DETAILED ACTION
Drawings
The drawings are objected to because Figs. 2 and 3 show actual photographs that can easily be represented as line drawings. Also, the drawings should show appropriate identifies for specific structure to clearly explain the invention. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: the specification and the drawings are objected to because they do not use any identifiers to help explain specific structures on the insert. For example, the “lip portion”, “first edge”, “second edge”, and “center portion” do not have identifiers in both the specification and the drawings. Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 claims “the face” in line 1. There is no antecedent basis for this limitation. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: claim 5 claims “the face” in lines 1-2. There is no antecedent basis for this limitation. Appropriate correction is required.
Claims 10-12 are objected to because of the following informalities: claims 10-12 use the phrase “and/or”. It is unclear if a single limitation is required or both limitations are required. The Examiner suggests using either “or” or “and” alone. Appropriate correction is required.
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 9-16 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. Claim 9 claims “at least a first opening and a second opening”. However, claim 5, from which claim 9 depends, only claims “an opening”. Claim 5 should be amended to claim “at least one opening” instead of “an opening” to allow for more than one opening. Claim 9 should then be amended to claim “wherein the at least one opening comprising a first and second opening”. Claim 9 should also read “wherein the at least one dampening insert comprises a first and second insert” based on the language of claim 5 and for proper clarity. Along those lines, claim 13 should be amended to read “wherein the at least one opening comprises a third opening” and “wherein the at least one dampening insert comprises a third insert”. These changes would provide the proper antecedent basis for the openings and inserts and create clarity.
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.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Hillock (US Pat. No. 4,927,143) in view of Luo (US Pub. No. 2023/0415010 A1).
Regarding claim 1, Hillock discloses a dampening insert configured for insertion into an opening on the face of a pickleball paddle (noting this is merely intended use or functional language; the preamble not breathing life and meaning into the body of the claim) comprising: a weight body (Fig. 7 and col. 3, lines 22-24; noting a dampening weight, item 44) comprising a lip portion (Fig. 7 below, proximate items 24 on either side of the center can be considered the “lip portion”). In the alternative, assuming arguendo that the preamble does breathe life and meaning into the body of the claim, Hillock discloses a vibration inserted into holes created by strings and used to “absorb shock and vibration from a racket” (col. 1, lines 50-53). In addition, Luo discloses a racket in the form of a “pickleball paddle” with through holes (Fig. 3, items 24; see Luo: abstract and par. [0027]; noting these “apertures” are obviously “through holes” because they “relieve stress” like the other through holes). Thus, it would have been obvious to a person of ordinary skill in the art at the filing to modify Hillock to use the insert in a pickleball paddle as taught by Luo because doing so would be applying a known technique (using a vibration dampener in a racket) to a known product (a racket in the form of a pickleball paddle having through holes) ready for improvement to yield predictable results (the continued ability to use a vibration dampener in a racket that is inserted into a hole, the racket being a pickleball paddle with multiple through holes).
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Regarding claim 2, the combined Hillock and Luo disclose that the weight body is rubber (Hillock: col. 3, lines 45-50).
Regarding claims 3 and 4, the combined Hillock and Luo disclose that the weight body has a first edge, a second edge, and a center portion, and where the first edge and the second edge are wider than the center portion (Hillock: Fig. 7 above; noting this is obvious).
Claims 5-16 are rejected under 35 U.S.C. 103 as being unpatentable over Luo (US Pub. No. 2023/0415010 A1) in view of Hillock (US Pat. No. 4,927,143).
Regarding claim 5, Luo discloses a pickleball paddle with an opening on the face of the paddle (Fig. 3, items 24; see Luo: abstract and par. [0027]; noting these “apertures” are obviously “through holes” because they “relieve stress” like the other through holes). It is noted that Luo does not specifically disclose at least one dampening insert inserted into opening. However, Hillock discloses a racket with strings wherein at least one dampening insert inserted into opening for vibration dampening of the racket (Fig. 1). Thus, it would have been obvious to a person of ordinary skill in the art at the filing to modify Luo to use an insert in the at least one opening as taught by Hillock because doing so would be applying a known technique (using a vibration dampener in a hole of a racket) to a known product (a racket in the form of a pickleball paddle having through holes) ready for improvement to yield predictable results (the continued ability to use a vibration dampener in a racket that is inserted into a hole, the racket being a pickleball paddle with multiple through holes).
Regarding claim 6, the combined Luo and Hillock disclose that the insert is rubber (Hillock: col. 3, lines 45-50).
Regarding claims 7 and 8, the combined Luo and Hillock disclose that the insert has a first edge, a second edge, and a center portion, and where the first edge and the second edge are wider than the center portion (Hillock: Fig. 7, reproduced above).
Regarding claim 9, the combined Luo and Hillock disclose that at least a first opening and a second opening, and a first insert and a second insert, where the first insert is inserted into the first opening and the second insert is inserted into the second opening (Luo: Fig. 3, item 24; noting Luo clearly discloses multiple holes including a first and second opening, noting five (5) total for item 24; and also noting that the ability to fill those holes with an insert is functionally possible and merely a duplication of parts under In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)).
Regarding claim 10, the combined Luo and Hillock disclose that the first insert and/or the second insert is/are rubber (Hillock: col. 3, lines 45-50; again noting making the other second insert from “rubber”, i.e. identical to the first, would be a mere duplication of parts under In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)).
Regarding claims 11 and 12, the combined Luo and Hillock disclose that the first insert and/or second insert has/have a first edge, a second edge, and a center portion, and wherein the first edge and the second edge are wider than the center portion (Hillock: Fig. 7 above; again noting making the other second insert in the exact same shape, i.e. identical to the first, would be a mere duplication of parts under In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)).
Regarding claim 13, the combined Luo and Hillock disclose that a third opening and a third insert, where the third insert is inserted into the third opening (Luo: Fig. 3, item 24; noting Luo clearly discloses multiple holes including a first, second, and third opening, noting five (5) total for item 24; and also noting that the ability to use an identical third insert and fill third hole with the third insert is functionally possible and merely a duplication of parts under In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)).
Regarding claim 14, the combined Luo and Hillock disclose that the third insert is rubber (Hillock: col. 3, lines 45-50; again noting making the other third insert from “rubber”, i.e. identical to the first insert, would be a mere duplication of parts under In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)).
Regarding claims 15 and 16, the combined Luo and Hillock disclose that the third insert has a first edge, a second edge, and a center portion, and wherein the first edge and the second edge are wider than the center portion (Hillock: Fig. 7 above; again noting making the other third insert in the exact same shape, i.e. identical to the first insert, would be a mere duplication of parts under In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (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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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
7/28/26
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