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 .
Election/Restrictions
Claims 6-10 and 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/27/2026.
Claim 15 depends from claim 14 which according to the applicant is withdrawn. As best understood, it appears that claim 14 reads only on Species D (Fig 6).
Applicant's election with traverse of Species B (Fig 4) in the reply filed on 04/27/2026 is acknowledged. The traversal is on the ground(s) that “Applicant respectfully traverses the Examiner's finding that "Currently, no claims are considered to be generic". Independent claim 1 is generic and reads on all identified species (Species A through D). Claim 1 recites a "pickleball ball holder" comprising a "surface board" and "one or more projections" configured to penetrate at least one aperture of a pickleball ball, wherein the "thickness of the projection is smaller than a diameter of the at least one of the apertures" and the projection is configured to "loosely enter. without substantial friction". Applicant believes that claim 1 encompasses the embodiments shown in Fig.3, Fig. 4, Fig. 5 and Fig. 6. Accordingly, if generic claim 1 is ultimately found allowable, Applicant respectfully requests that the restriction requirement be withdrawn and that the non-elected claims be rejoined and examined on the merits pursuant to MPEP § 809”. The examiner agrees with the applicant that claim 1 is currently generic, the examiner maintains that if claim 1 is allowed and the subject matter of claim 1 is generic at the time of allowance, the remaining withdrawn claims will be joined upon allowance. However, the examiner maintains that the Species restriction is still proper because each species comprises different elements and/or different configurations of a pickleball holder and the species would each require different fields of search and/or different text inquires. The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 3 is objected to because of the following informalities: for better claim construction and consistency throughout the claims the examiner suggests the following amendment:
Claim 3, lines 3-4: -- to slide freely down the projection.—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 1-5, 11-12, and 16-20 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.
Regarding claim 1, the preambles of claims 1 only recite a pickleball holder positively and not the combination of a pickleball holder and a pickleball. Further, the body of the claim states “a projection of the one or more projections is configured to hold a pickleball ball” which only refers to the pickleball in a functional manner. However, in the body of the claim also recites, “a thickness of the projection is smaller than a diameter of the at least one of the apertures” which creates confusion as to if the applicant intends to positively claim the pickleball or if the pickleball is only referred to in a functional limitation. So the claims create confusion as to what is intended to be claimed, either the combination or subcombination. For purposes of examination on the merits, the examiner is treating the claims to be construed as the subcombination.
If the applicant intends to claim the combination, then it is suggested to do so clearly.
If applicant intends to claim the subcombination, a recommended amendment could be -- a thickness of the projection is conjured to be smaller than a diameter of the at least one of the apertures --. Appropriate correction is required.
Regarding claim 17, the term “soft” is an indefinite and relative term. How can a person distinguish a soft head from a head that is not soft. What is soft to one person may not be soft to another. Appropriate correction is required.
Claims 2-5, 11-12, 15-16, and 18-20 are rejected as being dependent upon a rejected base claim.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 11, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dunegan D250,797.
Regarding claim 1, as best understood, Dunegan discloses a pickleball ball holder, comprising:
a surface board (annotated Fig 1 below);
one or more projections (annotated Fig 1 below) installed on the surface board (annotated Fig 1 below) to extend outwardly from the surface board (annotated Fig 1 below), wherein:
a projection (annotated Fig 1 below) of the one or more projections is configured to hold a pickleball ball by being positioned to penetrate in at least one aperture of the pickleball ball;
a thickness of the projection (annotated Fig 1 below) is configured to be or capable of being smaller than a diameter of the at least one of the apertures;
the projection (annotated Fig 1 below) is configured to loosely enter the at least one aperture without substantial friction.
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Regarding claim 2, Dunegan discloses the pickleball ball holder wherein the projection (annotated Fig 1 above) is configured to be, when the surface board (annotated Fig 1 above) is positioned vertically, at least partially upward to hold the pickleball ball.
Regarding claim 3, Dunegan discloses the pickleball ball holder wherein a width of the projection (annotated Fig 1 above) is configured to or capable of , when the surface board (annotated Fig 1 above) is positioned vertically, providing for a pickleball ball arranged with the projection (annotated Fig 1 above) inserted through two apertures of the pickleball ball to slide freely down the projection.
Regarding claim 4, Dunegan discloses the pickleball ball holder wherein the one or more projections (annotated Fig 1 above) are configured to or capable of bending in response to a force imposed on the one or more projections (annotated Fig 1 above).
Regarding claim 11, Dunegan discloses the pickleball ball holder wherein the one or more projections (annotated Fig 1 above) comprise a plurality of projections (annotated Fig 1 above) that are arranged evenly spaced from each other on the surface board (annotated Fig 1 above).
Regarding claim 19, Dunegan discloses an apparatus for holding pickleball balls, comprising:
a surface board (annotated Fig 1 above) configured to be mounted to a vertical structure; and
at least one projection (annotated Fig 1 above) extending from the surface board (annotated Fig 1 above), the at least one projection (annotated Fig 1 above)
including a base (proximal end) connected to the surface board (annotated Fig 1 above) and an end portion (distal end) opposite the base (proximal end), wherein at least the end portion (distal end) has a curved shape;
wherein the at least one projection (annotated Fig 1 above) is sized to pass through an aperture of a pickleball ball such that a thickness of the at least one projection is less than a diameter of the aperture, and
wherein the curved shape of the end portion (distal end) is configured to or capable of retaining the pickleball ball on the at least one projection via gravity while allowing the pickleball ball to loosely hang without substantial friction.
Claims 1-4, 11, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Michal 4,058,356.
Regarding claim 1, as best understood, Michal discloses a pickleball ball holder, comprising:
a surface board (Fig 2, #14);
one or more projections (Fig 2, #34) installed on the surface board (Fig 2, #14) to extend outwardly from the surface board (Fig 2, #14), wherein:
a projection (Fig 2, #34) of the one or more projections is configured to hold a pickleball ball by being positioned to penetrate in at least one aperture of the pickleball ball;
a thickness of the projection (Fig 2, #34) is configured to be or capable of being smaller than a diameter of the at least one of the apertures;
the projection (Fig 2, #34) is configured to loosely enter the at least one aperture without substantial friction.
Regarding claim 2, Michal discloses the pickleball ball holder wherein the projection (Fig 2, #34) is configured to be, when the surface board (Fig 2, #14) is positioned vertically, at least partially upward to hold the pickleball ball.
Regarding claim 3, Michal discloses the pickleball ball holder wherein a width of the projection (Fig 2, #34) is configured to or capable of , when the surface board (Fig 2, #14) is positioned vertically, providing for a pickleball ball arranged with the projection (Fig 2, #34) inserted through two apertures of the pickleball ball to slide freely down the projection.
Regarding claim 4, Michal discloses the pickleball ball holder wherein the one or more projections (Fig 2, #34) are configured to or capable of bending in response to a force imposed on the one or more projections (Fig 2, #34).
Regarding claim 11, Michal discloses the pickleball ball holder wherein the one or more projections (Fig 2, #34) comprise a plurality of projections (Fig 2, #34) that are arranged evenly spaced from each other on the surface board (Fig 2, #14).
Regarding claim 19, Michal discloses an apparatus for holding pickleball balls, comprising:
a surface board (Fig 2, #14) configured to be mounted to a vertical structure; and
at least one projection (Fig 2, #34) extending from the surface board (Fig 2, #14), the at least one projection (Fig 2, #34) including a base (proximal end) connected to the surface board (Fig 2, #14) and an end portion (distal end) opposite the base (proximal end), wherein at least the end portion (distal end) has a curved shape;
wherein the at least one projection (Fig 2, #34) is sized to pass through an aperture of a pickleball ball such that a thickness of the at least one projection is less than a diameter of the aperture, and
wherein the curved shape of the end portion (distal end) is configured to or capable of retaining the pickleball ball on the at least one projection via gravity while allowing the pickleball ball to loosely hang without substantial friction.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dunegan D250,797 in view of Jette 2014/0299716.
Regarding claim 5, Dunegan has been discussed above but does not explicitly teach wherein the projection is constructed with a flexible material.
Jette teaches that it is old and well known in the art for hooks or projections (Fig 2, #105) to be constructed with a flexible material [0023].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the projections (Dunegan, annotated Fig 1 above) from a flexible material as taught by Jette since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Further, the substitution of one known material for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Michal 4,058,356 in view of Jette 2014/0299716.
Regarding claim 5, Michal has been discussed above but does not explicitly teach wherein the projection is constructed with a flexible material.
Jette teaches that it is old and well known in the art for hooks or projections (Fig 2, #105) to be constructed with a flexible material [0023].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the projections (Michal, Fig 2, #34) from a flexible material as taught by Jette since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Further, the substitution of one known material for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claims 12 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Dunegan D250,797 in view of Lewis 4,367,819.
Regarding claim 12, Dunegan has been discussed above but does not explicitly teach wherein the projection has at least two different widths at different heights from the surface board.
Lewis teaches a projection (Fig 1, #16) that has at least two different widths (i.e. the width of the head (Fig 1, #17) of the projection (Fig 1, #16) is wider that the thickness of the body (Fig 1, #16) of the projection (Fig 1, #16)) at different heights from a surface board (Fig 1, #10).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form an end cap head portion (i.e. Lewis, Fig 1, #17) that is slightly wider than the thickness of the body of the projection (Dunegan, annotated Fig 1 above) in order to make the projections (Dunegan, annotated Fig 1 above) of Dunegan more aesthetically appealing. Further it is well known in the art that hooks or projections have end cap head portions (i.e. Lewis, Fig 1, #17) to prevent items from unintentionally falling off the hooks or projections.
Regarding claim 16, modified Dunegan discloses a pickleball ball holder, comprising:
a surface board (Dunegan, annotated Fig 1 below); and
a plurality of projections (Dunegan, annotated Fig 1 below) extending outwardly from the surface board (Dunegan, annotated Fig 1 below), wherein each
projection of the plurality of projections (Dunegan, annotated Fig 1 below) comprises an elongate body and a head portion (i.e. Lewis, Fig 1, #17) at a distal end of the elongate body, the head portion (i.e. Lewis, Fig 1, #17) having a larger width than a thickness of the elongate body;
wherein the elongate body is configured to or capable of penetrating through at least one aperture of a pickleball ball, and
wherein the width of the head portion (i.e. Lewis, Fig 1, #17) is smaller than a diameter of the at least one aperture to allow the projection to loosely enter the at least one aperture without substantial friction.
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Regarding claim 17, as best understood, modified Dunegan discloses the pickleball ball holder wherein the head portion (i.e. Lewis, Fig 1, #17) comprises a soft head (soft is a relative term, the head portion (i.e. Lewis, Fig 1, #17) is softer than concrete) configured to facilitate holding the pickleball ball without letting the pickleball ball slide off the projection (Dunegan, annotated Fig 1 above).
Regarding claim 18, modified Dunegan discloses the pickleball ball holder wherein the plurality of projections (Dunegan, annotated Fig 1 above) are arranged evenly spaced from each other on the surface board (Dunegan, annotated Fig 1 above).
Claims 12 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Michal 4,058,356 in view of Lewis 4,367,819.
Regarding claim 12, Michal has been discussed above but does not explicitly teach wherein the projection has at least two different widths at different heights from the surface board.
Lewis teaches a projection (Fig 1, #16) that has at least two different widths (i.e. the width of the head (Fig 1, #17) of the projection (Fig 1, #16) is wider that the thickness of the body (Fig 1, #16) of the projection (Fig 1, #16)) at different heights from a surface board (Fig 1, #10).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form an end cap head portion (i.e. Lewis, Fig 1, #17) that is slightly wider than the thickness of the body of the projection (Michal, Fig 2, #34) in order to make the projections (Michal, Fig 2, #34) of Michal more aesthetically appealing. Further it is well known in the art that hooks or projections have end cap head portions (i.e. Lewis, Fig 1, #17) to prevent items from unintentionally falling off the hooks or projections.
Regarding claim 16, modified Michal discloses a pickleball ball holder, comprising:
a surface board (Michal, Fig 2, #14); and
a plurality of projections (Michal, Fig 2, #34) extending outwardly from the surface board (Michal, Fig 2, #14), wherein each
projection of the plurality of projections (Michal, Fig 2, #34) comprises an elongate body and a head portion (i.e. Lewis, Fig 1, #17) at a distal end of the elongate body, the head portion (i.e. Lewis, Fig 1, #17) having a larger width than a thickness of the elongate body;
wherein the elongate body is configured to or capable of penetrating through at least one aperture of a pickleball ball, and
wherein the width of the head portion (i.e. Lewis, Fig 1, #17) is smaller than a diameter of the at least one aperture to allow the projection to loosely enter the at least one aperture without substantial friction.
Regarding claim 17, as best understood, modified Michal discloses the pickleball ball holder wherein the head portion (i.e. Lewis, Fig 1, #17) comprises a soft head (soft is a relative term, the head portion (i.e. Lewis, Fig 1, #17 is softer than concrete) configured to facilitate holding the pickleball ball without letting the pickleball ball slide off the projection (Michal, Fig 2, #34).
Regarding claim 18, modified Michal discloses the pickleball ball holder wherein the plurality of projections (Michal, Fig 2, #34) are arranged evenly spaced from each other on the surface board (Michal, Fig 2, #14).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Dunegan D250,797 and Lewis 4,367,819; and further in view of Sholem 2004/0256335.
Regarding claim 20, modified Dunegan has been discussed above but does not explicitly teach the apparatus wherein the surface board includes printed text or a logo on a surface from which the at least one projection extends.
Sholem discloses an apparatus comprising a surface board (Fig 1, #25) that includes printed text or a logo (Fig 1, #40) [0030] on a surface (front surface) of the surface board (Fig 1, #25).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to display printed text or a logo (Sholem, Fig 1, #40) on the surface (Dunegan, front surface of the surface board (Dunegan, annotated Fig 1 above) from which the at least one projection (Dunegan, annotated Fig 1 above) extends in order to make the surface board (Dunegan, annotated Fig 1 above) of modified Dunegan more aesthetically appealing and/or display information for advertising purposes.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Michal 4,058,356 and Lewis 4,367,819; and further in view of Sholem 2004/0256335.
Regarding claim 20, modified Michal has been discussed above but does not explicitly teach the apparatus wherein the surface board includes printed text or a logo on a surface from which the at least one projection extends.
Sholem discloses an apparatus comprising a surface board (Fig 1, #25) that includes printed text or a logo (Fig 1, #40) [0030] on a surface (front surface) of the surface board (Fig 1, #25).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to display printed text or a logo (Sholem, Fig 1, #40) on the surface (Michal, Fig 2, #14) of the surface board (Michal, Fig 2, #14) from which the at least one projection (Michal, Fig 2, #34) extends in order to make the surface board (Michal, Fig 2, #14) of modified Michal more aesthetically appealing and/or display information for advertising purposes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN K BARNETT whose telephone number is (571)270-1159. The examiner can normally be reached Monday-Friday 10am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at 571-272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN K BARNETT/Primary Examiner, Art Unit 3631
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