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.
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 1-20 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.
Regarding claim 1, the expression “each of the first; and” in line 4 is not clear. For purpose of examination, this phrase is not considered since it gives no meaning.
Claims 2-20 are rejected under 112 since they directly or indirectly depend on rejected claim 1.
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, 2, 6 and 8 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Winkler (US Patent No. 6,672,997).
Regarding claim 1, Winkler discloses a golf swing trainer (see Figures 1-4), comprising: an elongated body (combination of 26,28 and 30) extending between a first end and a second end (the ends of 26 and 28 closest to handles 12 and 14 as shown in Figure 2), the elongated body constructed of a resilient and elastic material (as disclosed in claims 1-2, the cord elements 26 and 28 are bungee cord and this is resilient and elastic material); a first handle (12) and a second handle (14); and wherein the first end is the bottom edge of the first handle and the second end is the bottom edge of the second handle (as shown in Figure 2, the extending of cord elements 26 and 28 section from the handles are considered as bottom edge as recited). Regarding the intended use set forth in the preamble the device as being a “golf swing training”, the training device of Windler is capable of being used as a golf training device if so desired. Applicant is not claiming a process. Please note that the examiner is giving the broadest reasonable interpretation of the claims as set forth in MPEP 904.01(a). The examiner notes that apparatus claims must be structurally distinguishable from the prior art. SEE MPEP 2114.
Regarding claim 2 wherein the elongated body forms a curved U-shaped member having a concave side and a convex side (component 30 as sown in Figure 2 is considered as meeting this recitation); and wherein the U-shaped member comprises: (i) an arch having an apex (the central outside midpoint of 30), a first upper arm (the mid left section from the center point of element 30), and a second upper arm (the mid right section from the center point of element 30) the first and second upper arms extending axially from the apex to respective ends of the arch (see Figure 2); and (ii) a first lower arm and a second lower arm, the first and second lower arms extending radially from the respective ends of the arch (as shown in Figure 2, the ends of 26, 28 closest to handles 12 and 14 are considered as lower arm as recited).
Regarding claim 6, wherein the elongated body has a generally tubular shape and is at least substantially hollow (as shown in Figure 2, elongated body section 30 is tubular in shape).
Regarding claim 8 wherein the elongated body has a generally rod-like shape and is at least substantially solid (as shown in Figure 2, elongated body section 30 is rod-like in shape).
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 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.
Claims 17- 18 are rejected under 35 U.S.C. 103 as being unpatentable over Winkler.
Winkler does not explicitly disclose if the elongated body could have a length of 30-50 inches nor a thickness of about .5 inch to about 2 inches as recited. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide any working value including a length of 30-50 inches and/or thickness of .5-2 inches since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Allowable Subject Matter
Claims 3-5, 7, 9-16, 19 and 20 are objected to as being dependent upon a rejected base claim but would be allowable if 112 rejection of claim 1 is overcame and are 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