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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ye (KR 101480074) in view of Friell (US 2021/0368696) and Hargreaves (GB 2,326,580). Note the basis for the rejections set forth in the office action filed April 4, 2025.
Response to Arguments
Applicant's arguments filed August 4, 2025 have been fully considered but they are not persuasive. The applicant refers to the Declaration filed August 4, 2025 and argues that the process for repairing a divot is materially different from the process for repairing a pitch mark. The applicant states that the conditions of fairway are different from those on the golf green. The applicant notes that pitch mark repair must be done in a non-destructive manner in order to retain the surface smoothness. The applicant states that one of ordinary skill in the art would know that the divot repair tool of claim 1 that is configured to repair pitch marks within the putting surface is not the same as the device taught by Ye. The applicant contends that the device of Ye would be unsuitable for repairing pitch marks within a putting surface.
However, these arguments are not persuasive. Again, the applicant’s center on the intended use of the invention. 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, then it meets the claim. Note MPEP 2114(II) stating that “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. Ex parte Masham, 2 USPQ2d 1647 (BD. Pat. Ap. & Inter. 1987).” Here, the combination of Ye in view of Friell and Hargreaves teaches all of the structural limitation of the claim and thus, the recitation that the repair tool be configured to repair pitch marks within the turf does not patentably distinguish the claimed invention from the combination. While the conditions might differ between repairing marks on a fairway and golf green, the combination of Ye in view of Friell and Hargreaves still teaches the claimed invention as the combination is capable of performing the recited intended use. Again, recitations of intended use within the claim are not sufficient to distinguish the claimed invention from the prior art when the prior art teaches all of the structural limitations of the claim. The applicant’s remarks fail to structurally distinguish the claimed invention from the teachings of the combination and instead rely merely on the intended use of the invention.
Regarding the Declaration filed August 4, 2025, this Declaration is also not sufficient in overcoming the rejections of the claimed invention. The Declaration asserts that there are material differences between the repair of marks on a fairway versus those on a golf green. However, this argument is not persuasive as first this argument relies on the intended use of the invention. As noted above 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. Second, the claim does not structurally distinguish the claimed invention from the teachings of the combination. The applicant relies on a mere intended use recitation in order to structurally distinguish the claims from the prior art which falls far short of establishing a patentable distinction of the claimed invention. Third, the Declaration has not established a nexus between the material distinctions of the process for repairing the different marks. Note MPEP 716.01(b) stating that “Nexus is presumed when the applicant or patent owner shows that the asserted objective evidence of record is tied to a certain product and that product includes the claimed features, and is coextensive with them. See Fox Factor, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373, 2019 USPQ2d 483355 (Fed. Cir. 2019), cert. denied, 141 S.Ct. 373(2020). Here, the Declaration merely asserts that the processes are materially different, however, the claims do not recite these claimed features and thus, fail to establish the necessary nexus.
The Declaration also states that a person of ordinary skill in the art would know that the device of Ye is not suitable for repairing pitch marks within a putting surface. However, this argument is also not persuasive as again it centers on the intended use. The device of Ye is obviously capable of repairing a pitch mark within a putting surface and thus, meets the claim limitation. It appears that applicant is arguing a difference in effectiveness of the tools in repairing the ball marks which is not defined in the claims or the structural limitations that accomplish this effectiveness and thus, the device of the combination renders obvious the claim limitations. Further, it is noted that Ye states that the cutter containers (47) may be adjusted according to the size of the divot. Thus, the device of Ye is obviously capable of repairing smaller divots or pitch marks. Without presenting any structural distinctions and because the combination is obviously capable of performing the recited function, the instant claims are met by the combination of Ye in view of Friell and Hargreaves.
Regarding the applicant’s argument that the limitation for “configured to repair pitch marks” structurally distinguishes the instant invention from the teachings of the prior art, again the applicant is referred to MPEP 2114(II) stating that “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. Ex parte Masham, 2 USPQ2d 1647 (BD. Pat. Ap. & Inter. 1987).” Here, the combination of Ye in view of Friell and Hargreaves teaches all of the structural limitation of the claim and thus, the recitation that the repair tool be configured to repair pitch marks within the turf does not patentably distinguish the claimed invention from the combination. While the conditions might differ between repairing marks on a fairway and golf green, the combination of Ye in view of Friell and Hargreaves still teaches the claimed invention as the combination is capable of performing the recited intended use. Again, recitations of intended use within the claim are not sufficient to distinguish the claimed invention from the prior art when the prior art teaches all of the structural limitations of the claim. The applicant’s remarks fail to structurally distinguish the claimed invention from the teachings of the combination and instead rely merely on the intended use of the invention.
Regarding the applicant’s argument that the combination of Ye in view of Friell and Hargreaves does not teach a divot repair tool that is used to repair pitch marks within a putting surface, again, this limitation relates to the intended use of the divot repair tool. The tool of the combination is taught as a divot repair tool and is obviously configured to be capable of repairing the pitch marks in the putting surface. It is noted that the limitation does not specify any structural limitations for the device and instead relies on the intended use. Further, it is noted that Ye states that the cutter containers (47) may be adjusted according to the size of the divot. Thus, the device of Ye is obviously capable of repairing smaller divots or pitch marks. Without presenting any structural distinctions and because the combination is obviously capable of performing the recited function, the instant claims are met by the combination of Ye in view of Friell and Hargreaves.
The applicant also argues that there is no suggestion to modify the reference of Ye with the teachings of Hargreaves. This argument is also not persuasive. Note MPEP 2143(I)(B) stating that the simple substitution of one known element for another to obtain predictable results is an example of a basic requirement for establishing a prima facie case of obviousness. Here, Ye teaches for his machine to comprise wheels (11) and thus, lacks the teaching for the elongate cylinders. Hargreaves reveals that it is known in the art of user operated ground treatment machines comprising tools (38) for engaging the turf to provide the machine with either a pair of wheels or a single roller (100> Note page 2, lines 16-18. It would have been obvious to one of ordinary skill in the art to substitute the pair of wheels of Ye with a single elongate cylindrical roller in order to provide an alternative construction that is equally capable of permitting movement of the machine across the turf.
Regarding the applicant’s argument that Hargreaves does not show the rollers as an elongate roller, Hargreaves teaches the use of a wheels or a roller for the user operated ground treatment machine. It is noted that Ye particularly shows the wheels extending at either end of the frame of the device. To replace the pair of front wheels with the roller necessarily defines an elongate roller extending across the front of the frame. It is noted that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 STEVEN B WONG whose telephone number is (571)272-4416. The examiner can normally be reached Monday-Friday 7:30am-3:30pm.
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/STEVEN B WONG/Primary Examiner, Art Unit 3711