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 .
Response to Amendment
Applicant’s amendment, filed 10 June 2026, is reviewed and entered. This Office Action is a final rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Newly Added
20-27
Withdrawn
6-12, 20-24
Canceled
13-19
Pending
1-12 and 20-27
Presented for Examination
1-5 and 25-27
Response to Arguments
Applicant's arguments filed 10 June 2026 have been fully considered but they are not persuasive.
Specification Objections
Overcome by the abstract amendment and withdrawn.
102 Rejections, 103 Rejections
Applicant argues Rector’s layer 3a corresponds to the first pad portion of claim 1, and is a single member not multiple padded members (Remarks page 9). This is not commensurate with the rejection. The rejection states that the first pad portion corresponds to 3a AND 3d AND 3j. The first pad portion is 3a, 3d, and 3j in combination, and the first pad portion is therefore divided into a plurality of padded members, where each of 3a, 3d, and 3j is a padded member.
Applicant argues Rector 3b, 3c, and 3d are the thumb pad portion, not the first pad portion (Remarks page 9). This is not commensurate with the rejection. Even though Rector uses different names for the components, 3a, 3d, and 3j have all the structure of the first pad portion and therefore read on the first pad portion.
Applicant argues Rector 3h, 3i, and 3j are the little finger pad portion, not the second pad portion (Remarks page 9-10). This is not commensurate with the rejection. Even though Rector uses different names for the components, 3b and 3h have all the structure of the second pad portion and therefore read on the second pad portion.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., para. 0007, Remarks page 10) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In light of the above, the rejections are believed to be proper.
The arguments on page 10-15 are drawn to newly added claims and are addressed in the rejections below.
Election/Restrictions
Applicant previously elected without traverse of Species A, shown in FIGS 2-4, in the reply filed on 23 December 2025.
New claims 20-24 are withdrawn by Examiner for being drawn to a nonelected species. New claim 20 recites the first pad portion is a continuous layer. The specification is silent as to any of the embodiments including a continuous layer. Original claim 1 recites at least one of the first and second pad portions is divided into and includes a plurality of padded members. Therefore, at least one of the two pad portions is discontinuous. Original claim 2 recites it is the first pad portion that is divided into three padded members. Therefore, the first pad portion is discontinuous, which directly contradicts new claim 20. FIG 2A, which corresponds to the elected embodiment shows a first pad portion (P1) that comprises three padded members (2-4). Therefore, the subject matter of claim 20 is not supported by FIGS 2-4.
New claim 20 appears to be specific to Species B shown in FIG 5A, as it is the only figure showing a first pad portion that may be considered continuous.
Claims 21-24 are withdrawn for depending from a withdrawn claim.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “wherein the first coupling member and the second coupling member are configured to be separable from the central padded member” (claim 25). The disclosure is silent as to the function of being separable. Although FIG 2 shows the members being separated, this is a pre-construction illustration and once the glove is constructed, there is no support that the members are capable of being separated or intended to be separated from one another.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 25 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The new matter is “wherein the first coupling member and the second coupling member are configured to be separable from the central padded member” (claim 25). The disclosure is silent as to the function of being separable. Although FIG 2 shows the members being separated, this is a pre-construction illustration and once the glove is constructed, there is no support that the members are capable of being separated or intended to be separated from one another.
Claim Rejections - 35 USC § 102
Claim(s) 1-4 and 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rector (US 5678245 A).
As to claim 1, Rector discloses a baseball mitt (“Flexible baseball glove with grooved foam padding system and polyurethane tube lacing and fasteners,” title) comprising:
a palm-side outer skin constituting a ball catching surface (one of the two leather coverings 6 in FIG 4);
a palm-side inner skin constituting a contact surface with which a palm of a user comes into contact when fingers of the user are inserted in the baseball mitt (the other of the two leather coverings 6 in FIG 4); and
a pad assembly disposed between the palm-side outer skin and the palm-side inner skin (pad 3 in FIG 4), the pad assembly comprising:
a first pad portion disposed on a side adjacent to the ball catching surface (the combination of 3a, 3d, and 3j in FIGS 3-6), the first pad portion having a size that suits the palm (capable of suiting a palm, or at least portions of a palm, depending on the size of the palm);
a second pad portion that is superposed on and joined to a reverse side of the first pad portion (the combination of 3b and 3h in FIGS 4-6 are joined to the reverse side of 3d and 3j of the first pad portion), the second pad portion having a size that suits the palm (capable of suiting a palm, or at least portions of a palm, depending on the size of the palm);
a thumb pad portion corresponding to a thumb position (thumb portion 1b); and
a little finger pad portion corresponding to a little finger position (little finger portion 1c),
wherein at least one of the first and the second pad portions is divided into and includes a plurality of padded members (the first pad portion is at least visually divided into 3a, 3d, and 3j as shown in FIG 3).
As to claim 2, Rector discloses the baseball mitt according to claim 1, wherein the first pad portion is divided into and includes a thumb- side padded member disposed on a thumb side (3d), a little finger-side padded member disposed on a little finger side (3j), and a central padded member disposed between the thumb-side padded member and the little finger-side padded member (see portion of 3a in annotated FIG 3 below).
As to claim 3, Rector discloses the baseball mitt according to claim 2, comprising: a first coupling member to couple the thumb-side padded member and the central padded member together (the portion of 3a between the central padded member and 3d in annotated FIG 3 below); and a second coupling member to couple the little finger- side padded member and the central padded member together (the portion of 3a between the central padded member and 3j in annotated FIG 3 below).
As to claim 4, Rector discloses the baseball mitt according to claim 3, wherein a longitudinal slit is formed in either of the first and the second coupling members (3k and/ or 4 in FIG 3; please note that even though 4 is circular, it has a longitude and so is considered to be a longitudinal slit).
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As to claim 25, Rector discloses the baseball mitt according to claim 3, wherein the first coupling member and the second coupling member are configured to be separable from the central padded member (capable of being separated, at least to the degree disclosed by Applicant; present specification paras. 0032 and 0037 disclose the members are joined by sewing; therefore it is understood they are capable of being separated by being cut apart; likewise, the Rector members are integrally joined and are capable of being separated such as by being cut apart).
Claim(s) 26 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rector (US 5678245 A) as applied to claim 2 above.
As to claim 26, Rector discloses Rector discloses the baseball mitt according to claim 2, comprising: a first coupling member to couple the thumb-side padded member and the central padded member together (the portion of 3a between the central padded member and 3d in annotated FIG 3 below); and a second coupling member to couple the little finger- side padded member and the central padded member together (the portion of 3a between the central padded member and 3j in annotated FIG 3 below);
wherein the first coupling member has an elongated shape (both coupling members have an elongated shape), and the first coupling member comprises an elongated slit that extends lengthwise along the elongated shape (3k).
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As to claim 27, Rector discloses the baseball mitt according to claim 2, comprising: a first coupling member to couple the thumb-side padded member and the central padded member together (the portion of 3a between the central padded member and 3d in annotated FIG 3 below); and a second coupling member to couple the little finger- side padded member and the central padded member together (the portion of 3a between the central padded member and 3j in annotated FIG 3 below);
wherein the second coupling member has an elongated shape (both coupling members have an elongated shape), and the second coupling member comprises an elongated slit that extends lengthwise along the elongated shape (3k).
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Claim Rejections - 35 USC § 103
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rector (US 5678245 A).
As to claim 5, Rector does not disclose the baseball mitt according to claim 2, wherein a degree of hardness of the central padded member is larger than a degree of hardness of any of the thumb-side padded member and the little finger-side padded member.
Rector col 3 line 50-60 does disclose the thumb-side and little finger-side padded members are foam and the central padded member is “to provide stiffness,” which suggests the central padded member is harder than the thumb and finger side padded members.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the degree of hardness of the central padded member is larger than a degree of hardness of any of the thumb-side padded member and the little finger-side padded member, since it is 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. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the degree of hardness of the central padded member is larger than a degree of hardness of any of the thumb-side padded member and the little finger-side padded member, in order to provide a palm region that is hard enough to protect the wearer from the impact of a ball being caught, while providing finger regions that are soft to conform around the surface of the ball for retaining the ball in the glove.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SALLY HADEN whose telephone number is (571)272-6731. The examiner can normally be reached M-F 9-5.
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, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SALLY HADEN
Primary Examiner
Art Unit 3732
/SALLY HADEN/ Primary Examiner, Art Unit 3732
Prosecution Insights