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 12/15/2025 has been entered. Claims 1-14 are pending in the application.
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 1, 8, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ackerman (5480142) in view of Burke (20200398117), Nuessle (20150321060), and McInerney (20090088266).
Regarding claim 1, Ackerman (Figures 1-2) teaches a putting training device, comprising: a flagstick (12) (Col. 3, Lines 41-45) having a first end configured to insert into a putting cup; and a storage cup (4) (Col. 3, Lines 32-36) mounted on a second end of the flagstick opposite the first end.
Ackerman does not teach the flagstick having a first end configured to insert into a putting cup ferrule, a tape measure with predetermined distance markings having a first tape end rotatably mounted on the flagstick, the tape measure nests within said storage cup in a rolled storage position, with the first tape end extending through the storage cup, and wherein the tape measure extends normal to the flagstick in an unrolled use position.
Burke (Figures 1-8) teaches the flagstick having a first end configured to insert into a putting cup ferrule (Fig. 7-8, Part No. 70) (Para. 0025).
Nuessle (Figures 1-5) teaches a tape measure (Fig. 3-4, Part No. 61) (Para. 0036) with predetermined distance markings having a first tape end rotatably mounted on the flagstick (Fig. 4, Part No. 16) (Para. 0030, 0036), wherein the first tape end is operative to rotate 360° around the flagstick (16).
It is noted that the prior art of Nuessle is fully capable of performing the claim recitation of “operative to rotate 360° around the flagstick”. As shown in figure 4 of Nuessle, the first tape end is secured to a flagstick (where the flagstick has a round/cylindrical exterior) so that the first end is fully capable of being rotated around the flagstick.
McInerney (Figure 8) teaches a measuring line (Fig. 8, Part No. 30) (Para. 0062, 0059) that nests within said storage cup (200) (Para. 0039) in a rolled storage position, with the first measuring line end extending through the storage cup (Para. 0046), and wherein the measuring line is fully capable of extending normal a shaft (Fig. 8, Part No. 100) (Para. 0062) in an unrolled use position.
It is noted that the claim recitation of “the tape measure extends normal to the flagstick in an unrolled use position” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the combination of the prior art of McInenrney (in combination with other references under 35 USC 103) as the prior art of McInerney teaches a measuring line that is fully capable of extending “normal to the flagstick in an unrolled use position” as claimed (See McInerney: Fig. 8; Para. 0062). 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 would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Ackerman with the flagstick having a first end configured to insert into a putting cup ferrule as taught by Burke as a means of providing a golf flagstick with a means to secure the flagstick in a golf hole (Burke: Para. 0025), to provide Ackerman with a tape measure having a first tape end rotatably mounted on the flagstick as taught by Nuessle as a means of aiding a player with determining a measurement of distance from a target flag to determine scoring (Nuessle: Para. 0030, 0036), and to provide Ackerman with a measuring line that nests within a storage cup in a rolled storage position as taught by McInerney as a means of using an improved putting aid comprising a retractable line that is designed to teach proper putter speed and acceleration and to teach a proper and straight putting stroke that stays on line with the hole (McInerney: Para. 0018, 0059).
Regarding claim 8, the modified Ackerman (Figures 1-2) teaches the flagstick (12) has a length sufficient to position the storage cup (4) above a ground level.
The modified Ackerman does not teach the putting cup ferrule is mounted on the flagstick and in a putting cup.
Burke (Figures 1-8) teaches the putting cup ferrule is mounted on the flagstick and in a putting cup (See fig. 7-8; Para. 0075).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with teach the putting cup ferrule is mounted on the flagstick and in a putting cup as taught by Burke as a means of providing a golf flagstick with a means to secure the flagstick in a golf hole (Burke: Para. 0025).
Regarding claim 11, the modified Ackerman (Figures 1-2) teaches flagstick (12) (Col. 3, Lines 41-45) having a first end configured to insert into a putting cup.
The modified Ackerman does not teach the tape measure is 3/4 inches wide and measures 10 feet from an edge of the putting cup.
It is noted that applicant’s specification discloses “the tape measure may be about 3/4 inches wide and may measure out about 10 feet from the edge of the hole”, so that the dimensions are not exact (based on the term “about”).
Nuessle (Figures 1-5) teaches a tape measure (Fig. 3-4, Part No. 61) (Para. 0036) that inherently has dimensions of width and length (though specific values are not disclosed). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Changing the dimensions of the tape measure of Nuessle is would be obvious to one of ordinary skill in the art as a matter of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with a tape measure rotatably mounted on the flagstick as taught by Nuessle as a means of aiding a player with determining a measurement of distance from a target flag to determine scoring (Nuessle: Para. 0030, 0036).
Regarding claim 13, the modified Ackerman (Figures 1-2) teaches the flagstick inherently has a length (though values are not disclosed).
The modified Ackerman does not teach the flagstick has a length of 8 inches.
It is noted that applicant’s specification discloses “the flagstick may be about 8 inches tall”, so that the dimensions are not exact (based on the term “about”).
Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Changing the dimensions of the flagstick of Ackerman would be obvious to one of ordinary skill in the art as a matter of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ackerman in view of Burke, Nuessle ,and McInerney, further in view of Hilger (20210220712).
Regarding claim 2, the modified Ackerman (Figures 1-2) teaches the storage cup (4) comprises a circular base and a sidewall (See fig. 1-3).
The modified Ackerman does not teach said sidewall having vertical slots extending therethrough configured to accommodate the tape measure.
Hilger (Figures 1-2) teaches said sidewall having vertical slots (Fig. 1A, Part No. 28A, 28B, 26) extending therethrough (Para. 0015).
It is noted that the claim recitation of “vertical slots extending therethrough configured to accommodate the tape measure” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the combination of prior art as the combination of prior art is fully capable of being used to “accommodate the tape measure” as claimed. 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 would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with said sidewall having vertical slots as taught by Hilger as a means of providing drainage slots in a wall of a golf storage cup device (Hilger: Para. 0015).
Claims 3 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ackerman in view of Burke, Nuessle, and McInerney, further in view of Johnson (10639928).
Regarding claim 3, the modified Ackerman (Figures 1-2) teaches a putting training device, comprising: a flagstick (12) (Col. 3, Lines 41-45) having a first end.
The modified Ackerman does not teach the first tape end further comprises a grommet operative to rotatably accommodate the flagstick.
Johnson teaches a first end of a measuring member comprises a grommet (Col. 3, Lines 32-36) operative to rotatably accommodate a pole/rod.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with a first end of a measuring member comprises a grommet as taught by Johnson as a means of rotatably attaching a measuring member to a pole/rod in a game (Johnson: Col. 3, Lines 32-36).
Regarding claim 12, the modified Ackerman (Figures 1-2) teaches a putting training device, comprising: a flagstick (12) (Col. 3, Lines 41-45) having a first end.
The modified Ackerman does not teach the grommet has an inner diameter of 7/16 inches.
It is noted that applicant’s specification discloses “for example, the grommet may be about 7/16” wide”, so that the dimensions are not exact (based on the term “about”).
Johnson teaches a grommet (Col. 3, Lines 32-36) that inherently has an inner diameter (though specific values are not disclosed). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Changing the dimensions of the grommet would be obvious to one of ordinary skill in the art as a matter of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955))..
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with a grommet as taught by Johnson as a means of rotatably attaching a measuring member to a pole/rod in a game (Johnson: Col. 3, Lines 32-36).
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ackerman (5480142) in view of Burke (20200398117), Nuessle (20150321060), and McInerney (20090088266), further in view of Akerman (706873) and Cannata (20090318247).
Regarding claim 4, the modified Ackerman (Figures 1-2) teaches a putting training method comprising: providing the putting training device of claim 1.
The modified Ackerman does not teach inserting the flagstick into the putting cup ferrule; extending the tape measure from the flagstick; identifying a circle at a predetermined practice distance from the putting cup using the predetermined distance markings; rotating the tape measure 360 degrees around the flagstick to mark points along a circumference of the circle; placing at least one golf ball sequentially at the points marked, and striking the at least one golf ball toward the putting cup.
Burke (Figures 1-8) teaches inserting the flagstick into the putting cup ferrule (See fig. 7-8; Para. 0075).
Nuessle (Figures 1-5) teaches extending the tape measure from the flagstick (See fig. 4).
Akerman (Figures 1-2) teaches identifying a circle at a predetermined practice distance from the putting cup (G) (Page 1, Lines 45-55); marking points (Fig. 1, Part No. C) along a circumference of the circle (Page 1, Lines 45-55); placing at least one a golf ball (Fig. 1, Part No. E) sequentially at the points marked (Page 1, Lines 45-55), and striking the at least one golf ball toward the putting cup (Page 1, Lines 45-55).
Cannata (Figures 1-) teaches rotating a tape measure (Fig. 1-6, Part No. 8) having distance markings 360 degrees (Para. 0049, 0053) around the flagstick to mark locations of balls to be measured along a circumference of a circle.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with inserting the flagstick into the putting cup ferrule as taught by Burke as a means of providing a golf flagstick with a means to secure the flagstick in a golf hole (Burke: Para. 0025), to provide the modified Ackerman with a tape measure with predetermined distance markings rotatably mounted on the flagstick as taught by Nuessle as a means of aiding a player with determining a measurement of distance from a target flag to determine scoring (Nuessle: Para. 0030, 0036), to provide the modified Ackerman with identifying a circle at a predetermined practice distance from the putting cup as taught by Akerman as a means of placing a ball at different points along a circle in rotation and striking the ball towards a golf cup (Akerman: Page 1, Lines 45-55)), and to provide Ackerman with rotating a tape measure 360 degrees around the flagstick as taught by Cannata as a means of providing a flagstick with a tape measure that is rotated to mark locations of balls to be measured along a circumference of a circle (Cannata: Para. 0049, 0053).
Regarding claim 9, the modified Ackerman (Figures 1-2) teaches a putting training method comprising: providing the putting training device of claim 1.
The modified Ackerman does not teach practicing putts that break from right to left and from left to right by rotating the tape measure around the flagstick.
Cannata (Figures 1-) teaches practicing putts (Para. 0002) that break from right to left and from left to right by rotating the tape measure (Fig. 1-6, Part No. 8) around the flagstick (Para. 0049).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman practicing putts that break from right to left and from left to right by rotating the tape measure around the flagstick as taught by Cannata as a means of providing a flagstick with a tape measure that is rotated to mark locations of balls to be measured along a circumference of a circle (Cannata: Para. 0049, 0053).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ackerman in view of Burke, Nuessle, and McInerney, Akerman, and Cannata, further in view of Erodes (6196929).
Regarding claim 5, the modified the modified Ackerman (Figures 1-2) teaches a putting training method comprising: providing the putting training device of claim 1.
The modified Ackerman does not teach identifying a second, smaller circle at a second predetermined practice distance; and modulating a striking force to urge the golf ball to enter the second, smaller circle without reaching the putting cup.
Erodes (Figures 1-13) teaches identifying a second, smaller circle (Fig. 1, Part No. 26) at a second predetermined practice distance; and modulating a striking force to urge the golf ball (31) to enter the second, smaller circle (26) (Col. 3, Lines 10-36) without reaching the putting cup (23).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with modulating a striking force to urge the golf ball to enter the second, smaller circle without reaching the putting cup as taught by Erodes as a means of providing a golf game in which scores are achieved based on which one of a plurality of circles a ball is putted into (Erodes: Col. 3, Lines 29-36).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ackerman in view of Burke and Nuessle, McInerney, and Hilger, further in view of Barlow (20040235580).
Regarding claim 6, the modified Ackerman (Figures 1-2) teaches a storage cup (4) (Col. 3, Lines 32-36) mounted on a second end of the flagstick opposite the first end.
The modified Ackerman does not teach the circular base has a flat interior surface and the sidewall extends normal therefrom.
Barlow (Figures 1-19) teaches the circular base (Fig. 5-6, Part No. 32) (Para. 0027) has a flat interior and the sidewall (30) extends normal therefrom.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with the circular base has a flat interior surface as taught by Barlow as a means of providing a golf cup having an annular wall that extends perpendicular to a base of the golf cup (Barlow: Para. 0027; See fig. 6).
Regarding claim 7, the modified Ackerman (Figures 1-2) teaches a storage cup (4) (Col. 3, Lines 32-36) mounted on a second end of the flagstick opposite the first end.
The modified Ackerman does not teach the flat interior surface has bores formed therethrough.
Barlow (Figures 1-19) teaches the flat interior surface (Fig. 5-6, Part No. 32) (Para. 0027) has bores (34) formed therethrough (Para. 0027).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with the flat interior surface has bores formed therethrough as taught by Barlow as a means of providing a golf cup base with drainage holes (Barlow: Para. 0027).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ackerman in view of Burke, Nuessle, McInerney, Akerman, Cannata, and Erodes, further in view of Ewing (6774932).
Regarding claim 10, the modified Ackerman (Figures 1-2) teaches a putting training method comprising: providing the putting training device of claim 1.
The modified Ackerman does not teach modulating the striking force comprises practicing lag putting from distances greater than 5 feet to urge the golf ball within 1-5 feet of the putting cup.
Ewing teaches modulating the striking force comprises practicing lag putting from distances greater than 5 feet to urge the golf ball within 1-5 feet of the putting cup (Col. 1, Lines 35-44).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with lag putting from distances greater than 5 feet to urge the golf ball within 1-5 feet of the putting cup as taught by Ewing as a means of putting a golf ball to come to rest no further than 18 inches from a cup (Ewing: Col. 1, Lines 35-44).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ackerman in view of Burke, Nuessle, and McInerney, further in view of Barlow, Hilger, and Johnson.
Regarding claim 14, the modified Ackerman (Figures 1-2) teaches the storage cup comprises a circular base and a sidewall extending from the circular base (See fig. 1-2).
The modified Ackerman does not teach a sidewall extending normal from the circular base, the sidewall having vertical slots extending therethrough; wherein the circular base has a flat interior surface with bores extending therethrough; and wherein the first tape end comprises a grommet surrounding the flagstick.
Barlow (Figures 1-19) teaches a sidewall (30) extending normal from the circular base (Fig. 5-6, Part No. 32) (Para. 0027), wherein the circular base has a flat interior surface with bores (34) extending therethrough.
Hilger (Figures 1-2) teaches the sidewall having vertical slots (Fig. 1A, Part No. 28A, 28B, 26) extending therethrough (Para. 0015).
Johnson teaches a first end of a measuring member comprises a grommet (Col. 3, Lines 32-36) surrounding a pole/rod.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Ackerman with the circular base has a flat interior surface as taught by Barlow as a means of providing a golf cup having an annular wall that extends perpendicular to a base of the golf cup (Barlow: Para. 0027; See fig. 6), to provide the modified Ackerman with the sidewall having vertical slots as taught by Hilger as a means of providing drainage slots in a wall of a golf storage cup device (Hilger: Para. 0015), and to provide the modified Ackerman with a grommet as taught by Johnson as a means of rotatably attaching a measuring member to a pole/rod in a game (Johnson: Col. 3, Lines 32-36).
Response to Arguments
Applicant's arguments (to claims 1-3, 6-8, 11-13) filed 08/25/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art of record does not teach the recitation in claim 1 of “a storage cup mounted on a second end of the flagstick opposite the first end, wherein the tape measure nests within said storage cup in a rolled storage position, with the first tape end extending through the storage cup”, this is not found persuasive because Claim 1 is rejected under 35 USC 103 over Ackerman (5480142) in view of Burke (20200398117), Nuessle (20150321060), and McInerney (20090088266). Ackerman teaches a storage cup (4) (Col. 3, Lines 32-36) mounted on a second end of the flagstick opposite the first end. McInerney (Figure 8) teaches a measuring line (Fig. 8, Part No. 30) (Para. 0062, 0059) that nests within said storage cup (200) (Para. 0039) in a rolled storage position, with the first measuring line end extending through the storage cup (Para. 0046), and wherein the measuring line is fully capable of extending normal a shaft (Fig. 8, Part No. 100) (Para. 0062) in an unrolled use position. Applicant argues that the prior art of McInerney does not teach the claimed “storage cup”, this not found persuasive because McInerney (Para. 0042) discloses: “FIG. 3 illustrates an exploded view of rotating member 200. In the illustration shown in FIG. 3, the housing that encloses retractable line 30 is comprised of first housing component 240 and second housing component 260. Both first housing component 240 and second housing component 260 are cup-shaped” so that McInerney teaches the claimed “storage cup”. It is noted that the combination of references teaches the claimed invention under 35 USC 103. Applicant argues that the cited references are structurally incompatible, this is not found persuasive because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). It is noted that applicant is arguing the references individually. In response to applicant's arguments against the references individually, 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).
Applicant argues that the combination of Ackerman and McInerney would render the prior art of Ackerman unsatisfactory for its intended purpose, this is not found persuasive because test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the prior art of Ackerman and McInerney are directed to golf practice/training devices. Ackerman teaches a flagstick mounted within a hole for golf practice/training. McInerney teaches mounting a device in a hole for golf practice/training. McInerney teaches adding a measuring line (Fig. 8, Part No. 30) (Para. 0062, 0059) that nests within a storage cup (200) (Para. 0039) in a rolled storage position to a device mounted in a golf hole.
Applicant argues that the combination of cited prior art references is based in hindsight reasoning, this is not found persuasive because it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that the prior art of Nuessle does not teach the recitation in claim 4 of “the first tape end is operative to rotate 360° around the flagstick”, this is not found persuasive because the prior art of Nuessle is fully capable of performing the claim recitation of “operative to rotate 360° around the flagstick”. As shown in figure 4 of Nuessle, the first tape end is secured to a flagstick (where the flagstick has a round/cylindrical exterior) so that the first end is fully capable of being rotated around the flagstick.
Applicant argues that the rejection of claims 11-13 fails because neither the cited references do not establish the claimed parameters as result-effective variables, this is not found persuasive because applicant’s specification discloses “the tape measure may be about 3/4 inches wide and may measure out about 10 feet from the edge of the hole. The grommet has an inner diameter at least as large as the diameter of the flagstick; for example, the grommet may be about 7/16” wide. The flagstick may be about 8 inches tall” so that the claimed dimensions are not exact and applicant’s disclosure does not disclose that the claimed dimensions are critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Changing the claimed dimensions would be obvious to one of ordinary skill in the art as a matter of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). Applicant argues that the cited prior art in the rejection of claims 11-13 does not teach the claimed structure, this is not found persuasive because (to claim 11) Nuessle teaches the claimed tape measure, (to claim 12) Johnson teaches the claimed grommet, and (to claim 13) Ackerman teaches the claimed flagstick.
Applicant argues that the prior art of Hilger does not teach the recitation in claim 2 of “the storage cup comprises a circular base and a sidewall, said sidewall having vertical slots extending therethrough configured to accommodate the tape measure” because the slots of Hilger do not suggest tape measure passage, this is not found persuasive because the claim recitation of “vertical slots extending therethrough configured to accommodate the tape measure” is directed to the intended use of the claimed apparatus and does not structurally distinguish the claimed apparatus from the combination of prior art as the combination of prior art is fully capable of being used to “accommodate the tape measure” as claimed. 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 prior art of Barlow does not teach the recitation in claim 7 of “the flat interior surface has bores formed therethrough”, this is not found persuasive because Barlow (Figures 1-19) teaches the flat interior surface (Fig. 5-6, Part No. 32) (Para. 0027) has bores (34) formed therethrough (Para. 0027). Applicant argues that the rejection of claim 7 does not explain how the structure disclosed by Barlow translates to the claimed “storage cup mounted on a second end of the flagstick”, this is not found persuasive because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). It would have been obvious to provide the modified Ackerman with the flat interior surface has bores formed therethrough as taught by Barlow as a means of providing a golf cup base with drainage holes (Barlow: Para. 0027).
Applicant argues that the prior art of Cannata does not teach the recitation in claim 4 of “rotating the tape measure 360 degrees around the flagstick to mark points along a circumference of the circle”, this is not found persuasive because Cannata (Figures 1-) teaches rotating a tape measure (Fig. 1-6, Part No. 8) having distance markings 360 degrees (Para. 0049, 0053) around the flagstick to mark locations of balls to be measured along a circumference of a circle. Applicant argues that Cannata does not teach rotating the tap measure’s first end around a central flagstick axis, this is not found persuasive because Cannata (Para. 0049) discloses “Rotate the device 100 and/or the flag pin 52 so that the tape 8 extends in the direction of the ball 54 that is to be measured”. It is noted that Cannata teaches rotating device 100 (where device 100 includes slot 102 shown in fig. 3), or rotating the flagstick, so that the device is rotatable about the flagstick as claimed.
Applicant argues that the prior art of Ewing does not teach the recitation in claim 10 of “modulating the striking force comprises practicing lag putting from distances greater than 5 feet to urge the golf ball within 1-5 feet of the putting cup”, this is not found persuasive because Ewing teaches modulating the striking force comprises practicing lag putting from distances greater than 5 feet to urge the golf ball within 1-5 feet of the putting cup (Col. 1, Lines 35-44). It is noted that Ewing teaches a golf game in which a user urges a ball within 1-5 of the putting cup as claimed.
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
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711