Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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 8 and 27 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 claims 8 and 27, it is yet unclear what is applicant consider “a third foam having a third density”, whereas the original disclosure discussed the core as “a dual core” having only two different composite foams forming the core of the paddle (e.g., frame 50 and filling 60). The examiner will further discuss such issues in the response to argument section hereinafter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 6-7, 9, 13-16, 18-19, 22 and 25-26 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3,5, 7-8, 10-23, 33. 24 and 30 of U.S. Patent No. 12,465,827 (hereinafter “ ‘827”). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitations in the above claim 1 is recited in claim 1 of ‘827, namely “A paddle comprising: a core comprising: a frame formed of a first high density composite foam having a first density (equivalent to “a continuous layer” of the ‘827) ; and a second composite foam having a second density (equivalent to the “one or more regions embedded within the continuous layer” of the ‘827)” and thus above claim 1 is anticipated by claim 1of ‘827. In addition, it is noted that it has been held that the selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical
Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Therefore, 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 to form ‘827 second material as “a second composite foam” for the reason that a skilled artisan would have been motivated in utilizing a known material suitable for its intended used as a material suitable in forming a paddle core suitable to sustain large impact yet light enough to reduce a user’s fatigue.
Claim 3 recite the same limitations as claim 22 of the ‘827.
Claim 6 recite the same limitations as claim 2 of the ‘827.
Claim 7 recite the same limitations as claim 3 of the ‘827.
Claim 9 recite the same limitations as claim 5 of the ‘827. The “cells” of claim 9 are construed as the “regions” of claim 5.
Claim 13 recite the same limitations as claim 7 of the ‘827.
Claim 14 recite the same limitations as claim 8 of the ‘827.
Claim 15 recite the same limitations as claim 10 of the ‘827.
Claim 16 recite the same limitations as claim 13 of the ‘827.
Claim 18 recite the same limitations as claim 11 of the ‘827.
Claim 19 recite the same limitations as claim 12 of the ‘827.
With respect to claim 22, although the claims at issue are not identical, they are not patentably distinct from each other because every limitations in the above claim 22 is recited in claim 24 of ‘827, namely “A core for a pickleball paddle comprising: a frame formed a first high density composite foam having a first density (equivalent to “a sheet” of the ‘827) ; and a second composite foam having a second density (equivalent to “one or more regions embedded within the sheet” of the ‘827) ” and thus above claim 22 anticipated by claim 24 of ‘827. With respect to the use of the second material of the ‘827 as “ a second foam material”, as mentioned above the use of known material supported a prima facie obviousness. Therefore, 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 to form ‘827 second material as “a second composite foam” for similar reasons discussed above.
Claim 25 and 26 recite the same limitations as claim 30 of the ‘827.
Claims 1-4, 17-19, 22, 25 and 26 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 10-12 and 19-23 of copending Application No. 18/807,453 (“ ‘453”) in view of Junkins US 2023/0356048 (“Junkins”).
Claim 1, of ‘453, includes the structure, within the above claims 1-2 namely “A paddle comprising: a core comprising: a high density composite foam having a first density; wherein the first high density composite foam comprises expanded polypropylene (EPP). The ‘453 is not specific as the composite foam is a frame and further includes a second composite foam having a second density.
However, in the same field of paddles, Junkins discloses a paddle (paddles 180/204)(in the embodiment of Figs. 4-5 in conjunction to paragraphs [0011]-[0022] and [0041]-[0045]), the paddle comprising: a core (Figs. 4-5; [0041]-[0045]) comprising: a frame (construed as rigid portion 200 of planar portion 208) formed of a first high density composite foam having a first density (at least [0041] “In one exemplary embodiment, the rigid portion 200 comprises between 20- and 24-lb. foam”; note also [0045]); and a second composite foam having a second density (construed as core 196 having a second density; e.g., [0045]” the planar portion 208 may comprise a solid portion of rigid foam, such as the abovementioned 20-24 lb. foam. Further, in some embodiments, the planar portion 208 may include a core 196 comprising a different type or density of foam than the foam comprising the rigid portion 200”). Therefore, 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 to form ‘453’s paddle comprising: a core comprising: a frame formed of a first high density composite foam having a first density; and a second composite foam having a second density for the reason that a skilled artisan would have been motivated in forming a paddle using a known technique while utilizing known foam materials to insure the paddle is suitable to sustain large impact yet light enough to reduce a suer’s fatigue.
Claim 3 recite the same limitations as claim 2 of the ‘453.
Claim 4 recite the same limitations as claim 3 of the ‘453.
Claim 17 recite the same limitations as claim 10 of the ‘453.
Claim 18 recite the same limitations as claim 11 of the ‘453.
Claim 19 recite the same limitations as claim 12 of the ‘453.
Claim 19-21, of ‘453, includes the structure, within the above claim 22 namely A core for a pickleball paddle comprising: a high density composite foam having a first density” The ‘453 does not recites “that the high density foam is a frame” and a second composite foam having a second density”.
However, Junkins discloses a paddle (paddles 180/204)(in the embodiment of Figs. 4-5 in conjunction to paragraphs [0011]-[0022] and [0041]-[0045]), the paddle comprising: a core (Figs. 4-5; [0041]-[0045]) comprising: a frame (construed as rigid portion 200 of planar portion 208) formed of a first high density composite foam having a first density (at least [0041] “In one exemplary embodiment, the rigid portion 200 comprises between 20- and 24-lb. foam”; note also [0045]); and a second composite foam having a second density (construed as core 196 having a second density; e.g., [0045]” the planar portion 208 may comprise a solid portion of rigid foam, such as the abovementioned 20-24 lb. foam. Further, in some embodiments, the planar portion 208 may include a core 196 comprising a different type or density of foam than the foam comprising the rigid portion 200”). Therefore, 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 to form ‘453’s paddle comprising: a core comprising: a frame formed of the first high density composite foam having a first density; and a second composite foam having a second density, for similar reasons discussed above.
Claim 25 recite the same limitations as claim 22 of the ‘453.
Claim 26 recite the same limitations as claim 23 of the ‘453.
This is a provisional nonstatutory double patenting rejection.
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 (i.e., changing from AIA to pre-AIA ) 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)(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.
Claim(s) 1, 5, 8-11, 13-16, 18, 20-22, 24 and 27-30 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Junkins US 2023/0356048 (“Junkins”).
As per claim 1, Junkins discloses a paddle (paddles 180/204)(in the embodiment of Figs. 4-5 in conjunction to paragraphs [0011]-[0022] and [0041]-[0045]), comprising: a core (Figs. 4-5; [0041]-[0045]) comprising: a frame (construed as rigid portion 200 of planar portion 208) formed of a first high density composite foam having a first density (at least [0041] “In one exemplary embodiment, the rigid portion 200 comprises between 20- and 24-lb. foam”; note also [0045]); and a second composite foam having a second density (construed as core 196 having a second density; e.g., [0045]” the planar portion 208 may comprise a solid portion of rigid foam, such as the abovementioned 20-24 lb. foam. Further, in some embodiments, the planar portion 208 may include a core 196 comprising a different type or density of foam than the foam comprising the rigid portion 200”).
As per claim 5, with respect to wherein the second composite foam comprises ethylene-vinyl acetate (EVA), or polyurethane (PU), note [0006], [0013], and [0040], as the core (i.e., a second composite foam) is made of polyurethane.
As per claim 8, with respect to further comprising a third composite foam having a third density different from the first density and the second density, to the best of his understanding, the examiner construed the empty cell of the foam core 196 as such “third composite foam density” in Figs. 4 and 5 in conjunction to [0045]” In some embodiments, the core 196 may comprise a number of holes advantageously positioned on the rigid portion 200 so as to reduce the weight of the paddle 204.”. Accordingly, the foam frame 200/208, construed as the “foam having a first density”; the core 196 as “foam having a second density” and the empty cells/holes of the foam core 196, construed as “foam having a third density”, whereas the composite foams are different from each other (in at least [0041] and [0045]).
As per claim 9, with respect to wherein the core comprises one or more cells at least partially embedded in the first high density composite foam, note Figs. 4 and 5 in conjunction to [0041]-[0045] as the composite foam core 196 (i.e., cells) embedded within the composite foam frame 200/208.
As per claim 10, with respect to wherein at least one of the one or more cells defines an air-filled cavity within the first high density composite foam, construed as the empty cells, holes of core 196 within frame 200/208.
As per claim 11, with respect to wherein the one or more cells comprises a plurality of cells, note Figs. 4 and 5 regarding a plurality of cells of core 196.
As per claim 13, with respect to wherein each of the one or more cells spans an entire depth of the core, note Figs. 4 and 5 regarding a plurality of cells of core 196 as such. As the honeycomb structure of the core (e.g., [0011], [0018], [0040] and [0045]), suggests that the cells of the honeycomb extending all the way through the paddle’s core.
As per claim 14, with respect to wherein each of the one or more cells spans a partial depth of the core, note Figs. 4 and 5 regarding a plurality of cells of core 196 as such (as mentioned in claim 13 above, the honeycomb cells are extending all the way of the core, and thus “spans a partial depth” thereof).
As per claim 15, with respect to wherein a subset of the one or more cells is oriented in a grid across a face of the paddle, note Figs. 4 and 5 regarding a plurality of cells of core 196 as such, in relation to face 144 (e.g., Fig. 3; [0035]-[0039]).
As per claim 16, with respect to wherein the one or more cells form one or more geometric shapes, note Figs. 4 and 5 regarding a plurality of cells of core 196 as such.
As per claim 18, Junkins discloses further comprising: a carbon fiber face adhesively attached to the core ([0014], [0015], [0034], [0037], and [0040]); a grip (handle portion 212); and/or a perimeter wrap (edge guard 216)(Fig. 5 and [0042]).
As per claim 20, with respect to wherein the wherein the second high density composite foam forms at least a partial perimeter around the first high density composite foam, note Figs. 4 and 5 regarding a plurality of cells of core 196 in relationship to frame (200/208), i.e., a fist high density foam (again, note at least [0041] and [0045] regarding the different density of the foam material), as such.
As per claim 21, with respect to wherein the wherein the second high density composite foam forms a perimeter around the first high density composite foam, note Figs. 4 and 5 regarding a plurality of cells of core 196 in relationship to frame (200/208), i.e., a fist high density foam (again, note at least [0041] and [0045] regarding the different density of the foam material), as such.
As per claim 22, Junkins discloses a core for a pickleball paddle (paddles 180/204)(in the embodiment of Figs. 4-5 in conjunction to paragraphs [0011]-[0022] and [0041]-[0045]) comprising: a frame (construed as rigid portion 200 of planar portion 208) formed of a first high density composite foam having a first density (at least [0041] “In one exemplary embodiment, the rigid portion 200 comprises between 20- and 24-lb. foam”; note also [0045]); and a second composite foam having a second density (construed as core 196 having a second density; e.g., [0045]” the planar portion 208 may comprise a solid portion of rigid foam, such as the abovementioned 20-24 lb. foam. Further, in some embodiments, the planar portion 208 may include a core 196 comprising a different type or density of foam than the foam comprising the rigid portion 200”).
As per claim 24, with respect to wherein the second composite foam comprises ethylene-vinyl acetate (EVA), or polyurethane (PU), note [0006], [0013], and [0040], as the core (i.e., a second composite foam) is made of polyurethane.
As per claim 27, with respect to further comprising a third composite foam having a third density different from the first density and the second density, to the best of his understanding, the examiner construed the empty cell of the foam core 196 as such “third composite foam density” in Figs. 4 and 5 in conjunction to [0045]” In some embodiments, the core 196 may comprise a number of holes advantageously positioned on the rigid portion 200 so as to reduce the weight of the paddle 204.”. Accordingly, the foam frame 200/208, construed as the “foam having a first density”; the core 196 as “foam having a second density” and the empty cells/holes of the foam core 196, construed as “foam having a third density”, whereas the foam cores are different than each other (in at least [0041] and [0045]).
As per claim 28, with respect to wherein the core comprises one or more cells at least partially embedded in the first high density composite foam, note Figs. 4 and 5 in conjunction to [0041]-[0045] as the composite foam core 196 (i.e., cells) embedded within the composite foam frame 200/208.
As per claim 29, with respect to wherein at least one of the one or more cells defines an air-filled cavity within the first high density composite foam, construed as the empty cells, holes of core 196 within frame 200/208.
As per claim 30, with respect to wherein the one or more cells comprises a plurality of cells, note Figs. 4 and 5 regarding a plurality of cells of core 196.
Claim Rejections - 35 USC § 103
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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 2, 6-7, 12, 23 and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Junkins as applied to claims 1, 9, and 22 above, and further in view of Thurman et al US 2021/0252356 (“Thurman”).
As per claim 2, Junkins is not specific regarding wherein the first high density composite foam comprises expanded polypropylene (EPP).
However, Thurman discloses wherein a first high density composite foam comprises expanded polypropylene (EPP), in [0083], [0090] and [0114] (whereas inner layer 1242, e.g., first high density, is formed from the same materials as inner layer 142). Therefore, 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 to form Junkins’ wherein the first high density composite foam comprises expanded polypropylene (EPP) or the reason that a skilled artisan would have been motivated in forming a paddle using utilizing known foam materials suitable for their intended used as suitable to sustain large impact yet light enough materials to reduce a suer’s fatigue.
As per claim 6, 7, with respect to wherein the first high density composite foam comprises at least one of expanded polypropylene (EPP), ethylene-vinyl acetate (EVA), nanocarbon containing polymer composite foam (NCP), or microcellular polypropylene (MPP) (claim 6) and , wherein the first high density composite foam comprises at least one of an elastomer, a polystyrene, a polyethylene, a polypropylene, a polyamide, a polyurethane, an ethylvinyl-acetate, a polyethylene oxide, a polyacrylate, a cellulose, an ethylene vinyl alcohol, a polybutylene, a polycaprolactone, a polycarbonate, a polyketone, polyester, a polylactic acid, a polyvinyl chloride, a polyphenylene, and copolymers thereof (claim 7), note [0090] of Thurman. Therefore, 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 to form Junkins’ first high density composite foam with such materials as claimed for similar reasons discussed above with respect to claim 2, e.g., as material/s suitable for their intended used while forming a paddle.
As per claim 12, with respect to wherein the one or more cells is filled with a high density composite foam having a different density as the first high density composite foam of the core, Thurman discloses filled cells with foamed polymer)(Fig. 14; [0115]-[0118]). Therefore, 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 to form Junkins’ wherein the one or more cells is filled with a high density composite foam having a different density as the first high density composite foam of the core for similar reasons discussed above with respect to claim 2, e.g., as material/s suitable for their intended used while forming a paddle.
As per claim 23, Junkins is not specific regarding wherein the first high density composite foam comprises expanded polypropylene (EPP).
However, Thurman discloses wherein a first high density composite foam comprises expanded polypropylene (EPP), in [0083], [0090] and [0114] (whereas inner layer 1242, e.g., first high density, is formed from the same materials as inner layer 142). Therefore, 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 to form Junkins’ wherein the first high density composite foam comprises expanded polypropylene (EPP) for similar reasons discussed above with respect to claim 2.
As per claims 25, 26, with respect to wherein the first high density composite foam comprises at least one of expanded polypropylene (EPP), ethylene-vinyl acetate (EVA), nanocarbon containing polymer composite foam (NCP), or microcellular polypropylene (MPP) (claim 25), and wherein the first high density composite foam comprises at least one of an elastomer, a polystyrene, a polyethylene, a polypropylene, a polyamide, a polyurethane, an ethylvinyl-acetate, a polyethylene oxide, a polyacrylate, a cellulose, an ethylene vinyl alcohol, a polybutylene, a polycaprolactone, a polycarbonate, a polyketone, polyester, a polylactic acid, a polyvinyl chloride, a polyphenylene, and copolymers thereof (claim 26), note [0090] of Thurman. Therefore, 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 to form Junkins’ first high density composite foam with such materials as claimed for similar reasons discussed above with respect to claim 2, e.g., as material/s suitable for their intended used while forming a paddle.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Junkins and Thurman as applied to claim 2 above, and further in view of Beaudoin et al US 2016/0304649 (“Beaudoin”).
As per claims 3, 4, Junkins-Thurman is not specific regarding wherein the EPP has a density of about 0.5 to about 3.5 pounds per cubic foot (claim 3), and wherein the EPP has a density of about 3.5 to about 20 pounds per cubic foot (claim 4).
However, in a field utilizing elastomer/s, polymer/s material/s, and alike, Beaudoin discloses the use of an expanded combustible polymer may have a foam density of about 0.5 to about 30 pounds per cubic foot (pcf) (16-480 kg/m.sup.3), especially about 1.2 to about 10 pcf (19.2 to 160 kg/m.sup.3) and most preferably about 1.2 to about 4 pcf (19.2 to 64 kg/m.sup.3) ([0067]). Therefore, 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 to form Junkins-Thurman’s foam density of density of about 0.5 to about 3.5 pounds per cubic foot /about 3.5 to about 20 pounds per cubic foot for the reason that a skilled artisan would have been motivated by Beaudoin’s suggestions that using such foam with the above density is suitable for many applications to provide cushioning, insulation and alike ([0067]). Such properties of the foam is much desired within the paddle of Junkins-Thurman that is subject to absorb impacts.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Junkins.
As per claim 17, although Junkins is not specific regarding wherein the core has a total weight of between 2 and 4 ounces, it is noted that it has been held that claimed which fell within the broad scope of the references were held to be unpatentable
thereover because, among other reasons, there was no evidence of the criticality of
the claimed ranges of weight or proportions. Therefore, 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 to form Junkins’ paddle with such dimensions since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case the device of Thurman would have not operate differently with the dimension as claimed and would function appropriately with the claimed dimension.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Junkins as applied to claim 1 above, and further in view of Colburn et al US 5,470,061 (“Colburn”).
As per claim 19, Junkins is not specific regarding wherein the paddle has a weight of between about 5-10 ounces.
However, Colburn discloses a weight of a paddle/racquet between 150-250 grams (between about 6-8 ounces). Therefore, 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 to form Junkins’ wherein the paddle has a weight of between about 5-10 ounces for the reason that a skilled artisan would have been motivated by Colburn’s suggestion to form a paddle/racquet that is light enough to reduce a user’s fatigue yet strong enough to sustain impact/s thereof.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1- 30 have been considered but are moot because the new ground of rejection does not rely on any reference or combination thereof applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
With respect to the Thurman reference, although the examiner relied upon the teaching of Thurman, however, Thurman was used only to show that such composite foam materials as claimed are well known in forming a paddle, nothing more.
With respect to the rejection under 35 USC 112 claims 8 and 27
According to applicant’s original disclosure, the core includes two different composite foam materials, as the frame “50” and filling “60”, and it is unclear to which “a third composite foam material” applicant referred to. It seems as the invention is related to “a dual density core/composite foams ”, e.g., in original [0026] ”FIGS. 2 and 3 illustrate examples of a dual density core 40 for a pickleball paddle 10 consistent with implementations of the current subject matter. The dual density core 40 can include a frame 50 and filling 60.”. Accordingly, as only two different composite foam densities are disclosed, further clarification is require what is applicant consider as “a third composite foam having a third density”, as claimed.
Conclusion
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 AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 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, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.K/Examiner, Art Unit 3711 6/30/2026 /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711
