DETAILED ACTION
Claim Objections
1. Claim 3 is objected to because of the following informalities: “aligns with center of the putter head” should be amended to “aligns with the center of the putter head”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: “along length” should be amended to “along a length”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “the length” should be amended to “a[[the]] length”. Appropriate correction is required. Examiner does not consider this to rise to a 112(b) issue as the scope is not indefinite.
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 1-14 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. Claims 1 and 8 recite the limitation "the center of the putter head". There is insufficient antecedent basis for this limitation in the claim. Assuming arguendo, that it is inherent that a putter head has a center, it is unclear how/which center of the putter is being referenced. Applicant should positively recite an orientation of a center of the putter. For example, “a[[the]] center plane of the putter head extending in the front to back direction”. For examining purposes, the claim language will be construed in accordance with this suggested language as this appears to comport with the intended scope in view of the drawings and detailed description. Claims 2-7 and 9-14 are rejected based on their respective dependencies to 1 and 8.
Claim Rejections - 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Recitation in claim 4 of “wherein the leading edge is disposed perpendicular to the putting face” does not limit the scope of claim 3, which requires the leading edge to “extend perpendicular to the putting face”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
5. Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Bernhardt (US Pat. No. 4,265,451) in view of Sasse (US Pat. No. 4,988,107).
With respect to claims 1-14, Bernhardt teaches a plumber's neck putter, comprising: a putter head 22 having a heel end 32; a toe end 33 opposite to the heel end 32; a putting face 29 disposed on the putter head 22; a top surface 31 disposed on the putter head; and a hosel 23 for attaching the putter head 22 to a shaft 21, the hosel comprising: an elongated first portion 44 extending upward from the top surface 31 of the putter head 22; a second portion 46 extending from the first portion 44 in forward direction relative to the putting face 29, the second portion 46 further comprises a leading edge (parallel to groove 49) aligning with a center 34 of the putter head 22, the second portion 46 also having a width forming a horizontal offset extending toward the heel end 32 of the putter head 22 (Fig.’s 1-5; column 5, lines 3-24; column 6, lines 26-44); wherein the leading edge aligns with center 34 of the putter head and extends perpendicular to the putting face 29 and is configured to coincide with an alignment line on a golf ball (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 leading edge is capable of coinciding with an alignment line on a golf ball); wherein the second portion 46 comprises a wide section that extends at substantially the same width along length of the second portion 46 (Fig.’s 5); wherein the hosel 23 is attached to the top surface 31 of the putter head 22 at the center 34 of the putter head (Fig.’s 1-5; column 7, line 45).
Bernhardt teaches an intermediate connecting structure 45 that extends from the second portion 46 at an angle toward the heel end 32 and connects the hosel to the shaft, but does not teach wherein this component 45 is a socket with an opening. However, analogous art reference Sasse teaches that it is known in the art for a hosel to comprise a socket 39 with an opening that extends at an angle toward a heel end and connects the hosel to a shaft 13 (Fig.’s 1-2; column 3, lines 18-20). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to substitute a socket for the intermediate connecting structure 45. The rationale to combine is to facilitate connection between the second portion and a shaft. Moreover, the socket will allow for multiple shafts to be used, which beneficially permits customization for the golfer. The proposed modification has a reasonable expectation of success as the functionality of Bernhardt is not compromised, and both elements 45 of Bernhardt and socket 39 of Sasse are heel-wardly oriented from an offsetting second portion.
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.
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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