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 .
Election/Restrictions
Applicant’s election of Group II, claims 7-12 in the reply filed on 07/21/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/21/2025.
Claim Objections
Claim 7 is objected to because of the following informalities: Claim 7 line 1 recites “gulf,” which, presumably, was intended to be “golf.” Appropriate correction is required.
Claim 7 is objected to because of the following informalities: Claim 7 line 6 recites “cup over disc,” which, presumably, was intended to be “cup cover disc.” Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Morelli, Sr. (US Patent No. 6,267,688 B1) in view of Channing et al. (US Patent No. 4,017,082).
In Reference to Claim 7
Morelli teaches (Claim 7) A method of temporarily covering a golf course greens cup during a greens spraying maintenance operation comprising in combination: A. providing a cup cover disc (item 60, fig’s 1-10) comprised of waterproof material (column 4 lines 17-19) of a diameter greater than that of said greens cup (diameter of top portion of item 60 greater than diameter of opening of item 20, fig’s 1-10), [] ; B. providing an extension pole having a hand held end and a cup over disc attachment end (item 100, fig. 7, handle end and attachment end at items 105), said extension pole having a pole [end] comprised of [] material attached to said pole attachment end (items 105, fig. 7); C. attaching said cup cover disc and said pole disc to one another [] by bringing said pole [] and said cup cover disc into close proximity (column 4 lines 48-53); D. Employing said extension pole, placing said cup cover disc over said greens cup (column 4 lines 48-53); and E. Separating said cup cover disc and said pole disc (fig’s 7 and 10);
Morelli fails to teach the magnetic connection and rotating the pole of claim 7.
Channing teaches (Claim 7) [a golf item] having a quantity of magnetic material attached thereto (fig’s 3 and 8, item 22); a pole disc of magnetic material (item 18, fig’s 2 and 18); attachment by magnetic force (column 2 lines 18-22); [separation] by [sliding] said extension pole towards the outer parameter of said cover disc (column 2 lines 26-29).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf accessory item handling system of Morelli with the feature of a magnetic connection as taught by the golf accessory item handling system of Channing for the purpose of allowing the item to be more easily placed and removed remotely, eliminating the need for a player to bend down as taught by Channing (column 1 lines 22-41), making the system easier to use, and more attractive to the users.
Further, the examiner notes that it has been held that selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Since multiple different types of connections between the pole and the disc would work equally well for the purpose of installing the disc, merely claiming a magnetic means as opposed to a mechanical means, or another known removable connection mechanism is an obvious matter of engineering design choice, and is not a patentable advance.
Further, regarding the step of rotating, the examiner notes that the steps of placing a disc with a pole magnet and removing the pole magnet while leaving the disc in place is taught in Channing (column 2 lines 22 - 29). Since this step may be accomplished by a variety of motions which would work equally well (sliding, rotating, pivoting, etc.) merely claiming a particular motion to accomplish the same result is an obvious matter of substituting one known motion for another to accomplish similar results and is, therefore, not a patentable distinction.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Morelli, Sr. in view of Channing et al. and further in view of Grant, Jr. (US PGPub. No. 2014/0128170 A1).
In Reference to Claim 8
The modified system of Morelli teaches all of claim 7 as discussed above.
Morelli further teaches (Claim 8) the diameter of said cup cover disc is at least [greater than the diameter of the hole] (fig’s 1, 7, and 10).
Morelli fails to teach the specific dimensions of claim 8.
Grant teaches (Claim 8) wherein [a] diameter of said greens cup is 4.25 inches (paragraph 0020; also note this is a standard golf cup diameter and well known).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf hole and cover system of Morelli with the feature of a standard greens cup diameter and a cover diameter of a specific dimension larger than the greens cup hole simply as a matter of engineering design choice, since, it has been held that "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). Since Morelli teaches a golf hole cup cover that is a larger diameter than the golf hole cup (fig’s 1, 7, and 10), for the purpose of covering the cup completely, and, since Grant teaches that a greens cup is 4.25 inches, merely claiming any dimension slightly larger than 4.25 inches that would provide the purpose of covering the 4.25 inch hole is an obvious matter of engineering design choice, and is not a patentable advance. Any range of diameters that are large enough to cover the hole reliably and that aren’t excessively large would work equally well for the purpose of covering the golf cup hole, therefore, claiming a specific dimension (4.75in) is not a patentable advance.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Morelli, Sr. in view of Channing et al. and further in view of Cope (US Patent No. 7,226,370 B1).
In Reference to Claims 9-12
The modified device of Morelli teaches all of claim 7 as discussed above.
Morelli (Claim 12) further including an additional disc mounted on one side of said cup cover disc of a diameter less than that of said cover disc and said cup to prevent lateral movement of said cover out of said cup (section on which items 70 are located, projecting from top disc portion of item 60, fig’s 1-10).
Morelli fails to teach the features of claims 7-11.
Cope teaches (Claim 9) wherein said magnetic material comprises a [] planer magnetic disc[] disposed one on [] side of [a] disc (item 40, fig. 2A);
(Claim 10) wherein [a] planer disc[] is affixed to [a] disc by an adhesive (column 9 line 65 – column 10 line 2, adhesive).
(Claim 11) wherein [a] planer disc[] is affixed to [a] disc by a mechanical assembly (column 9 line 65 – column 10 line 2, press fit).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the modified golf accessory item handling system of Morelli with the feature of a magnetic planar disc as well as attachment by mechanical means or adhesive as taught by the golf accessory item handling system of Cope for the purpose of using a known quick, easy, and reliable attachment means as taught by Cope (column 4 lines 1-10), making the device easier to use, and more attractive to the users.
Further, the examiner notes that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). And, that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since a magnetic connection is taught in Channing (as well as Cope), merely claiming multiple magnetic components or claiming the shape of the component, which would not produce any new or unexpected results, and would not produce any functionally significant distinction, are obvious matters of engineering design choice, and not patentable advances.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711