DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Notice to Applicant
Claims 1-7 have been examined in this application. This communication is the first action on the merits of these claims.
Claim Rejections - 35 USC § 112
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.
Claim 4 is 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.
The term “substantially circular” in claim 4 is a relative term which renders the claim indefinite. The term “substantially circular” is not defined by the claim, as it is unclear what is considered to be “substantially” circular, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
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.
Claims 1, 4, 5, 6 are rejected under 35 USC 103 as obvious over US Patent Number 5,088,733 to Barnea in view of US Design Patent Number D444,193 to Dodson.
Regarding claim 1, Barnea discloses a bat (bat 700) comprising:
a body comprising a first material, the body defining an exterior surface with a top end (700:L) and a bottom end (700:S);
a barrel portion (barrel portion 720) having a barrel cross-section with a substantially circular perimeter that defines a center point (see cross-section 814:E);
the barrel cross-section defining a longitudinal axis substantially perpendicular to the barrel cross-section, the longitudinal axis intersecting and extending through the exterior surface, near the top and bottom ends, at respective upper and lower intersection points, and otherwise within the exterior surface (central axis 700:C);
a handle portion that includes the bottom end (handle 710);
the handle portion defining a maximum forward distance, measured along a first line perpendicular to the longitudinal axis, from a first point on the longitudinal axis to a first location on the exterior surface of the handle portion that is farthest forward of the longitudinal axis (left edge of guard 706:T in Figure 7);
the handle portion defining a maximum rearward distance, measured along a second line perpendicular to the longitudinal axis, from a second point on the longitudinal axis to a second location on the exterior surface of the handle portion that is farthest rearward of the longitudinal axis (right edge of guard 706:T in Figure 7);
the handle portion also having a flared region (Figure 7 shows guard 706:T having a flared region that leads to the left and right edges);
the flared region defining a cross-section perpendicular to the longitudinal axis, the cross- section having a major axis (814:A); and
portions of the exterior surface, in the flared region, defining a front edge and a rear edge (see left and right edges of guard 706:T in Figure 7).
Barnea does not disclose wherein the distance from the longitudinal axis to the front edge, measured along respective lines perpendicular to the longitudinal axis, is greater than the distance from the longitudinal axis to the rear edge, for each point of the longitudinal axis throughout the flared region. However, this limitation is taught by Dodson. Dodson discloses a bat with a contoured group, and Figures 1 and 2 shows a flared region at the bottom where the distance from the longitudinal axis of the bat to the front edge (to the right in Figure 2) is greater than the distance from the longitudinal axis to the rear edge (to the left). Figure 2 further shows that the right side continuously flares out, while the left side slightly curves inwards, thus the distance from the right side to the longitudinal axis is greater than the distance form the left side to the longitudinal axis for each point of the longitudinal axis throughout the flared region. It would be obvious to a person having ordinary skill in the art to modify Barnea using the teachings from Dodson to use different types of handles and grips depending on the user’s grip preferences.
Barnes and wherein the maximum rearward distance from any portion within a region of the rear edge to the longitudinal axis is less than half of the maximum forward distance between the front edge and the longitudinal axis wherein the region is between 1 inch and 1.5 inches from the bottom end of the handle portion. However, having disclosed the flared portion of the bat with a greater front portion and smaller rear portion, it would have been an obvious matter of design choice to make the different portions of the handle of whatever form or shape was desired or expedient to accommodate the user’s grip preferences. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 4 (dependent on claim 1), Barnea discloses the handle portion has a region with at least one cross-section that defines a substantially circular perimeter thereof (the cross sections at 814:B, C, D have a substantially circular perimeter).
Regarding claim 5 (dependent on claim 1), Dodson further teaches the distance from the longitudinal axis to the front edge is not less than the distance from the longitudinal axis to the rear edge, for each point of the longitudinal axis that is within the flared region. Figure 2 shows that the handle flares out continuously on the right side, and curves in slightly on the left side, therefore the distance from the longitudinal axis to the front edge is always increasing while the distance from the longitudinal axis to the rear edge is always decreasing.
Regarding claim 6 (dependent on claim 1), Barnea discloses the cross-section of the flared region is non-circular and defines a perimeter having an oblong shape (see egg-shaped traverse cross-section 814:A).
Claim 2 is rejected under 35 USC 103 as obvious over US Patent Number 5,088,733 to Barnea in view of US Design Patent Number D444,193 to Dodson, in further view of US Patent Number 3,554,545 to Mann
Regarding claim 2 (dependent on claim 1)¸ Barnea and Dodson do not disclose the handle portion comprises plastic. However, this limitation is taught by Mann. Column 3, lines 11-13 disclose “The subject bat preferably is made from hard wood in line with accepted practice but it is visualized that other materials, such as plastic, may be used for special purposes”. It would be obvious to a person having ordinary skill in the art to modify Barnea and Dodson using the teachings from Mann in order to use known types of materials for bats such as plastic as needed depending on the uses for the bat.
Claim 3 is ejected under 35 USC 103 as obvious over US Patent Number 5,088,733 to Barnea in view of US Design Patent Number D444,193 to Dodson, in further view of US Patent Number 7,744,497 to Phelan.
Regarding claim 3 (dependent on claim 1), Barnea and Dodson do not disclose the body comprises metal. However, this limitation is taught by Phelan. Column 6, lines 34-36 disclose “The bat may alternately be formed from or include other materials, such as metal (e.g., aluminum), without departing from the scope of the present invention”. It would be obvious to a person having ordinary skill in the art to modify Barnea and Dodson u sign the teachings from Phelan in order to use known types of materials for bats such as aluminum as needed depending on the uses for the bat.
Claim 7 is rejected under 35 USC 103 as obvious over US Patent Number 5,088,733 to Barnea in view of US Design Patent Number D444,193 to Dodson, in further view of US Patent Number 5,482,270 to Smith.
Regarding claim 7 (dependent on claim 1), Barnea and Dodson do not disclose a first portion of the handle has cross-sections that are flatter on a first side and a second portion of the handle further away from the bottom end of the handle portion than the first portion has cross-sections that are flatter on a second side opposite the first side. However, this limitation is taught by Smith. Smith discloses handgrips for a bat, and Figure 5 discloses an embodiment where the left side has shim 11 at a first portion of the handle that would cause cross sections at the peaks of the shim where the right side of the handle without the peaks are flatter, and the right side has shim 12 on the right side at a second portion of the handle that would cause cross sections at the peaks of the shim where the left side of the handle without the peaks are flatter. It would be obvious to a person having ordinary skill in the art to modify Barnea and Dodson using the teachings from Smith in order to adapt the handle to the grip preferences of the user.
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.
Claim 1, 5, 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 12 of U.S. Patent No. 7,878,830. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 9, 12 of the ‘830 patent discloses a bat, a barrel portion having a substantially circular perimeter, the longitudinal axis, the flared handle portion, and the front and rear edges. Furthermore, a bat inherently has a body comprising a first material and the handle inherently must have a maximum forward distance and a maximum rearward distance. The ‘830 reference does not disclose the maximum rearward distance from any portion within a region of the rear edge to the longitudinal axis is less than half of the maximum forward distance between the front edge and the longitudinal axis wherein the region is between 1 inch and 1.5 inches from the bottom end of the handle portion, but having disclosed the distance from the longitudinal axis to the front edge is greater than the distance from the longitudinal axis to the rear edge throughout the asymmetrically flared handle portion, the exact ratio of the distances and position of the region are obvious changes in shape.
Claims 1, 3, 4, 5, 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 of U.S. Patent No. 8,066,594. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 9 of the ‘594 patent discloses all of the limitations of claims 1, 3, 4, 5, 6 except the maximum rearward distance from any portion within a region of the rear edge to the longitudinal axis is less than half of the maximum forward distance between the front edge and the longitudinal axis wherein the region is between 1 inch and 1.5 inches from the bottom end of the handle portion, but having disclosed the distance from the longitudinal axis to the front edge is greater than the distance from the longitudinal axis to the rear edge throughout the asymmetrically flared handle portion, the exact ratio of the distances and position of the region are obvious changes in shape.
Claims 1, 3, 5, 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 14 of U.S. Patent No. 8,232,131. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 11, 12, 14 of the ‘131 patent discloses all of the limitations of claims 1, 3, 4, 5, 6 except the maximum rearward distance from any portion within a region of the rear edge to the longitudinal axis is less than half of the maximum forward distance between the front edge and the longitudinal axis wherein the region is between 1 inch and 1.5 inches from the bottom end of the handle portion, but having disclosed the distance from the longitudinal axis to the front edge is greater than the distance from the longitudinal axis to the rear edge throughout the asymmetrically flared handle portion, the exact ratio of the distances and position of the region are obvious changes in shape.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 6, 13 of U.S. Patent No. 8,801,551. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 4, 5, 6, 13 of the ‘551 patent discloses all of the limitations of claims 1-6 except the maximum rearward distance from any portion within a region of the rear edge to the longitudinal axis is less than half of the maximum forward distance between the front edge and the longitudinal axis wherein the region is between 1 inch and 1.5 inches from the bottom end of the handle portion, but having disclosed the distance from the longitudinal axis to the front edge is greater than the distance from the longitudinal axis to the rear edge throughout the asymmetrically flared handle portion, the exact ratio of the distances and position of the region are obvious changes in shape.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 6, 13 of U.S. Patent No. 9,526,960. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 4, 5, 6, 13 of the ‘960 patent discloses all of the limitations of claims 1-6 except the maximum rearward distance from any portion within a region of the rear edge to the longitudinal axis is less than half of the maximum forward distance between the front edge and the longitudinal axis wherein the region is between 1 inch and 1.5 inches from the bottom end of the handle portion, but having disclosed the distance from the longitudinal axis to the front edge is greater than the distance from the longitudinal axis to the rear edge throughout the asymmetrically flared handle portion, the exact ratio of the distances and position of the region are obvious changes in shape.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 6, 13 of U.S. Patent No. 10,456,639. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 4, 5, 6, 12 of the ‘639 patent discloses all of the limitations of claims 1-6 except the maximum rearward distance from any portion within a region of the rear edge to the longitudinal axis is less than half of the maximum forward distance between the front edge and the longitudinal axis wherein the region is between 1 inch and 1.5 inches from the bottom end of the handle portion, but having disclosed the distance from the longitudinal axis to the front edge is greater than the distance from the longitudinal axis to the rear edge throughout the asymmetrically flared handle portion, the exact ratio of the distances and position of the region are obvious changes in shape.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,303,756. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 of the ‘756 patent discloses all of the limitations of claims 1-6 except the ‘756 patent discloses the flared portion being asymmetrical, but a handle portion with a maximum rearward distance that is less than half of the maximum forward distance is inherently asymmetrical.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL H WANG whose telephone number is (571)272-6554. The examiner can normally be reached 10-6:30.
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MICHAEL H. WANG
Primary Examiner
Art Unit 3642
/MICHAEL H WANG/Primary Examiner, Art Unit 3642
Prosecution Insights