DETAILED ACTION
Claim Rejections - 35 USC § 102
1. 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 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 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.
2. Claims 1, 6-13, 15-16 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thurman et al. (US Pub. No. 2021/0252356).
As per claim 1, Thurman discloses a pickleball paddle 4420, comprising a handle 4230 portion (Fig. 54); a head portion 4240 operably connected to the handle portion, the head portion including a core portion (as part of “inner layer 4242”) defining an edge, a first surface and a second surface (Fig. 54); a first layer 4444 disposed adjacent the first surface of the core portion, the first layer made from a first material; a second layer 4446 disposed adjacent the second surface of the core portion, the second layer made from the first material (Par. [0229]); an edge portion positioned adjacent the edge of the core portion, in contact with the first layer, and in contact with the second layer (Fig. 54), the edge portion including an edge grid structure (“individual unit cells forming the lattice”) made from a second material (i.e. lattice material, and “lattice filler” including “open cell foams, closed cell foams” – paragraph [0227]).
As per claim 6, Thurman discloses wherein the edge portion is in contact with the core portion (Fig. 54).
As per claim 7, Thurman discloses wherein the edge grid structure defines a plurality of open spaces defined between adjacent portions of the edge grid structure (paragraph [0227]).
As per claim 8, Thurman discloses wherein the edge grid structure forms at least one of a plurality of polygons or a plurality of round shapes (lattice forms polygons – Fig. 54; paragraph [0227]).
As per claim 9, Thurman teaches wherein the edge portion includes foam at least partially encapsulating the edge grid structure (Par. [0226, 0227]).
As per claim 10, Thurman discloses the pickleball paddle according to claim 9, wherein the foam is in contact with the core portion (the foam can be used in all of the lattice cells of the core and the edge - paragraph [0227])).
As per claim 11, Thurman discloses wherein the edge grid structure is in contact with the core portion (Figs. 54).
As per claim 12, Thurman discloses an edge guard (“Bumper 4448”) secured to a perimeter of the head portion 4240 (paragraph [0230]).
As per claim 13, Thurman teaches wherein edge guard 4448 is secured via “fasteners, adhesives”. As such, the edge guard 4448 is considered to be “removably secured” to the perimeter of the head. Per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
As per claim 15, Thurman discloses wherein the edge grid structure is affixed to the first layer and the second layer (paragraph [0229]).
As per claim 16, Thurman discloses a pickleball paddle 4420, comprising a core portion (as part of “inner layer 4242”) defining an edge (Fig. 54); a first layer 4444 disposed on a first side of the core portion; a second layer 4446 disposed on a second side of the core portion (Par. [0229]); an edge portion affixed to the first layer 4444 and the second layer 4446 (Fig. 54; paragraph [0229]), the edge portion including an edge grid structure (“individual unit cells forming the lattice”; paragraph [0227]).
As per claim 19, Thurman discloses wherein the edge grid structure defines a plurality of open spaces (paragraph [0227]).
As per claim 20, Thurman teaches foam disposed within the plurality of open spaces defined by the edge grid structure (Par. [0226, 0227]).
Claim Rejections - 35 USC § 103
3. 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
4. Claims 2-5, 14 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Thurman et al. (US Pub. No. 2021/0252356).
With respect to claims 2-5, 17, in the cited embodiment of Fig 54, Thurman discloses that the first and second layers 4444, 4446 “can be similar to faceplates 44, 46. With respect to faceplates 44, 46, Thurman teaches wherein the first material is the same as the second material (paragraph [0085]), wherein the first material is a fiber-reinforced composite Id.; wherein the second material is a fiber-reinforced composite Id. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize these known materials for the first and second materials. The rationale to combine is to provide a strong, lightweight and durable paddle at low cost that can be easily scaled.
With respect to claim 14, Thurman discloses a lattice structure for the core, but does not expressly disclose it to be a honeycomb lattice in the cited embodiment (i.e. Fig. 54). However, in alternative embodiments, Thurman teaches this feature to be known in the art (paragraph [0082]). A person ordinary skill in the art would have found it obvious to have the core made of a honeycomb patterns. The rationale to combine is to use a known pattern that provides durable rigidity and strength to the paddle.
With respect to claim 18, Thurman does not expressly disclose the material of the edge grid structure for cited embodiment Fig. 54. However, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) per MPEP 2144.07. Here, fiber reinforced composites are known to be suitable for their lightweight, durability and strength. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the edge grid structure from a fiber reinforced composite. This will expectantly provide the sufficient structural rigidity at the perimeter portion without adding excessive weighting.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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