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 .
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 2, 9, 10 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Del (US 20040235583 A1).
Regarding claim 1, Del teaches a golf club comprising: a shaft (14) having first and second ends (Figure 1), a grip (12) attached to the first end of the shaft, and a head (16) attached to the second end of the shaft, and wherein the shaft is constructed and arranged to break under a predetermined force at a predetermined point (15) (page 3, paragraph 56).
Regarding claim 2, Del teaches the golf club of claim 1, wherein the shaft (14) has a predetermined length (Figure 1; paragraph 57, last sentence), wherein the first end is disposed at the top (where grip 12 is located), proximal end of the shaft and the second end is disposed at the bottom (where head 16 is located), distal end of the shaft, and wherein the grip (12) is disposed around the shaft (14).
Regarding claim 9, Del teaches the golf club of claim 1, wherein the shaft (14) comprises an upper shaft member (132), a lower shaft member (134), and a connector (136) disposed between and connecting the upper shaft member and the lower shaft member (Figures 9-11), the connector breaking under the force from the club head striking a golf ball or the ground, or the shaft being struck by a user's body (paragraph 33, sentence 2, “striking against an object”).
Regarding claim 10, Del teaches the golf club of claim 9, wherein: the upper shaft member (132) is reusable (paragraph 31, first sentence; paragraphs 67-68) and has a first end is disposed at the top, proximal end thereof and a second end (140) (Figures 10 and 11) disposed at the bottom, distal end thereof, and wherein the grip (12) is disposed around the first end thereof (Figure 9); the lower shaft member (134) is reusable (paragraph 31, first sentence; paragraphs 67-68) and has a first end (140) disposed at the top, proximal end thereof and a second end disposed at the bottom, distal end thereof, and wherein the head (116) is disposed at the second end thereof; and the connector (136) connects the second end (140) of the upper shaft member (132) to the first end (140) of the lower shaft member (Figure 10) and is removable from the upper shaft and the lower shaft and is replaceable (paragraph 68, first sentence).
Regarding claim 17, Del teaches the golf club of claim 1 wherein the shaft (14) comprises: an upper shaft member (132) with a lower end (238) that is externally threaded (Figure 11), a lower shaft member (134) that has an upper end (238) that is externally threaded (Figure 11), and a connector (136) disposed between and connecting the upper shaft member and the lower shaft member, connector having an internally threaded lumen (240) that is adapted to mate with the externally threaded ends of the upper shaft member and the lower shaft member (Figure 11), the connector breaking under a force from the club head (116) striking a golf ball or the ground, or the shaft being struck by a user's body (paragraph 33, sentence 2, “striking against an object”).
Regarding claim 18, Del teaches the golf club of claim 1, whereby the club is useable for entertainment purposes such as gags, pranks, and jokes, and whereby the shaft (14) of the club is replaceable in whole or in part (paragraph 72).
Regarding claim 19, Del teaches a reusable gadget golf club (110) which is useful for entertainment purposes, comprising: a shaft (14) having first and second ends (Figures 9-11); a grip (12) attached to the first end of the shaft; a head (116) attached to the second end of the shaft; and wherein the shaft comprises a reusable upper shaft member (132), a reusable lower shaft member (134), and a disposable and replaceable connector (136) disposed between and connecting the upper shaft member and the lower shaft member (Figures 9-11), the connector being breakable under a force from the club head striking a golf ball or the ground, or the shaft being struck by a user's body (paragraph 33, sentence 2, “striking against an object”).
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 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Del.
Regarding claim 3, Del teaches the golf club of claim 2 wherein the shaft has a length of 100 units (Figure 1; paragraph 55). Del does not explicitly teach wherein the shaft break point is disposed 40 units above the second end of the shaft. However, Figure 1 of Del clearly displays that the shaft break point (18) is disposed approximately 40 units above the second end of the shaft. Furthermore, Del teaches wherein the shaft (14) break point (18) is disposed at approximately the midpoint (paragraph 55, first sentence). Additionally, Del also teaches that the score line (18) could be placed at any point or at multiple points along the shaft (14) (paragraph 55, second sentence). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to have located the breaking point 40 units above the second end of the shaft, as obvious to try based on Figure 1 and based on the “midpoint” teaching of Del, to obtain a breaking point in the shaft at a reasonable location where an appropriate force to break the shaft can be applied.
Regarding claim 4, modified Del teaches the golf club of claim 3. Del does not teach wherein the shaft has a length of 37 inches, and wherein the shaft break point is disposed 15 inches away from the second end of the shaft. However, considering the break point as indicated by the applicant in claim 4, the break point is calculated to be disposed at approximately 40 units above the second end of the shaft, similar to claim 3 of the applicant. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to have located the breaking point 15 inches away from the second end of a shaft that is 37 inches long, as obvious to try based on Figure 1 and the teaching of Del as indicated in the rejection for claim 3, to obtain a breaking point in the shaft at a reasonable location where an appropriate force to break the shaft can be applied.
Regarding claim 5, modified Del teaches the golf club of claim 3, wherein the shaft comprises an upper shaft member (132) (Figs. 10 and 11), a lower shaft member (134), and a connector (136) disposed between and connecting the upper shaft member and the lower shaft member, the connector defining the shaft break point (118) (paragraph 70).
Regarding claim 6, modified Del teaches the golf club of claim 5, wherein the upper shaft member (132) and the lower shaft member (134) are reusable, and wherein the connector (136) is removable from the upper shaft member and the lower shaft member and is replaceable (paragraph 73).
Regarding claim 7, modified Del teaches the golf club of claim 6, wherein: the upper shaft member (132) has a first end is disposed at the top (Figures 9-11), proximal end thereof and a second end (140) disposed at the bottom (Figures 9-11), distal end thereof, and wherein the grip (112) is disposed around the first end thereof; the lower shaft member has a first end (140) disposed at the top (Figures 9-11), proximal end thereof and a second end disposed at the bottom, distal end thereof, and wherein the head (116) is disposed at the second end thereof; and the connector (136) connects the second end of the upper shaft member to the first end of the lower shaft member (Figures 9-11).
Regarding claim 8, modified Del teaches the golf club of claim 7. Del does not teach wherein the upper shaft has a length of 22 inches and the lower shaft has a length of 15 inches. However, Del teaches that the score line (18) could be placed at any point or at multiple points along the shaft (14) (paragraph 55, second sentence), which inherently indicates that the upper and lower lengths of the shaft can be widely varied. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to obtain a shaft wherein the upper shaft has a length of 22 inches and the lower shaft has a length of 15 inches, as obvious to try based on the teaching of Del indicating that the lengths of the upper and lower shafts can be inherently varied, to obtain a breaking point in the shaft at a particular location where an appropriate force to break the shaft can be applied.
second end of the upper shaft member to the first end of the lower shaft member and is removable from the upper shaft and the lower shaft and is replaceable.
Claims 11-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Del in view of Barber (US 20210275878 A1).
Regarding claim 11, modified Del teaches the golf club of claim 5. Del does not teach wherein the upper shaft member and the lower shaft member are constructed from a group of materials consisting of steel, graphite, and fiberglass and the connector is constructed of Aluminum. However, Barber teaches wherein the upper shaft member and the lower shaft member are constructed from a group of materials consisting of “metal, graphite, and the like, or other shaft materials both known and unknown” (paragraph 57, sentence 3) and the connector is constructed of “steel, graphite, and the like” (paragraph 77, last two sentences). Barber indicates “and the like” in both paragraphs 57 and 77, indicating any combination of materials with similar properties as that indicated in Barber can be used. Furthermore, fiberglass is also a well-known material used in the art for golf shafts. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to have combined the teachings of Del and Barber by substituting the materials of the shaft and connector of Del with those as taught by Barber to obtain a shaft and connector composed of the claimed materials to obtain the desired amount of bending.
Regarding claim 12, modified Del teaches the golf club of claim 5, wherein the connector (136) comprises: a first upper portion having a predetermined outer diameter (Figures 10 and 11); a second lower portion having a predetermined outer diameter that is equal to the outer diameter of the first upper portion (Figures 10 and 11); whereby the center portion (118) breaks under a force from the club head (116) striking a golf ball or the ground, or the shaft being struck by a user's body (paragraph 33, sentence 2, “striking against an object”). Del does not teach a center portion having a predetermined outer diameter less than the outer diameter of the first and second portions. However, Barber teaches a connector (13) that has a center portion (balance point-2; Figure 9) having a predetermined outer diameter less than the outer diameter of the first and second portions (distal ends of connector 13). Barber also teaches forming a cut at the balance point (2) for separating the shaft segments (paragraph 76, first sentence). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to have combined the teachings of Del and Barber, by substituting the shape of the connector of Del with that of Barber to obtain a connector that would be easier to break at the center point.
Regarding claim 13, modified Del teaches the golf club of claim 12. Del does not teach wherein the center portion has a central collar region that has a uniform, cylindrical, outside diameter. However, Barber teaches wherein the center portion has a central collar region (balance point 2; Figure 9) that has a uniform, cylindrical, outside diameter (Figures 9-11). Therefore, it would have been obvious to one of ordinary sill in the art before the effective filing date of the instantly claimed invention to have combined the teachings of Del and Barber to make the connector of Del have the central collar region of Barber to obtain a connector that would easily break by force.
Regarding claim 14, modified Del teaches the golf club of claim 12. Del does teach wherein the center portion has a curvilinear, hour-glass shaped outer geometry. However, Barber teaches wherein the center portion has a curvilinear, hour-glass shaped outer geometry (Figures 9-10). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to have substituted the shape of the connector of Del with that of Barber to obtain an hour-glass-shaped geometry for easier breakage upon force.
Regarding claim 15, modified Del teaches the golf club of claim 12 wherein the first and second portions each have an exteriorly threaded extension member (138) (Figure 10).
Regarding claim 16, modified Del teaches the golf club of claim 15, the upper shaft member (132) and the lower shaft members (134); further comprising a first, upper coupler and (top portion of element-136 where it attaches with element-132; Fig. 10) a second, lower coupler (bottom portion of element-136 where it attaches to element-134), each coupler having an outside diameter that is equivalent to the inside diameter of the upper (132) and lower (134) shaft member lumens (Figure 10), each coupler having an inner threaded lumen (240), and engaging the connector with the upper and lower shaft members (Figures 9-11). Del does not explicitly teach a hollow shaft, and that the coupler is adapted to mate with the threaded extension member of the first and second portions of the connector; whereby, upon mating of the threaded extension member of the first and second portions of the connector the first and second couplers frictionally expand. However, although Del does not explicitly teach a coupler that has separate upper and lower parts, that is merely a matter of making parts separable and rejoining them using a known means, such as the threads taught by Del. See In reDulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961), where the court held that merely making a part separable was unpatentable where obvious results were expected. Furthermore, hollow golf shafts are common in the art and does not present an inventive concept. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to make the connector of Del into two separate components to achieve expected results and to make the shaft of Del hollow, as commonly disclosed in the art, to enable easy breakage upon impact.
Regarding claim 20, Del teaches a breakable and reusable gadget golf club which is useful for entertainment purposes (paragraph 33, sentence 2, “striking against an object”), comprising: a. a shaft (14) having first and second ends (Figures 9-11); b. a grip (12) attached to the first end of the shaft; c. a head (116) attached to the second end of the shaft; d. wherein the shaft comprises i. a reusable upper shaft member (132), ii. a reusable lower shaft member (134), and iii. a disposable and replaceable connector (136) disposed between and connecting the upper shaft member and the lower shaft member (Figures 9-11); e. wherein the connector comprises: i. a first upper portion having a predetermined outer diameter (upper portion of element 136); ii. a second lower portion having a predetermined outer diameter that is equal to the outer diameter of the first upper portion (lower portion of element 136); iv. whereby the center portion (136) breaks under a force from the club head striking a golf ball or the ground, or the shaft being struck by a user's body (paragraph 33, sentence 2, “striking against an object”). Del does not teach iii. a center portion having a predetermined outer diameter less than the outer diameter of the first and second portions; and f. wherein the shaft has a total length of 100 units, the upper shaft member having a length of 60 units and the lower shaft member having a length of 40 units, whereby the connector is disposed 40 units above the golf club head. However, Barber teaches a center portion (balance point-2; Figures 9 and 10) having a predetermined outer diameter less than the outer diameter of the first and second portions. Furthermore, Del teaches that the score line (18) could be placed at any point or at multiple points along the shaft (14) (paragraph 55, second sentence), which inherently indicates that the upper and lower lengths of the shaft can be widely varied. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to obtain a shaft wherein the upper shaft has a length of 60 units and the lower shaft has a length of 40 units, as obvious to try based on the teaching of Del indicating that the lengths of the upper and lower shafts can be inherently varied, to obtain a breaking point in the shaft at a particular location where an appropriate force to break the shaft can be applied, and the shape of the center portion of Del can be substituted with that taught by Barber.
Conclusion
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/SABA N. ALI/ Patent Examiner, Art Unit 3711
/JOHN E SIMMS JR/ Primary Examiner, Art Unit 3711