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 .
Response to Arguments
Applicant’s arguments, see remarks, filed5/11/2026, with respect to the restriction requirement between Group J,claims 1-11 and 20 and Group II claims, 12-19 have been fully considered and are persuasive. The restriction requirement between groups I and II has been withdrawn.
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.
Claim1 and 12 thus and thus the dependent claims 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.
In claim 1 applicants claim for a flat and divider sleeve amount to a catalogue of part of isolated elements with no relationship to the divider top or the base assembly claimed. The flat may be no more than a strap for accessories on the golf bag for example and the divider sleeve may might be a covering over the dividers in the divider top with no structural relationship to the base assembly claimed in claim12 with no structural orientation with the base assembly as claimed in claim 12 thus rendering the claims functional and incomplete.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 and 18 each recites the broad recitation or other shape, and the claim also recites rectangular, triangular or circular which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In claim 2 the ring portion having “a top end “ and a “bottom end” appear to be double inclusions of a top end and a bottom end on line 6 of claim 1.
Claims 13 and 14 each recites the limitation "the protruded surfaces" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims are1,6 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim[s 12 and 14 of U.S. Patent No. 10,610,751], Martell in view of [ 4,834,235, Solheim both of record. Martell discloses the golf bag of claim 1 with a sub assembly, base assembly, a flat, divider sleeve , divider top and a stay while the base assembly includes a ring portion with snap fit tabs and a base portion (claim 14). Martell does not suggest a deployable assembly as claimed in claim 1. However Solheim teaches a known deployable leg assembly on a golf bag with a stay wherein the legs 46,48 are pivotally attached to a bracket at the divider top as shown in figure 4 and springs 58.63 attached to the base at 58 and the legs via 64 as claimed I claim 20 . It would have been obvious to one of ordinary skill in the art to have provided the golf bag of Martell with a deployable stand assembly as taught by Solheim so as to support the bag for ease of play.
Regarding the protruded surfaces of claim 6 note the teaching in claim 15 by Martell.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references show other golf bag stand assemblies.
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/SUE A WEAVER/Primary Examiner, Art Unit 3733
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