[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 .
Claim Objections
Claims 1-3 are objected to because of the following informalities: Regarding claim 1, line 3, “a lower end” should be changed to the lower end since the lower end has been previously introduced. Regarding claim 1, line 4, “an upper end” should be changed to the upper end since the upper end has been previously introduced. Appropriate correction is required.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oseroff et al. (US 3,848,480; hereinafter Oseroff).
Regarding claim 1, Oseroff discloses a golf club (Figure 2) comprising: a club shaft [7] having an upper end (see upper end in Figure 2) and a lower end (see lower end in Figure 2); a club head (inherently integral to golf clubs) on a lower end of the shaft [7]; a grip [3] on an upper end (see upper end in Figure 2) of the shaft [7], wherein the grip [3] material includes phosphorescent pigments (col. 5 line 36: “phosphorescent material”) having the property of luminescence (col. 5 lines 41-42: “luminous in the dark”) (col. 1 lines 31-39, col. 4 lines 23-26, 46-51, 60-62, col. 5 lines 35-60, and Figures 2 and 5).
Regarding claim 2, Oseroff discloses the golf club of claim 1 wherein the grip [3] has a textured surface (col. 4 line 50: “overlapping of adjacent strips” which provides a textured surface) (col. 4 lines 23-26, 46-51, and Figure 2).
Regarding claim 3, Oseroff discloses the golf club of claim 1 wherein the grip [3] further comprises alignment marks [6] (col. 4 lines 23-26, 46-51, and Figure 2; wherein edges [6] of tape [3] create alignment marks for overlapping the tape [3]). Additionally, although alignment marks are taught by Oseroff, the examiner would like to point out that such indicia only serves to convey a message or meaning to a user independent of the supporting product. There is no new feature of physical structure and no new relation of printed matter to the physical structure. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product. See MPEP 2112.01. The indicia has no physical tie to the substrate. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter. No patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. See MPEP 2111.05. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the examiner does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying meaning to a user in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter.
Regarding claim 4, Oseroff discloses a golf club grip [3] comprising: a tube shape having an opening on one end (see lower end of grip in Figure 2), that a shaft [7] of a golf club (Figure 2) is inserted into; wherein the grip [3] material includes (col. 5 line 36: “phosphorescent material”) having the property of luminescence (col. 5 lines 41-42: “luminous in the dark”) (col. 1 lines 31-39, col. 4 lines 23-26, 46-51, 60-62, col. 5 lines 35-60, and Figures 2 and 5). Regarding the recitation that the shaft of the golf club is “inserted into” the opening, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113. Additionally, Oseroff alternatively discloses a molded slip-on grip for golf clubs which is not preferred but is an option (col. 5 lines 43-60).
Regarding claim 5, Oseroff discloses the golf club grip of claim 4 wherein the grip [3] has a textured surface (col. 4 line 50: “overlapping of adjacent strips” which provides a textured surface) (col. 4 lines 23-26, 46-51, and Figure 2).
Regarding claim 6, Oseroff discloses the golf club grip of claim 4 further comprising an end cap [4] closing the tube (col. 4 lines 46-51 and Figure 2).
Regarding claim 7, Oseroff discloses the golf club grip of claim 4 further comprising alignment marks [6] (col. 4 lines 23-26, 46-51, and Figure 2; wherein edges [6] of tape [3] create alignment marks for overlapping the tape [3]). Also see statement regarding printed matter in paragraph 7, above.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20-0356924 using machine translation; hereinafter KR.
Regarding claim 1, KR discloses a golf club [B] comprising: a club shaft [C] having an upper end (see end adjacent grip (A) in Figure 1) and a lower end (see end adjacent golf club head in Figure 1); a club head (see golf club head in Figure 1) on a lower end of the shaft; a grip [A] on an upper end of the shaft [C], wherein the grip [A] material includes phosphorescent pigments having the property of luminescence (page 2: “synthetic resin mixed with a luminous material that emits light at night”) (pages 1-3 and Figures 1-3). Although KR refers to the grip material as being fluorescent, not phosphorescent, the properties of the material described relate to phosphorescence (emitting light without combustion or perceptible heat; glowing in the dark). KR repeatedly describes the luminous material emitting light at night so the golf club can be easily recognized at night (pages 1-3). KR does not describe the use of a blacklight to achieve luminescence at night. Therefore, KR discloses the luminescence being phosphorescent.
Regarding claim 2, KR discloses the golf club of claim 1 wherein the grip [A] has a textured surface (page 2 and Figures 1-3; wherein it is inherent that rubber or synthetic resin has a texture).
Regarding claim 3, KR discloses the golf club of claim 1 wherein the grip [A] further comprises alignment marks [13] (pages 2-3 and Figures 2-3). It should be appreciated that the applicant’s functional language in the claim (i.e., alignment) does not serve to impart patentability. 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. Apparatus claims cover what a device is, not what a device does. 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 apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, the decorative body [13] is capable of being used for grip alignment purposes. Also see statement regarding printed matter in paragraph 7, above.
Regarding claim 4, KR discloses a golf club grip [A] comprising: a tube shape (Figure 2) having an opening [11] on one end, that a shaft [C] of a golf club [B] is inserted into; wherein the grip [A] material includes phosphorescent pigments having the property of luminescence (page 2: “synthetic resin mixed with a luminous material that emits light at night”) (pages 1-3 and Figures 1-3). Although KR refers to the grip material as being fluorescent, not phosphorescent, the properties of the material described relate to phosphorescence (emitting light without combustion or perceptible heat; glowing in the dark). KR repeatedly describes the luminous material emitting light at night so the golf club can be easily recognized at night (pages 1-3). KR does not describe the use of a blacklight to achieve luminescence at night. Therefore, KR discloses the luminescence being phosphorescent.
Regarding claim 5, KR discloses the golf club grip of claim 4 wherein the grip [A] has a textured surface (page 2 and Figures 1-3; wherein it is inherent that rubber or synthetic resin has a texture).
Regarding claim 6, KR discloses the golf club grip of claim 4 further comprising an end cap [2] closing the tube (Figure 2) (pages 2-3 and Figures 1-3).
Regarding claim 7, KR discloses the golf club grip of claim 4 further comprising alignment marks [13] (pages 2-3 and Figures 2-3). It should be appreciated that the applicant’s functional language in the claim (i.e., alignment) does not serve to impart patentability. 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. Apparatus claims cover what a device is, not what a device does. 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 apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, the decorative body [13] is capable of being used for grip alignment purposes. Also see statement regarding printed matter in paragraph 7, above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Smith et al. (US 2017/0291083 A1) which discloses golf clubs comprised of phosphorescent material, Taylor (US 5,890,977) which discloses a golf club grip provided with a highly visible luminescent color coating, Ruana (US 6,854,163 B1) which discloses a glow in the dark safety grip for a hand railing, and Defino et al. (WO 89/01810 A1) which discloses a golf club shaft and head covered with luminescent tape.
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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711