DETAILED ACTION
1. This action is made Final in response to applicants Amendments / Request for Reconsideration filed 3/3/26. Claims 1, 14 and 20 are amended; claims 1-20 are pending.
Claim Rejections - 35 USC § 112
2. 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.
Claims 1-20 are 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.
With respect to claim 1, the new matter elements unsupported by the specification as originally filed are as follows: “the core present throughout a majority of a head portion of the paddle between the first surface and the second surface”, the first and second gap being “below the majority of the head portion of the paddle”; and a third gap “bounding the core around at least part of the majority of the head portion of the paddle”.
With respect to claim 14, the new matter elements unsupported by the specification as originally filed are as follows: “the core present throughout a majority of a head portion of the paddle between the first surface and the second surface”, and throat gaps positioned “below the majority of the head portion of the paddle”.
With respect to claim 20, the new matter elements unsupported by the specification as originally filed are as follows: “the core present throughout a majority of a head portion of the paddle between the first surface and the second surface”, lateral cavities disposed “below the majority of the head portion of the paddle”; and an encircling cavity surround the core along at least part of the majority of the head portion of the paddle”.
Applicant points to Fig. 35 as providing the requisite support for these aforementioned claim elements – See Remarks 3/3/26 page 1. However, Fig. 35 is merely a cross-sectional view of a paddle head. A person ordinary skilled in the golf club art would not consider Fig. 35 to reasonably convey that these limitations were possessed by the inventor at the time the application was filed. With respect to the written description, references to a majority are limited to paragraph [0133], which teaches that the gap filled by second filler 3412 may extend “along a majority of a first side of the head portion, along a top of the head portion, and along a majority of a second side of the head portion”. However, this reference to a majority (presumably a perimeter length) is referencing a different orientation than the claimed recitations to the majority. Examiner further notes that the core is permitted to be non-solid, including having open cell and lattice structure. And at least with respect to claims 1 and 14, based on the doctrine of claim differentiation, the core is not substantially solid – See claims 6 and 18; See also Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005).
Claim Rejections - 35 USC § 112
3. 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 1-20 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.
With respect to claim 1, the indefinite limitations are as follows: “the core present throughout a majority of a head portion of the paddle between the first surface and the second surface”, the first and second gap being “below the majority of the head portion of the paddle”; and a third gap “bounding the core around at least part of the majority of the head portion of the paddle”.
With respect to claim 14, the indefinite limitations are as follows: “the core present throughout a majority of a head portion of the paddle between the first surface and the second surface”, and throat gaps positioned “below the majority of the head portion of the paddle”.
With respect to claim 20, the indefinite limitations are as follows: “the core present throughout a majority of a head portion of the paddle between the first surface and the second surface”, lateral cavities disposed “below the majority of the head portion of the paddle”; and an encircling cavity surround the core along at least part of the majority of the head portion of the paddle”.
A person ordinary skill in the art cannot properly ascertain the metes and bounds of these limitations. Specifically, the scope of a “majority of a head portion” is not known. Is majority referencing an area? Volume? Perimeter length? Moreover, the specification teaches that the core can be made from open-cell structure or lattice structure, which is not a solid material. And at least with respect to claims 1 and 14, based on the doctrine of claim differentiation, the core is not substantially solid – See claims 6 and 18; See also Free Motion Fitness, Inc. As such, this adds to the confusion on how to determine the scope for “a majority of a head portion”. For examining purposes, the “majority of the head portion” will be construed as referencing a volume of the head. However, when a prior art core is made from lattice or open cell material, the open space within the core will not be subtracted out from the volume for purposes of determining a majority of the head.
Claim Rejections - 35 USC § 102
4. 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.
5. Claim 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thurman et al. (US Pub. No. 2021/0252356).
With respect to claim 20, Thurman et al. teaches a pickleball paddle, comprising: a first surface 44; a second surface 46 (paragraph [0115]); a core situated between the first surface 44 and the second surface 46, the core 1242 constructed from a first material (inherent), the core present throughout a majority of a head portion of the paddle between the first surface and second surface (See annotated Fig. 14); a plurality of lateral cavities (i.e. cells/cavities 1250 of filled portion 1260) positioned beyond a perimeter of the core and disposed below the majority of the head portion of the paddle, the plurality of lateral cavities defined by absence of the first material of the core between the first and second surfaces, the plurality of lateral cavities including a first lateral cavity disposed on a first side of the paddle proximate to a throat portion thereof and a second lateral cavity disposed on a second side of the paddle proximate to the throat portion (See annotated Fig. 14); a first filler disposed within the first lateral cavity and the second lateral cavity (paragraphs [0116]-[0117]); an encircling cavity (i.e. an open portion making a cell/cavity 1250 at a top portion of the head) surrounding the core along at least part of the majority of the head portion of the paddle, the encircling cavity defined by an absence of the first material of the core between the first and second surfaces (examiner notes the claim language of “at least part of” permits the claim element to be met even though the cavity does not extend for a majority of the head portion); and a second filler disposed within the encircling cavity (paragraphs [0116]-[0117]).
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Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-8 and 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Thurman et al. (US Pub. No. 2021/0252356).
With respect to claims 1-2, Thurman et al. teaches a pickleball paddle, comprising: a first surface 44; a second surface 46 (paragraph [0115]); a core (See annotated Fig. 14) disposed between the first surface 44 and the second surface 46 (paragraph [0114]-[0115]), the core comprising a first material (inherent); the core present throughout a majority of a head portion of the paddle between the first surface and second surface (Fig. 14); a first gap and a second gap (i.e. opening area identified as a cell/cavity 1250) disposed outside of a perimeter of the core, the first gap disposed on a first side of the paddle substantially adjacent to a throat portion thereof, and below the majority of the head portion of the paddle, and the second gap disposed on a second side of the paddle substantially adjacent to the throat portion thereof and below the majority of the head portion of the paddle, wherein each of the first gap and the second gap are defined by an absence of the first material of the core between the first and second surfaces (See annotated Fig. 14); a first filler (“foamed polymer”) disposed within each of the first gap and the second gap, the first filler comprising a second material (paragraph [0116] - “foamed polymer”); a third gap (i.e. cell/cavity at the top filled portion) bounding the around at least part of the majority of the head portion of the paddle; wherein the third gap is defined by an absence of the first material of the core between the first and second surfaces (examiner notes the claim language of “at least part of” permits the claim element to be met even though the cavity does not extend for a majority of the head portion); and a second filler disposed within the third gap, the second filler comprising a third material (“foamed polymer” – paragraph [0116]).
For the embodiment cited in Fig. 14, the material used for the core is not expressly disclosed. However, in the paddle embodiment set forth in Fig. 1, Thurman et al. teaches that the core can be made from a first material such as a rigid polymer or glass/carbon filled polymer composite (paragraphs [0082]-[0083]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a material for the core as taught by Thurman in reference to the paddle embodiment of Fig. 1. The rationale to combine is to provide rigidity to the paddle, ensuring durability and proper weighting of the paddle conducive for repetitive high performance hitting. The proposed modification has a reasonable expectation of success as the material used for the core in Fig. 1 is expressly taught to be configured to receive filler material of different materials (paragraph [0083]).
The combined paddle thus teaches wherein the second and third materials (i.e. “foamed polymer” - paragraph [0116]) are each different than the first material of the core (i.e. rigid polymer or glass/carbon filled polymer composite - paragraphs [0082]-[0083]).
With respect to claim 3, Thurman et al. teaches wherein the second material of the first filler is the same as one or more of the first material of the core and the third material of the second filler (paragraph [0116]-[0117]).
With respect to claim 4, Thurman et al. teaches wherein at least one of the first material of the core, the second material of the first filler, and the third material of the second filler include one or more foam materials (paragraphs [0116], [0118]).
With respect to claim 5, Thurman et al. teaches the second material of the filler and the third material of the second filler include “foamed polymer”. As such, Thurman et al. teaches wherein at least one of the first material of the core, the second material of the first filler, and the third material of the second filler include one or more of: a polymer, a thermoplastic, a thermoset, a thermoplastic elastomer, an elastomer, a rubber, an expandable material, and a fluid (paragraph [0116], [0118]).
With respect to claims 6-7, Thurman et al., for the embodiment set forth in Fig. 1, further teaches wherein the core is a substantially solid core, and wherein the core includes at least one of a honeycomb structure, an open-cell structure, and a lattice structure (paragraphs [0082]- [0083]). The motivation to combine is the same as stated above.
With respect to claim 8, Thurman et al. teaches a frame 48 disposed outside of a perimeter of the third gap around at least the head portion of the paddle (paragraph [0116]).
With respect to claim 10, Thurman et al. teaches an edge guard 48 surrounding at least the head portion of the paddle (paragraph [0116]).
With respect to claims 11-13, Thurman et al. teaches a fourth gap (i.e. cells/cavities at the top filled portion) disposed between the core and the third gap (i.e. filled portion at extreme upper portion), wherein the fourth gap includes a filler (i.e. “foamed polymer”) that is different from at least one of the first material, the second material, and the third material (paragraph [0116]-[0117]; See also paragraphs [0082]- [0083]); wherein the fourth gap includes a filler (i.e. “foamed polymer”) that is the same as at least one of the first material, the second material, and the third material Id. The motivation to combine is the same as stated above.
With respect to claims 14-15, Thurman et al. teaches a pickleball paddle, comprising: a first surface 44; a second surface 46 (paragraph [0115]); a core disposed between the first surface 44 and the second surface 46, the core 1242 comprising a first material (inherent); the core present throughout a majority of a head portion of the paddle between the first surface and second surface (See annotated Fig. 14); a perimeter gap surrounding at least a portion of the core (i.e. cell/cavity 1250 at the top filled portion 1260), the perimeter gap defined by an absence of the first material of the core between the first and second surfaces; a pair of throat gaps (i.e. cells/cavities 1250) positioned outside of a perimeter of the core, each throat gap disposed on opposite sides of the paddle adjacent to a throat portion thereof and below the majority of the head portion of the paddle (See annotated Fig. 14), each throat gap defined by an absence of the first material of the core between the first and second surfaces; a first filler material disposed within each throat gap (paragraphs [0116]-[0117]); and a second filler material disposed within the perimeter gap,
For the embodiment cited in Fig. 14, the material used for the core is not expressly disclosed. However, in the paddle embodiment set forth in Fig. 1, Thurman et al. teaches that the core can be made from a first material such as a rigid polymer or glass/carbon filled polymer composite (paragraphs [0082]-[0083]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a material for the core as taught by Thurman in reference to the paddle embodiment of Fig. 1. The rationale to combine is to provide rigidity to the paddle, ensuring durability and proper weighting of the paddle conducive for repetitive high performance hitting. The proposed modification has a reasonable expectation of success as the material used for the core in Fig. 1 is expressly taught to be configured to receive filler material of different materials (paragraph [0083]).
The combined paddle thus teaches wherein the second filler material is different from the first material of the core (paragraph [0116]-[0117]; See also paragraphs [0082]- [0083]); wherein the first filler material is different than the first material of the core Id.
With respect to claim 16, Thurman et al. teaches wherein the first filler material is the same as one or more of the first material of the core and the second filler material (paragraphs [0116]-[0117]).
With respect to claim 17, Thurman et al. teaches wherein at least one of the first material of the core, the first filler material, and the second filler material include one or more foam materials (paragraphs [0116], [0118]).
With respect to claim 18, Thurman et al. teaches wherein the core of the paddle embodied in Fig. 1 is a substantially solid core (paragraphs [0082]- [0083]). The motivation to combine is the same as stated above.
Double Patenting
8. 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.
9. Claims 1-8, 10-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,465,826 in view of Thurman et al. (US Pub. No. 2021/0252356).
The patented claims substantially teach the claimed pickleball paddle, including a front and back surface, core, frame and gap formed outside of the core. The patented claims do not expressly disclose the four gaps as claimed, and the filler materials therein. However, as stated above in the rejection of claims 1-8, 10-18 and 20 by Thurman et al., such features are known in the art. A person ordinary skill in the art would have found it obvious to form gaps and utilize filling materials at each of the throat adjacent regions, a head portion, and a fourth gap between the head portion gap and core, as taught by Thurman. The rationale to combine is to provide a desired feel and rigidity to the paddle that suits the particular preference of the player.
10. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-35 of copending Application No. 19/266770 (reference application) in view of Thurman et al. (US Pub. No. 2021/0252356).
The reference claims substantially teach the claimed pickleball paddle, including a front and back surface, core, frame and first and second gaps formed outside of the core (See claim 21 specifying the frame defines the gap and projects toward the core). The reference claims do not expressly disclose the specific locations of each of the claimed gaps, and the filler materials therein. However, as stated above in the rejection of claims 1-8, 10-18 and 20 by Thurman et al., such features are known in the art. A person ordinary skill in the art would have found it obvious to form gaps and utilize filling materials at each of the throat adjacent regions, a head portion, and a fourth gap between the head portion gap and core, as taught by Thurman. The rationale to combine is to provide a desired feel and rigidity to the paddle that suits the particular preference of the player.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
11. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 12,357,891 in view of Thurman et al. (US Pub. No. 2021/0252356).
The patented claims substantially teach the claimed pickleball paddle, including a front and back surface, core, frame and first and second gaps formed adjacent a throat portion. The patented claims do not expressly disclose the specifics of the first, second, third and fourth gaps as claimed, and their corresponding filler materials therein. However, as stated above in the rejection of claims 1-8, 10-18 and 20 by Thurman et al., such features are known in the art. A person ordinary skill in the art would have found it obvious to form gaps outside the core and utilize filling materials at each of the throat adjacent regions, a head portion, and a fourth gap between the head portion gap and core, as taught by Thurman. The rationale to combine is to provide a desired feel and rigidity to the paddle that suits the particular preference of the player.
Response to Arguments
12. Applicant's arguments filed 3/3/26 have been fully considered but they are not persuasive.
Applicant argues that Thurman fails to teach gaps defined as the absence of the core material. Examiner respectfully disagrees. Cells/Cavities are empty spaces within the lattice, mesh or honeycomb structure of the core. These empty spaces do not comprise the core material. Although the empty spaces may have a shape that is defined by the core structure, the empty spaces do not include the material used to form the core, thus reading on the claim language. Regarding the locations of the gap, the rejection above provides an annotated Fig. 14 of Thurman to show how the gaps meet the claimed locations.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Filippini (US Pat. No. 10,377,093).
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 MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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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