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 .
Applicant’s response to the office action of 10/4/2024 is acknowledged on 12/2/2024.
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 6-9 are rejected under 35 U.S.C. 101 because the claim directed to an abstract idea without significantly more. The claims recites a method steps for a golfer to observe key elements of a golf swing, which are abstract idea because they relate to mental processes and observation. The steps of providing a ground surface, a light source, and a supplemental surface merely describe generic physical elements without reciting any specific technological improvements or inventive concept beyond a conventional setup for viewing a shadow or projection. The claim is directed to a method of instruction, which falls within the category of an abstract idea, specifically a method of organizing human activity and mental processes (e.g., observation and instruction). Courts have consistently found that instructional methods and mental steps, even when involving physical components, are abstract ideas. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011); Digitech Image Techs., LLC v. Elecs. For Imaging. Inc., 758 F.3d 1344 (Fed. Cir. 2014).
Under Step 2A, Prong One of the USPTO’s subject matter eligibility analysis, the claim recites an abstract idea: instructing a golfer using visual observation, which is a mental process involving human observation and guidance. Under Step 2A, Prong Two, the claim does not recite additional elements that integrate the abstract idea into a practical application. The steps of “providing a ground surface”, “placing a source of light”, “positioning the golfer”, and “intercepting the maneuvers” merely describe generic physical actions and environment settings without any technological improvement or transformation of matter. The light projection and surface interception described do not rise to a meaningful application beyond implementing the abstract idea.
Under Step 2B, the claim fails to add an “inventive concept” that transforms the nature of the claim into a patent-eligible application. The use of conventional elements (light source , surface, golfer positioning) in their ordinary capacity adds only well-understood, routine, and conventional activity to the abstract idea. Therefore, claims 6-9 are directed to a judicial exception (an abstract idea) without significantly more, and are not patent eligible under 35 USC § 101.
Claim Rejections - 35 USC § 112
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 6-9 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 claims lack clarity and fail to define the invention with sufficient precision for a person of ordinary skill in the art to understand its scope, for the following reasons:
The expression “providing a ground surface”, this step is vague. It is unclear whether this refers to preparing, selecting, or designating an existing surface, or whether the surface must have particular characteristics. Without further structural or functional limitations, the scope of this step is indefinite. (For examining purpose, the ground on which the golfer would stand on is considered as the existing surface). Regarding the expression, “placing a source light opposite a supplemental surface”, the spatial relationship between the “source light” and the “supplemental surface” is unclear. The term “opposite” is ambiguous: does it mean directly facing, across from, or merely on a different side? This renders the configuration indefinite. (For purpose of examination, any surface that is positioned to the front of the light is considered as being opposite). The expression “projecting the maneuvers forward with the source light”, the term “projecting the maneuvers” is unclear. A maneuver is an action or motion performed by the golfer. It is not evident how a light source would “project” a maneuver. If the intent is to project a shadow or reflection, that needs to be clearly stated. As written, this phrase lacks clarity and makes the scope of the method indefinite. (For purpose of examination, the term is considered as projecting a shadow or reflection). Regarding the expression “intercepting the maneuvers with the supplemental surface”, again, “intercepting the maneuvers” is unclear. A maneuver is not a tangible object that can be intercepted. If this means capturing the projection or shadow of the maneuver, the claim must be amended to say so explicitly. Otherwise. It is indefinite. (For purpose of examination, the term is considered as projecting a shadow or reflection). Regarding claim 7, the expressions “horizontal presence” and “vertical presence” are vague terms.
Due to the above discussed ambiguities, a person of ordinary skill in the art would not be able to ascertain the metes and bounds of the claim with reasonable certainty. Therefore, the claims are indefinite under 35 USC § 112.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Woods (US Patent No. 5,919,099) in view of Florian (US Patent No. 7,153,217).
Woods discloses a method enabling golfers to observe their maneuvers simultaneously while preforming said maneuvers (see embodiment shown in Figures 2-6), comprising the steps of: (a) providing a ground surface for the golfer to perform said maneuvers (112); (b) placing a source of light (17) opposite a supplemental surface (combination of 15 and 16 as shown in Figure 2); (c) positioning the golfer (21) between said source of light (17) and said supplemental surface (combination of 15 and 16); (e) projecting the maneuvers forward with the source of light (21s); and (f) intercepting the maneuvers with the supplemental surface (see Figure 3). Woods discloses all the recited features and method steps as recited but does not explicitly disclose the method steps of instructing the golfer to perform the maneuvers. However, this missing concept is not new and is disclosed by the Florian reference that discloses a golf swing training device that also disclose instructions (see column 1 lines 40-42). It would have been obvious to one of ordinary skill in the art before the effective filing to provide the Woods reference with instructions to the golfer in order to allow the golfer to use the device properly and effectively. During normal use and operation of the Woods in view of Florian reference, the method steps as recited would obviously be performed.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 6 above, and further in view of Woods that shows the embodiment as shown in Figure 1A of the reference.
Wood discloses one embodiment showing shadow of a swing on a horizontal surface (for example, see Figure 3) as discussed in the rejection of claim 6 above. The reference discloses a second embodiment that discloses a mechanical swing device’s maneuvers being shown on a vertical wall (see Figure 1A). It would have been obvious to one of ordinary skill in the art to substitute the mechanical swing device with a golfer that is practicing a golf swing in order to “emulate an ideal golf swing and is constructed to consistently swing along an ideal swing plane to achieve the maximum benefit at club head to ball impact, e.g., distance, consistency and accuracy” as taught by the embodiment of Figure 1A of Woods.
In addition, it should be noted the use of a vertical surface to project image of a golfer performing a golf swing as not being a new concept since this is taught by the Florian reference (see Figures 1-3). Therefore, it would have been obvious to one of ordinary skill in the art to modify the embodiment 1A of Woods by substituting the mechanical device with the golfer so that the golfer could practice “the proper technique of swinging a golf club to hit a golf ball and accelerate the golf ball along an intended path” as disclosed in the abstract of the Florian reference.
Response to Arguments
Applicant’s arguments of 2/23/2025 and 2/26/2025 are acknowledged. The arguments with respect to claims 6-9 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.
Regarding the “product-by-process” argument of 2/26/2025, that the claims are product by process claims since the recited claims are just method claims. The following is the reason: a product-by-process claim is used to define a product in terms of the process by which it is made. The focus is on the end product, even though it is described by the steps used to create it. For example: “a cheese made by steps of … (process steps). Your claim describes a series of steps to be performed (for example, providing, placing, positioning, instructing, projecting, intercepting). The subject matter is ”method of instruction” – it is clearly focused on the actions involved rather than defining a product made by process. Therefore, your claims are method or process claims, not product-by-process claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melba N Bumgarner can be reached at (571) 272-4709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NINI F LEGESSE/ Primary Examiner, Art Unit 3711