DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 8/12/26. Claims 1-6, 9-10, 18 are cancelled; claims 7, 15, 21-22 are amended; claims 27-29 are added. Claims 7-8, 11-17 and 19-29 are pending.
Drawings
2. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, a “portion of the body” that extends “beyond a perimeter” (claims 1, 15, 21)
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
3. 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.
(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.
4. Claims 7-8, 12-14, 15, 17, 19-20 and 28, are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Marshall (US Pub. No. 2022/0088449).
With respect to claims 7-8, 12-14 and 28, Marshall teaches a weight device 30 for a pickleball paddle, the weight device 30 comprising: a body including a component surface (i.e. threads), the body shaped and sized to attach, via the component surface, to an edge guard disposed along an edge of the pickleball paddle, the edge guard adjacent to a paddle surface of the pickleball paddle, wherein at least a portion of the body extends beyond a perimeter of the pickleball paddle defined by the edge, wherein the body is formed of metal and configured to secure to the edge of the pickleball paddle (paragraph [0025]), wherein the body is disposable along a length of the edge, wherein: the body defines a first weight component; and the weight device further comprises a second body that defines a second weight component couplable to the edge of the pickleball paddle (paragraph [0025]) and wherein the first weight component has a first weight and the second weight component has a second weight different than the first weight Id; wherein the body is selectively removable from the edge guard and repositionable at different locations along the edge guard. 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, the structure of the insert 30, including its threads, are capable of being used as intended by the claims.
With respect to claims 15, 17 and 19-20, Marshall teaches a weighted component 30 for a paddle, the weighted component 30 comprising: a body including a component surface (i.e. threads), the body configured to attach, via the component surface, at different locations adjacent to an edge guard disposed along an edge of the paddle, the edge guard adjacent to a paddle surface of the paddle, wherein at least a portion of the body is disposable beyond a perimeter of the paddle as defined by the edge (Fig.’s 3-4; paragraphs [0025]-[0026]), wherein: the body defines a first weight component; and the weighted component 30 further comprises a second body that defines a second weight component (paragraph [0025]), wherein the weighted component 30 is securable to the paddle via an interlocking engagement (paragraph [0026] – “threadably engaged”) and further comprising a tooling feature ( “tool”) configured to assist with at least one of installation on, repositioning on, or removal of the weighted component from, the paddle (paragraph [0026]). See also MPEP 2114 - In re Schreiber. The structure of Marshall is capable of being used as intended by the claims.
5. Claims 7-8, 12-15, 17, 19, 21-25, 27, 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwatsubo et al. (US Pat. No. 6,293,878).
With respect to claims 7-8, 12-14, Iwatsubo teaches a weight device 10 for a pickleball paddle, the weight device comprising: a body including a component surface, the body shaped and sized to attach, via the component surface, to an edge guard disposed along an edge of the pickleball paddle, the edge guard adjacent to a paddle surface of the pickleball paddle, wherein at least a portion of the body extends beyond a perimeter of the pickleball paddle defined by the edge (Fig.’s 2A-2B; Fig.’s 3A-3B), wherein the body is formed of metal and configured to secure to the edge of the pickleball paddle (column 8, lines 26-30), wherein the body 10 is disposable along a length of the edge (Fig. 1), wherein: the body defines a first weight component 12; and the weight device further comprises a second body that defines a second weight component 11 couplable to the edge of the pickleball paddle, wherein the first weight component 12 has a first weight and the second weight component 12 has a second weight different than the first weight 11 (column 8, lines 25-67). See also MPEP 2114 - In re Schreiber. Here, the structure of Iwatsubo is capable of being used as intended by the claims. The U-shaped structure has a shape and size to receive an edge of a sports paddle and engage a first and second face perimeter at the inner portions of the U-shape, ensuring at least a portion of the body to extend beyond the perimeter. The straight short end of the U-shape body is capable of compressing or clamping to an edge guard and/or the first and second face.
With respect to claims 15, 17, 19, 27 and 29, Iwatsubo teaches a weighted component 10 for a paddle, the weighted component comprising: a body including a component surface, the body configured to attach, via the component surface, at different locations adjacent to an edge guard disposed along an edge of the paddle, the edge guard adjacent to a paddle surface of the paddle, wherein at least a portion of the body is disposable beyond a perimeter of the paddle as defined by the edge, wherein: the body defines a first weight component 12; and the weighted component further comprises a second body 11 that defines a second weight component, wherein the weighted component is securable to the paddle via an interlocking engagement, wherein the component surface is configured to clamp onto the edge guard such that the body is repositionable along a length of the edge guard (Fig.’s 2A-2B; Fig.’s 3A-3B). See MPEP 2114 - In re Schreiber. Here, the structure of the weight device 10 is capable of being used as intended by the claims. The U-shaped structure has a shape and size to receive an edge guard of a sports at the inner portions of the U-shape, ensuring at least a portion of the body to extend beyond the perimeter. The straight short end of the U-shape body is capable of compressing a first and second face. The gaps in portion 12 of the weight device 10 shown in Fig.’s 2A-2B form female cavity type portions configured to interlock with a paddle that has corresponding protrusion/male portions of the paddle exterior.
With respect to claims 21-23 and 25, Iwatsubo et al. teaches a weight device 10 for a sports paddle, the weight device comprising: a body including a component surface, the body shaped and sized to surround at least a portion of an edge guard disposed along an edge of the sports paddle such that the body engages a paddle surface of the sports paddle on opposite sides of the edge, wherein at least a portion of the body extends beyond a perimeter of the sports paddle defined by the edge when the body is disposed on the edge, wherein the body is configured to secure to the edge guard via compression fit (See embodiments in Fig.’s 2A-2B and Fig.’s 3A-3B, each showing a component surface formed as part of the U-shaped weight device 10), wherein the body is formed of a metal material (column 8, lines 25-30); wherein the weight device 10 is securable to the sports paddle via an interlocking engagement. See MPEP 2114 - In re Schreiber. Here, the structure of the weight device 10 is capable of being used as intended by the claims. The U-shaped structure has a shape and size configured to receive an edge of a sports paddle and engage a first and second face perimeter at the inner portions of the U-shape, ensuring at least a portion of the body to extend beyond the perimeter. The straight short end of the U-shape body is capable of compressing a first and second face. The gaps in portion 12 of the weight device 10 shown in Fig.’s 2A-2B form female cavity type portions configured to interlock with a paddle that has corresponding protrusion/male portions of the paddle exterior.
With respect to claim 24, Iwatsubo teaches wherein: the body defines a first weight component 12a having a first weight; and the weight device further comprises a second body (as part of a second weight component 10) defining a second weight component 10 having a second weight 11 different than the first weight, the second weight 11 component being couplable to the edge of the sports paddle independently of the first weight component 12a (column 8, lines 25-67. See also MPEP 2114 - In re Schreiber. The structure of Iwatsubo is capable of being used as intended by the claims.
Claim Rejections - 35 USC § 103
6. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
7. Claims 11, 16 and 26 are rejected under 35 U.S.C. 103 as obvious over Iwatsubo et al. (US Pat. No. 6,293,878) in view of Yu (US Pub. No. 2013/0316858).
With respect to claims 11, 16 and 26, Iwatsubo does not expressly teach a fastener secured to the body. However, analogous art reference Yu teaches that it is known to provide a fastener 50 secured to a weight body 40 (Fig.’s 2-5; paragraph [0028]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a fastener to the body portion of the weight device of Iwatsubo. The rationale to combine is to provide additional securement strength between the frame and weight device. The proposed modification has a reasonable expectation of success as Yu teaches wherein the fastener provides a releasable connection, not a permanent one, thus comporting with the intended purpose of Iwatsubo.
Response to Arguments
8. Applicant's arguments filed 8/12/26 have been fully considered but they are not persuasive.
Applicant argues that the Drawings show a portion of the body extends beyond a perimeter of the paddle/edge since it is has a portion that is exposed to the environment for quick release. Applicant further notes the head of the weight sits on a ledge, and an alternative weight structure (i.e. Fig. 3) is applied along an edge of the paddle. Examiner respectfully disagrees. The weight devices are indeed positioned at the edge, but they are not shown to extend beyond a perimeter of the paddle. In Fig 1, the weight device head portion is flush with the perimeter. Fig. 2 also shows its weight device to be flush with the perimeter.
Applicant argues that Marshall fails to teach the elements of the amended claims because the inserts are threaded into wells of the paddle’s perimeter edge itself, and not an edge guard. Similarly, applicant emphasizes the differences in the tennis racket of Iwatsobo and the claimed paddle. However, applicants’ arguments are directed to intended use. The actual structure being claimed is merely the weight. Limitations to the edge guard and paddle are not positively recited structure. As set forth above, if the structure of the weights is capable of being used as claimed, the functional limitations will be met.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Petitti, Jr. (US Pat. No. 4,200,285).
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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