DETAILED ACTION
This Office action is in response to Response to Election/Restriction received 1 December 2025.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Species I, corresponding to claims 1-5, in the reply filed on 1 December 2025 is acknowledged. Claims 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings contain deficient line quality. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. Refer to 37 CFR 1.84(l). See Figures 1-4. New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings must be made on paper that has a white background. Refer to 37 CFR 1.84(e). For example, drawings on graph paper, lined paper, or paper that has a non-white background are not acceptable. See Figures 1-4.
Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the catch member and latch member as required in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Won (KR 101025205 B1 using machine translation).
Regarding claim 1, Won discloses a location marking device (Figure 1) comprising: a first portion [20] including a weighted section (wherein the second member inherently has weight); a second portion [10] connected to the first portion [20]; and a catch member (underside of second member [10]) attached to at least one of the first portion or the second portion [10]; and a latch member [24] attached to the other of the second portion or the first portion [20], wherein: the catch member (underside of second member [10]) having an operative position (Figure 8) relative to the latch member [24] in which the latch member [24] contacts and maintains the catch member (underside of second member [10]) in a fixed position with respect to the latch member [24] such that the second portion [10] is located in a first position adjacent the first portion [20], the catch member (underside of second member [10]) having an inoperative position (Figure 1) relative to the latch member [24] in which the latch member [24] is separated from the catch member (underside of second member [10]) such that the second portion [10] is located in a second position spaced from the first portion [20] wherein the second portion [10] is free to move relative to the first portion [20], and the catch member (underside of second member [10]) is configured to move from the operative position (Figure 8) to the inoperative position (Figure 1) upon an impact with a surface (fingertip inserted through hole [21] to push first member [10] into inoperative position) (pages 2-3 and Figures 1-8).
Regarding claim 2, Won discloses the location marking device of claim 1, the second portion [10] comprising a visual indicator (page 2: “[t]he internal space formed by the first uneven portion 11 above the first member 10 may freely print a specific pattern to give a sense of aesthetics, or may be used for promotional purposes”) (page 2 and Figure 1).
Regarding claim 3, Won discloses the location marking device of claim 2, wherein the visual indicator (page 2: “[t]he internal space formed by the first uneven portion 11 above the first member 10 may freely print a specific pattern to give a sense of aesthetics, or may be used for promotional purposes”) is at least one of an emoji, an arrow, a printed word, a printed phrase, or a golf ball shape (i.e., round; see Figure 1) (page 2 and Figures 1-2). Additionally, regarding the italicized claim language, the examiner would like to point out that such indicia only serves to convey a message or meaning to a human 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 human user in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter.
Regarding claim 4, Won discloses the location marking device of claim 1, the first portion [20] connected to the second portion [10] through a flexible member [30] (pages 2-3 and Figures 1, 4-5, and 7-8).
Regarding claim 5, Won discloses the location marking device of claim 1, wherein the flexible member [30] is a spring (pages 2-3 and Figures 1, 4-5, and 7-8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Goldfarb et al. (US 3,501,861), Fels (US 3,581,434), Bae (KR 20100134258 A), Lee (KR 20110063249 A), and Bae (KR 101924544 B1) which all disclose toys or golf ball markers with similar structure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
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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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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711