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 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.
Claims 1-6 are 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.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: “portions of the plurality of arms move from inside to outside the main body” as recited in lines 12-13. This new recitation lacks antecedent basis support in the specification and drawings. As best understood, it appears that applicant is claiming the plurality of arms (131) can physically now move to inside and back outside of the main body (110). However, the specification and drawings do not support this limitation. The plurality of arms (131) each have a bent angle about the midpoint that would prevent it from moving inside the opening of the main body (110). Therefore, applicant does not provide any supporting discussion or drawings to support that this limitation can be accomplished with applicant’s invention.
Claim 2 depends from claim 1, and therefore has the same 112 2nd paragraph deficiency.
Claim 3 depends from claim 1, and therefore has the same 112 2nd paragraph deficiency.
Claim 4 depends from claim 1, and therefore has the same 112 2nd paragraph deficiency.
Claim 5 depends from claim 1, and therefore has the same 112 2nd paragraph deficiency.
Claim 6 depends from claim 1, and therefore has the same 112 2nd paragraph deficiency.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitation “a plurality of arms . . . in the first position.” on lines 3-6 of claim 3 has previously been recited in claim 1, on lines 7-13. Therefore, the claim does not further limit the metes and bounds of the patent protection desired. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
14. Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brant et al (US 6,254,497).
15. As to claim 1, Brant et al discloses a golf ball retrieval device (1), as illustrated in Figures 1-29, comprising a main body (14); at least one ball retriever cup (46) disposed at an end of the main body to receive a golf ball therein; and a golf tee driver (2) disposed on at least a portion of the main body to grip a golf tee (6), a plurality of arms (20,22) movably disposed at a first end on at least a portion of the main body to move from closed toward a center point between each of the plurality of arms in a first position to at least partially opened away from each of the plurality of arms in a second position (see Figures 2-3 and 5-6), and move from opened away from each of the plurality of arms in the second position to closed toward the center point between each of the plurality of arms in the first position (see Figures 2-3 and 5-6), wherein the plurality of arms each move downwards and upwards in a direction parallel to the main body such that portions of the plurality of arms move from inside to outside the projected boundaries of the main body (14) (see Figure 4 and annotated Figure 5 below).
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16. With claim 2, the at least one ball retriever cup (46) is a suction cup (a snap-fit, suction, frictional engagement – see col 6, lines 44-46).
17. With claim 3, a plurality of arms (20,22) movably disposed at a first end on at least a portion of the main body to move from closed toward a center point between each of the plurality of arms in a first position to at least partially opened away from each of the plurality of arms in a second position (see Figures 2-3 and 5-6), and move from opened away from each of the plurality of arms in the second position to closed toward the center point between each of the plurality of arms in the first position (see Figures 2-3 and 5-6).
18. With claim 5, a trigger (42) is movably disposed on at least a portion of the main body to move the golf tee driver in response to being squeezed (Ejection tube 38 is actuated upon movement of knob 42 – see col. 6, lines 64-67 and col. 7, lines 1-7).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Brant et al (US 6,254,497) in view of Whitehill et al (US 2004/0029653).
Brant et al discloses the claimed invention except for the golf tee driver having a plurality of tee grips disposed on at least a portion of a second end (see annotated Figure 5 below) of each of the plurality of arms.
Whitehill et al teaches a golf tee setter (2) comprising elastomeric inserts (63) seated in the respective tee grips (62) of the arms (60) to stabilize the tee (see paragraph [0040]).
To provide the device of Brant et al with tee grips having elastomeric inserts configured on the second end of each of the arms would have been obvious to one of ordinary skill in the art, in view of the teachings of Whitehill et al, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention, i.e., one skilled in the art would have recognized that the tee grips used in Whitehill et al would allow the arms of Brant et al to stabilize the tee while gripping it.
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26. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Brant et al (US 6,254,497) in view of Budzinksi (US 3,333,848).
27. Brant et al discloses the claimed invention except having a bubble level disposed on at least a portion of the at least one ball retriever cup.
28. Budzinksi teaches a golf tee leveling and driving instrument (10) comprising a bubble level (40) in order to confirm that the tee is precisely perpendicular (see col. 2, lines 48-50).
29. To provide the device of Brant et al with a bubble level configured on the ball retriever cup would have been obvious to one of ordinary skill in the art, in view of the teachings of Budzinski, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention, i.e., one skilled in the art would have recognized that the bubble level used in Budzkinski would allow the device of Brant et al to confirm that the tee is precisely perpendicular to the ground.
Response to Arguments
30. Applicant's arguments filed August 14, 2026, have been fully considered but they are not persuasive. In the Remarks, dated August 14, 2026, applicant has stated that the amended limitation in claim 1 is supported by applicant’s Figure 1 and specification (see page 4 under Introduction of applicant’s Remarks, dated August 14, 2026). However, the examiner respectfully disagrees with this statement. The examiner has addressed this amended limitation above under the 112 2nd paragraph rejection. In addition, applicant has concluded that the amended limitation "wherein the plurality of arms each move downwards and upwards in a direction parallel to the main body such that portions of the plurality of arms move from inside to outside the main body." is not taught by the prior art of record (see page 4 under Claim Rejections Under 35 U.S.C. § 102 to Brant of applicant’s Remarks, dated August 14, 2026). The examiner disagrees with this argument. The examiner has addressed this amended limitation in claim 1 above with the prior art of Brant et al. Regarding claims 2-6, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN VU whose telephone number is (571)272-1961. The examiner can normally be reached Monday-Friday, 7:00 am - 3:30 pm EST.
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, Victoria Augustine can be reached at (313) 446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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STEPHEN VU
Primary Examiner
Art Unit 3654
/STEPHEN A VU/Primary Examiner, Art Unit 3654
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