DETAILED ACTION
1. This action is made non-final in response to applicant’s Request for Continued Examination filed 10/9/25. Claim 5 is cancelled; claims 1-4 are amended; claims 1-4, 6-7 are pending.
Claim Rejections - 35 USC § 112
2. 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 3-4 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 each of claims 3 and 4 of “regulation” golf ball(s) comprises a scope that is not ascertainable to a person ordinary skill in the art, and thus indefinite. The claims and specification fail to specify what regulating body is to be used for setting forth the ball regulations. Moreover, golf regulating bodies are known to update, change and amend the composition and size of a “regulation” golf ball. A regulation ball today may not have been a regulation ball in the past, and may not be a regulation ball in the future. Applicant should positively recite the structure of the ball. Balls that are generally sized to be hit by a club, and used in a manner consistent with golfing (i.e. handheld, puttable, hittable, chippable) will be considered met.
Claim 6 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. The term “substantially flat” in claim 6 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. At paragraph [0020], the specification appears to provide context that a side is substantially flat when the carrier can lay “substantially flat” on its side on a surface upon coming to rest after being rolled. However, this is clearly a circular definition that uses the same indefinite term and fails to adequately provide a standard for ascertaining the requisite degree. For examining purposes, the terms will be broadly construed in view of the specification as a whole.
Claim 7 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. The term “slightly curved” in claim 7 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. At paragraph [0020], the specification appears to provide context that a side is slightly curved when the carrier can lay “substantially flat” on its side on a surface upon coming to rest after being rolled. However, this is clearly a circular definition that uses an indefinite term and fails to adequately provide a standard for ascertaining the requisite degree. For examining purposes, the terms will be broadly construed in view of the specification as a whole.
Claim Rejections - 35 USC § 102
3. 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
4. Claims 1-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Heir (US Pat. No. 5,924,908).
With respect to claims 1-4 and 6-7, each of the embodiments identified in Fig.’s 1 and 6 of O’Heir teach a chipping receptacle and ball carrier 10/60, comprising: a circular housing 11/61; the circular housing having an outer peripheral edge that allows the chipping receptacle and ball carrier 10/60 to roll on the outer peripheral edge and having a center inner diameter (defined by opening 12 – Fig. 1; See Fig.’s 6a-6d) devoid of protrusions that allows one or more chipping balls to be chipped into the center inner diameter of the circular housing using a chipping club, wherein the outer peripheral edge is configured to have an outer surface that is contoured or textured such that the chipping receptacle and ball carrier has an induced wobble as it rolls on a surface that forces the chipping receptacle and ball carrier to roll a limited distance before falling on one of its sides onto the surface (See In re Schreiber below); and an inner concave surface that is formed to conformally retain a plurality of chipping balls securely (Fig. 1d; Fig.’s 6a, 6d), requiring force to be exerted to remove a chipping ball among the plurality of chipping balls from the circular housing via the center inner diameter, wherein the chipping club has a face on a club head that allows the chipping club to hit a chipping ball at an angle thereby sending the chipping ball airborne, wherein the plurality of chipping balls are regulation golf balls, wherein the plurality of chipping balls are of a size of a regulation golf ball, wherein the circular housing further comprises: a left side; a right side; wherein the left side and the right side are substantially flat and slightly curved (Fig.’s 1a, 1b, 1d; Fig. 6d).
Per MPEP 2114 - 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. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the structure of the ball carrier is capable of being used in a manner as claimed. The inner curvature is contoured very similar to a ball as shown in Fig.’s 1d and 6d. Projecting rim edges 13 extend inward with a curvature, which will hold the ball at rest and prevent it from rolling into the passage hole without a force being applied thereto. See column 3, lines 40-57). Similarly, a ball as shown in Fig. 6d will sit within its contoured annular rim 63 until a force is applied. Examiner notes the ball and club are not positively recited. The surface which the carrier is rolled in not required to be flat. And there is no requirement that the plurality of balls fit within the carrier simultaneously. The symmetrical contour of the ball carrier 10 will induce a wobble when rolled on a non-flat, uneven sinusoidal surface. The non-symmetrical contour of ball carrier 60 will induce a wobble when rolled on a surface.
Response to Arguments
5. Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711