DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The amendment filed on August 21, 2025, has been entered and acknowledged by the Examiner.
Claims 8, 14-16, 19-33, 35-44 are pending in the instant application.
Election/Restrictions
Applicant's traversal of the restriction by original presentation of claim 39 in the reply filed on August 21, 2025 is acknowledged. The traversal is on the ground(s) that the Examiner fails to identify a serious burden of examination and that the timing of the restriction is improper. This is not found persuasive because claim 39 is a claim to a method for using the kit of claim 25, including a method for positioning a light source bank on the shoe of a golfer, which is a separate statutory class of invention and is distinct from the kit of claim 25 from which it depends; furthermore, the restriction was presented at the earliest opportunity, namely, in the office action immediately after claim 39 was added to the claims. The Examiner further notes that the restriction of claim 28 was previously made final in the office action of April 9, 2021; the reasons for restriction and response to traversal of the restriction of claim 28 are the same as the office action of April 9, 2021 and will not be reiterated here.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. The requirement is still deemed proper and is therefore made FINAL.
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 pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 25 and 29 is/are rejected under pre-AlA 35 U.S.C. 102(a)(1) and 102(a)(b) as being anticipated by Lerch (US 2,671,847) (of record).
Regarding claim 25, Lerch discloses a kit comprising a golfer wearable apparatus having a light source bank, wherein the golfer wearable apparatus is adapted to be wearable on a foot area of the golfer (Figs 1-5; Column 1, Line 35 to Column 3, Line 25). Note that the shoe wearable device designed for use during exercise (Column 1, Lines 15-19) disclosed by Lerch is considered characteristically capable of being used by a golfer since golf isa form of exercise. Further, the requirement that “an instruction manual including a plurality of instructions that specify a method for using the golfer wearable apparatus having the light source bank" the Examiner notes that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art’ and that “where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability’ (see MPEP 2112.01 III); therefore, since the printed matter of claim 25 requires no functional relationship with the structure of the wearable apparatus of claim 25 it is considered that the printed matter limitation of claim 25 should be given no patentable weight (see MPEP 2111.05).
Regarding claim 29, Lerch discloses the invention of claim 25; including wherein the light source of Lerch would be capable of being pointed toward a golf ball when a golfer is in a golf stance. The Examiner notes that 'where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art’ and that “where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability’ (see MPEP 2112.01 III); therefore, since the printed matter of claim 29 requires no functional relationship with the structure of the wearable apparatus of claim 29 it is considered that the printed matter limitation of claim 29 should be given no patentable weight (see MPEP 2111.05). The Examiner further notes that the printed matter being web-based or physical does not affect whether the printed matter is given patentable weight.
Allowable Subject Matter
Claims 8, 14-16, 19-24, 30, 33, 35-38, and 40-44 are allowed.
The following is an examiner’s statement of reasons for allowance:
The reasons for allowance for claims 8, 14-17, 19-24, and 30 are the same as those of the office action of March 28, 2022. Claim 38 is allowable based on its dependence from claim 8.
The amendments to independent claim 33 render it allowable over the prior art of record; claims 35-37 is allowable based on its dependence from claim 33.
Regarding independent claim 40, the references of the Prior Art of record fail to teach or suggest the combination of the limitations as set forth in claim 40, and specifically comprising the limitation wherein an apparatus comprising: a display screen at a fixed elevation; a horizontally oriented ring, the horizontally oriented ring for use in a sports game in which a player of the sports game directs a ball into the horizontally oriented ring; and wherein the display screen displays a range that indicates a distance of the player from the horizontally oriented ring, wherein the apparatus is configured to determine the range using radio signals transmitted from a moving location of the player.
Regarding claims 41-44, claims 41-44 are allowable for the reasons given in claim 40 because of their dependency status from claim 40.
Claims 26-27 and 31-32 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed August 21, 2025 have been fully considered but they are not persuasive.
With respect to the Office Action of February 21, 2025, Applicant argues that the Examiner has failed to answer the substance of Applicant’s arguments. With regard to claim 25, Applicant argues that the Examiner does not understand the printed matter doctrine and that it has not been explained in rejection of claim 25 how the claim 25 limitation of “a plurality of instructions” is satisfied by the Lerch reference, and that because this limitation was not addressed claim 25 should be allowed. Applicant argues that the claimed ‘a plurality of instructions’ has a functional relationship with the claimed light bank and performs a function with respect to the light bank product because it requires “a plurality of instructions that specify a method for using the golfer wearable apparatus having the light source bank”. Applicant also argues that the claim 29 requirement that the instruction “specifies to the golfer that the golfer wearable apparatus should be attached toa shoe of the golfer so that light from the light source bank points to a golf hall when the golfer takes a golf stance” has a functional relationship with the claimed light bank. Applicant further argues that the Examiner has disregarded their arguments in the previous response to arguments because the Examiner restated portions of the claim 25 rejection in that response. With regard to claims 25 and 29, Applicant argues that the Examiner has not explained how the printed matter doctrine applies to the claimed instruction manual. With regard to claim 28, Applicant again argues that the restriction by original presentation is improper because Applicant argues that the Examiner has not established a serious search and examination burden. Applicant also suggests that the restriction requirement was not timely presented. With regard to claim 28, Applicant argues that the Examiner has not explained how claim 28 is indefinite.
The Examiner respectfully disagrees. Where Applicant has made substantive arguments that relate to the claims and rejections of record, their arguments have been responded to. The Examiner notes that Applicant makes numerous references to case law in their arguments without relating the facts of those case laws to the facts of the prosecution of the instant application; the recitation of case law without an analysis as to how Applicant finds them related to the instant application cannot be responded to as they are considered spurious arguments. Applicant’s arguments with regard to whether the claim 25 limitation of “an instruction manual including a plurality of instructions that specify a method for using the golfer wearable apparatus having the light source bank” and Applicant’s assertion that this limitation has a functional relationship to the claimed light bank and Applicant’s assertion that claim 25 should be allowed because the Examiner has not addressed this imitation are not found persuasive. The Examiner does agree that claim 25’s limitation of “an instruction manual including a plurality of instructions that specify a method for using the golfer wearable apparatus having the light source bank” has a functional relationship to the claimed light bank because the light bank disclosed by Lerch is shown by Lerch as attached to a user’s shoe and the claim of an instruction manual with an instruction on using the light bank in no way further limits the already claimed structure of the claimed light bank; even the more specific claim 29 requirement that the instruction “specifies to the golfer that the golfer wearable apparatus should be affixed to a shoe of the golfer so that light from the light source bank points to a golf ball when the golfer takes a golf stance” does not require a light bank structure that is different from what is disclosed by Lerch since Lerch’s light bank is disclosed as attached toa user’s shoe. As stated in MPEP 2441.051A “To be given patentable weight, the printed matter and associated product rust be in a functional relationship. A functional relationship can be found where the printed matter performs sore function with respect to the product to which it is associated.”; in claims 25 and 29 the printed matter at issue is an instruction manual that is not indicated as being attached or interacting physically with the claimed light bank. Further in MPEP 2711.05 18, which discuses evidence that does not support a functional relationship, it is stated “Another example in which a product merely serves as a Support would occur for a deck of playing cards having Images on each card. See in re Bryan, 323 Fed. Appx 893 (Fed, Cir, 2009) (unpublished). In Bryan the applicant asserted that the printed matter allowed the cards to be “collected, traded, and drawn’: “identify and distinguish one deck of cards from another”: and “enabled [] the card to be traded and blind drawn". However, the court found that these functions do not pertain to the structure of the apparatus and were instead drawn to the method or process of playing a game.”; similarly, in the instant application, the instruction manual is aimed at instructing a user on how to use the claimed light bank and does not pertain to the structure of the light bank. Another example from MPEP 2711.05 16: “Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864.”; which relates to the claims 25 and 29 in that they claim a kit with light bank and instruction manual the printed instructions, but the claimed Instructions are not related to the claimed light bank: furthermore, Lerch discloses the claim 29 use of attaching the light bank toa shoe. Finally, as MPEP 2112.01 He states “Where the only difference between a prior art product and a claimed product fs printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F,3d, at 1339, 70 USPQ2d 1862, 1864 (fed. Cir. 2004} (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining “[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.").";as such, the Examiner disagrees with Applicant’s assertion that the claim 25, and 29, limitations as regards an instruction manual were not addressed; because the claimed Instruction manual and instruction have no functional relationship with the claimed light bank structure and do not further limit the structure of the claimed light bank; in fact, the “printed matter” analysis of the claims is the addressing of the recitation of an instruction manual that Applicant argues is not present—and since the Examiner has found that in claims 25 and 29 that the claims to printed matter do not carry patentable weight, it is not required to then show how the prior art of record anticipates the claimed printed matter, since a finding of ‘no patentable weight’ obviates the requirement to show how the prior art addresses the limitation. The Examiner notes that the claimed instruction manual of claims 25 and 29 is considered to fall within the scope of what the MPEP regards as ‘printed matter’.
With regard to claim 28, Applicant’s assertion that the restriction requirement was mot timely is not correct; the restriction on grounds of election by original presentation was presented in the first office action after claim 28 was added to the claims. Further, Applicant’s assertion that the separate statutory class of claim of claim 28 is not a sufficient reasoning for showing burden of search and examination is not persuasive; as previously noted, claim 28 is drawn toa method of playing golf including a method of using the light bank of claim 25: an examination of a method of playing golf would necessitate a search with a scope beyond that of a search for the structure of alight bank that is attached to a wearer’s shoe and additionally raises issues with regard to examination of the scope of the method of playing golf that is claimed in claim 28 and the definiteness of the claim language: this constitutes a serious burden of both search and examination; the finality of the restriction is maintained. Applicant’s argument that Examiner’s response to Applicant’s argument is an attempt to ‘cure’ a deficient original requirement for restriction are not persuasive; the Examiner is required to respond to Applicant’s repeated traversal of restriction, such response does not change the validity of the original requirement for restriction. With regard to the Examiner’s citation of the printed matter doctrine of MPEP 2111.05, Applicant argues that Applicant’s claim to “a plurality of instructions that specify a method for using the golfer wearable apparatus” in claim 25 can impact the position and/or orientation of the light source bank such that they define structural related attributes. The Examiner respectfully disagrees. As written in MPEP 2111.05 in order for the printed matter to be considered as having a functional relationship with the product that it is associated with it must perform a function such as e.g. indicating the volume of a measuring cup. In both claim 25, the printed matter is claimed as specifying a method of using the claimed products and do not provide a function in and of themselves; Applicant is reminded that the specification can not be read into the claims and that if the specification discloses instructions for using the devices of claims 25 and 33 these cannot be incorporated into the claims via a claim to an instruction manual. With regard to claim 33 the “printed matter” analysis of the claim addresses the recitation of an instruction manual that Applicant argues is not present —and since the Examiner has found that in claim 33 that the claim to printed matter do not carry patentable weight, it is not required to then show how the prior art of record anticipates the claimed printed matter, since a finding of ‘no patentable weight’ obviates the requirement to show how the prior art addresses the limitation. The Examiner notes that the definiteness of claim 28 is only referred to in the context of determining the examination burden of the claim with regard to the restriction requirement; determining whether a particular claim is definite, or indefinite, adds to the examination burden, especially when the statutory class of invention is different to that of the previously elected claims, because different statutory classes of invention have different considerations for determining the definiteness of a particular claim.
Conclusion
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 ANNE M HINES whose telephone number is (571)272-2285. The examiner can normally be reached on M-F: 8:00-4:30.
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/Anne M Hines/
Primary Examiner
Art Unit 2879