claim 1. However, no inner diameter of the joint side cylinder or the tip side cylinder has been previously set forth. In line 3, which “opposing end” is being referenced? In line 4, the term --the-- should precede “joint”.
As to claim 5, line 2, after “cue”, it is suggested to insert the term --body--, so that the phrase reads --a billiard cue body--. Otherwise, the expression of simply “a billiard cue” seems misplaced, as the preamble already sets forth a billiard cue. In line 8, “and” should read --or--. In lines 9, 10 and 12, the language referring to the “first cylinder” should clearly recite that the cylinder is hollow (e.g., “a hollow first cylinder”) so that the structure is properly established for the subsequent requirement in claim 5 hat the cylinder is filled with foam and for the subsequent requirement in claim 10, which requires plugs inserted at each opposing ends.
Claim 6 shares the indefiniteness of claim 5.
As to claim 7, lines 2-3, “from a second one of the joint end and the tip end” should perhaps read --from a second one of the joint end or the tip end and different from the first one of the joint end or the tip end-- for clarity.
Claim 8 shares the indefiniteness of claim 7 (as dependent from claim 5).
As to claim 9, line 2, is the “solid shaft section” a part of the shaft portion? If so, how does this solid shaft section distinguish from the cylinder filled with foam recited in claim 5?
As to claim 10, line 1, after “each”, the phrase --of the two-- should be inserted for properly referencing the two opposing ends.
Claim 11 shares the indefiniteness of claim 10, since claim 11 depends from claim 10.
As to claim 12, lines 1-2, is “an opposing end” referring to an opposing end of the two opposing ends? In lines 2-3, “the inner diameter of the first cylinder” lacks proper antecedent basis. Note that an inner diameter of the first bore has been set forth in independent claim 5. However, no inner diameter of the first cylinder has been previously set forth. In line 3, here again, is “the opposing end” referring to the same opposing end as recited in lines 1-2? In line 4, the term --the-- should follow “of”.
As to claim 13, line 2, after “cue”, it is suggested to insert the term --body--, so that the phrase reads --a billiard cue body--. Otherwise, the expression of simply “a billiard cue” seems misplaced, as the preamble already sets forth a billiard cue. In lines 9, 10 and 12, the language referring to the “cylinder” should clearly recite that the cylinder is hollow (e.g., “a hollow cylinder”) so that the structure is properly established for the subsequent requirement in claim 13 of a first plug and second plug inserted at the opposing end of the cylinder. Also, in line 12, “a first and second plug” should read --a first plug and a second plug-- for proper grammar.
As to claim 14, line 1, --the-- should precede “second”.
As to claim 15, line 1, --the-- should precede “second”.
The Office has made every effort to identify the instances of indefiniteness in the current claim set. To the extent that any remaining occurrences of indefiniteness may exist in the claims, the applicant is respectfully asked to thoroughly review the claims and to amend the claims to capture and to correct any remaining instances of indefiniteness of which the applicant may become aware of during the preparation of a response to this Office action.
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.
Claim 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2007/0010340 to Miki in view of USPN 11,224,795 to Liebl.
As to claim 5, Miki shows a billiard cue, comprising: a) a billiard cue body (300; FIG. 1) having a butt portion (200) and a shaft portion (100); b) the shaft portion (100) defining a central axis that extends along a length of the shaft portion (100); c) the shaft portion (100) having a joint end and tip end at opposing ends along the central axis, as shown in FIG. 1; d) wherein the shaft portion defines a first bore (21; FIG. 2-1 and also bore 27a shown in FIG. 3(1)) that extends into the shaft portion along the central axis from a first one of the joint end and the tip end; e) a first cylinder (33; FIG. 3(1)) having a length and two opposing ends arranged inside the first bore (i.e., see FIG. 3(2)), wherein an outer diameter of the first cylinder is equal to an inner diameter of the first bore; and f) wherein the first cylinder is filled with a foam (i.e., note foam 31 in FIG. 2-1). It is noted that FIG. 2-1(1) shows that a portion of the shaft portion includes a bore within which a urethane foam is introduced to support the shaft portion adjacent the tip end. In a later embodiment depicted in FIG. 3(1), Miki details that the shaft portion includes a bore within which a cylindrical tube (33) is inserted, with the cylindrical tube including structure for supporting the shaft portion adjacent the tip end. The cylindrical tube may be selectively filled with resin material. In view of the totality of the teachings in Miki, 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 billiard cue in Miki by including a cylindrical tube, as depicted in FIG. 3(1) and by filling the cylindrical tube with a foam, as opposed to having internal support bodies, as shown in FIG. 2-2 (3a) – (3e), with there being a reasonable expectation of success that the shaft portion, adjacent the tip end, would have been provided with additional structural support. In fact, Miki even states that portions within and around any internal supporting structure may be filled with plastic material, for example, in order to provide a more solid construction (i.e., see paragraph [0050]). Miki also notes that the internal supporting structure may comprise foam material (i.e., see paragraphs [0072], [0095], and [0096]).
Miki further differs from the claimed invention in that Miki does not explicitly state that the cylindrical tube is “made of carbon fiber material”. However, it is noted that Miki mentions that carbon fiber material is used in the construction of a billiard cue (i.e., see paragraphs [0039], [0050], [0062], [0069], [0088], and [0095]). Here, Liebl shows it to be old in the art to construct a cylindrical tube using carbon fiber material, wherein the cylindrical tube is to be inserted within a bore inside of a billiard cue body (i.e., see support tube 120 fitted within bore 118; and col. 4, lines 17-55). In view of the teaching in Liebl, 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 billiard cue body in Miki by constructing the cylindrical tube (33) from carbon fiber material in order to take advantage of the properties of carbon fiber material (i.e., carbon fiber material is strong yet lightweight, and provides added rigidity and stiffness). Moreover, the selection of suitable, known materials used in the art would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07 stating: “[T]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).”
As to claim 6, Miki details that the foam in the cue stick is urethane foam (i.e., urethane and polyurethane are generally the same material). The selection of a specific urethane (e.g., “polyurethane”) to take advantage of the known characteristics of polyurethane (e.g., flexibility, impact resistance, shock-absorption) in a specific use or application would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. Again, see In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
As to claims 7-8, to have included and arranged a second bore and a second cylinder within and along the shaft portion, with the second cylinder being similarly constructed from carbon fiber material as explained hereinabove for the first cylinder, for selectively altering the flexural response of the billiard cue upon striking a billiard ball would simply have involved an obvious duplication of parts. See MPEP 2144.04, which states: “In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).”
/
/
/
Claim 10-11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2007/0010340 to Miki in view of USPN 11,224,795 to Liebl and also in view of US PUBS 2015/0105171 to Brown.
As to claims 10-11, Miki, as modified by Liebl, lacks “plugs inserted at each opposing end” (claim 10), with the plugs “made of wood” (claim 11). Brown shows it to be old in the art to use plugs in combination with an internal containment portion of a billiard cue in order to protect the structural integrity of a filler material placed within the containment portion (i.e., see paragraphs [0042] – [0043] and FIG. 2B). In Brown, the plug (260) may be made of wood and serves to hold the filler material (254) in place while enhancing the structural rigidity of the billiard cue. In view of the teaching in Brown, 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 billiard cue in Miki by introducing plugs at opposing ends of the cylinder identified hereinabove, with the plugs being made of wood, the motivation being to help contain and to protect the urethane foam filling within the cylinder and to enhance the strength of the billiard cue.
As to claim 13, Miki shows a billiard cue, comprising: a) a billiard cue body (300; FIG. 1) having a butt portion (200) and a shaft portion (100); b) the shaft portion (100) defining a central axis that extends along a length of the shaft portion (100); c) the shaft portion (100) having a joint end and tip end at opposing ends along the central axis, as shown in FIG. 1; d) wherein the shaft portion defines at least one bore (21; FIG. 2-1 and also bore 27a shown in FIG. 3(1)) that extends into the shaft portion along the central axis; e) a cylinder (33; FIG. 3(1)) having a length and two opposing ends arranged inside the at least one bore (i.e., see FIG. 3(2)); wherein an outer diameter of the cylinder is equal to an inner diameter of the at least one bore.
Miki further differs from the claimed invention in that Miki does not explicitly state that the cylindrical tube is “made of carbon fiber material”. However, it is noted that Miki mentions that carbon fiber material is used in the construction of a billiard cue (i.e., see paragraphs [0039], [0050], [0062], [0069], [0088], and [0095]). Here, Liebl shows it to be old in the art to construct a cylindrical tube using carbon fiber material, wherein the cylindrical tube is to be inserted within a bore inside of a billiard cue body (i.e., see support tube 120 fitted within bore 118; and col. 4, lines 17-55). In view of the teaching in Liebl, 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 billiard cue body in Miki by constructing the cylindrical tube (33) from carbon fiber material in order to take advantage of the properties of carbon fiber material (i.e., carbon fiber material is strong yet lightweight, and provides added rigidity and stiffness). Moreover, the selection of suitable, known materials used in the art would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07 stating: “[T]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).”
Miki, as modified by Liebl, lacks “a first plug and second plug inserted at the two opposing ends of the cylinder” (claim 13), with the plugs “made of wood” (claim 14). Brown shows it to be old in the art to use plugs in combination with an internal containment portion of a billiard cue in order to protect the structural integrity of a filler material placed within the containment portion (i.e., see paragraphs [0042] – [0043] and FIG. 2B). In Brown, the plug (260) may be made of wood and serves to hold the filler material (254) in place while enhancing the structural rigidity of the billiard cue. In view of the teaching in Brown, 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 billiard cue in Miki by introducing plugs at opposing ends of the cylinder identified hereinabove, with the plugs being made of wood, the motivation being to help contain and to protect the urethane foam filling within the cylinder and to enhance the strength of the billiard cue.
Claim 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2007/0010340 to Miki in view of USPN 11,224,795 to Liebl and also in view of US PUBS 2015/0105171 to Brown and further in view of US PUBS 2009/0270192 to Titus et al (hereinafter referred to as “Titus”).
As to claims 12 and 15, Miki, as modified by Liebl and Brown, lacks the specific, claimed requirements for the diameter of both “a plug section” and “a cap section”. Titus shows it to be old in the art to provide a plug (320) including a plug section (325) that fits within an inner cylinder (350) along with a cap section that includes an outer diameter equal to the outer diameter of the cylinder (350), as shown in FIGS. 3A, 3B. An alternative embodiment in FIG. 4 shows a similar arrangement for a plug, with a plug section (425) fitted within the cylinder (450) and an outer diameter of a cap portion having an outer diameter equal to the outer diameter of the cylinder (450). The outer diameter of the plug section (325) enables the plug to more steadfastly grasp the inner wall of the cylinder (350), as described in paragraphs [0031] – [0033] of Titus, while the outer diameter of the cap section, which matches the outer diameter of the cylinder (350), provides for a smooth outward appearance, again shown in FIGS. 3A, 3B and 4. In view of the teachings in Titus, 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 further modified the billiard cue of Miki, as initially modified by Brown to add the plug(s), by also including a plug section and a cap section as part of the plug(s), with the plug section and the cap section including the claimed inner and outer diameter requirements with respect to the cylinder, the motivation being to provide better retention between the plug(s) and the cylinder.
Allowable Subject Matter
Claims 1-4 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Here, the closest prior art of record includes the prior art to US PUBS 2007/0010340 to Miki; USPN 11,224,795 to Liebl; US PUBS 2015/0105171 to Brown; and US PUBS 2009/0270192 to Titus et al. Without the benefit of applicant’s disclosure, it would not have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified any of the prior art devices of record to have included the specific combination of a billiard cue having a butt portion and a shaft portion in combination with all of the specific structure associated with the shaft portion, as set forth in independent claim 1, and including the all of the specific structure of the joint end and the tip end and further including the joint side bore and the tip side bore; and along with all of the specific structure of the joint side cylinder and the tip side cylinder; and further including a solid shaft section that separates the joint side bore and the tip side bore; with each of the joint side cylinder and the tip side cylinder made of carbon fiber material. Here, as explained on scanned page 11, lines 3-11 of the specification, the solid shaft section that separates the joint side bore and the tip side bore provides for better energy transfer through the shaft to prevent a decrease in power from the joint side bore and provides added support between the joint side bore and the tip side bore to prevent deflection. Here, the presence of the solid shaft section provides added stiffness and weight to the billiard cue for added control and increased shot precision.
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIG. 2 in Liebl (‘676);
See Figs. 4a-4d in Shields;
See FIGS. 5-7 in Yu;
See Fig. 3 in McCarty;
Note Fig. 4 in Takahara;
Note Figures 3a, 3b, 3c and 4 in Andrews (‘903);
CN 202111227473-A uses a foam filling in a billiard cue;
See the abstract in CN-1895707-A;
Note FIGS. 2-3 in JP-2001198256-A;
Note FIG. 1 and the abstract in JP-2002346023-A;
See the abstract in JP-2007124108-A;
See FIG in JP-3235134-U;
Note FIG. 1 and the abstract in KR-200473490-Y1;
FIGS. 4 and 6 in JP-2002065934-A;
See the abstract and FIGS. 9 and 13 in JP-2007117605-A; and
Carbon fiber shell and a foam core are used in GB-2199505-A.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights