DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 4/29/26. Claim 5 is cancelled; claims 1-4 and 6-7 are amended and pending.
Claim Rejections - 35 USC § 102
2. 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.
3. Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Falco (US Pat. No. 5,411,265).
With respect to claims 1-4, Falco teaches a golf chipping game system comprising: a chipping club (Fig. 2): a plurality of chipping balls (“golf balls” – column 3, line 43): a portable chipping receptacle and ball carrier 10; the portable chipping receptacle and ball carrier 10 having: an outer peripheral edge that allows the chipping receptacle and ball carrier to roll on the outer peripheral edge (See In re Schreiber below) and having a center inner diameter (i.e. the opening formed at the bottom of the carrier 10, opposite net opening) devoid of protrusions that allows one or more chipping balls among the plurality of chipping balls to be chipped into the center inner diameter of the portable chipping receptacle and ball carrier 10 using the chipping club, wherein the outer peripheral edge is configured to have an outer surface that is contoured or textured such that the portable chipping receptacle and ball carrier has an induced wobble as it rolls on a playing surface that forces the portable chipping receptacle and ball carrier to roll a limited distance before falling on one of its sides onto the playing surface (See In re Schreiber below); wherein the plurality of chipping balls are removed from the portable chipping receptacle and ball carrier by a player prior to the portable chipping receptacle and ball carrier being rolled on the playing surface: wherein the chipping club is used by the player to hit a chipping ball among the plurality of chipping balls toward the portable chipping receptacle and ball carrier (See In re Schreiber below); 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 (Fig. 2; See also In re Schreiber); wherein the plurality of chipping balls are golf balls (“golf balls” – column 3, line 43); wherein the plurality of chipping balls are of a size of a golf ball Id.
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 chipping receptacle and ball carrier 10, golf balls and chipping club are capable of being used in a manner as claimed. Balls can be positioned within the ball carrier 10. The playing surface which the carrier is rolled in not required to be flat. The contour of the ball carrier 10 will induce a wobble when rolled on a non-flat, uneven sinusoidal surface.
Falco further teaches an inner concave surface (Fig. 3) that is formed to conformally retain the plurality of chipping balls securely for storage, requiring force to be exerted to remove a chipping ball among the plurality of chipping balls from the portable chipping receptacle and ball carrier via the center inner diameter. See In re Schreiber. Here, the inner concave surface is structured to propel/guide the balls towards the net. When the balls are within the net, they will stay there until an external force removed them, thus presenting structure that reads on the intended use / functional language.
With respect to claim 7, Falco teaches wherein the portable chipping receptacle and ball carrier 10 further comprises: a left side; a right side; wherein the left side and the right side are curved (Fig. 3 showing a curved peripheral portion formed at the left and right sides).
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 6 is rejected under 35 U.S.C. 103 as being unpatentable over Falco (US Pat. No. 5,411,265)
With respect to claim 6, Falco teaches wherein the portable chipping receptacle and ball carrier further comprises: a left side (i.e. bottom portion shown in Fig. 3); a right side (i.e. top portion shown in Fig. 3); wherein the left side is flat – Fig. 3. The right-side portion is shown to have a slight curve, as opposed to being flat as claimed. However, per MPEP 2144.04, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) when the only difference between the prior art and claimed invention is a particular arrangement that would not modify the operation of the device, such differences were held unpatentable. According to applicant’s specification, the shape of the right side is expressly permitted to be substantially flat, or slightly curved (paragraph [0020]) so that the carrier can lay on its side substantially flat. Here, the right side of the carrier 10 of Falco is slightly curved and will lay on its side substantially flight to permit golfers to hit into the center inner diameter. As such, the differences between the right side being slightly curved as taught by Falco and flat as claimed is considered obvious in view of In re Japikse as both arrangements allow the carrier to lay substantially flat on the playing surface.
Response to Arguments
6. Applicant’s arguments with respect to 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
7. 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.
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.
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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
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