DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Allowable Subject Matter
Claims 3-5 and 7 are allowed.
Claim 3 includes limitations directed towards wherein: the first coupler comprises a plurality of annular grooves extending into the upper section; and the second coupler comprises a plurality of protrusions, each protrusion of the plurality of protrusions being attached to and extending from an inward surface of the socket, such that the protrusion is insertable into a respective annular groove upon insertion of the upper section into the socket. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record. The closest art of record Moyses teaches the golf ball tube, cup etc… however it is silent with regards to the limitations of claim 3 as indicated above.
Claim 7 includes limitations directed towards the upper end of the tube having a first channel extending axially therethrough; the bottom of the cup having a second channel extending axially there through, such that the second channel is aligned with the first channel upon attachment of the golf ball engagement member to the tube; and wherein the second channel and the first channel are configured for a selective insertion of a threaded fastener to affix the golf ball engagement member to the tube. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record. The closest art of record Moyes teaches the tube and the connection, however it is silent with regards to the channels and fastener.
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.
Claim 2 is 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.
There appears to be multiple claims numbered 2 in the claims filed 7/25/2023. Appropriate correction is required to avoid duplicate claim numbering.
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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 1-2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Moyses (US 1830520 A) in view of Suwito (US 20160346653 A1).
Regarding claim 1, Moyses teaches 1. A golf ball retrieving putter grip assembly comprising: See Fig. 4, a tube configured for being gripped and being comprised of a resiliently bendable material, said tube having a lower end and an upper end, the upper end being closed, the lower end being open such that the tube defines a cylindrical interior space configured to receive a shaft of a putter inserted through the lower end such that the shaft is frictionally attached to the tube, See Fig. 4; Col. 2:78+, a golf ball engagement member comprised of a resiliently bendable material and comprising: a cup configured to releasably engage a golf ball; See Fig. 4.
Suwito does teach what the primary reference is silent on including a first mating member See Fig. 3; (24), a second mating member being attached to and extending downwardly from said cup; and See Fig. 3; (46), said first and second mating members being releasably engaged to each other such that said golf ball engagement member extends upwardly from said upper end of said tube. See Fig. 3.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Suwito to provide a locking tab which allows for attaching implements to the body ([0051+]).
Regarding claim 2, Suwito teaches 2. The golf ball retrieving putter grip assembly of claim 1, wherein said first mating member is a male mating member and said second mating member is a female mating member. See Fig. 3.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Suwito to provide a locking tab which allows for attaching implements to the body ([0051+]).
Regarding claim 12, Moyses teaches 12. A method of retrieving a golf ball from a golf ball cup, the method comprising providing a golf ball retrieving putter grip assembly according to Claim 1, and: See Fig. 4; Col. 2:78+, inserting a shaft of a putter through the lower end of the tube into the cylindrical interior space, such that the shaft is frictionally attached to the tube; See Fig. 4, putting a golf ball into a golf ball cup; See Fig. 1 and 2 which imply the use of a putter to putt a ball into a golf cup., inserting the upper section of the tube into the socket, such that the second coupler engages the first coupler to removably attach the golf ball engagement member to the tube; See Fig. 4, inverting the putter; positioning the cup of the golf ball engagement member over the golf ball; pressing downwardly on the cup using the putter to reversibly attach the cup to the golf ball; rotating the putter longitudinally; and applying pressure on the golf ball laterally to the top of the cup to cause the cup to deform and to release the golf ball. See Fig. 1-4.
Suwito does teach what the primary reference is silent on including the additional elements of the grip of claim 1; See Fig. 3; (24)(46).
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Suwito to provide a locking tab which allows for attaching implements to the body ([0051+]).
Claims 6, 10 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Moyses (US 1830520 A) in view of Bae (US 20080261714 A1) and Suwito (US 20160346653 A1).
Regarding claim 2, Bae teaches 2. The golf ball retrieving putter grip assembly of claim 1, wherein the lower section comprises an inner layer and an outer layer, the outer layer comprising fabric. See [0014+] which teaches the use of fabric.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Bae as the selection of a known material to make an apparatus of a type made of similar material prior to the invention was held to be obvious. (See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)) .
Regarding claim 6, Bae teaches 6. The golf ball retrieving putter grip assembly of claim 1, wherein: the golf ball engagement member has a lower outer perimeter sized complementarily to an outer circumference of the tube; and the golf ball engagement member has an outer surface flaring outwardly from the lower outer perimeter and toward a top of the cup. See Fig. 1; (26)(24).
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Bae to grip the outer surface of a golf ball ([0029+]).
Regarding claim 10, Bae teaches 10. The golf ball retrieving putter grip assembly of claim 1, further including a lip being attached to a top of the cup and extending inwardly over an opening of the cup for a distance of between 0.38 mm and 0.89 mm. See Fig. 1 which shows the lip with implied dimensions.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Bae as the examiner notes that the lip size is a result effective variable. In Re Aller states that "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 MPEP 2144.05 II) As such, it would have been obvious to one skilled in the art, at the time of the invention, to modify Bae to obtain optimal ranges by routine experimentation to properly hold a ball in a cup.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Moyses (US 1830520 A) in view of Richmond (US 5437488 A) and Suwito (US 20160346653 A1).
Regarding claim 8, Richmond teaches 8. The golf ball retrieving putter grip assembly of claim 1, wherein the cup has a depth of between 2.03 cm and 2.16 cm. See 2:38+.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Richmond to allow attachment to a golf ball (See 2:38+).
Regarding claim 9, Richmond teaches 9. The golf ball retrieving putter grip assembly of claim 1, wherein a top of the cup has a diameter of between 6.94 cm and 4.09 cm. See 2:38+.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Richmond to allow attachment to a golf ball (See 2:38+).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Moyses (US 1830520 A) in view of Dalsing (US 20060055189 A1).
Regarding claim 11, Moyses teaches 11. A golf ball retrieving putter grip system comprising: a putter; See Fig. 4; (1), a tube comprised of a resiliently bendable material and having a lower end and an upper end, the upper end being closed, the lower end being open such that the tube defines a cylindrical interior space, a shaft of the putter being positioned in the cylindrical interior space, such that the shaft is frictionally attached to the tube, an upper section of the tube adjacent to the upper end being circumferentially smaller than a lower section of the tube; See Fig. 4; Col. 2:78+, a golf ball engagement member comprised of a resiliently bendable material and comprising: a cup configured to reversibly attach to a golf ball; See Fig. 4; Col. 2:78+, a socket attached to and extending from a bottom of the cup, the socket being sized complementarily to the upper section of the tube, such that the upper section is selectively insertable into the socket; and See Fig. 4.
Dalsing does teach what the primary reference is silent on including a first coupler attached to the upper section; and See Fig. 5; (9), a second coupler attached to and positioned in the socket, the second coupler being complementary to the first coupler, such that the second coupler engages the first coupler upon insertion of the upper section into the socket to removably attach the golf ball engagement member to the tube. See Fig. 5; (9) wherein the multiple threads may be considered the first and second coupler.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Moyses with Dalsing to allow for a threaded connection to couple the golf ball engagement member to the tube.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Scheibe US 20070049396 A1 - teaches a magnetic golf ball holder for shaft end.
Bava US 20180126227 A1 - teaches a golf ball retrieval stick.
Vogrin US 5165744 A - teaches a golf ball retriever on a shaft end.
Reeder US 5328174 A - teaches a ball retriever on shaft end.
Nadratowski US 20040166955 A1 - teaches a channel in ball retainer and shaft end.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711