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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 09/22/2025 has been entered.
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 30-31 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.
The recitation in claim 30 of “said first hole grouping and said at least one additional separate hole groupings are all incorporated within an indeterminate number of hole groupings that are arranged in a repeating sequence, wherein said single tee-off locations of each said hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence are proximally located with unencumbered access to the said single sets of putting greens of the preceding hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence, and said single sets of putting greens of each said hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence are proximally located with unencumbered access to the said single tee-off locations of the following hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence” is directed to new matter because the recited limitation is not supported by applicant’s originally filed disclosure (claims, specification, drawings filed 05/31/2019). Applicant’s originally filed drawings (see fig. 1) shows hole groupings, but does not provide support for the claim recitations of “an indeterminate number of hole groupings that are arranged in a repeating sequence” and “unencumbered access”. Applicant’s originally filed specification and claims do not provide support for the recited limitations.
The recitation in claim 31 of “said first hole grouping and said five additional separate hole groupings are all incorporated within a number of hole groupings that are arranged in a repeating sequence, wherein said single tee-off locations of each said hole grouping within said number of hole groupings that are arranged in a repeating sequence are proximally located to the said single sets of putting greens of the preceding hole grouping within said number of hole groupings that are arranged in a repeating sequence, and, said single sets of putting greens of each said hole grouping within said number of hole groupings that are arranged in a repeating sequence are proximally located to the said single tee-off locations of the following hole grouping within said number of hole groupings that are arranged in a repeating sequence such that upon conclusion of play on any said hole grouping within said hole groupings that are arranged in a repeating sequence only one place is provided for said game of golf to continue by commencing play from the said tee-off location of the said following hole grouping within the hole groupings arranged in a repeating sequence” and “the first hole grouping and the five additional hole groupings are topologically equivalent to a circle” is directed to new matter because the recited limitation is not supported by applicant’s originally filed disclosure (claims, specification, drawings filed 05/31/2019). Applicant’s originally filed drawings (see fig. 1) shows hole groupings, but does not provide support for the claim recitations of “a number of hole groupings that are arranged in a repeating sequence”, “only one place is provided for said game of golf to continue”, and “the first hole grouping and the five additional hole groupings are topologically equivalent to a circle”. Applicant’s originally filed specification and claims do not provide support for the recited limitations.
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 30-31 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.
The recitation in claim 30 of “said first hole grouping and said at least one additional separate hole groupings are all incorporated within an indeterminate number of hole groupings that are arranged in a repeating sequence, wherein said single tee-off locations of each said hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence are proximally located with unencumbered access to the said single sets of putting greens of the preceding hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence, and said single sets of putting greens of each said hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence are proximally located with unencumbered access to the said single tee-off locations of the following hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence” is indefinite because applicant is claiming an indeterminate (i.e. not known, established or defined) number of hole groupings. In addition, the claim recitation of “repeating sequence” is indefinite because applicant’s originally filed disclosure does not define what applicant considers to be the claimed “repeating sequence”. Further, the claim recitation of “unencumbered access” is indefinite because applicant’s originally filed disclosure does not define what applicant considers to be the claimed “unencumbered access”.
The recitation in claim 31 of “said first hole grouping and said five additional separate hole groupings are all incorporated within a number of hole groupings that are arranged in a repeating sequence, wherein said single tee-off locations of each said hole grouping within said number of hole groupings that are arranged in a repeating sequence are proximally located to the said single sets of putting greens of the preceding hole grouping within said number of hole groupings that are arranged in a repeating sequence, and, said single sets of putting greens of each said hole grouping within said number of hole groupings that are arranged in a repeating sequence are proximally located to the said single tee-off locations of the following hole grouping within said number of hole groupings that are arranged in a repeating sequence such that upon conclusion of play on any said hole grouping within said hole groupings that are arranged in a repeating sequence only one place is provided for said game of golf to continue by commencing play from the said tee-off location of the said following hole grouping within the hole groupings arranged in a repeating sequence” and “the first hole grouping and the five additional hole groupings are topologically equivalent to a circle” is indefinite because applicant’s originally filed disclosure does not define what applicant considers to be the claimed “repeating sequence”. In addition, the claim recitation of “”only one place is provided” indefinite because it is unclear what applicant considers to be the claimed “only one place” because applicant’s drawings shows more than “one place” for play to continue. Further, the claim recitation of “the first hole grouping and the five additional hole groupings are topologically equivalent to a circle” is indefinite because it is unclear what applicant considers to be the claimed “circle” as a “circle” is not disclosed by applicant’s originally filed disclosure.
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.
Claims 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Larson (7651404) in view of Nunez-Aguilera (20150314187).
Regarding claim 30, Larson (Figures 1-3) teaches a golf course for playing a game of golf comprising: a first hole grouping consisting essentially of: a single tee-off location (Fig. 1, Part no. 38) that corresponds to a single fairway (40), wherein said single tee-off location and said single fairway both correspond to a single green (42), wherein said single putting green within said first hole grouping has one cup (Col. 3, Lines 12-18), each cup being configured to receive a golf ball, wherein said single fairway within said first hole grouping is adjacent to and disposed between its corresponding said single tee-off location and its corresponding said putting green such that a golf ball can be directed from said single tee-off location, along its corresponding said single fairway, and ultimately toward said cup within its corresponding said putting green (See fig. 1) (Col. 3, Lines 12-18), and at least one additional separate hole grouping (See fig. 1), wherein each said at least one additional separate hole grouping consists essentially of: a separate single tee-off location (See fig. 1) that corresponds to a separate single fairway (See fig. 1) (Col. 3, Lines 12-18), wherein said separate single tee-off location and said separate single fairway both correspond to a separate putting green, wherein said separate putting green of each said at least one additional separate hole grouping has one cup (See fig. 1) (Col. 3, Lines 12-18), each cup being configured to receive a golf ball, wherein said separate single fairways of each said at least one additional 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 (See fig. 1), along their corresponding said separate single fairways, and ultimately toward said cup within their corresponding said separate single putting green (See fig. 1), wherein said first hole grouping and said at least one additional separate hole groupings are all incorporated within an indeterminate number of hole groupings that are arranged in a repeating sequence (See fig. 1), wherein said single tee-off locations of each said hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence are proximally located with unencumbered access to the said putting green of the preceding hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence (See fig. 1), and said single sets of putting greens of each said hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence are proximally located with unencumbered access to the said single tee-off locations of the following hole grouping within said indeterminate number of hole groupings that are arranged in a repeating sequence (See fig. 1).
Larsen does not teach said tee-off location and said fairway both correspond to a single set of putting greens, wherein said single set of putting greens within said first hole grouping collectively has at least three cups; said separate tee-off location and said separate fairway both correspond to a separate single set of putting greens, wherein said separate single sets of putting greens of each said at least one additional separate hole grouping collectively have at least one cups.
Nunez (Figures 1-12) teaches said tee-off location and said fairway both correspond to a single set of putting greens, wherein said single set of putting greens within said first hole grouping collectively has at least three cups (Para. 0054, 0066) (See figures 1 and 6), said separate tee-off location and said separate fairway both correspond to a separate single set of putting greens, wherein said separate single sets of putting greens of each said at least one additional separate hole grouping collectively have at least one cups (Para. 0054, 0066).
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 single set of putting greens within said first hole grouping collectively has at least 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).
Regarding claim 31, the modified Larson (Figures 1-3) teaches a first hole grouping consists essentially of: a single tee-off location that corresponds to a single fairway, wherein said single tee-off location and said single fairway both correspond to a putting green (See fig. 1) (Col. 3, Lines 12-18), wherein said single putting green within said first hole grouping collectively has a cup (Col. 3, Lines 12-18), each cup being configured to receive a golf ball, wherein said single fairway within said first hole grouping is adjacent to and disposed between its corresponding said single tee-off location and its corresponding said putting green such that a golf ball can be directed from said single tee-off location, along its corresponding said single fairway, and ultimately toward said cup within its corresponding putting green (See fig. 1) (Col. 3, Lines 12-18); and there are exactly five additional separate hole groupings (See fig. 1), wherein each said five separate hole groupings consists essentially of: a separate single tee-off location that corresponds to a separate single fairway (See fig. 1), wherein said separate single tee-off location and said separate single fairway both correspond to a separate putting green, wherein said separate putting green of each said five additional separate hole groupings collectively have cups, each cup being configured to receive a golf ball, wherein said separate single fairways of each said five additional separate hole groupings 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 said cup within their corresponding said separate single putting green, wherein said first hole grouping and said five additional separate hole groupings are all incorporated within a number of hole groupings that are arranged in a repeating sequence (See fig. 1), wherein said single tee-off locations of each said hole grouping within said number of hole groupings that are arranged in a repeating sequence are proximally located to the said single sets of putting greens of the preceding hole grouping within said number of hole groupings that are arranged in a repeating sequence (See fig. 1), and, said single putting green of each said hole grouping within said number of hole groupings that are arranged in a repeating sequence are proximally located to the said single tee-off locations of the following hole grouping within said number of hole groupings that are arranged in a repeating sequence such that upon conclusion of play on any said hole grouping within said hole groupings that are arranged in a repeating sequence only one place is provided for said game of golf to continue by commencing play from the said tee-off location of the said following hole grouping within the hole groupings arranged in a repeating sequence (See fig. 1); wherein each of the five separate hole groupings is numbered sequentially with a number (See fig. 1); and wherein the set of putting greens associated with the separate additional hole grouping of the five separate hole groupings having the number is proximally located to the tee-off location associated with the first hole grouping (See fig. 1), such that the first hole grouping and the five additional hole groupings are topologically equivalent to a circle (See fig. 1).
It is noted that the claim recitation of “wherein each of the five separate hole groupings is numbered sequentially with a number, including sequentially number 2, number 3, number 4, number 5, and number 6” is directed to the intended use of the claimed apparatus (i.e. numbering each hole grouping by a user) and does not structurally distinguish the claimed apparatus from the prior art of Larsen. Furthermore, the order of play of the holes is directed to the intended use of the claimed apparatus and does not provide structural distinction between the claimed apparatus and 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 modified Larson does not teach said tee-off location and said fairway both correspond to a single set of putting greens, said single set of putting greens within said first hole grouping collectively has three cups, said separate tee-off location and said separate fairway both correspond to a separate single set of putting greens, wherein said separate single sets of putting greens of each said five additional separate hole groupings collectively have three cups.
Nunez (Figures 1-12) teaches said tee-off location and said fairway both correspond to a single set of putting greens, said single set of putting greens within said first hole grouping collectively has three cups (Para. 0054, 0066) (See figures 1 and 6), said separate tee-off location and said separate fairway both correspond to a separate single set of putting greens (Para. 0054, 0066), wherein said separate single sets of putting greens of each said five additional separate hole groupings collectively have three cups (Para. 0054, 0066) (See fig. 1).
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 single set of putting greens within said first hole grouping collectively has 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).
Response to Arguments
Applicant's arguments filed 09/22/2025 have been fully considered but they are not persuasive.
Applicant argues that the term “repeating sequence” is used to describe a hole followed by another hole, this is not found persuasive because the claim recitation of “repeating sequence” is a new limitation that is not supported by applicant’s originally filed disclosure (see claims, specification, drawings filed 05/13/2019).
Applicant argues that the concept of providing a sequence of holes is blown out of the water because Larsen discloses holes that are intended to be played in any random order the player sees fit, this is not found the order of play of the holes is directed to the intended use of the claimed apparatus and does not provide structural distinction between the claimed apparatus and 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)).
Applicant argues that the terms “proximally” distinguishes the claimed apparatus from the prior art, this is not found persuasive because claims are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the term “proximal” is defined to mean “situated close to”. It is noted that the prior art teaches hole groupings that are “proximal” as claimed.
Conclusion
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/C.G./Examiner, Art Unit 3711 /JOSEPH B BALDORI/Primary Examiner, Art Unit 3711