DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 10/06/2025 without traverse of Group I, species I-1, claims 1-14 & 16-17 for further examination. Claims 15 & 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
3. The drawings are objected to because of the following informalities:
Paragraphs [0077], [0082]-[0086], [0089]-[0090], [0092]-[0093]…, [0183], [0185], disclose reference characters 100 & 1000 as “golf club” which is not disclosed in the figures. Appropriate correction is required.
4. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “golf club” recited in claims 1, 5 & 11, “golf ball” recited in claim 1 and “foot” recited in claim 16 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
5. The disclosure is objected to because of the following informalities:
paragraphs [0183], [0185], disclose reference character 1000 as “golf club” and then paragraphs [0187], [0189], disclose reference character 1000 as “fourth apparatus”, wherein a single reference character cannot designate multiple different components.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 11 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 11, line 2 recites the limitation “the first surface”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the first surface” as “the surface” recited in claim 1. To correct this problem, amend line 2 to recite “the surface”.
Claim Rejections
8. 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 § 102
9. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
10. Claims 1-14 & 16-17 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Gonzalez (US 2022/0248937 A1) hereinafter Gonzalez (the terminology of the claims in the application is used, but the references of Gonzalez are included between parentheses).
Regarding claim 1, the recitation “receive a golf club… application of a surface of the golf club, the surface configured to contact a golf ball”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Gonzalez since Gonzalez meets all the structural elements of the claim and is capable of receiving a golf club and applying a substance of a surface of the golf club, the surface capable of contacting a golf ball, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Gonzalez discloses an apparatus (abs; fig 1-5), comprising:
a first component (top plate 114) configured to receive a golf club (component 10) ([0022]-[0024]; fig 1-3); and
an actuator (springs + activation switch 154) configured to initiate application (via nozzles 116 & brushes 120) of a substance (liquid cleaners/sanitizers) to a surface of the golf club (component 10), the surface capable of contacting a golf ball ([0016]; [0018]-[0019]; [0022]-[0026]; fig 1, 3, 5).
As regards to claim 2, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the first component (top plate 114) is coupled to the actuator (springs + activation switch 154) ([0018]-[0019]; [0023]-[0024]; fig 1-3).
As regards to claim 3, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the actuator (springs + activation switch 154) is configured to be in a first position (unbiased/unpressed) when the first component (top plate 114) is in a second position (no component 10 present and/or no force/pressure being applied by component 10), and the actuator (springs + activation switch 154) is configured to be in a third position (biased/pressed) when the first component (top plate 114) is in a fourth position (component 10 present and/or force/pressure being applied by component 10) ([0018]-[0019]; [0022]-[0024]; fig 1, 3, 5).
As regards to claim 4, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the actuator (springs + activation switch 154) is configured to initiate application of the substance (liquid cleaners/sanitizers) when the actuator (springs + activation switch 154) moves from the first position (unbiased/unpressed) to the third position (biased/pressed) ([0016]; [0018]-[0019]; [0022]-[0026]; fig 1, 3, 5).
Regarding claim 5, the recitation “the golf club”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Gonzalez since Gonzalez meets all the structural elements of the claim and is capable of receiving a force from a golf club, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 5, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the first component (top plate 114) is configured to receive a force from the golf club (component 10), the force configured to move the actuator (springs + activation switch 154) from a first position (unbiased/unpressed) to a second position (biased/pressed by component 10) ([0018]-[0019]; [0022]-[0024]; fig 1, 3, 5).
As regards to claim 6, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the actuator (springs + activation switch 154) is configured to initiate application of the substance (liquid cleaners/sanitizers) when the actuator (springs + activation switch 154) moves from the first position (unbiased/unpressed) to the second position (biased/pressed by component 10) ([0016]; [0018]-[0019]; [0022]-[0026]; fig 1, 3, 5).
As regards to claim 7, Gonzalez discloses an apparatus (abs; fig 1-5), further comprising a base (110) configured to be coupled to each of the first component (top plate 114) and the actuator (springs + activation switch 154) ([0018]-[0019]; [0022]-[0025]; fig 1-3, 5).
As regards to claim 8, Gonzalez discloses an apparatus (abs; fig 1-5), wherein: the actuator (springs + activation switch 154) is configured to move from a first position (unbiased/unpressed) to a second position (biased/pressed by component 10); and the actuator (springs + activation switch 154) is configured to initiate application of the substance (liquid cleaners/sanitizers) when the actuator (springs + activation switch 154) moves from the first position (unbiased/unpressed) to the second position (biased/pressed by component 10) ([0016]; [0018]-[0019]; [0022]-[0026]; fig 1, 3, 5).
As regards to claim 9, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the actuator (springs + activation switch 154) is biased (via springs) to the first position (unbiased/unpressed) ([0018]-[0019]; [0022]-[0024]; fig 1, 3).
As regards to claim 10, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the actuator (springs + activation switch 154) is configured to engage an auxiliary component (a pump 138, a motor 140, a battery power source 142, a water intake line 144, and a water sprayer line 146, nozzles 116 & brushes 120), the auxiliary component including the substance (liquid cleaners/sanitizers) ([0016]; [0018]-[0019]; [0022]-[0026]; fig 1-5).
Regarding claim 11, the recitation “the surface of the golf club”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Gonzalez since Gonzalez meets all the structural elements of the claim and is capable of applying a substance of the surface of the golf club, the surface capable of contacting a golf ball, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 11, Gonzalez discloses an apparatus (abs; fig 1-5), further comprising a nozzle (116) configured to apply the substance (liquid cleaners/sanitizers) to the first surface of the golf club (component 10) ([0016]; [0018]-[0019]; [0022]-[0024]; [0026]; fig 1, 5).
Regarding claim 12, the recitation “the substance comprises an aerosol”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Gonzalez since Gonzalez meets all the structural elements of the claim and is capable of applying a substance comprising an aerosolable liquid, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 12, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the substance (liquid cleaners/sanitizers) is capable of comprising an aerosolable liquid ([0006]; [0016]; [0023]; [0025]-[0026]; fig 5).
As regards to claim 13, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the actuator (springs + activation switch 154) includes more than one components ([0018]; [0023]-[0024]; fig 1-3).
As regards to claim 14, Gonzalez discloses an apparatus (abs; fig 1-5), further comprising a brush (120) configured to apply the substance (liquid cleaners/sanitizers) to the surface, the actuator (springs + activation switch 154) configured to rotate the brush (120) ([0022]-[0026]; fig 1-5).
Regarding claim 16, the recitation “to receive a foot”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Gonzalez since Gonzalez meets all the structural elements of the claim and is capable of receiving a foot, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 16, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the actuator (springs + activation switch 154) includes a second component (115) capable of receiving a foot (component 10) ([0018]; [0023]-[0024]; fig 1-3, 5).
Regarding claim 17, the recitation “the foot”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Gonzalez since Gonzalez meets all the structural elements of the claim and is capable of receiving a force from a foot, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 17, Gonzalez discloses an apparatus (abs; fig 1-5), wherein the second component (115) is configured to receive a force from the foot (component 10), the force configured to move the actuator (springs + activation switch 154) from a first position (unbiased/unpressed) to a second position (biased/pressed by component 10), the actuator (springs + activation switch 154) configured to initiate application of the substance (liquid cleaners/sanitizers) when the actuator (springs + activation switch 154) moves from the first position (unbiased/unpressed) to the second position (biased/pressed by component 10) ([0016]; [0018]-[0019]; [0022]-[0026]; fig 1, 3, 5).
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 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, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717