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
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that 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, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 1-4, 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Xiaomin (US 10458759 B2) in view of Ross (US 20140364244 A1).
Regarding claim 1, Xiaomin teaches 1. (Currently Amended) A target device for improving a user's aim, the target device comprising: See Fig. 1, a base; See 2:51+, (103), a magnet; See 2:60+, (113), a rotatable target rod having a reset end member; See 2:58+ target holder 104 drawn to the rotatable target rod, and the end of target holder 104 opposite the target, characterized by leaf spring 108 and magnet 113, drawn to the reset end member, wherein the target device has a first state wherein the reset end member is releasably held in place by the magnet; and See 2:60+ magnet 113 to engage with magnet 114 on the base 103.
Ross does teach what the primary reference is silent on including wherein the base in cross section is wedge shaped. See Fig. 4, [0006+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin with Ross to elevate the top surface above the playing surface. The extra force required to get the ball up the ramp would naturally have the putter input more power in the swing to allow the ball to role up the ramp. In real golf, it is best to aim for the ball to roll a little past the hole to increase the likelihood of sinking a putt as it reduces the likely hood of an under shot while not eliminating the opportunity to sink a putt if the ball speed is a little high. As such, when training with this wedge structure the player would learn to put a little extra power into the putting swing to get the ball up the wedge training the player to naturally apply power to have the ball roll a little past the cup if their aim was off.
Regarding claim 2, Xiaomin teaches 2. (Currently Amended) The target device of claim 1, wherein the base includes the magnet to releasably hold the reset end member in the first state. See 2:60+, (114)(103).
Regarding claim 3, Xiaomin teaches 3. (Original) The target device of claim 1, wherein the reset end member includes the magnet and the base includes at least a metallic portion to releasably hold the reset end member in the first state. See Fig. 4A-B, 2:60+, (113).
Regarding claim 4, Xiaomin teaches 4. (Original) The target device of claim 2, wherein the magnet is located in a channel of the base. See 2:60+, (113)(114)(103) The broadest reasonable interpretation of the magnet being located within a channel would include any recessing of the magnet into a surface. Any such recess would constitute a channel in the instant claim. Use of a recessed magnet to retain a rotatable piece of an assembly is well known in the art, and would be a prima facie obvious modification of Xiaomin in view of Ross.
Regarding claim 12, Xiaomin teaches 12. (Original) The target device of claim 1, wherein a target end of the rotatable target rod includes a removable target having a mounting portion for receiving the target end, the target end forming an acute internal angle measured from a top surface of the base toward the target end. See Fig. 4A-C, 1:36+ The broadest reasonable interpretation of a ‘target end’ on a ‘rotatable target rod’ includes any rod that can rotate, and has an end designated for a target to be mounted on. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) MPEP § 2144.05-I.
Regarding claim 13, Xiaomin teaches 13. (Original) The target device of claim 1, wherein rotating the reset end member rotates a target end of the rotatable target rod. See Fig. 4A-C The broadest reasonable interpretation of rotating a reset end member to rotate a target end is that the two are incorporated in such a way that they act as a joint body, wherein any motion of one corelates to motion of the other. In the instant case, downward motion of the end corresponding to magnet 113 causes the target end of target holder 104 to rise.
Claims 5-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Xiaomin (US 10458759 B2) in view of Ross and further in view of Cohn (US 2776137A).
Regarding claim 5, Cohn teaches 5. (Original) The target device of claim 2, wherein the reset end member extends in a reset direction parallel to a top surface of the base in the first state. See Fig 5, 3:13+, (42)(17).
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin in view of Ross with Cohn to fit the constraint of a ground level target in the intended use of putting. By incorporating a bend in the target holder, it could be mounted at a lower height without its rotation being prevented by the ground.
Regarding claim 6, Xiaomin teaches 6. (Currently Amended) The target device of claim 5, wherein the target device has a second state wherein the reset end member is detached from the magnet. See Fig. 4A, 2:60+, (113)(114)(104).
Regarding claim 7, Xiaomin teaches 7. (Currently Amended) The target device of claim 6, wherein in the second state the reset end member has rotated a first direction between five and ninety degrees relative to a first position of the reset end member in the first state. See Fig. 4A-C, (104)(113) In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) MPEP § 2144.05-I.
Regarding claim 8, Xiaomin teaches 8. (Original) The target device of claim 7, wherein the reset end member is rotatable between five and ninety degrees in a second direction that is opposite the first direction to return the target device to the first state. See Fig. 4A-C, (104)(113) In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) MPEP § 2144.05-I.
Regarding claim 9, Cohn teaches 9. (Currently Amended) The target device of claim 5, wherein in the first state, a target end of the rotatable target rod extends in an end direction transversely to the top surface. See Fig. 5, 3:13+, (41).
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin with Cohn to offset the target mounted on the target end transversely to the first plane, allowing rotation to either raise or lower the target.
Regarding claim 10, Cohn teaches 10. (Currently Amended) The target device of claim 7, wherein in the second state, the reset end member extends in a third direction transversely to, a top surface of the base, and a target end of the rotatable target rod extends in a fourth direction transversely to the third direction, the third and fourth direction being different directions. See Fig. 8, (42)(13)(41)(42).
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin with Cohn to conform the lever arms to a confined profile, limiting the displacement necessary for a lever to rotate when compared to a straight lever.
Regarding claim 14, Xiaomin teaches 14. (Currently Amended) The target device of claim 1, wherein the rotatable target rod includes a target end and a first member, the first member located between the target end and the reset end member; and See Fig. 4A-C. The broadest reasonable interpretation of a rod and member are essentially the same for the purpose of examination. A rod is defined as a thin straight bar, especially of wood or metal. A member, by its engineering definition, is a structural component that carries load, particularly through its longitudinal axis. As target holder 104 has a target end with an affixed target, and functions as a member for transferring load from target collisions and retaining magnets, it satisfies the broadest reasonable interpretation of the claim limitation. Under broadest reasonable interpretation target holder 104 still operates as the structural member between the reset end and target end.
Cohn does teach what the primary reference is silent on including wherein the first member is sandwiched between the base and a top surface covering the base. See Fig. 1, 5; (41)(42)(11)(25) The limitation “sandwiched” is interpreted to be an indistinct limiter of between. The broadest reasonable interpretation of the limitation is then that the first member, namely lever arms 41, 42 are located at least in part between the base (alley 11) and a top surface (plate 25).
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin with Cohn to keep the moving parts of their assembly located within its confines and limit movement of the rotatable target rod to desired constraints.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Xiaomin (US 10458759 B2) in view of Drew (US 5578364 A) and Ross (US 20140364244 A1).
Regarding claim 11, Drew teaches 11. (Original) The target device of claim 1, wherein the base includes a top surface that is a top plate that is releasably secured to the base. See Fig. 2A, 1:34+, (52).
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin with Drew to give easy access to the inner mechanisms of the invention while providing a secure top surface that prevents debris entering or integral parts leaving the apparatus.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Xiaomin (US 10458759 B2) in view of Drew (US 5578364 A) and Plopper (US 5205559 A) and Ross (US 20140364244 A1).
Regarding claim 15, Drew teaches what the primary reference is silent on including wherein top magnets located in the base releasably secure the top plate to the base and See Fig. 2A; 1:34+; (52).
Plopper does teach what the primary reference is silent on including wherein the top plate extends radially beyond a front end of the base. See Fig. 2, 5-7.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin with Drew to give easy access to the inner mechanisms of the invention while providing a secure top surface that prevents debris entering or integral parts leaving the apparatus. It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin with Plopper to mask the diameter of the golf hole except for the target of the invention.
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Xiamin in view of Ross as applied to claims above, and further in view of Potterfield et al (20080174071). The modified Xiamin fails to show the target end with a 45 degree bend along its length. In a related target technology, Potterfield et al shows a target 370 with a bend to allow the target head to be oriented generally perpendicular to a projectile source (paragraph 33 and fig 3A). The actual angle of the bend is not disclosed but the examiner notes that it has been held that optimum ranges via experimentation are not a patentable advance unless there is some criticality to the specific range being claimed that is different in kind and not in magnitude. 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 time of the invention to further provide Xiamin in view of Ross with a target with a bend as taught by Potterfield et al to allow the target head to be oriented in a particular orientation for a projectile source (paragraph 33).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Xiaomin (US 10458759 B2) in view of Plopper (US 5205559 A) and Ross (US 20140364244 A1).
Regarding claim 21, Xiaomin teaches wherein a target end of the rotatable target rod includes a removable target, the rotatable target rod configured to rotate when the removable target is struck by a putted golf ball. See Fig. 1A-C Reference the "target" which may be considered replaceable or removable. As shown in the sequence of the figures, the rod rotates when it is struck by a projectile.
Plopper does teach what the primary reference is silent on including wherein the base is sized to be received at least partially into a regulation sized golf hole, and See Fig. 2, 5-7; (38)(42); 3:35+.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Xiaomin with Plopper to laterally position and retain the target over the golf hole.
Response to Arguments
The examiner has changed the grounds of rejection based on the applicants’ amendments to the claims. As such, some the previous arguments are considered moot in view of the new grounds of rejection applied herein.
With regards to the applicants’ arguments on claim 2, the claims only call for improving aim and not explicitly for a golfing target. Both the Xiaomin reference and the Ross references are directed towards proper aim for launching a projectile making them analogous. One could easily look to other arts with similar problems without hindsight. Additionally, the target is higher than the base and substituting a wedge shaped base wouldn’t make it unsatisfactory for its intended purpose. One can easily look at Fig. 1A-C of Xiaomin where if a wedge base where utilized the target could still be concealed. Any problems could be addressed through simple design choice and sound engineering principals based on the combination. Such does not render the primary reference unsatisfactory for its intended purpose.
With regards to the applicants’ arguments on claim 5, standard design choice or sound engineering principals would allow any problems with the target only being in a revealed position to be addressed. Such does not render the primary reference unsatisfactory for its intended purpose. The direction of the bend and the bend amount can be optimized by the user to avoid any limits to the concealed and non-concealed positions.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
• Shields US 12296242 B1 - Fig. 5 shows a bell shape above a golf hole with a flag target which extends radially past the hole.
• Boan US 201160236058 A1 - Fig. 4-5, [0011+], is a putting training device that goes into the hole and also has a flat overlapping top portion.
• Barrs US 5478071 A - Fig. 4 shows a golf putting aid that goes into the cup and overlaps on the surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE LEE KIM whose telephone number is (571)272-4463. The examiner can normally be reached Monday to Thursday 6am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
Prosecution Insights