DETAILED ACTION
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 .
Response to Amendment
The amendment filed 04/17/2026 has been entered. Claim 32 is pending in the application.
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.
Claim 32 is 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.
The recitation in claim 32 of “said six separate hole groupings are arranged in a sequence that begins with a designated first hole grouping and progresses through a designated second, third, fourth, fifth, and concludes with the designated sixth hole grouping of the sequence, wherein the overall sequence of said golf course begins at said separate single tee-off location of said separate first hole grouping, continues along the corresponding said separate single fairway of said separate first hole grouping, carries on to the corresponding said single set of putting greens of said first hole grouping, and subsequently moves over to said separate single tee-off location of said second hole grouping where the 'tee-to- corresponding fairway-to-corresponding set of putting greens-to-the single tee-off location of the next hole grouping' sequence repeats itself through all six hole groupings until the overall sequence of said golf course ultimately terminates at the set of putting greens within said sixth hole grouping, wherein each stage of said overall sequence of said golf course only progresses to the corresponding next stage in said overall sequence, while simultaneously only reverting back to the corresponding previous stage of said overall sequence in such a way as to establish a unique 'tee-to-fairway-to-putting greens-to-next tee' forward progression as well as a unique 'tee-reversion back to previous putting green-reversion back to corresponding fairway-reversion back to corresponding tee' reverse progression, wherein said separate set of putting greens of said sixth hole grouping is positioned proximally closer to said single tee-off location of said first hole grouping when compared to its proximity to any other tee-off location of any other hole grouping” is directed to new matter because the recited limitation is not supported by applicant’s originally filed disclosure (claims, specification, drawings filed 05/13/2019). Applicant’s originally filed disclosure does not provide support for the claimed “sequence that begins with a designated first hole grouping and progresses through a designated second, third, fourth, fifth, and concludes with the designated sixth hole grouping of the sequence”, claim limitations directed to the “repeat” and “revert” steps in the claimed “sequence”, and does not provide support for “said sixth hole grouping is positioned proximally closer to said single tee-off location of said first hole grouping when compared to its proximity to any other tee-off location of any other hole grouping”. Therefore, claim 32 is rejected as being directed to new matter.
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 32 is 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 32 recites the limitation “said separate hole grouping” in line 15. There is insufficient antecedent basis for this limitation in the claim.
Claim 32 recites the limitation “the overall sequence” in line 26. There is insufficient antecedent basis for this limitation in the claim.
Claim 32 recites the limitation “the corresponding next stage” in lines 36-37. There is insufficient antecedent basis for this limitation in the claim.
Claim 32 recites the limitation “the corresponding previous stage” in line 38. There is insufficient antecedent basis for this limitation in the claim.
Claim Objections
Claim 32 is objected to because of the following informalities:
The recitation in claim 32, line 17 of “corres-ponding” should be changed to --corresponding --.
Appropriate correction is required.
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 (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 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.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Larson (7651404) in view of Nunez-Aguilera (20150314187) and Oakley (20070072692).
Regarding claim 32, Larson (Figures 1-3) teaches a golf course for playing a game of golf consisting of: exactly eighteen cups (See fig. 2-3) (Col. 4, Lines 14-38) configured to receive a golf ball; and a set of putting greens comprising said eighteen cups (See fig. 2-3); and a teeing area (Fig. 2, Part No. 38), wherein said teeing area (Fig. 2, Part No. 38) is located relative to said putting green such that a golf ball can be directed from said teeing area towards any of said cups, wherein each of said exactly holes consists essentially of: a separate single tee-off location (See fig. 2-3) that corresponds to a separate single fairway (See fig. 2-3), wherein said separate single tee-off location and said separate single fairway both correspond to a separate single putting green, wherein said separate single putting green of each said separate hole grouping has a cup, each cup being configured to receive a golf ball, wherein said separate single fairways of each said separate hole grouping are adjacent to and disposed between their corresponding said separate single tee-off locations and their corresponding said separate single putting green such that a golf ball can be directed from said separate single tee-off locations, along their corresponding said separate single fairways, and ultimately toward a cup within their corresponding said separate putting green, wherein said hole groupings are arranged in a sequence that begins with a designated first hole grouping and progresses through hole groupings hole grouping of the sequence.
Larson does not teach exactly six holes, each of said exactly six holes comprising: a set of putting greens comprising three cups of said eighteen cups; said teeing area is located relative to said set of putting greens such that a golf ball can be directed from said teeing area towards any of said three cups; wherein each of said exactly six holes consists essentially of: a separate single tee-off location that corresponds to a separate single fairway; a separate single set of putting greens; wherein said separate single sets of putting greens of each said separate hole grouping collectively have three cups; wherein said six separate hole groupings are arranged in a sequence that begins with a designated first hole grouping and progresses through a designated second, third, fourth, fifth, and concludes with the designated sixth hole grouping of the sequence; wherein the overall sequence of said golf course begins at said separate single tee-off location of said separate first hole grouping, continues along the corresponding said separate single fairway of said separate first hole grouping, carries on to the corresponding said single set of putting greens of said first hole grouping, and subsequently moves over to said separate single tee-off location of said second hole grouping where the 'tee-to- corresponding fairway-to-corresponding set of putting greens-to-the single tee-off location of the next hole grouping' sequence repeats itself through all six hole groupings until the overall sequence of said golf course ultimately terminates at the set of putting greens within said sixth hole grouping, wherein each stage of said overall sequence of said golf course only progresses to the corresponding next stage in said overall sequence, while simultaneously only reverting back to the corresponding previous stage of said overall sequence in such a way as to establish a unique 'tee-to-fairway-to-putting greens-to-next tee' forward progression as well as a unique 'tee-reversion back to previous putting green-reversion back to corresponding fairway-reversion back to corresponding tee' reverse progression; wherein said separate set of putting greens of said sixth hole grouping is positioned proximally closer to said single tee-off location of said first hole grouping when compared to its proximity to any other tee-off location of any other hole grouping.
Nunez teaches exactly six holes, each of said exactly six holes comprising: a set of putting greens comprising three cups of said eighteen cups (See fig. 1) (Para. 0041); said teeing area (See fig. 1) (Para. 0054, 0066) is located relative to said set of putting greens such that a golf ball can be directed from said teeing area towards any of said three cups; wherein each of said exactly six holes consists essentially of: a separate single tee-off location (See fig. 1) that corresponds to a separate fairway; a separate single set of putting greens (See fig. 1); wherein said separate single sets of putting greens of each said separate hole grouping collectively have three cups (See fig. 1); a golf ball can be directed from said separate single tee-off locations, along their corresponding said separate fairway, and ultimately toward any of said three cups within their corresponding said separate single sets of putting greens (See fig. 1); wherein said six separate hole groupings are arranged in a sequence that begins with a designated first hole grouping (Para. 0102-0108) (See fig. 1).
It is noted that the combination of prior art of Larson and Nunez is fully capable of performing the claim recitation of “such that a golf ball can be directed from said teeing area towards any of said three cups” and “a golf ball can be directed from said separate single tee-off locations, along their corresponding said separate single fairways, and ultimately toward any of said three cups within their corresponding said separate single sets of putting greens”, “said six separate hole groupings are arranged in a sequence that begins with a designated first hole grouping and progresses through a designated second, third, fourth, fifth, and concludes with the designated sixth hole grouping of the sequence”, “wherein the overall sequence of said golf course begins at said separate single tee-off location of said separate first hole grouping, continues along the corresponding said separate single fairway of said separate first hole grouping, carries on to the corresponding said single set of putting greens of said first hole grouping, and subsequently moves over to said separate single tee-off location of said second hole grouping where the 'tee-to- corresponding fairway-to-corresponding set of putting greens-to-the single tee-off location of the next hole grouping' sequence repeats itself through all six hole groupings until the overall sequence of said golf course ultimately terminates at the set of putting greens within said sixth hole grouping, wherein each stage of said overall sequence of said golf course only progresses to the corresponding next stage in said overall sequence, while simultaneously only reverting back to the corresponding previous stage of said overall sequence in such a way as to establish a unique 'tee-to-fairway-to-putting greens-to-next tee' forward progression as well as a unique 'tee-reversion back to previous putting green-reversion back to corresponding fairway-reversion back to corresponding tee' reverse progression” as the recited limitation is a functional limitation and does not structurally distinguish the claimed apparatus from the prior art. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). 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 (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
It is noted that the claim recitation of “wherein said separate set of putting greens of said sixth hole grouping is positioned proximally closer to said single tee-off location of said first hole grouping when compared to its proximity to any other tee-off location of any other hole grouping” is directed to mere rearrangement of parts (i.e. the location/distance of a putting green relative to a tee-off location). Changing the location of putting greens relative to tee off locations would have been obvious to one of ordinary skill in the art as a means of mere rearrangement of parts and design choice (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court held that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device) (See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court held that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). If there is any doubt with the rearrangement of parts interpretation, the prior art of Oakley is being used to teach changing golf course configurations by moving tees to new locations.
Oakley teaches changing golf course play by moving tees to new locations (Para. 0029).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Larson with said separate single sets of putting greens of each said separate hole grouping collectively have three cups as taught by Nunez as a means of simple substitution of one known element (a golf course hole comprising a putting green) for another (a golf course hole comprising a single set of putting greens collectively having at least three cups) to obtain predictable results (a golf course hole to be played by a player to enhance skill and enjoyment) (See: KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)) (Nunez: Para. 0054, 0066; See figures 1 and 6), and to provide Larson with changing golf course play by moving tees to new locations as taught by Oakley as a means of changing golf course configurations by moving tees to new locations (Oakley: Para. 0029).
Response to Arguments
Applicant's arguments filed 04/17/2026 have been fully considered but they are not persuasive.
Applicant argues that new claim 32 involves arrangement of hole groupings that is not disclosed by the prior art, this is not found persuasive because (as noted in the rejection of claim 32 under 35 USC over Larson in view of Nunez and Oakley) the claim recitation of “wherein said separate set of putting greens of said sixth hole grouping is positioned proximally closer to said single tee-off location of said first hole grouping when compared to its proximity to any other tee-off location of any other hole grouping” is directed to mere rearrangement of parts (i.e. the location/distance of a putting green relative to a tee-off location). Changing the location of putting greens relative to tee off locations would have been obvious to one of ordinary skill in the art as a means of mere rearrangement of parts and design choice (See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court held that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device) (See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court held that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). If there is any doubt with the rearrangement of parts interpretation, the prior art of Oakley is being used to teach changing golf course configurations by moving tees to new locations.
Applicant argues that new claim 32 involves sequencing of hole groupings that is not disclosed by the prior art, this is not found persuasive because(as noted in the rejection of claim 32 under 35 USC over Larson in view of Nunez and Oakley) the combination of prior art of Larson and Nunez is fully capable of performing the claim sequencing of hole groupings as the recited limitations are functional limitations and do not structurally distinguish the claimed apparatus from the prior art. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). 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 (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)). The examiner notes that claim 32 is merely directed to the layout of a golf course which utilizes known space saving means, such as, a putting green that has a plurality of cups and a single fairway that is used for a plurality of holes. Both of these spacing saving means and the other claimed space saving means are entirely obvious to maximize the use of land. Furthermore, the applied prior art teaches these known space saving means. There a numerous ways a golf course can be designed and it is the examiner’s position that how a course is designed is entirely obvious as a matter of design choice.
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.
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/C.G./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
