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 .
Response to Amendment
The amendment filed 06/25/2026 has been entered. Claims 1-20 are pending in the application.
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.
Claims 1-8, 10, 13, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Miyao (5792551) in view of Doubt (4765856).
Regarding claim 1, Miyao (Figures 5-7) teaches an apparatus for personalizing a grip of an implement, comprising: a base layer (57) having a first side and a second side; a middle layer (55) having a first side and a second side, wherein the first side of the middle layer is coupled to the second side of the base layer (See fig. 5-7), wherein the middle layer (55) comprises a moldable material (Col. 6, Lines 32-38) configured to have a compressed position that is contoured to a portion of one or more hands of a user in response to an applied pressure (Col. 6, Lines 24-31); and an outer layer (61) having a first side and a second side, where the first side of the outer layer is removably coupled to the second side of the middle layer (See fig. 5-7).
It is noted that the prior art of Miyao (Col. 32-38) discloses: “the flexible material Layer 55 is molded of a light and flexible material such as a cork, a foamed polyurethane resin or the like”.
Miyao does not teach the middle layer is configured to harden in the compressed position in the presence of air.
Doubt (Figures 1-4) teaches the middle layer is configured to harden in the compressed position in the presence of air (Col. 4, Lines 33-51).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Miyao with the middle layer is configured to harden in the compressed position in the presence of air as taught by Doubt as a means of squeezing a molding material until a desired depth of grip impression is formed and allowed to cure entirely by ambient air drying (Doubt: Col. 4, Lines 33-51).
Regarding claim 2, the modified Miyao (Figures 5-7) teaches an outer layer (61) having a first side and a second side (See fig. 5-7).
The modified Miyao does not teach a plurality of alignment indicators coupled to the outer layer and configured to correspond with a first position for a left hand and a right hand of the user.
It is noted that the claim recitation of “a plurality of alignment indicators coupled to the outer layer and configured to correspond with a first position for a left hand and a right hand of the user” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. In the instant case, the functional relationship between the markings and the grip is not new and unobvious because it known to have markings on a grip (See for example: Isgar (11040260), Davis (20180078836), Albers (20170014707), Pepe (20140038736), Boccieri (20120302364)). Therefore, the printed matter is not given patentable weight.
Regarding claim 3, the modified Miyao (Figures 5-7) teaches the first position corresponds to the personalized grip for the implement, the implement comprising a golf club (Col. 6, Lines 13-16), a baseball bat, a tennis racquet, or a hockey stick.
Regarding claim 4, Miyao (Figures 5-7) teaches the middle layer inherently has a thickness in an uncompressed position (See figures 5-7) (Col. 6, Lines 32-38).
It is noted that the claim recitation of “such that the apparatus is configured to prevent rotation to retain the portion of at least one hand of the user in the first position during a swing” is directed to the intended use of the claimed apparatus.
Miyao does not teach the middle layer has a thickness in an uncompressed position ranging from 4 mm to 11 mm.
It is noted that the claim recitation of “the middle layer has a thickness in an uncompressed position ranging from 4 mm to 11 mm” is directed to the dimensions (thickness) of the claimed apparatus. 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 (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Miyao with the middle layer has a thickness in an uncompressed position ranging from 4 mm to 11 mm as a means of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Regarding claim 5, the modified Miyao (Figures 5-7) teaches the middle layer forms a physical stop or an abutment in the compressed position (Col. 6, Lines 32-38)
It is noted that the prior art of Miyao is fully capable of performing the claim recitation of “that is configured to prevent a user's hands from rotation out of the first position” as the recited limitation is directed to the intended use of the claimed apparatus. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). 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 (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 6, the modified Miyao (Figures 5-7) teaches an outer layer (61) having a first side and a second side (See fig. 5-7).
The modified Miyao does not teach at least one alignment indicator coupled to the outer layer and configured to correspond with a second position for the portion of at least one hand of the user.
It is noted that the claim recitation of “at least one alignment indicator coupled to the outer layer and configured to correspond with a second position for the portion of at least one hand of the user” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. In the instant case, the functional relationship between the markings and the grip is not new and unobvious because it is known to have markings on a grip. Therefore, the printed matter is not given patentable weight.
It is noted that the prior art of Miyao is fully capable of performing the claim recitation of “configured to correspond with a second position for the portion of at least one hand of the use” as the recited limitation is directed to the intended use of the claimed apparatus. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). 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 (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 7, the modified Miyao (Figures 5-7) teaches the middle layer inherently has a thickness such that the portion of at least one hand of the user is retained in the first position during use (See figures 5-7) (Col. 6, Lines 32-38)..
The modified Miyao does not teach the middle layer has a thickness ranging from 7 mm to 15 mm.
It is noted that the claim recitation of “the middle layer has a thickness ranging from 7 mm to 15 mm” is directed to the dimensions (thickness) of the claimed apparatus. 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 (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Miyao with the middle layer has a thickness in an uncompressed position ranging from 4 mm to 11 mm as a means of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
It is noted that the prior art of Miyao is fully capable of performing the claim recitation of “such that the apparatus is configured to retain the portion of at least one hand of the user in the first position during use” as the recited limitation is directed to the intended use of the claimed apparatus. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). 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 (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 8, the modified Miyao (Figures 5-7) teaches the middle layer inherently has a thickness such that the portion of at least one hand of the user is retained in the first position during use (See figures 5-7) (Col. 6, Lines 32-38)..
The modified Miyao does not teach the middle layer has a thickness ranging from 4 mm to 21 mm to accommodate a growth or a protrusion on at least one of a palm, a finger, and a thumb of the user's hand in the compressed position.
It is noted that the claim recitation of “the middle layer has a thickness ranging from 4 mm to 21 mm” is directed to the dimensions (thickness) of the claimed apparatus. 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 (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Miyao with the middle layer has a thickness in an uncompressed position ranging from 4 mm to 11 mm as a means of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
It is noted that the prior art of Miyao is fully capable of performing the claim recitation of “such that the apparatus is configured to accommodate a growth or a protrusion on at least one of a palm, a finger, and a thumb of the user's hand in the compressed position” as the recited limitation is directed to the intended use of the claimed apparatus. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). 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 (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 10, the modified Miyao (Figures 5-7) teaches the base layer, the middle layer, and the outer layer are arranged in a rollable sheet (Col. 6, Lines 60-67) (See fig. 5-7).
Regarding claim 13, the modified Miyao (Figures 5-7) teaches the base layer, the middle layer, and the outer layer are arranged as a flexible sheath (Col. 6, Lines 60-67) (See fig. 5-7).
Regarding claim 15, the modified Miyao (Figures 5-7) teaches at least one of the middle layer and the base layer are configured for shock absorption (Col. 6, Lines 32-38).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Miyao in view of Doubt, further in view of Kwitek (20050187031).
Regarding claim 9, the modified Miyao (Figures 5-7) teaches the middle layer (55) comprises a moldable material (Col. 6, Lines 32-38).
The modified Miyao does not teach the moldable material of the middle layer comprises a viscoelastic liquid silicone or a rubber memory foam.
Kwitek teaches the moldable material (136) of the middle layer comprises a viscoelastic liquid silicone (Para. 0039) or a rubber memory foam.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Miyao with the moldable material of the middle layer comprises a viscoelastic liquid silicone as taught by Kwitek as a means of simple substitution of one known element (a grip middle layer formed of a moldable material) for another (a grip middle layer formed of a viscoelastic liquid silicone moldable material) to obtain predictable results (a grip having a middle layer formed from a moldable material) (See: KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)) (Kwitek: Para. 0039).
Claims 11-12 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Miyao in view of Doubt, further in view of Rios (20100183814).
Regarding claim 11, the modified Miyao (Figures 5-7) teaches a base layer (57) having a first side and a second side.
The modified Miyao does not teach a backing removably coupled to the first side of the base layer, wherein the first side of the base layer is coated with an adhesive.
Rios (Fig. 4) teaches a backing (Fig. 4 and 8, Part No. 7) (Para. 0092, 0112) removably coupled to the first side of the base layer (44), wherein the first side of the base layer is coated with an adhesive (Fig. 4 and 8, Part No. 6) (Para. 0092-0093, 0135).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Miyao with the first side of the base layer is coated with an adhesive as taught by Rios as a means of providing a backing layer of a sports grip with an adhesive layer that is used in an amount that provides sufficient adhesion between the grip and the substrate (Rios: Para. 0082, 0092-0093).
Regarding claim 12, the modified Miyao (Figures 5-7) teaches an outer layer (61) having a first side and a second side.
The modified Miyao does not teach at least one of the outer layer and the backing have a plurality of spaced apart markings configured to act as a sizing guide for the personalized grip.
It is noted that the claim recitation of “at least one of the outer layer and the backing have a plurality of spaced apart markings configured to act as a sizing guide for the personalized grip” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. In the instant case, the functional relationship between the markings and the grip is not new and unobvious because it is known to have markings on a grip. Therefore, the printed matter is not given patentable weight.
Regarding claim 16, the modified Miyao (Figures 5-7) teaches a method for personalizing a grip, the method comprising: applying the apparatus of claim 1 to the implement; applying a pressure to the middle layer (Col. 6, Lines 32-38), via at least the portion of the one or more hands of the user, and thereby causing the moldable material to have the compressed position that is contoured to the portion of the one or more hands of the user (Col. 6, Lines 32-38).
The modified Miyao does not teach removing the outer layer from the middle layer thereby exposing the middle layer to the air and causing the middle layer to harden in the compressed position.
Rios (Fig. 4) teaches removing the outer layer (Fig. 4 and 8, Part No. 7) (Para. 0092, 0112) from the middle layer thereby.
Doubt (Figures 1-4) teaches exposing the middle layer to the air and causing the middle layer to harden in the compressed position (Col. 4, Lines 33-51).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Miyao with removing the outer layer from the middle layer as taught by Rios as a means of providing a layer of a sports grip with a layer that protects the grip during storage and/or shipping (Rios: Rios: Para. 0082, 0092-0093), and to provide the modified Miyao with exposing the middle layer to the air and causing the middle layer to harden in the compressed position as taught by Doubt as a means of squeezing a molding material until a desired depth of grip impression is formed and allowed to cure entirely by ambient air drying (Doubt: Col. 4, Lines 33-51).
Regarding claim 17, the modified Miyao (Figures 5-7) teaches prior to applying the pressure to the middle layer, aligning a left hand and a right hand of the user in a first position on the grip (Col. 6, Lines 32-38) in alignment with a plurality of alignment indicators coupled to the outer layer, wherein the first position corresponds to the personalized grip for the implement (Col. 6, Lines 32-38), and the implement comprising a golf club (Col. 6, Lines 13-16), a baseball bat, a tennis racquet, or a hockey stick.
It is noted that the claim recitation of “a plurality of alignment indicators coupled to the outer layer” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. In the instant case, the functional relationship between the markings and the grip is not new and unobvious because it is known to have markings on a grip. Therefore, the printed matter is not given patentable weight.
Regarding claim 18, the modified Miyao (Figures 5-7) teaches the base layer, the middle layer, and the outer layer are arranged in a rollable sheet (Col. 6, Lines 60-67) (See fig. 5-7).
The modified Miyao does not teach a backing is removably coupled to the first side of the base layer, wherein the first side of the base layer is coated with an adhesive, wherein applying the apparatus to the implement comprises: removing the backing from the base layer; and placing the adhesive in contact with a gripping area of the implement and wrapping the apparatus around the gripping area.
Rios (Fig. 4) teaches a backing (Fig. 4 and 8, Part No. 7) (Para. 0092, 0112) is removably coupled to the first side of the base layer (44), wherein the first side of the base layer is coated with an adhesive (Fig. 4 and 8, Part No. 6) (Para. 0092-0093, 0135), wherein applying the apparatus to the implement comprises: removing the backing from the base layer (Para. 0092); and placing the adhesive in contact with a gripping area of the implement and wrapping the apparatus around the gripping area (Para. 0078, 0082-0083).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Miyao with the first side of the base layer is coated with an adhesive as taught by Rios as a means of providing a backing layer of a sports grip with an adhesive layer that is used in an amount that provides sufficient adhesion between the grip and the substrate (Rios: Para. 0082, 0092-0093).
Regarding claim 19, the modified Miyao (Figures 5-7) teaches a base layer, a middle layer, and an outer layer (Col. 6, Lines 60-67) (See fig. 5-7).
The modified Miyao does not teach at least one of the outer layer and the backing have a plurality of spaced apart markings, the method further comprising: cutting along at least one of the plurality of the spaced apart markings thereby sizing the apparatus to fit the gripping area of the implement.
Doubt teaches cutting along a layer thereby sizing the apparatus to fit the gripping area of the implement (Col. 4, Lines 33-51).
It is noted that the claim recitation of “a plurality of spaced apart markings, the method further comprising: cutting along at least one of the plurality of the spaced apart markings thereby sizing the apparatus to fit the gripping area of the implement” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. In the instant case, the functional relationship between the markings and the grip is not new and unobvious because it is known to have markings on a grip. Therefore, the printed matter is not given patentable weight.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Miyao with cutting along a layer thereby sizing the apparatus to fit the gripping area of the implement as taught by Doubt as a means of cutting a layer of a grip to size the layer to the size of the grip (Doubt: Col. 4, Lines 33-51).
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Miyao in view of Doubt, further in view of Barker (20180154227).
Regarding claim 14, the modified Miyao (Figures 5-7) teaches a base layer (57) having a first side and a second side.
The modified Miyao does not teach the first side of the base layer is configured for frictional engagement with a golf club or a baseball bat.
Barker teaches the first side of the base layer is configured for frictional engagement with a golf club (See fig. 23) (Para. 0161) or a baseball bat.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Miyao with the first side of the base layer is configured for frictional engagement with a golf club as taught by Barker as a means of using frictional forces to secure a golf club grip to a golf club shaft (Barker: Para. 0161).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Miyao in view of Doubt and Rios, further in view of Barker.
Regarding claim 20, the modified Miyao (Figures 5-7) teaches the base layer, the middle layer, and the outer layer are arranged as a flexible sheath (Col. 6, Lines 60-67) (See fig. 5-7).
The modified Miyao does not teach applying the apparatus to the implement comprises: sliding the sheath over an end and onto a gripping area of the implement.
Barker teaches applying the apparatus to the implement comprises: sliding the sheath over an end and onto a gripping area of the implement (See fig. 23) (Para. 0114).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Miyao with sliding the sheath over an end and onto a gripping area of the implement as taught by Barker as a means of sliding a grip over and onto a golf club shaft (Barker: Para. 0114).
Response to Arguments
Applicant's arguments filed 06/25/2026 have been fully considered but they are not persuasive.
Applicant argues (to claim 1) that the combination of Miyao and Doubt is improper because the references are directed to incompatible objectives and the combination would render the prior art of Miyao unsatisfactory for its intended purpose, this is not found persuasive because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, the prior art of Miyao and Doubt are both directed to hand grips for sports implements and disclose different materials and designs for hand grips for sports implements. Applicant argues that the prior art of Doubt does not teach the claim recitation of “the middle layer is configured to harden in the compressed position in the presence of air”, this is not found persuasive because Doubt (Figures 1-4) teaches the middle layer is configured to harden in the compressed position in the presence of air (Col. 4, Lines 33-51). Doubt (Col. 4, Lines 33-51) discloses: “the molded grip is then allowed to cure by solvent evaporation at room temperature for a time until the finished, fully cured state is achieved. Cure times are preferably within a range of 4-24 hours, and are achieved entirely by ambient air drying”.
Applicant argues (to claim 1) that the prior art of Miyao does not teach the recitation in claim 1 of “the first side of the outer layer is removably coupled to the second side of the middle layer”, this is not found persuasive because claims are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of “removably” is defined to mean “capable of being removed, displaced, transferred, dismissed, or eradicated”. It is noted that the first side outer layer of Miyao is “capable of being removed, displaced, transferred, dismissed, or eradicated” as claimed.
Applicant argues (to claim 16) that the prior art does not teach the claim recitation of “applying a pressure to the middle layer, via at least the portion of the one or more hands of the user, and thereby causing the moldable material to have the compressed position that is contoured to the portion of the one or more hands of the user; and removing the outer layer from the middle layer thereby exposing the middle layer to the air and causing the middle layer to harden in the compressed position”, this is not found persuasive because the combination of the prior art of Miyao, Rios, and Doubt teaches the recited limitation under 35 USC 103. It is noted that applicant argues that in claim 16, the outer layer is present and intact during the entire molding step. However, it is noted that the features upon which applicant relies (i.e., the outer layer is present and intact during the entire molding step) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues (to claim 4 and 7-8) that the claimed ranges are not merely obvious optimization because neither Miyao nor Doubt disclose a moldable middle layer with the claimed thickness ranges, this is not found persuasive because Miyao (Figures 5-7) teaches the middle layer inherently has a thickness (See figures 5-7) (Col. 6, Lines 32-38). 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 (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Miyao with the middle layer has a thickness in an uncompressed position ranging from 4 mm to 11 mm as a means of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). Applicant argues that the specification discloses the claimed range as being medically grounded, this is not found persuasive because although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues (to claims 2 ,6, 12, 17, and 19) that the claimed printed matter have a functional relationship with the claimed apparatus, this is not found persuasive because to be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. In the instant case, the functional relationship between the markings and the grip is not new and unobvious because it is known to have markings on a grip (See for example: Isgar (11040260), Davis (20180078836), Albers (20170014707), Pepe (20140038736), Boccieri (20120302364)). Therefore, the printed matter is not given patentable weight.
Applicant argues (to claims 5 and 7-8) that the functional limitations are structural limitations, this is not found persuasive because claims 5 and 7-8 recite the limitation “configured to…” followed by limitations directed to the hands of a user. These limitations require a user and are therefore not structurally part of the claimed apparatus. The prior art is fully capable of performing the recited functional limitations in these claims. Apparatus claims cover what a device is, not what a device does (See: Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). 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 (See: Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER GLENN whose telephone number is (571)272-1277. The examiner can normally be reached 9:00 a.m. - 5:00 p.m..
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
