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
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/24/2026.
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.
Claim 12 is 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. The limitation of “being sized to align with, or be recessed with respect to an outer surface of a grip of the golf club” is indefinite because there is a multitude of different grip sizes/shapes for clubs. Therefore, it is difficult to ascertain what size the device would need to be to “align” or “recess” with respect to the grip.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4, 7, 9-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 20140349783 (hereinafter “Haley”) in view of US 8047851 (hereinafter “Baxter”).
Regarding claim 1, Haley discloses a golf accessory (Fig. 2, 10) that has a first panel (Fig. 3, 12);
a second panel (Fig. 3, 14);
a first hinge (Fig. 3, 28) coupled to the first panel and to the second panel, the first panel structured to rotate relative to the second panel about the first hinge (Para. 0022);
an axial bore defined by the first panel and the second panel, the axial bore structured to receive a golf club when the device is in an open configuration, and the axial bore structured to capture the golf club when the device is in a closed configuration (Fig. 1, 36; Para. 0027);
a cavity in the second panel (Fig. 3, area between ridges 24 on side 14; Para. 0024), the cavity structured to receive a first golf accessory;
a recess in the first panel the recess structured to receive a second golf accessory different from the first golf accessory (Fig. 3, area between ridges 24 on side 12; Para. 0024). The limitation of “structured to receive” is intended use; If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. In the instant case, the recess of Haley has a magnet (Fig. 5, 26), and would be fully capable to receive any type of magnetic accessory. See MPEP 2114 - In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997)
Haley does not disclose a third panel removably coupleable to the first panel; a second hinge coupled to the second panel and to the third panel, the third panel structured to rotate relative to the second panel about the second hinge. Baxter, in the same endeavor of hinged storage devices, discloses an organizer with three panels connected by two hinges to add additional capabilities/appendages to the device (Col. 4, lines 11-17). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to add a third panel connected by a second hinge to increase storage capabilities of the tool. Further, mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In the instant case, adding an additional panel and hinge would merely allow for another surface to attach accessories onto, yielding a predictable result. See MPEP 2144 – In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 2, As stated above in claim 1, the device of modified Haley is able to receive any type of magnetic tool, which can include ball markers and divot repair tools. Haley discloses its device with receiving a divot prong 20 and ball marker 22. The examiner further notes that claim 1 recites the first and second golf accessory as a functional limitation with “to receive a first golf accessory” and second golf accessory. The modified Haley is fully capable of receiving many different golf accessories including a divot repair tool and a ball marker as taught by Haley. See MPEP 2114 with respect to applicant needs to define over the prior art with structural limitations and not functional limitations.
Regarding claim 4, modified Haley further discloses the first panel or the third panel further includes an opening (Haley: Circular area cut out of panel between Fig. 5, 24’s to accommodate magnet), the device further comprising: a magnet (Fig. 5, 26) received in the opening in the first panel or the third panel to removably couple the second golf accessory to the first panel or the third panel. Though an opening is not explicitly disclosed in Haley, Fig. 5 shows the circular magnet to be flush with the panel so inherently there must be some sort of opening to accommodate the magnet’s volume.
Regarding claim 7, modified Haley further discloses the recess is a first recess in the first panel (Fig. 3, area between ridges 24 on side 12; Para. 0024), the device further comprising: a second recess in the third panel, the second recess structured to receive the second golf accessory. In view of the combined teachings of Haley and Baxter, as well as duplication of parts, it would be reasonably within the skill of someone in the art to add a recess to the third panel to hold more accessories. Both panels of Haley have recesses for tools, therefore it would be obvious that the additional panel would also have a recess for the same purpose.
Regarding claim 9, Haley discloses a golf accessory tool (Fig. 2, 10) securable to a golf club, the golf accessory tool including:
a plurality of panels including a first panel (Fig. 3, 12) and a second panel (Fig. 3, 14) removably coupleable to each other with a securing mechanism (Fig. 4, 30);
a first hinge coupled to the plurality of panels (Fig. 3, 28);
an opening (Shown in Fig. 3 between inner padding 16 & 18) through the plurality of panels, the plurality of panels structured to rotate about the first hinge from an open configuration to receive the golf club in the opening to a closed configuration to couple the golf accessory tool to the golf club via the securing mechanism (Paras. 0022 and 0027);
at least one recess in the plurality of panels structured to removably receive a golf accessory (Fig. 3, area between ridges 24; Para. 0024).
Haley does not disclose a second hinge coupled to the plurality of panels. Baxter, in the same endeavor of hinged storage devices, discloses an organizer with three panels connected by two hinges to add additional capabilities/appendages to the device (Col. 4, lines 11-17). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to add a second hinge for more panels to increase storage capabilities of the tool. Additionally, this is an instance of duplicating the hinge component for the predictable result of adding more panels for storage. See claim 1 explanation for more detail on duplication of parts.
Additionally, the limitation of “structured to receive” is intended use; If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. In the instant case, the recess of Haley has a magnet (Fig. 5, 26), and would be fully capable to receive any type of magnetic accessory. See MPEP 2114 - In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997)
Regarding claim 10, modified Haley further discloses the plurality of panels includes the first panel, the second panel, and a third panel coupled to the first panel and to the second panel with the first hinge and the second hinge, respectively. With the combined teachings of Haley and Baxter, one of ordinary skill in the art would be able to arrive at this collar configuration, as Haley teaches the ring-like structure and Baxter teaches the plurality of two hinges with three panels.
Regarding claim 11, modified Haley further discloses the at least one recess includes a first recess in the first panel (Fig. 3, area between ridges 24 on side 12; Para. 0024), a second recess in the second panel (Fig. 3, area between ridges 24 on side 14; Para. 0024), and a third recess in the third panel, and wherein the golf accessory is a first golf accessory structured to be received in the first recess, the second recess structured to receive a second golf accessory, and the third recess structured to receive a third golf accessory, the third golf accessory being different from the first golf accessory and the second golf accessory. In view of the combined teachings of Haley and Baxter, as well as duplication of parts, it would be reasonably within the skill of someone in the art to add a recess to the third panel to hold more accessories. Both panels of Haley have recesses for tools, therefore it would be obvious that the additional panel would also have a recess for the same purpose.
Additionally, the limitation “structured to receive” is intended use. As stated above in claim 9, the device of modified Haley is able to receive any type of magnetic tool, which can include ball markers, divot repair tools, towel rings, etc.
Regarding claim 13, the limitation “the golf accessory tool is securable to a shaft of the golf club at a proximal end of a grip of the golf club” is also intended use. The annular shape of Haley’s securable device is entirely capable of being placed on the shaft at the proximal end of the grip. See MPEP 2114 and claim 9.
Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Haley and Baxter as applied to claims 1 and 9 above, and further in view of US 20210059298 (hereinafter “Holmes”).
Regarding claim 5, modified Haley discloses all the limitations of claim 1, but does not disclose a slot in the third panel configured to removably receive the first golf accessory tool with the first golf accessory extending outwardly from the third panel. Holmes, in the analogous art of golf accessory holders, discloses a holder with a slot (Figs. 1 & 4, 29) able to hold accessories such as a removable clip (Fig. 4, 20) upright, enabling the tool to hold lighted objects like cigars (Abstract; Fig. 7). Thus, it would be obvious to a person of ordinary skill in the art to add a slot to the accessory holder to enable upright holding capability.
Regarding claim 14, modified Haley discloses all the limitations of claim 9, but does not disclose a slot in the first panel configured to removably receive one of the plurality of golf accessories. Holmes, in the analogous art of golf accessory holders, discloses a holder with a slot (Figs. 1 & 4, 29) able to hold accessories such as a removable clip (Fig. 4, 20) upright, enabling the tool to hold lighted objects like cigars (Abstract; Fig. 7). Thus, it would be obvious to a person of ordinary skill in the art to add a slot to the accessory holder to enable upright holding capability.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Haley and Baxter as applied to claim 1 above, and further in view of US 7048637 (hereinafter “McDonald”).
Regarding claim 6, modified Haley discloses all the limitations of claim 1, but does not disclose the second panel further includes a plurality of teeth projecting into the axial bore, the plurality of teeth structured to engage the golf club when the device is in a closed configuration. McDonald, in the analogous golf club accessory art, discloses an attachment device for a golf club with ridges on the inner surface to provide slip resistance when attached to the club (Fig. 2; Col. 2, lines 35-50). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to include ridges or teeth on the inside of the golf accessory to prevent the device from slipping on the club.
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Haley and Baxter as applied to claims 1 and 9 above, and further in view of US 9474950 (hereinafter “McDowell”).
Regarding claim 8, modified Haley discloses all the limitations of claim 1, but does not disclose the first panel or the third panel includes at least one indentation leading into the recess. McDowell discloses a similar golf accessory tool with finger slots that lead into recesses that allow the golfer to pry the items off the collar (Fig. 11, 12 and 13; Col. 2, lines 66-67). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to include indents leading to the recesses to make it easier to remove the accessories from the holder.
Regarding claim 12, modified Haley discloses all the limitations of claim 9, but does not disclose an outer surface of the golf accessory tool being sized to aligned with, or be recessed with respect to, an outer surface of a grip of the golf club. McDowell discloses a similar attachable golf tool whose diameter is only slightly larger than the handle of the club in order to reduce interference or resistance while being pulled from or inserted into the golf bag (Fig. 3; Col. 3, lines 29-35) (Under BRI, this tool aligns with the handle of the club, as it does not cause interference during use and is essentially along the same plane). Due to the 112(b) issue, it is unclear what size grip/handle is being claimed since the device can be placed on different clubs. Further, where the only difference between the prior art and the claim is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In the instant case, any further change in dimensions would not cause the invention to function differently – as McDowell already considered tool size to minimize resistance. See MPEP 2144 – Gardner v.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984).
Allowable Subject Matter
Claims 3 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
For both claims 3 and 15, a three-panel golf accessory tool with the additional structure of a supporting plate that forms a recess with the panel is considered to be novel in the art. Claim 3 also adds the limitation of magnets disposed in the recess. It is commonly seen for the magnets to be integrated into the panel through a hole, such as is seen in prior art Haley. However, hiding the magnets behind the wall with the recited structure is not readily seen. Therefore, the detail and novelty incorporated into these claims is considered to be allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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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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/S.M.B./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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