1-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 .
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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 Objections
Claim 6 is objected to because of the following informalities: the expression “to slidably connected together” and “pane sections” appear to have spelling errors. The correction could be - - to slidably connect - - and - - panel sections - - consecutively. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18/212,498 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
(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 1-5, 10 and 11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by C. A. Christianson (US Patent No. 1,624,535).
Regarding claim 1, Christianson discloses a golf swing tool used to improve a golf swing of a user; said golf swing tool comprising a base body (6) and a first swing guide leg (5’); said base body includes first (combination of 5 and 11), second (12), and third (12’) panels; said second panel rotatably connected to said first panel (see Figures 1-4); said third panel (12’) rotatably connected to said first panel (11); said second and third panels are not connected together (see Figure 1); said first swing guide leg releasably connected to one of said first, second, and third panels (for example, see components 8 & 9, and 15 & 16 in the Figures); and wherein said base body is configured to be positioned on a ground surface during use of said golf swing tool (the base is capable of being placed on a ground); and wherein said first panel is configured to enable said second and third panels to be rotated relative to said first panel such that said second and third panels are spaced from one another during use of said golf swing tool wherein the user can position a golf ball between said second and third panels during use of said golf swing tool (see Figure 1).
The recitation that the device is to be a “golf swing tool…used to improve a golf swing …” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structures onto depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951).
The examiner notes that it has been held that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Further still, it has also been held that "The recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431 -32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959).
Regarding claim 2, wherein said second and third panels are pivotally connected to said first panel (11) such that said second (12) and third panels (12’) can rotate no more than 2700 (for example, when 11 and 12 are locked to a 900 or 1800 using locking mechanisms 15 and 16, it can be said to meet the recited feature) the relative to said first panel (see all Figures).
Regarding claim 3, wherein said second (12) and third (12’) panels are each connected to said first panel (11) such that said second panel can only rotate clockwise relative to said first panel when said second panel is moved to an open position, and said third panel can only rotate counter-clockwise relative to said first panel when said third panel is moved to an open position (as shown in all Figures, the connecting mechanisms, 9, 9’,16,16’,8,8’ are capable of allowing the components to rotate as recited).
Regarding claims 4 and 5, first panel is configured to be adjustable in longitudinal length and first panel includes first and second panel section that are slidably connected together; said second panel rotatably connected to said first panel section, said third panel rotatably connected to said second panel section (combination of 5 and 11 as shown in Figure 1).
Regarding claim 10, wherein said second and/or third panels include one or more mount openings; each of said mount openings is configured to receive a body of a post and/or stake to temporarily secure said second and/or third panels to a ground surface (as shown in Figure 1, 12 and 12’ have slot that can be considered as opening that is capable of receiving a stake or a post).
Regarding claim 11, wherein said first swing guide leg (5’) is removably connectable to one of said first, second, or third panels; said first swing is configured to extend upwardly from one of said first, second, or third panels when said first swing guide leg is removably connected to one of said first, second, or third panels (since there are multiple connecting components 9,8,9’,8’,15,15’,16,16’ are capable of being removably connected, they are considered as meeting the recited feature).
Allowable Subject Matter
Claims 6-9 and 12-20 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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/NINI F LEGESSE/Primary Examiner, Art Unit 3711