DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 7/31/26. Claims 1-18 are cancelled; claims 19, 21-23, 25, 30-32, 34-35 and 37 are amended; 19-38 are pending.
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 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US Pat. No. 5,054,780).
With respect to claims 19-21, Chen teaches a weighting comprising an overlay 18 and an underlay 17 coupled to the overlay 18, wherein the overlay 18 and the underlay 17 are configured to couple to an edge of a paddle, wherein the overlay 18 includes a first hooked flange 183 and a second hooked flange 183 that curve inwardly toward each other and are configured to secure the weight to the edge of the paddle; further comprising an underlay recess 181 defined in the overlay 18, wherein the underlay 17 is coupled to the overlay 18 by nesting with the overlay 18 and within the underlay recess 181 (Fig’s 2-3; column 2); wherein the overlay 18 has a first mass (inherent); and the underlay 17 has a second mass (inherent), and wherein the first mass and the second mass define a total mass of the weight; wherein the overlay 18 includes: a bridge portion configured to span a thickness of a body portion of the paddle (Fig.’s 2-3); the first hooked flange 183 extending from a first end of the bridge portion to interface with the edge of the paddle Id; and the second hooked flange 183 extending from a second end of the bridge portion to interface with the edge of the paddle. 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). Here, Chen et al. expressly teaches wherein the weight couples to an exterior of the frame using the hooked flanges 183 (Fig.’s 2-3). As such, the structure of the weight is considered to be capable of coupling to an edge of a paddle.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 19 and 21-22 are rejected under 35 U.S.C. 103 as obvious over Iwatsubo et al. (US Pat. No. 6,293,878) in view of Chen (US Pat. No. 5,054,780).
With Respect to claim 19, Iwatsubo teaches a weight 10 comprising: an overlay 11; and an underlay 12’ coupled to the overlay 11, wherein the overlay 11 and the underlay 12’ are configured to couple to an edge of a paddle (Fig’s 3A-3B; column 10, lines 43-67). 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). Here, Iwatsubo et al. expressly teaches wherein the weight 10 couples to an exterior of the frame (Fig. 3B). Examiner also notes the U-shaped interior of the weight. As such, the structure of the weight 10 is considered to be capable of coupling to an edge of a paddle.
Iwatsubo teaches wherein the overlay 11 comprises first and second flange portions, but does not expressly teach wherein the flanges are hooked such that they curve toward each other. However, analogous art reference Chen teaches that it is known to shape first and second weight flanges with a hook structure curving toward each other (Fig.’s 2-3). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the flanges of Iwatsubo with a hook structure as taught by Chen. The rationale to combine is to use a known technique to facilitate removable attachment of the weight to an edge portion of the sports instrument. The structure of the combined weight is capable of meeting the intended use limitations. See MPEP 2114 - In re Schreiber.
With respect to claim 21, Iwatsubo teaches wherein the overlay 11 includes: a bridge portion configured to span a thickness of a body portion of the paddle (Fig.’s 3A-3B); the first arm extending from a first end of the bridge portion to interface with an edge of the paddle Id; and the second arm extending from a second end of the bridge portion to interface with the edge of the paddle Id. As stated above in the rejection of claim 19, Chen teaches wherein the first and second arms are hooked shape. The rationale to combine is the same as stated above.
With respect to claim 22, Iwatsubo teaches wherein the underlay 12’ includes: a bridge portion 12c’ configured to span a thickness of a body portion of the paddle; a first arm 12a’ extending from a first end of the bridge portion 12c’ to interface with the edge of the paddle; and a second arm 12c’ extending from a second end of the bridge portion to interface with the edge of the paddle (Fig.’s 3A-3B). See MPEP 2114 - In re Schreiber. As the frame shown in Fig. 3B is similar to a body portion thickness of a paddle, the bridge is considered capable of spanning a thickness of a body portion of the paddle. First and second arms of each of the overlay and underlay can be positioned to interface with an edge of the paddle.
6. Claims 20 and 23 are rejected under 35 U.S.C. 103 as obvious over Iwatsubo et al. (US Pat. No. 6,293,878) in view of Chen (US Pat. No. 5,054,780) and further in view of McNamara Jr. et al. (US Pat. No. 3,834,697).
With respect to claim 20, Iwatsubo teaches wherein the underlay 12’ is coupled to the overlay 11 by nesting with the overlay 11 (Fig.’s 3A-3B), wherein: the overlay 11 has a first mass (inherent); and the underlay 12’ has a second mass (inherent), and wherein the first mass and the second mass define a total mass of the weight (i.e. there being no other parts of the weight 10 than the underlay 12’ and overlay 11, the first mass and the second mass define a total mass of the weight). Admittedly, Iwatsubo fails to teach underlay recess as claimed. However, analogous art reference McNamara et al. teaches that it is known to provide an underlay recess (defined by cutouts 28, 30) defined in an overlay 10, 12 to receive underlay 32 (column 2, lines 15-23; Fig.’s 1-2, 4). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add an underlay recess to the overlay of Iwatsubo. The rationale to combine is to facilitate the coupling of the underlay and overlay in a known manner. The proposed modification has a reasonable expectation of success as the combination will not frustrate the intended purpose of Iwatsubo.
With respect to claim 23, Iwatsubo does not teach a ridge and ridge channel as claimed. However, analogous art reference McNamara et al. teaches the following to be known in the art: wherein: an underlay 32 includes a ridge (i.e. portion received in ridge channels 28, 30) protruding from an edge of the underlay 32; and the overlay 10, 12 includes a ridge channel 28, 30 defined in the overlay 10, 12, wherein the underlay 32 is retained within an underlay recess of the overlay via engagement of the ridge with the ridge channel 28, 30 (column 2, lines 15-23; Fig.’s 1-2, 4). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a ridge and corresponding ridge channel to Iwatsubo. The rationale to combine is to facilitate the coupling of the underlay and overlay in a known manner. The proposed modification has a reasonable expectation of success as the combination will not frustrate the intended purpose of Iwatsubo.
7. Claim 24 is rejected under 35 U.S.C. 103 as obvious over Iwatsubo et al. (US Pat. No. 6,293,878) in view of Chen (US Pat. No. 5,054,780) and further in view of Hager (US Pat. No. 5,614,143).
With respect to claim 24, Iwatsubo teaches wherein the overlay 11 is arranged around the underlay 12c (Fig.’s 3A-3B), but does not expressly teach wherein the overlay is overmolded around the underlay. However, analogous art Hager teaching that it is known to couple interfacing elements using an overmolding process – columns 3-4. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to couple the overlay and underlay via over-molding the overlay around the underlay. The rationale to combine is to couple the overlay and underlay together using a known manufacturing technique.
8. Claims 25-38 are rejected under 35 U.S.C. 103 as being unpatentable over Barnes et al. (US Pub. No. 2023/0249042) in view of Chen (US Pat. No. 5,054,780).
With respect to claim 25, Barnes et al. teaches a paddle 300 comprising: a body portion; and a weight 312 coupled to an edge of the body portion (Fig. 3; paragraphs [0032]-[0034]). Barnes does not expressly teach wherein the weight includes an overlay and an underlay coupled to the overlay as claimed. However, analogous art reference Chen teaches the following to be known in the art: first and second weights on first and second edges oppositely positioned around body edge portion (Fig. 2 showing weights at 9 o’clock and 3 o’clock), and wherein weight includes an overlay 18 and an underlay 17 coupled to the overlay 18, wherein the overlay 18 includes a first hooked flange 183 and a second hooked flange 183 configured to secure the weight to an edge of the body portion, and wherein the overlay is formed of a material having elastic spring characteristics such that the first hooked flange 183 and the second hooked flange 183 elastically deform to receive the edge of the body portion and return to secure the weight to the edge of the body portion (Fig.’s 2-3; column 2). Examiner notes overlay 18 is made of “elastic material” and described as “resilient”. As such, it is considered capable of meeting the claimed intended use. See MPEP 2114 - In re Schreiber. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize weights positioned and structured in Chen for the paddle weight of Barnes et al. The rationale to combine is to provide a frame weight that can minimize unwanted vibrations and also increase ball speed for off-center hits due to the increased peripheral weighting.
With respect to claim 26, Barnes et al, in the cited embodiment (Fig. 3), does not expressly disclose how the weight is coupled to the edge of the body. However, secondary reference Chen teaches wherein its weight is coupled to an edge of a body portion via an engineering fit (Fig’s 2-3). The rationale to combine is the same as stated above.
With respect to claim 27, Barnes et al, in the cited embodiment (Fig. 3) does not expressly disclose how the weight is coupled to the edge of the body. However, in an alternative embodiment, Barnes teaches that it is known to have a weight coupled to the edge of the body portion via an adhesive (paragraph [0031]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to use an adhesive to attach the weigh to the edge of the body. This will expectantly provide a secure connection between the weight and edge using a low-cost connecting means.
With respect to claim 28, Barnes teaches an edge guard 302 coupled to the body portion at the edge of the body portion, wherein the weight 312 is coupled to the edge guard via an engineering fit, an adhesive, or a mechanical device (paragraph [0033] – “weighted components may be disposed within or incorporated into the edge guard at the edge 304 of the paddle”).
With respect to claim 29, Barnes teaches an interior shape which matches an exterior shape of the edge guard 302.
With respect to claim 30, Chen teaches wherein the overlay 18 includes: a bridge portion configured to span a thickness of a body portion of the paddle (Fig.’s 2-3); the first hooked flange 183 extending from a first end of the bridge portion to interface with the edge of the paddle Id; and the second hooked flange 183 extending from a second end of the bridge portion to interface with the edge of the paddle Id. See MPEP 2114 - In re Schreiber. The rationale to combine is the same as stated above.
With respect to claim 31, Barnes teaches wherein the weight includes: a first weight coupled to an edge of the paddle; and second weight coupled to an edge of the paddle (paragraphs [0033]-[0034] – “weighted components”), but does not expressly disclose the locations of the first and second weights. Secondary reference Chen teaches that it is known to position first and second weights on first and second edges oppositely positioned around a body edge portion – Fig.’s 2-3 showing weights at 9 o’clock and 3 o’clock. The rationale to combine is to increase ball speed for off-center hits due to the increased peripheral weighting. The combination thus teaches wherein the first weight and the second weight are coupled to the first edge and the second edge about a sweet spot of the paddle to effectively create an enlarged sweet spot, increase a twist weight of the paddle. See MPEP 2114 - In re Schreiber.
With respect to claim 32, the claimed indicia are directed to printed matter. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist. USPTO personnel need not give patentable weight to printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Here, the substrate (edge surface) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique functional position with respect to the functionality of the substrate. There is not a new and unobvious functional relationship therebetween. As such, no patentable weight is given to the claimed printed matter.
With respect to claim 33, Chen, cites above for the weight structure, further teaches an underlay recess 181 defined in the overlay 18, wherein the underlay 17 is coupled to the overlay 18 by nesting with the overlay 18 and within the underlay recess 181 (Fig’s 2-3; column 2).
With respect to claim 34, Chen teaches wherein the overlay 18 has a first mass (inherent); and the underlay 17 has a second mass (inherent), and wherein the first mass and the second mass define a total mass of the weight. The rationale to combine is the same as stated above.
With respect to claim 35, Barnes et al. teaches a weight system for a paddle 300 comprising: a first weight 312 coupled to an edge of the paddle; and a second weight 312 coupled to an edge of the paddle 300 (paragraphs [0033]-[0034] – “weighted components”).
Barnes et al. does not expressly teach wherein the weights are positioned at opposite edges, or wherein each weight comprises an overlay and an underlay coupled to the overlay as claimed.
However, analogous art reference Chen teaches the following to be known in the art: first and second weights on first and second edges oppositely positioned around body edge portion (Fig. 2 showing weights at 9 o’clock and 3 o’clock), and wherein weight includes an overlay 18 and an underlay 17 coupled to the overlay 18, wherein the overlay 18 includes a first hooked flange 183 and a second hooked flange 183 that hook around and engage a backside of a respective edge to secure the respective weight. Examiner notes overlay 18 is made of “elastic material” and described as “resilient”. As such, it is considered capable of meeting the claimed intended use. See MPEP 2114 - In re Schreiber. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize weights positioned and structured in Chen for the paddle weight of Barnes et al. The rationale to combine is to provide a frame weight that can minimize unwanted vibrations and also increase ball speed for off-center hits due to the increased peripheral weighting
With respect to claim 36, Barnes does not expressly disclose the material of the first weight and the second weights for the cited embodiment (i.e. Fig. 3). However, in an alternative embodiment, Barnes teaches that it is known to form weight components from metal, metal alloys, plastics, natural materials, or combinations thereof (paragraph [0017]). A person ordinary skill in the art would have found it obvious to use a material taught in paragraph of 17 of Barnes for the weight components in the cited embodiment. The rationale to combine is to add weighting to the peripheral using a known material to add forgiveness to the paddle.
With respect to claim 37, Chen teaches wherein the overlay 18 includes: a bridge portion configured to span a thickness of a body portion (Fig.’s 2-3); the first hooked flange extending from a first end of the bridge portion to interface with the respective edge Id; and the second hooked flange extending from a second end of the bridge portion to interface with the edge of Id. See MPEP 2114 - In re Schreiber. The rationale to combine is the same as stated above.
With respect to claim 38, Barnes teaches wherein the weight is configured to couple to an edge guard 302 coupled to an edge of a body portion of the paddle (paragraphs [0033]-[0034]). Thus, the combination of Barns and Chen is considered to meet the claim elements.
9. Claims 35-38 are rejected under 35 U.S.C. 103 as being unpatentable over Barnes et al. (US Pub. No. 2023/0249042) in view of Iwatsubo et al. (US Pat. No. 6,293,878) and further in view of Chen (US Pat. No. 5,054,780).
With respect to claim 35, Barnes et al. teaches a weight system for a paddle 300 comprising: a first weight 312 coupled to an edge of the paddle; and a second weight 312 coupled to an edge of the paddle 300 (paragraphs [0033]-[0034] – “weighted components”).
Barnes et al. does not expressly teach wherein the weights are positioned at opposite edges, or wherein each weight comprises an overlay and an underlay coupled to the overlay. However, analogous art reference Iwatsubo teaches the following to be known in the art: first and second weights 10 on first and second edges oppositely positioned around the body edge portion (Fig. 1 showing weights at 9 o’clock and 3 o’clock), and wherein weight 10 includes an overlay 11 and an underlay 12’ coupled to the overlay 11 (Fig’s 3A-3B; column 10, lines 43-67). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize weights positioned and structured in Iwatsubo et al. for the paddle weights of Barnes et al. The rationale to combine is to provide a frame weight that can minimize unwanted vibrations and also increase ball speed for off-center hits due to the increased peripheral weighting. Iwatsubo teaches wherein the overlay 11 comprises first and second flange portions, but does not expressly teach wherein the flanges are hooked such that they curve toward each other. However, analogous art reference Chen teaches that it is known to shape first and second weight flanges with a hook structure curving toward each other (Fig.’s 2-3). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the flanges of Barnes as modified by Iwatsubo with a hook structure as taught by Chen. The rationale to combine is to use a known technique to facilitate removable attachment of the weight to an edge portion of the sports instrument. The structure of the combined weight is capable of meeting the intended use limitations. See MPEP 2114 - In re Schreiber.
With respect to claim 36, Barnes does not expressly disclose the material of the first weight and the second weights for the cited embodiment (i.e. Fig. 3). However, in an alternative embodiment, Barnes teaches that it is known to form weight components from metal, metal alloys, plastics, natural materials, or combinations thereof (paragraph [0017]). A person ordinary skill in the art would have found it obvious to use a material taught in paragraph of 17 of Barnes for the weight components in the cited embodiment. The rationale to combine is to add weighting to the peripheral using a known material to add forgiveness to the paddle.
With respect to claim 37, Iwatsubo teaches wherein the overlay 11 includes: a bridge portion configured to span a thickness of a body portion of the paddle (Fig.’s 3A-3B); the first arm extending from a first end of the bridge portion to interface with an edge of the paddle Id; and the second arm extending from a second end of the bridge portion to interface with the edge of the paddle Id. See MPEP 2114 - In re Schreiber. The rationale to combine is the same as stated above. As stated above in the rejection of claim 35, Chen teaches wherein the first and second arms are hooked shape. The rationale to combine is the same as stated above.
With respect to claim 38, Barnes teaches wherein the first weight and the second weight 312 are configured to couple to an edge guard 302 coupled to an edge of a body portion of the paddle (paragraphs [0033]-[0034]).
Response to Arguments
10. 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
11. 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.
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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