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.
Disclaimer
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 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.
Specification
The abstract of the disclosure is objected to because it is more than 1501 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 8 and 9 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. The claims recite “means for engaging a portion of an arm” and “means for securing the shell about the portion of the arm” (see claim 8) and “means for engaging another portion of another arm” which invoke 35 USC §112(f). However, the specification fails to disclose corresponding structure, material, or acts for performing the recited functions, and fails to clearly link any structure to those functions. Accordingly, the scope of the claim cannot be determined with reasonable certainty.
For purpose of examination, examiner is considering shell (20) as the means for engaging a portion of an arm (or means for engaging another portion of another arm) and strap (30) as the means for securing the shell about the portion of the arm.
Claim 8 recites the limitation "the shell" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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 1-9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Elliott, Jr. (US Patent No. 4,241,922).
Regarding claim 1, Elliott discloses a golf aid (see device (5), abstract and Figures 1-5), comprising: a shell of rigid construction (10), the shell defining a shell interior (the interior of shell element 10 in which the user’s hand is to be placed as shown in all figures), the shell further defining a gap configured to insertably receive therethrough a portion of an arm distal of an elbow into the shell interior (for example, as shown in Figures 1 and 5, circular sleeve portions (6) is shown in Figure 5 is disclosed and as shown in Figure 1, the use of strap (7) is shown and the opening between the strap and the sleeve portions is considered as a gap), the shell thereby engaging the portion of the arm with a palm and a thumb exposed to control a wrist throughout a golf stroke (see Figure 1), the portion of the arm comprising distal posterior portions of a forearm (the surface of the hand touching the shell element (10)), posterior portions of a wrist (see Figure 1), and a back of a hand proximal to knuckles (see Figure 1); a strap (7) disposed about an exterior of the shell and securable to the shell while avoiding contact with the palm and thumb to secure the shell about the portion of the arm (see Figure 1); and wherein the shell maintains the wrist in a neutral position to prevent flexion and extension of the wrist during a golf stoke (see abstract).
Regarding claim 2, wherein the arm is configured as the lead arm (see claim 1 and the device as shown in Figure 1 is shown as being used by a right-handed user).
Regarding claims 3-4, wherein the arm is configured as the trail arm (the device is disclosed as being constructed in mirror-image fashion for a left-handed golfer and this disclose that the device could be used on a trail arm in column 3 lines 37-39). This left-handed golfer device is considered as a second shell as recited in claim 4.
Regarding claims 5-7, the shell material of Ellott is disclosed as a rigid plastic (see column 2 line 38). rigid plastics are considered transformable (from a compliant state to a rigid state) because they can be heated and reshaped (like in thermoforming), moving from a solid, rigid state to a pliable one and back meeting the recited feature of the claims.
Regarding claim 8 Ellott discloses a golf aid (see abstract and Figures 1-5), comprising: means for engaging a portion of an arm (10, the device used for a right-handed golfer as shown in Figure 1); and means for securing the shell about the portion of the arm (7).
Regarding claim 9, further comprising: means for engaging another portion of another arm (the device is disclosed as being constructed in mirror-image fashion for a left-handed golfer and this disclose that the device could be used on a trail arm in column 3 line 38-39).
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.
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 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Elliott in view of Duback et al. (US Patent No. 5,732,713).
Elliott does not explicitly disclose the shell of rigid construction comprises a material transformable from a compliant state to a rigid state as disclosed. Elliott discloses a method of use of a golf aid, comprising the steps of: wrapping a material about a portion of an arm (see Figure 1), the portion of the arm being distal of an elbow and the portion of the arm comprising distal posterior portions of a forearm (the upper top part of (5) as shown in Figure 1), posterior portions of a wrist (see Figure 1), and a back of a hand proximal to knuckles and leaving a palm and a thumb exposed and unencumbered (see Figure 1); forming a shell by allowing the material wrapped about the portion of the arm (see abstract and Figure 1), gripping a golf club (1) and maintaining the distal portions of the forearm, the wrist, the hand, and the golf club in alignment with the wrist in a neutral position; and maintaining the wrist in the neutral position thereby preventing flexion and extension of the wrist by engagement of the shell with the arm while performing a golf stroke (see Figure 1). Elliott does not explicitly disclose a step of activating a material in a compliant state thereby transforming the material from the compliant state to a rigid state; wrapping a material about a portion of an arm while the material is activated and compliant, and material transforming into a rigid state as recited. Elliott discloses a golf aid configured to be wrapped around a user’s arm to form a shell that supports and stabilizes the wrist as disclosed in the abstract and all figures. Elliott clearly teaches that the shell maintains the wrist in a desired or controlled position when worn. Duback teaches that a method of activating a material in a compliant state thereby transforming the material from the compliant state to a rigid state (for example, claim 11 discloses “an initially flexible intermediate layer positioned adjacent a first side of the first layer, said intermediate layer comprised of a fabric impregnated with a moisture-curable resin which hardens upon curing to form a rigid structure of the fabric which retains a body part-defined shape into which it is molded during curing”. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the golf aid of the Elliott device to use the remoldable material as taught by the Duback reference in order to improve fit, comfort, and effectiveness by allowing the shell to conform to the user’s arm prior to rigidization. The substitution of a remoldable material for a pre-formed rigid material represents the use of a known material for its known properties and would have yielded predictable result. In addition, it would have been obvious to combine the references in order to provide a user a custom-fitted device as stated in column 1 lines 10-11 of the Duback reference. During normal use and operation of the references combined, the method steps as recited would have obviously will be performed.
Regarding claim 11, Elliott discloses the device could be placed on the forearm as disclosed in Figure 1. The reference also discloses that another device could be used on a trail arm that is considered as another arm (the device is disclosed as being constructed in mirror-image fashion for a left-handed golfer and this disclose that the device could be used on a trail arm in column 3 lines 37-39).
Regarding claim 12, he method of claim 10, wherein a club face is oriented perpendicular to a stroke by performing the step of maintaining the wrist in a neutral position (this is an obvious step during an initial golf swing to hit a golf ball during a golf game).
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