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 § 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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pub. 2021/0252356 by Thurman and further in view of U.S. Pub. 2010/0022326 by McClung.
Regarding claim 1, Thurman discloses a pickleball paddle (abstract), comprising: a frame comprising an interior frame surface and an exterior frame surface opposite the interior frame surface (fig. 24C; para. 79 – see the interior section and frame around the paddle), a core assembly coupled to the frame and comprising an interior core disposed between a front face plate and a rear face plate (fig. 24C; para. 79 – see the core of the paddle).
Thurman is silent regarding wherein the exterior frame surface defines a first discrete recess and a second discrete recess, and wherein each of the first and second discrete recesses comprises an undercut; a first weight strip disposed in the first discrete recess; and a second weight strip disposed in the second discrete recess. McClung discloses these features at para. 54-55 and fig. 4C-5B, Examiner notes that the broadest reasonable interpretation of “discrete recess” does not exclude channels defined by zones in the racket’s perimeter. Without positively recited structure distinguishing these channels the recesses in McClung disclose these features. Amendments positively reciting a physical barrier would overcome this prior art.
Because the references are from a similar art and concerned with a similar problem, see rackets for ball games, it would have been obvious to one having ordinary skill in the art at the time of filing to construct Thurman with McClung’s channels and weights for adjusting the balance of the racket. One having ordinary skill in the art at the time of filing would have been motivated to do so because weight reallocation on a racket “moves (and/or enlarges) a racquet's sweetspot to another location in the racquet, in one aspect to relocate the sweetspot, and in one aspect toward or to the top of the racquet enhancing a player's ability to hit the ball at the sweetspot and/or enhancing the force with which a player hits a ball” (para. 9) and thus improves the ability and suitability of the racket for play.
Regarding claim 2, McClung discloses the pickleball paddle of claim 1, wherein the exterior frame surface further defines a third discrete recess and a fourth discrete recess, the pickleball paddle further comprising a third weight strip disposed in the third discrete recess and a fourth weight strip disposed in the fourth discrete recess (para. 54-55 and fig. 4C-5B – see the recesses for weights and the note regarding the broadest reasonable interpretation of “discrete recess” noted above).
Regarding claim 3, McClung discloses the pickleball paddle of claim 2, wherein each of the third and fourth discrete recesses comprises an undercut (para. 54-55 and fig. 4C-5B – see the undercuts for the weights on the perimeter of the racket).
Regarding claim 4, McClung discloses the pickleball paddle of claim 2, wherein each of the first, second, third, and fourth weight strips comprises an equal strip length (para. 54-55 and fig. 4C-5B – see division into equal zones of the racket).
Regarding claim 5, McClung discloses the pickleball paddle of claim 4, wherein the equal strip length comprises 3.5 inches (para. 54-55 and fig. 4C-5B – see division into 3.5 inch areas as within the scale of scope of the defined range of possible weight zones for the perimeter of the racket).
Regarding claim 6, McClung discloses the pickleball paddle of claim 2, further comprising a fifth discrete recess and a fifth weight strip disposed in the fifth discrete recess (para. 54-55 and fig. 4C-5B – see above citation regarding the discrete zones).
Regarding claim 7, McClung discloses the pickleball paddle of claim 1, wherein: the undercut of the first discrete recess extends around an entirety of a perimeter of the first discrete recess; and the undercut of the second discrete recess extends an entirety of a perimeter of the second discrete recess (para. 54-55 and fig. 4C-5B – see the continues undercut).
Regarding claim 8, McClung discloses the pickleball paddle of claim 1, wherein: each of the first and second discrete recesses comprises a discrete recess depth; each of the first and second weight strips comprises a weighted strip thickness; and the weighted strip thickness is greater than the discrete recess depth so that top surfaces of the first and second weight strips protrude from the exterior frame surface surrounding each of the first and second recesses (para. 54-55 and fig. 4C-5B – see the weights).
Regarding claim 9, While McClung does not explicitly disclose wherein each of the first and second weight strips comprises a mass between 1 gram to 10 grams. McClung discloses a variable weight size and heft at para. 59 and leaves the exact weight to the needs of the user. Accordingly, the length and mass of the weights are effective means of adjusting the mass of the paddle. Where the general conditions of the claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (In re Aller, 220 F.2d 454, 456 (CCPA 1955)). The artisan would have been motivated to adjust the length and mass of the weights of McClung within the claimed range in order to form a paddle with the desired weight and/or weight distribution.
Regarding claim 10, McClung discloses the pickleball paddle of claim 1, wherein the frame comprises a first frame component joined to a second frame component (para. 54-55 and fig. 4C-5B – see the frame wrapped around the joined at the grip).
Regarding claim 11, Thurman and McClung disclose claim 11 as noted above with regard to claim 1 and Thurman further disclosing a handle coupled to the frame via a snap fit connection (fig. 4-6 – see handles attachments) and comprising: a handle bottom exterior surface including a butt end and defining a handle recess (fig. 2-3 – see recessed area with adjustable weight inside); a handle bottom interior surface opposite the handle bottom exterior surface and defining a first receiving wall and a second receiving wall opposite the first receiving wall (fig. 2-3 – see the two receiving walls that accept the adjustable weight); and a handle aperture formed in the butt end and fluidly communicating with the handle recess, the first receiving wall, and the second receiving wall (fig. 2 – see the aperture for the adjustment screw 5); and a handle weight assembly coupled to the butt end and extending through the handle aperture between the first receiving wall and the second receiving wall, and into the handle recess (fig. 2-3 – see the adjustable weight assembly as positioned relative to the handle).
Regarding claim 12, Thurman discloses the pickleball paddle of claim 11, wherein the handle weight assembly comprises: an end cap housing; a handle weight disposed in the end cap housing; and an end cap coupled to the end cap housing and sized to extend over the handle aperture (fig. 2 – see the aperture for the adjustment screw 5).
Regarding claim 14, Thurman discloses the pickleball paddle of claim 12, wherein the handle weight comprises a press fit screw (fig. 2 – see the aperture for the adjustment screw 5 as positioned in the handle).
Regarding claim 15, see discussion of variable weights as noted in claim 9 above applied to this claim mutatis mutandis and para. 4-6 of Thurman.
Regarding claim 16, Thurman discloses the pickleball paddle of claim 11, wherein the handle weight assembly is press fit between the first receiving wall and the second receiving wall and removably coupled to the butt end of the handle (fig. 2 – see the aperture for the adjustment screw 5 as positioned in the handle).
Regarding claim 17, McClung discloses the pickleball paddle of claim 11, wherein each of the first and second weight strips comprises a strip length of 3.5 inches (para. 54-55 and fig. 4C-5B – see division into 3.5 inch areas as within the scale of scope of the defined range of possible weight zones for the perimeter of the racket).
Regarding claim 18, McClung discloses the pickleball paddle of claim 11, wherein: each of the first and second recesses comprises a discrete recess depth; each of the first and second weight strips comprises a weighted strip thickness; and the weighted strip thickness is substantially equal to the discrete recess depth so that top surfaces of the first and second weight strips are flush with the exterior frame surface surrounding each of the first and second recesses (para. 54-55 and fig. 4C-5B – see the weights of variable height).
Regarding claim 19, McClung discloses the pickleball paddle of claim 11, wherein: each of the first and second recesses comprises a discrete recess depth; each of the first and second weight strips comprises a weighted strip thickness; and the weighted strip thickness is greater than the discrete recess depth so that top surfaces of the first and second weight strips protrude from the exterior frame surface surrounding each of the first and second recesses (para. 54-55 and fig. 4C-5B – see the weights of variable height).
Regarding claim 20, see discussion of variable weights as noted in claim 9 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER J IANNUZZI whose telephone number is (571)272-5793. The examiner can normally be reached M-F 9:30AM-5:30PM EST.
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/PETER J IANNUZZI/ Primary Examiner, Art Unit 3711
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