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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 19 and 20 include limitations directed towards a core having an outer boundary including a first portion spaced apart from the frame and a second portion that contacts the frame. The specification as originally filed does not include a disclosure as to what the first portion and the second portion are. As such, the examiner is not able to view the drawings and ascertain the bounds of these limitations. Appropriate correction is required.
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 1, 15, 19-20 are 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.
Claim 1 includes limitations directed towards "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;" The examiner cannot ascertain what a first portion spaced apart from the frame and a second portion that contacts the frame is bounded to. A review of the applicant’s specification does not show support for a first portion and a second portion as claimed. The drawings show multiple embodiments which could be considered to be encompassed by the terminology included in the claim limitations above. As such, appropriate correction is required.
Claim 19 includes limitations directed towards "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; " The examiner cannot ascertain what a first portion spaced apart from the frame and a second portion that contacts the frame is bounded to. A review of the applicant’s specification does not show support for a first portion and a second portion as claimed. The drawings show multiple embodiments which could be considered to be encompassed by the terminology included in the claim limitations above. As such, appropriate correction is required.
Claim 20 includes limitations directed towards "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 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;" The examiner cannot ascertain what a first portion spaced apart from the frame and a second portion that contacts the frame is bounded to. A review of the applicant’s specification does not show support for a first portion and a second portion as claimed. The drawings show multiple embodiments which could be considered to be encompassed by the terminology included in the claim limitations above. As such, appropriate correction is required.
Conclusion
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.
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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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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
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