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 .
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 6, 9 and 19 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.
The scope of claims 6, 9 and 19 is considered indefinite since it recites and unbounded upper range covering an infinite range over 1.2. Further such is ambiguous and unclear in that the maximum distance between adjacent connecting bars and minimum distance between adjacent connecting bars is not defined. Such can have multiple meanings such as measuring the minimum and maximum distance between a single pair of connecting bars or a comparison of the distances between one pair of connecting bars with respect to another pair of connecting bars.
Claim Rejections - 35 USC § 102
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)(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) 1-4, 11, and 17-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Filippini 10,377,093
As to claims 1, 11 and 19, shown is a pickleball paddle (col. 1, ln. 23) comprising a handle portion 34 and a head portion 32 defining two opposing striking surfaces 33 connected to each other by connecting bars 15 extending from one striking surface to the other striking surface; wherein the connecting bars extend from the proximal portion of the head portion to the distal portion of the head portion as shown in fig. 7 and wherein the distance between adjacent connecting bars such as 26 and 18 is different or varies between each other along their extension from the proximal portion of the head portion to the distal portion.
Elements 26 and 18 are considered a foam material arranged between adjacent connecting bars extending from one striking surface to the other striking surface as called for in claim 2.
Carbon fiber meeting the limitations of claim 3 is considered shows at col. 3, ln. 59.
Elements 12 and 14 are considered two horizontal sections being attached to one of the striking surfaces as called for in claim 4.
Element 20 is considered a partially surrounding circumferential wall extending from one striking surface to the other striking surface as called for by claim 17 to which at least some of the connecting bars extending from one section of the wall to another section of the wall as shown in fig. 7 as called for by claim 18.
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) s 14-16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Filippini.
Filippini teaches that the foam density may be varied for noise dampening or noise frequency (col. 9, lns. 3-20). To have varied the density of property from the proximal portion to the distal portion as called for in claims 14-16 would have been obvious in order to adjust the noise along the portions of the head.
As to claim 20, Filippini teaches that the structure may be made with different numbers of ribs (col. 6, ln. 8) to vary the strength and weight. To have used more that 10 connecting bars would have been obvious in order to have increased the product’s strength.
Conclusion
Claims 5-10, 12 and 13 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.
The amount the distance varies between connection bars is not a variable discussed by that applied art and as such is not applied to claims 5-10. Curved shapes as called for in claims 12 and 13 are not discussed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Nicholas Weiss at (571)270-1775.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM M PIERCE/Primary Examiner, Art Unit 3711
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