DETAILED ACTION
Claim Rejections - 35 USC § 112
1. 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.
Claim 5 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. Claim 5 includes a Markush grouping of an open list of alternatives. Applicant should specify that the grouping is a closed list of alternatives. See MPEP 2173.05(h).
Claims 11-13 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. The recitation in claim 11 of “a fourth gap disposed between the core and the third gap” creates an indefinite scope because it appears to be contradicted by applicant’s annotated Drawing of Fig. 34 in the Remarks dated 6/22/26. Specifically, there is no gap between the third gap and the core in annotated Fig. 34. This discrepancy creates doubt as to the scope of the claim.
Claim Rejections - 35 USC § 102
2. 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.
3. Claims 1-8, 10-18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thurman et al. (US Pub. No. 2021/0252356).
With respect to claims 1-6, Thurman teaches a pickleball paddle 2120, the paddle comprising: a first surface 44; a second surface 46; a handle 30; a head 2140 having a top end and a bottom end, the bottom end located closer to the handle 30 than the top end, the first surface 44 and the second surface 46 at least partially forming opposing faces of the head 2140; a throat having a top end and a bottom end, the top end of the throat located adjacent to the bottom end of the head, and the bottom end of the throat located adjacent to the handle 30 (Fig.’s 24A-24B; See also Fig.’s 23A-23B); a core 2072-1 sandwiched between the first surface 44 and the second surface 46 in at least the head of the paddle, the core 2071-1 comprising a first material; a first gap and a second gap disposed wholly beyond a perimeter of the core 2072-1, the first gap disposed on a first side of the paddle 2120 within the throat, and the second gap disposed on a second side of the paddle 2120 within the throat, 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 44, 46; a first filler 2172-2 disposed within each of the first gap and the second gap, the first filler 2172-2 comprising a second material; a third gap disposed wholly beyond the perimeter of the core 2072-1 in at least the top end of the head, wherein the third gap is defined by an absence of the first material of the core between the first and second surfaces 44, 46; and a second filler disposed within the third gap, the second filler comprising a third material different than the first material of the core (Fig’s 24A-24B; See also Fig’s 23A-23B), wherein the second material of the first filler is different than the first material of the core (paragraphs [0141]-[0142], [0144]), 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 [0144]), 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 Id., 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 Id. wherein the core is a substantially solid core Id.
With respect to claim 7, Thurman teaches wherein the core 2070-1 includes at least one of a honeycomb structure, an open-cell structure, and a lattice structure (Fig. 24A-24B).
With respect to claim 8, Thurman teaches a frame disposed outside of a perimeter of the third gap around at least the head of the paddle (Fig.’s 24A-24B).
With respect to claim 10, Thurman teaches an edge guard 48 surrounding at least the head of the paddle (paragraph [0145]).
With respect to claims 11-13, in the embodiment shown in Fig’s 23A-23B, Thurman teaches wherein the peripheral region 2072-2 is comprises of “cells” and/or “lattices” which inherently comprise gaps (paragraphs [0141]-[0142]), wherein the region 2072-2 if filled with “a filling material” Id. As such, there will exist multiple gaps within region 2072-2, including a “fourth gap disposed between the core 2170-1 and “third gap”, wherein the fourth gap includes a filler that is different from at least one of the first material, the second material, and the third material, and wherein the fourth gap includes a filler that is the same as at least one of the first material, the second material, and the third material.
With respect to claims 14-18, Thurman teaches a pickleball paddle 2120, the paddle comprising: a first surface 44; a second surface 46; a handle 30; a head 2140 having a top end and a bottom end, the bottom end located closer to the handle 30 than the top end, the first surface 44 and the second surface 46 at least partially forming opposing faces of the head 2140; a throat having a top end and a bottom end, the top end of the throat located adjacent to the bottom end of the head, and the bottom end of the throat located adjacent to the handle 30 (Fig’s 24A-24B); a core 2071-1 sandwiched between the first surface 44 and the second surface 46 in at least the head 2140 of the paddle 2120, the core 2071-1 comprising a first material; a perimeter gap surrounding at least a portion of the core and disposed wholly beyond a perimeter of the core, the perimeter gap defined by an absence of the first material of the core between the first and second surfaces 44, 46 (Fig.’s 24A-24B; paragraph [0144]); a pair of throat gaps positioned wholly beyond a perimeter of the core 2140, each throat gap disposed on opposite sides of the paddle within the throat of the paddle Id, and each throat gap defined by an absence of the first material of the core between the first and second surfaces; a first filler material 2172-2 disposed within each throat gap; and a second filler material 2172-2 disposed within the perimeter gap, the second filler material 2172-2 different from the first material of the core Id.; wherein the first filler material is different than the first material of the core 2071-1 Id.; wherein the first filler material is the same as one or more of the first material of the core 2071-1 and the second filler material Id, wherein at least one of the first material of the core 2071-1, the first filler material, and the second filler material include one or more foam materials Id; wherein the core is a substantially solid core 2071-1 Id.
With respect to claim 20, Thurman teaches a pickleball paddle 2120, the paddle comprising: a first surface 44; a second surface 46; a handle 30; a head 2140 having a top end and a bottom end, the bottom end located closer to the handle than the top end, the first surface 44 and the second surface 46 at least partially forming opposing faces of the head 2140; a throat having a top end and a bottom end, the top end of the throat located adjacent to the bottom end of the head 2140, and the bottom end of the throat located adjacent to the handle 30; a core 2071-1 situated between the first surface 44 and the second surface 46 in at least the head of the paddle, the core 2071-1 constructed from a first material; a plurality of lateral cavities positioned wholly beyond a perimeter of the core 2140, the plurality of lateral cavities defined by an 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 within the throat and a second lateral cavity disposed on a second side of the paddle within the throat; a first filler disposed within the first lateral cavity and the second lateral cavity; an encircling cavity disposed wholly beyond the perimeter of the core 2071-1 and surrounding the core in at least the head of the paddle, the encircling cavity defined by an absence of the first material of the core between the first and second surfaces; and a second filler disposed within the encircling cavity.
Double Patenting
4. 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.
5. 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.
6. 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.
7. 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
8. Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
9. 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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