DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Allowable Subject Matter
Claims 4, 7, 9, 13, 19-21, 26 and 29 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 4 includes limitations directed towards 4. (Currently Amended) The ball bat of claim 1, wherein the bat comprises a sweet spot positioned at a sweet spot location along the longitudinal axis of the bat, and wherein the contoured region is centered around the sweet spot location. The closest art of record Douglas is considered to be silent with regards to the limitations of claim 4. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 4 is therefore allowed.
Claim 7 includes limitations directed towards 7. (Original) The ball bat of claim 1, wherein the contoured region extends along the longitudinal axis by a distance greater than 4.0 inches. The closest art of record Douglas is considered to be silent with regards to the limitations of claim 5. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 7 is therefore allowed.
Claim 21 includes limitations directed towards 21. (New) The ball bat of claim 1, wherein, along the longitudinal axis from the first location to the second location, the thickness varies among thicknesses within a range between 0.09 inches and 0.25 inches. The closest art of record Douglas teaches the thickness but is silent with regards to the bounded range. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 21 is therefore allowed.
Claim 9 includes limitations directed towards 9. (Original) The ball bat of claim 8, wherein the plurality of peaks and the plurality of valleys define at least three wall thicknesses, wherein at least two of the wall thicknesses are different from each of the other wall thicknesses, and wherein at least one of the wall thicknesses is located along the longitudinal axis between two greater wall thicknesses of the at least three wall thicknesses. The closest art of record Douglas teaches the contoured region but is considered to silent with regards to the at least two of the wall thicknesses different from each of the other wall thicknesses and wherein at least one of the wall thicknesses is located along the longitudinal axis between two greater wall thicknesses of the at least three wall thicknesses. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 9 is therefore allowed.
Claim 26 includes limitations directed towards 26. (New) The ball bat of claim 8, wherein a longitudinal distance between one of the peaks and one of the valleys is within a range of 2 millimeters and 13.2 millimeters. The closest art of record Douglas teaches the contoured region but is silent with regards to the claimed range. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 26 is therefore allowed.
Claim 29 includes limitations directed towards 29. (New) The ball bat of claim 8, wherein, along the longitudinal axis, within the contoured region, from a first location to a second location, the wall thickness varies among thicknesses within a range between 0.09 inches and 0.25 inches. The closest art of record Douglas teaches the contoured region but is silent with regards the wall thickness varies among thicknesses within a range between 0.09 inches and 0.25 inches. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 29 is therefore allowed.
Claim 13 includes limitations directed towards 13. (Original) The ball bat of claim 12, wherein the plurality of increases in thickness and the plurality of decreases in thickness form an irregular pattern of peaks and valleys, and wherein the contoured interior surface further comprises one or more straight sections that, along at least the portion of the longitudinal axis from the first location to the second location, neither diverge radially inwardly nor diverge radially outwardly. The closest art of record Douglas teaches the contoured region, but is silent with regards to the plurality of increases in thickness and the plurality of decreases in thickness form an irregular pattern of peaks and valleys. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 13 is therefore allowed.
Claim 19 includes limitations directed towards 19. (Original) The ball bat of claim 18, wherein the contoured interior surface portion comprises a section of continuous thickness between two thicker portions of the plurality of thicker portions, or between two thinner portions of the plurality of thinner portions, or between a thicker portion of the plurality of thicker portions and a thinner portion of the plurality of thinner portions. The closest art of record Douglas teaches the contoured region but is silent with regards the contoured interior surface portion comprises a section of continuous thickness between two thicker portions of the plurality of thicker portions, or between two thinner portions of the plurality of thinner portions, or between a thicker portion of the plurality of thicker portions and a thinner portion of the plurality of thinner portions. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 19 is therefore allowed.
Claim 20 includes limitations directed towards 20. (Original) The ball bat of claim 17, wherein the interior surface comprises a plurality of inflection points, wherein each inflection point is between a thicker portion of the plurality of thicker portions and a thinner portion of the plurality of thinner portions. The closest art of record Douglas teaches the contoured region and inflection points but is silent with regards to wherein each inflection point is between a thicker portion of the plurality of thicker portions and a thinner portion of the plurality of thinner portions. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 20 is therefore allowed.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 8, 11-12, 16-18, 27-28 and 31 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Douglas (US 5094453 A).
Regarding claim 1 , Douglas teaches 1. (Currently Amended) A ball bat comprising: a handle portion comprising a proximal end of the bat; and a barrel portion attached to or continuous with the handle portion along a longitudinal axis of the bat, wherein the barrel portion comprises a distal end of the bat, and the barrel portion comprises a barrel wall having an inner surface facing a hollow interior region of the bat; wherein: the barrel wall comprises aluminum; a thickness of the barrel wall is defined as extending along a radial direction perpendicular to the longitudinal axis; and along the longitudinal axis from a first location to a second location, the thickness of the barrel wall increases, then decreases, then increases, then decreases, then increases, to define at least part of a contoured region extending along a portion of the longitudinal axis of the bat. See Fig. 2; (7).
Regarding claim 8 , Douglas teaches 8. (Currently Amended) A ball bat comprising: a handle portion comprising a proximal end of the bat; and a barrel portion attached to or continuous with the handle portion along a longitudinal axis of the bat, wherein the barrel portion comprises at least part of a bat wall; wherein: the bat wall comprises a contoured region, wherein in the contoured region, a wall thickness of the bat wall varies along the longitudinal axis; and the contoured region comprises a plurality of peaks extending into a hollow interior region of the bat, and a plurality of valleys extending away from the hollow interior region of the bat. See Fig. 2; (7).
Regarding claim 11 , Douglas teaches 11. (Currently Amended) A ball bat comprising: a handle portion, wherein the handle portion comprises a proximal end of the bat; and a barrel portion attached to or continuous with the handle portion along a longitudinal axis of the bat, wherein the barrel portion comprises a distal end of the bat, and wherein the barrel portion comprises a barrel wall surrounding at least part of a hollow interior region of the bat, wherein the barrel wall comprises a contoured interior surface facing the hollow interior region; wherein, along at least a portion of the longitudinal axis from a first location to a second location, the barrel wall comprises a plurality of increases in thickness of the barrel wall and a plurality of decreases in thickness of the barrel wall, wherein at least one of the decreases in thickness is located longitudinally between two of the increases in thickness, and wherein at least one of the increases in thickness is located longitudinally between two of the decreases in thickness, to form the contoured interior surface. See Fig. 2 the multiple grooves provide for the location of the increase in thickness to be longitudinally between two of the decreases in thickness.
Regarding claim 12 , Douglas teaches 12. (Original) The ball bat of claim 11, wherein at least one of: (a) the plurality of increases in thickness comprises radially inwardly curving portions; or (b) the plurality of decreases in thickness comprises radially outwardly curving portions. See Fig. 2.
Regarding claim 16 , Douglas teaches 16. (Original) The ball bat of claim 11, wherein the contoured interior surface comprises one or more flat regions extending along the longitudinal axis, wherein at each flat region, the thickness of the barrel wall is consistent. See Fig. 2 which shows a flat interior region below the contoured region in the interior of the bat wall.
Regarding claim 17 , Douglas teaches 17. (Currently Amended) A ball bat comprising: a handle portion, wherein the handle portion comprises a proximal end of the bat; a barrel portion attached to or continuous with the handle portion along a longitudinal axis of the bat, wherein the barrel portion comprises a distal end of the bat, and wherein the barrel portion comprises aluminum; and a bat wall comprising an interior surface facing a hollow interior region of the bat, wherein the bat wall forms at least part of the barrel portion; wherein: within the barrel portion, the bat wall comprises a plurality of thicker portions each having a greater wall thickness than each of a plurality of thinner portions; the thicker portions and the thinner portions are distributed along the longitudinal axis; and at least one thicker portion of the plurality of thicker portions is located longitudinally between two thinner portions of the plurality of thinner portions. See Fig. 2 wherein the multiple grooves provide for the thicker portion between the two thinner portions.
Regarding claim 18 , Douglas teaches 18. (Original) The ball bat of claim 17, wherein the plurality of thicker portions and the plurality of thinner portions form at least part of a contoured interior surface portion of the interior surface of the bat wall. See Fig. 2.
Regarding claim 27 , Douglas teaches 27. (New) The ball bat of claim 8, wherein the barrel portion is integral with the handle portion. See Fig. 2.
Regarding claim 28 , Douglas teaches 28. (New) The ball bat of claim 8, wherein the handle portion is separate from, but attached or attachable to, the handle portion. See Fig. 1 which shows the handle 9a attached to the handle portion.
Regarding claim 31 , Douglas teaches 31. (New) The ball bat of claim 11, wherein the barrel portion is integral with the handle portion, and wherein the barrel wall comprises aluminum. See Fig 1; 3:28+.
Claim Rejections - 35 USC § 103
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 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.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 10, 14-15, 22-25, 30, 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Douglas (US 5094453 A) in view of Sutherland (US 2007/0254752 A1).
Regarding claim 10 , Sutherland teaches 10. (Original) The ball bat of claim 8, wherein the plurality of peaks comprises a plurality of differently shaped peaks or the plurality of valleys comprises a plurality of differently shaped valleys. See Fig. 12E; [0113+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 14 , Sutherland teaches 14. (Original) The ball bat of claim 11, wherein the plurality of increases in thickness and the plurality of decreases in thickness are unevenly distributed between the first location and the second location. See Fig. 12E; [0113+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 15 , Sutherland teaches 15. (Original) The ball bat of claim 11, wherein at least one of the increases in thickness is greater or less than at least one of the other increases in thickness. See Fig. 12E which shows the contoured interior barrel wall insert. Although it might not be explicitly taught, the size of the peaks and valleys may differ peak to peak. Such a change in dimension would be obvious.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 22 , Sutherland teaches 22. (New) The ball bat of claim 1, wherein, along the longitudinal axis from the first location to the second location, the thickness varies among thicknesses greater than 0.09 inches. See [0086+] which teaches a thickness of 0.09 inches and greater than 0.22 inches which is within the range claimed.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 23 , Sutherland teaches 23. (New) The ball bat of claim 1, wherein a maximum thickness between the first location and the second location is greater than 0.17 inches. See [0086+] which teaches a barrel wall thickness in the claimed range.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 24 , Sutherland teaches 24. (New) The ball bat of claim 8, wherein the bat wall comprises aluminum. See [0085+] which teaches the use of aluminum.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 25 , Sutherland teaches 25. (New) The ball bat of claim 8, wherein the barrel portion comprises a composite material. See [0086+] which teaches the use of composite.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 30 , Sutherland teaches 30. (New) The ball bat of claim 8, wherein a maximum wall thickness within the contoured region is greater than 0.17 inches. See [0086+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 32 , Sutherland teaches 32. (New) The ball bat of claim 11, wherein the barrel wall comprises a composite material. See [0086+] which teaches the use of composite.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 33 , Sutherland teaches 33. (New) The ball bat of claim 11, wherein a maximum wall thickness between the first location and the second location is between 0.17 inches and 0.216 inches. See [0086+] which teaches a barrel wall thickness in the claimed range.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Regarding claim 34 , Sutherland teaches 34. (New) The ball bat of claim 17, wherein at least one thicker portion of the plurality of thicker portions has a wall thickness greater than 0.17 inches. See [0086+] which teaches a wall thickness of greater than 0.17 inches.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Douglas with Sutherland to create a uniform performance along the barrel length. ([0113+]).
Conclusion
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
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