Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/26/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-13 of U.S. Patent No. 10,238,951. Although the claims at issue are not identical, they are not patentably distinct from each other. See chart below.
Instant Application: 19/023,030
US Patent 10,238,951
Claim 1. A batting pad device for aiding a batter in properly gripping and controlling a bat and for protecting a web area between a thumb and an index finger of a batter's hand, the device comprising:
a body having an opening sized to fit the thumb and an appendage and having a length sufficient to extend at least partially adjacent the web area;
and wherein the appendage defines a
contact point between the bat and the hand such that the contact point is adjacent to or distal to a joint of the index finger;
The appendage having a thickness of between 12 mm and 16 mm and having a length sufficient to extend at least partially adjacent the web area;
and further wherein the appendage has a thickest point located at a distance of less than twenty-five percent of the distance from the opening to a distal end of the appendage.
Claim 5. A batting pad device for aiding a batter in properly gripping and controlling a bat and for protecting a web area between a thumb and an index finger of a batter's hand, the device comprising:
a body having an opening to be fit over the thumb and an appendage to extend at least partially adjacent the web area;
wherein the appendage is configured to have a contact point between the bat and the hand such that the contact point is adjacent to or distal to a proximal interphalangeal joint of the index finger;
and wherein the appendage has a lower surface to contact the bat when the batter grips the bat, the lower surface having a concave curvature having a radius of curvature of between about 60 mm and about 70 mm.
Claim 6. The device of claim 5, wherein the appendage has a thickness of between about 12 mm and about 16 mm and a length of between about 29 mm and about 33 mm.
Claim 7. The device of claim 5, wherein the appendage has a thickest point located about twenty-five percent of the distance from the opening to a distal end of the appendage.
2. The device of claim 1, wherein the appendage has a
length of between 29 mm and 33 mm.
Claim 6. The device of claim 5, wherein the appendage has a thickness of between about 12 mm and about 16 mm and a length of between about 29 mm and about 33 mm.
Claim 3. The device of claim 1,
wherein the appendage has a lower surface to contact the bat when the batter grips the bat, the lower surface having a concave curvature having a radius of curvature of between 60 mm and 70 mm.
Claim 5. A batting pad device for aiding a batter in properly gripping and controlling a bat and for protecting a web area between a thumb and an index finger of a batter's hand, the device comprising:
a body having an opening to be fit over the thumb and an appendage to extend at least partially adjacent the web area;
wherein the appendage is configured to have a contact point between the bat and the hand such that the contact point is adjacent to or distal to a proximal interphalangeal joint of the index finger;
and wherein the appendage has a lower surface to contact the bat when the batter grips the bat, the lower surface having a concave curvature having a radius of curvature of between about 60 mm and about 70 mm.
Claim 4. The device of claim 1, wherein the appendage has an upper surface configured to contact the web area, the upper surface having a radius of curvature of between 30 mm and 35 mm.
Claim 8. The device of claim 5, wherein the appendage has an upper surface to contact the web area, the upper surface having a radius of curvature of between about 30 mm and about 35 mm.
Claim 5. The device of claim 4, wherein the appendage has a length such that, when the batter grips the bat, the appendage is free of longitudinal compression.
Claim 9. The device of claim 8, wherein the appendage has a length such that, when the batter grips the bat, the appendage is free of longitudinal compression.
Claim 6. The device of claim 1 wherein
\
the appendage has a thickness (T) of between 12 mm and 16 mm and the appendage has a length (N) such that a ratio of N/T is between 1.81 and 2.83.
Claim 10. A batting pad device for aiding a batter in properly gripping and controlling a bat and for protecting a web area between a thumb and an index finger of a batter's hand, the device comprising: a body having an opening to fit over the thumb and an appendage to cushion the web area; wherein the appendage is configured to have a first contact point and a second contact point between the bat and the hand such that the first contact point is adjacent to or distal to a proximal interphalangeal joint of the index finger and the second contact point is adjacent to or distal to an interphalangeal joint of the thumb; and wherein the appendage has a length (N) and a thickness (T) such that a ratio of N/T is between about 1.81 and about 2.83.
Claim 7. A batting pad device for aiding a batter in gripping and
controlling a bat and for protecting a web area between a thumb and an index finger of a batter's hand, the device comprising:
a body having an opening sized to fit over the thumb and an appendage configured to cushion the web area;
and wherein the appendage defines a first contact point and a second
contact point between the bat and the
hand such that the first contact point is adjacent to or distal to a
joint of the index finger
and the second contact point is adjacent to or distal to a joint of
the thumb; and wherein the appendage has a thickness (T) of between 12 mm and 16 mm and the appendage has a length (N) such that a ratio of N/T is between 1.81 and 2.83.
Claim 10. A batting pad device for aiding a batter in properly gripping and controlling a bat and for protecting a web area between a thumb and an index finger of a batter's hand, the device comprising:
a body having an opening to fit over the thumb and an appendage to cushion the web area;
wherein the appendage is configured to have a first contact point and a second contact point between the bat and the hand such that the first contact point is adjacent to or distal to a proximal interphalangeal joint of the index finger and the second contact point is adjacent to or distal to an interphalangeal joint of the thumb; and wherein the appendage has a length (N) and a thickness (T) such that a ratio of N/T is between about 1.81 and about 2.83.
Claim 8. The device of claim 7, wherein the appendage has an upper surface configured to contact the web area of the batter's hand when in use, and the upper surface has a radius of curvature of between 30 mm and 35 mm.
Claim 11. The device of claim 10, wherein the appendage has an upper surface to contact the web area of the batter's hand when in use, and the upper surface has a radius of curvature of between about 30 mm and about 35 mm.
Claim 9. The device of claim 7, wherein the appendage has a lower surface to contact the bat when the batter grips the bat, the lower surface having a concave curvature having a radius of curvature of between 60 mm and 70mm.
Claim 13. The device of claim 10, wherein the appendage has a lower surface to contact the bat when the batter grips the bat, the lower surface having a concave curvature having a radius of curvature of between about 60 mm and about 70 mm.
Claim 10. The device of claim 7, wherein the appendage has a thickest point located at a distance of less than twenty-five percent of the distance from the opening to a distal end of the appendage.
Claim 12. The device of claim 10, wherein the appendage has a thickest point located about twenty-five percent of the distance from the opening to a distal end of the appendage.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1- 10 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 positively recites the human body, “having a length to extend to at least partially adjacent the web area”, “contact point is adjacent to or distal to a joint of the index finger”. Claim 7 positively recites the human body “the first contact point is adjacent to or distal to a joint or the index finger and the second contact point is adjacent to or distal to a joint of the thumb”. This can be corrected by using “adapted to or configured for” type of language. Appropriate correction required.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1-10 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lomedico (US 2006/0137068).
The device of Lomedico teaches,
With respect to claim 1,
A batting pad device for aiding a batter in properly gripping and controlling a bat and for protecting a web area between a thumb and an index finger of a batter's hand, the device comprising:
a body (110) having an opening (114) sized to fit the thumb and an appendage (116) having a thickness (para 0043 and 0044) and having a length sufficient to extend at least partially adjacent the web area (Figure 5); and wherein the appendage defines a contact point between the bat and the hand such that the contact point is adjacent to or distal to a joint of the index finger (Figure 6; claim 1); and further wherein the appendage (116) has a thickest point (t) located at a distance from the opening to a distal end of the appendage (Figures 1 – 4). The device of Lomedico substantially disclose the claimed invention but is lacking the measurement of the appendage thickness being 12mm – 16mm and a thickest point less than twenty five percent of the distance from the opening to a distal end.
The device of Lomedico teaches its known to have a thickness of both approximately 19.05mm and 25.4mm. The measurement approximately 19.05mm or 25.4 mm could be between 12mm and 16mm but is not known since approximately is not defined by the prior art.
It would have been obvious to a person having ordinary skill in the art when the invention was filed to modify Lomedico teaching of a thickness being approximately 19.05 mm (or 25.4mm) to include the thickness being 12mm-16mm, since it has been held that where the general conditions of a claims are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Further the device of Lomedico teaches that the device has a thickest point (t) that is located about 33% percent of the length from the distant end. The term about is not defined by the claim.
One of ordinary skill in the art at the time the invention was filed would have been motivated to have the thickest point be at a point that is less than 25% of the distance from the opening to the distal end of the appendage, in order to provide a batting pad for particular users with a hand sizes that optimally fit the pad when engaged with a bat.
Moreover, it has been held that a change in size/proportion and/or shape only involves routine skill in the art and since such modification would involve a mere change in the size of a portion the batting pad of Lomedico. See: MPEP 2144.04 IV.
With respect to claim 2, wherein the appendage has a length of between 29 mm and 33 mm (para 0043).
With respect to claim 3, wherein the appendage has a lower surface (18, 118) to contact the bat when the batter grips the bat (Figure 5), the lower surface having a concave curvature having a radius of curvature (para 0031) the curvature taught is approximately 101.6mm. The prior art device of Lomedico is not specifically teach the range of 60-70mm. However, the measurement discloses of approximately 101.6mm could include the range of 60-70mm, but is not known since the term approximately is not defined by the prior art. It would have been obvious to a person having ordinary skill in the art when the invention was filed to modify Lomedico teaching of a radius of curvature of 101.6mm to include a range of 60-70mm, since it has been held that where the general conditions of a claims are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
With respect to claim 4, wherein the appendage has an upper surface (120) configured to contact the web area (Figure 5), the upper surface having a radius of curvature (para 0031). The prior art of Lomedico does not specifically state the at the radius of the upper surface is between 30mm and 35mm. The device of Lomedico teaches the radius is approximately 20.32mm, and is unclear what range “approximately” covers since it is undefined. It would have been obvious to a person having ordinary skill in the art when the invention was filed to modify Lomedico teaching of a radius of curvature of 20.32mm to include a range of 30-35mm, since it has been held that where the general conditions of a claims are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
With respect to claim 5, wherein the appendage has a length such that, when the batter grips the bat, the appendage is free of longitudinal compression (para 0011).
With respect to claim 6, The device of claim 1 wherein the appendage has a thickness (T) of between 12 mm and 16 mm and the appendage has a length (N) such that a ratio of N/T is between 1.81 and 2.83. (min length 21.72mm/.85inch and max length 45.28mm/1.78inch) . The device of Lomedico teaches a length of 1.2 inches (para 0043) and is within the ratio range of 1.81 – 2.83 when the length is 12mm-16mm. As addressed above with respect to the thickness, The device of Lomedico teaches a thickness of both approximately 19.05mm and 25.4mm. The measurement approximately 19.05mm or 25.4 mm could be between 12mm and 16mm but is not known since approximately is not defined by the prior art. It would have been obvious to a person having ordinary skill in the art when the invention was filed to modify Lomedico teaching of a thickness being approximately 19.05 mm (or 25.4mm) to include the thickness being 12mm-16mm, since it has been held that where the general conditions of a claims are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
With respect to claim 7, A batting pad device for aiding a batter in gripping and controlling a bat and for protecting a web area between a thumb and an index finger of a batter's hand, the device comprising:
a body (110) having an opening (114) sized to fit over the thumb and an appendage (116) configured to cushion the web area; and wherein the appendage defines a first contact point and a second contact point between the bat and the hand such that the first contact point is adjacent to or distal to a joint of the index finger (Claim 1) and the second contact point is adjacent to or distal to a joint of the thumb (claim 1); and wherein the appendage has a thickness (T) and a length (N).
The device of Lomedico does not specifically teach a length of between 12 mm and 16 mm. As addressed above with respect to the thickness, The device of Lomedico teaches a thickness of both approximately 19.05mm and 25.4mm. The measurement approximately 19.05mm or 25.4 mm could be between 12mm and 16mm but is not known since approximately is not defined by the prior art.
It would have been obvious to a person having ordinary skill in the art when the invention was filed to modify Lomedico teaching of a thickness being approximately 19.05 mm (or 25.4mm) to include the thickness being 12mm-16mm, in order to provide a batting pad for particular users with a hand sizes that optimally fit the pad when engaged with a bat.
Moreover, it has been held that a change in size/proportion and/or shape only involves routine skill in the art and since such modification would involve a mere change in the size of a portion the batting pad of Lomedico. See: MPEP 2144.04 IV.
The appendage has a length (N) such that a ratio of N/T is between 1.81 and 2.83. The device of Lomedico teaches a length of 1.2 inches (para 0043) and is within the ratio range of 1.81 – 2.83 when the length is 12mm-16mm.
It would have been obvious to a person having ordinary skill in the art when the invention was filed to modify Lomedico teaching of a thickness being approximately 19.05 mm (or 25.4mm) to include the thickness being 12mm-16mm, in order to provide a batting pad for particular users with a hand sizes that optimally fit the pad when engaged with a bat.
Moreover, it has been held that a change in size/proportion and/or shape only involves routine skill in the art and since such modification would involve a mere change in the size of a portion the batting pad of Lomedico. See: MPEP 2144.04 IV.
With respect to claim 8, wherein the appendage has an upper surface (120) configured to contact the web area (Figure 5), the upper surface having a radius of curvature (para 0031). The prior art of Lomedico does not specifically state the at the radius of the upper surface is between 30mm and 35mm. The device of Lomedico teaches the radius is approximately 20.32mm, and is unclear what range “approximately” covers since it is undefined. It would have been obvious to a person having ordinary skill in the art when the invention was filed to modify Lomedico teaching of a radius of curvature of 20.32mm to include a range of 30-35mm, since it has been held that where the general conditions of a claims are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
With respect to claim 9, wherein the appendage has a lower surface (18, 118) to contact the bat when the batter grips the bat (Figure 5), the lower surface having a concave curvature having a radius of curvature (para 0031) the curvature taught is approximately 101.6mm.
The prior art device of Lomedico is not specifically teach the range of 60-70mm. However, the measurement discloses of approximately 101.6mm could include the range of 60-70mm, but is not known since the term approximately is not defined by the prior art.
It would have been obvious to a person having ordinary skill in the art when the invention was filed to modify Lomedico teaching of a radius of curvature of 101.6mm to include a range of 60-70mm, in order to provide a batting pad for particular users with a hand sizes that optimally fit the pad when engaged with a bat.
Moreover, it has been held that a change in size/proportion and/or shape only involves routine skill in the art and since such modification would involve a mere change in the size of a portion the batting pad of Lomedico. See: MPEP 2144.04 IV.
With respect to claim 10, Lomedico teaches that the device has a thickest point (t) that is located about 33% percent of the length from the distant end.
The term about is not defined by the claim, and one of ordinary skill in the art at the time the invention was filed would have been motivated to have the thickest point be at a point that is less than 25% of the distance from the opening to the distal end of the appendage, in order to provide a batting pad for particular users with a hand sizes that optimally fit the pad when engaged with a bat.
Moreover, it has been held that a change in size/proportion and/or shape only involves routine skill in the art and since such modification would involve a mere change in the size of a portion the batting pad of Lomedico. See: MPEP 2144.04 IV.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892
Please Note, the art of recorded cited in the PTO-892 may be relevant to the features of the invention both claimed and unclaimed or are relevant to the overall inventive concept. The best art has been set forward in the office action, as determined by the examiner and the art references provided are to establish other significant and relevant art and to promote compact prosecution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHALE L QUINN whose telephone number is (571)272-8689. The examiner can normally be reached Monday - Friday 9am -5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 5712725559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RICHALE LEE. QUINN
Primary Examiner
Art Unit 3765
/RICHALE L QUINN/ Primary Examiner, Art Unit 3732