DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim 1 recites the limitation "a head portion" in "a frame disposed about at least a head portion of the pickleball paddle along an edge portion thereof." Specifically, "head portion" was previously introduced in a parent claim, so it is unclear whether "a head portion" refers to that previously introduced element or introduces a new, separate element. Accordingly, the claim is rendered indefinite.
Claim 20 recites the limitation "a head portion" in "a frame disposed about at least a head portion of the pickleball paddle along an edge portion thereof." Specifically, "head portion" was previously introduced in a parent claim, so it is unclear whether "a head portion" refers to that previously introduced element or introduces a new, separate element. Accordingly, the claim is rendered indefinite.
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 1-13, 15, 17-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Severa (US 20250312666 A1).
Regarding claim 1, Severa teaches 1. (Original) A pickleball paddle, comprising: See Fig. 48 which shows the paddle., a front surface; See Fig. 48 which shows the paddle and a front surface., a back surface opposing the front surface; See Fig. 48 which shows the paddle and an inherent back surface., a frame disposed about at least a head portion of the pickleball paddle along an edge portion thereof, the frame at least partially disposed between the front surface and the back surface along the edge portion, the frame defining a hollow interior portion; See (6734) which is described as an opening but also shows the internal frame., a core disposed between the front surface and the back surface, the core extending between, and disposed within, a handle of the pickleball paddle and a head portion of the pickleball paddle, the core having an outer boundary including a first portion spaced apart from the frame and a second portion that contacts the frame; See Fig. 49 which shows the core which may be considered all the internal components including those that go into the handle such as 6782 down to 6772., a gap formed as a void positioned between the first portion of the outer boundary of the core and the frame; See (6039) which shows the gap which is filled with core flexor 6740., a first filler disposed within the gap; and See (6039)(6740) which shows the core flexor filled in the gap., a second filler disposed within the hollow interior portion of the frame. See (6736) which the second filler is disposed of in the hollow interior portion of the frame.
Regarding claim 2, Severa teaches 2. (Original) The pickleball paddle of claim 1, wherein the second portion contacts the frame in the head portion of the pickleball paddle. See [0226+].
Regarding claim 3, Severa teaches 3. (Original) The pickleball paddle of claim 1, wherein the second portion contacts the frame in a throat portion of the pickleball paddle. See Fig. 49; [0226+].
Regarding claim 4, Severa teaches 4. (Original) The pickleball paddle of claim 1, wherein the second portion contacts the frame in the handle of the pickleball paddle. See Fig. 49; [0226+].
Regarding claim 5, Severa teaches 5. (Original) The pickleball paddle of claim 1, wherein the first portion is spaced apart from the frame in the head portion of the pickleball paddle. See (6740).
Regarding claim 6, Severa teaches 6. (Original) The pickleball paddle of claim 5, wherein the first portion is wholly disposed in the head portion of the pickleball paddle. See Fig. 49.
Regarding claim 7, Severa teaches 7. (Original) The pickleball paddle of claim 1, wherein the first portion is spaced apart from the frame in a throat portion of the pickleball paddle. See Fig. 49.
Regarding claim 8, Severa teaches 8. (Original) The pickleball paddle of claim 7, wherein the first portion is wholly disposed in the throat portion of the pickleball paddle. See Fig. 49; (6785) wherein 6785 a portion of the first portion is wholly disposed in the throat as claimed.
Regarding claim 9, Severa teaches 9. (Original) The pickleball paddle of claim 1, wherein the first portion is spaced apart from the frame in the head portion and a throat portion of the pickleball paddle. See Fig. 49.
Regarding claim 10, Severa teaches 10. (Original) The pickleball paddle of claim 1, wherein the first portion is present along at least two sides of the core. See Fig. 49.
Regarding claim 11, Severa teaches 11. (Original) The pickleball paddle of claim 10, wherein the first portion and the second portion are each present along at least two sides of the core. See Fig. 49.
Regarding claim 12, Severa teaches 12. (Original) The pickleball paddle of claim 10, wherein the first portion is present along a left side, a right side, and a top of the core. See Fig. 49.
Regarding claim 13, Severa teaches 13. (Original) The pickleball paddle of claim 1, wherein the first portion includes a plurality of segments. See Fig. 49; (6785)(6039) wherein if (6785) is considered part of the first portion then the first portion would include a plurality of segments.
Regarding claim 15, Severa teaches 15. (Original) The pickleball paddle of claim 1, wherein the core occupies a majority of the head portion of the pickleball paddle. See Fig. 49.
Regarding claim 17, Severa teaches 17. (Original) The pickleball paddle of claim 1, wherein a width of the gap is at least 5 millimeters. See [0198].
Regarding claim 18, Severa teaches 18. (Original) The pickleball paddle of claim 1, wherein the gap contacts the frame. See Fig. 49 the gap that 6740 is in contacts the frame.
Regarding claim 19, Severa teaches 19. (Original) A pickleball paddle, comprising: See Fig. 48 which shows the paddle., a front surface; See Fig. 48 which shows the paddle and a front surface., a back surface opposing the front surface; See Fig. 48 which shows the paddle and an inherent back surface., a frame disposed about at least a head portion of the pickleball paddle along an edge portion thereof, the frame at least partially disposed between the front surface and the back surface along the edge portion, the frame defining a hollow interior portion; See (6734) which is described as an opening but also shows the internal frame., a core disposed between the front surface and the back surface, the core extending between, and disposed within, a handle of the pickleball paddle and a head portion of the pickleball paddle, the core having an outer boundary including a first portion spaced apart from the frame, the first portion disposed in the head portion and a throat portion of the pickleball paddle, and a second portion that contacts the frame in the handle; See Fig. 49 which shows the core which may be considered all the internal components including those that go into the handle such as 6782 down to 6772., a gap formed as a void extending between the first portion of the outer boundary of the core and the frame, See (6039) which shows the gap which is filled with core flexor 6740., the gap having a depth of at least 5 millimeters measured in a direction from the outer boundary toward the frame; See [0198], a first filler disposed within the gap; and See (6039)(6740) which shows the core flexor filled in the gap., a second filler disposed within the hollow interior portion of the frame. See (6736) which the second filler is disposed of in the hollow interior portion of the frame.
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 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Severa (US 20250312666 A1) in view of Lee (US 20230149784 A1).
Regarding claim 14, Lee teaches 14. (Original) The pickleball paddle of claim 1, wherein the outer boundary of the core includes a plurality of first portions in alternating arrangement with a plurality of second portions. See Fig. 1; (102)(10) the items 102 and 10 may be considered a plurality of first and second portion in alternating arrangement.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Severa with Lee to achieve weight reduction on the paddle. ([0019]).
Regarding claim 20, Severa teaches 20. (Original) A pickleball paddle, comprising: See Fig. 48 which shows the paddle., a front surface; See Fig. 48 which shows the paddle and a front surface., a back surface opposing the front surface; See Fig. 48 which shows the paddle and an inherent back surface., a frame disposed about at least a head portion of the pickleball paddle along an edge portion thereof, the frame at least partially disposed between the front surface and the back surface along the edge portion, the frame defining a hollow interior portion; See (6734) which is described as an opening but also shows the internal frame., a core disposed between the front surface and the back surface, the core extending between, and disposed within, a handle of the pickleball paddle and a head portion of the pickleball paddle, the core having an outer boundary including See Fig. 49 which shows the core which may be considered all the internal components including those that go into the handle such as 6782 down to 6772., a gap formed as a void positioned between each of the plurality of first portions of the core and the frame; See (6039) which shows the gap which is filled with core flexor 6740., a first filler disposed within the gap; and See (6039)(6740) which shows the core flexor filled in the gap., a second filler disposed within the hollow interior portion of the frame. See (6736) which the second filler is disposed of in the hollow interior portion of the frame.
Lee does teach what the primary reference is silent on including a plurality of first portions in alternating arrangement with a plurality of second portions, the plurality of first portions spaced apart from the frame and the plurality of second portions contacting the frame, wherein one or more of the plurality of first portions and one or more of the plurality of second portions are disposed in the head portion of the pickleball paddle; See Fig. 1; (102)(10) the items 102 and 10 may be considered a plurality of first and second portion in alternating arrangement.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Severa with Lee to achieve weight reduction on the paddle. ([0019]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Severa (US 20250312666 A1) in view of Gosselin (US 20250058189 A1).
Regarding claim 16, Gosselin teaches 16. (Original) The pickleball paddle of claim 1, wherein the core comprises an open-cell structure comprising polypropylene. See [0013][0035].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Severa with Gosselin as the courts held that the selection of a known material to make an apparatus of a type made of similar material prior to the invention was held to be obvious. (See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)) As such, the use of polypropylene material is the selection of a known material as described in In re Leshin above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Thurman US 20210252356 A1 - See Fig. 14 which teaches the paddle with a core and different portions.
THIS ACTION IS MADE FINAL. 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 JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY S VANDERVEEN/ Examiner, Art Unit 3711
