DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Internet/E-mail Communication
In order to permit communication regarding the instant application via email, Applicant is invited to file form PTO/SB/439 (Authorization for Internet Communications) or include the following statement in a filed document or remarks of a filed response (see MPEP 502.03 II):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
If such authorization is provided, please include an email address in the remarks of a filed response. The examiner’s e-mail address is Christopher.Legendre@uspto.gov.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action.
There are no limitations deemed to invoke 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parsons (US 2012/0214610).
In reference to claim 1
Parsons discloses:
A grip (see the embodiments of both Figures 14 and 15) comprising:
an elongated body extending from a first axial body end (i.e., top end) to a second axial body end (i.e., bottom end) along a longitudinal axis, the body comprising:
a first section ((1) the portion including left side 406 or the portion including right side 408 - Figure 14; (2) the portion including left side 506 - Figure 15) having a cavity (see Figures 14 and 15) therein for receiving a shaft (12) extending at least partially therethrough; and
a second section ((1) the portion including right side 408 or the portion including left side 406 - Figure 14; (2) the portion including right side 508) adjacent the first section such that the second section is offset from the shaft when the shaft is received in the cavity of the first section.
In reference to claim 2
Parsons discloses:
The grip of claim 1, wherein the body has a first width at the first axial body end (i.e., top end) and a second width at the second axial body end (i.e., bottom end), and the second section tapers (see Figures 14 and 15) from the first axial body end to the second axial body end such that the first width is greater (see Figures 14 and 15) in magnitude than the second width.
In reference to claim 3
Parsons discloses:
The grip of claim 1, wherein the body has a cross-sectional shape (see Figure 16) of a rectangle with rounded ends.
In reference to claim 4
Parsons discloses:
The grip of claim 1, wherein the first section and the second section are integrally formed (see e.g. Figure 7 showing the typical construction of the grip).
In reference to claim 6
Parsons discloses:
The grip of claim 1, wherein the body further comprises an exterior gripping surface (i.e., the exterior surface can be gripped and, thus, can be considered a gripping surface; alternatively, see par. [0035] stating “The grip 100 may be fabricated from a flexible material such as a synthetic polymeric material, leather, others, or a combination of these” (emphasis added)) extending therearound.
In reference to claim 7
Parsons discloses:
The grip of claim 1, wherein the second section is formed of a shock-absorbing material (see par. [0008]).
Claim Rejections - 35 USC § 103
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Parsons in view of Siniscalchi (US 9,586,108).
In reference to claim 5
Parsons discloses:
The grip of claim 1.
Parsons does not disclose:
the first section and the second section are separate components attached to one another.
Siniscalchi discloses:
a grip (see Figure 5) for a golf club, the grip comprising separate components (12 and 18) attached to one another.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the grip of Parsons to include forming the first section and the second section as separate components attached to one another, as disclosed by Siniscalchi, for the purpose of allowing ease of installation and/or forming the first section of a different material than the second section.
Citations of Pertinent Art
The following art is considered pertinent to Applicant’s disclosure.
All cited references disclose a golf club grip that tapers from a top end to a bottom end.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER RYAN LEGENDRE whose telephone number is (571)270-3364. The examiner can normally be reached on M-F: 9-5 PM ET.
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.
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/CHRISTOPHER R LEGENDRE/Primary Examiner, Art Unit 3711