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 .
Applicant’s response to the office action of 1/12/2026 is acknowledged on 4/13/2026.
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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim 8 limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “means for aligning the portion of the arm” in claim 5 and . Golf aid (10) that include shell (20) and strap (30) as shown in Figures 1-3 is considered as the recited “means for aligning the portion of the arm”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 11 is objected to because of the following informalities: the expression “an other” appears to be a typo. The correct word appears to be - - another - -. Appropriate correction is required.
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 1-3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Cox (US Patent No. 3,423,095).
Regarding claim 1, Cox discloses a golf aid (see (12) as shown in Figures 1-4), comprising: a shell of rigid individually molded construction, the shell defining a shell interior (30), the shell further defining a gap configured to insertably receive therethrough a portion of an arm distal of an elbow into the shell interior (the opening are of shell (30) identified as inner surface (24) where the hand of the golfer is positioned is a gap as shown), the shell thereby engaging the portion of the arm with a palm and a thumb exposed (see Figures 1 and 3), the portion of the arm comprising distal posterior portions of a forearm (14), posterior portions of a wrist (26), and a back of a hand (20), with a distal end of the shell positioned proximal to knuckles of the hand (40); a strap 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 (34,32 as shown in Figure 3); and wherein the shell (30) is configured to align the portion of the arm with a shaft of a golf club to contact a golf ball during a golf stroke with a club face of the golf club aligned perpendicular to a velocity vector of the club face (see Figure 1 that shows the golf aid (12), the club, the ball) by having a curved configuration lengthwise between a proximal end and the distal end in conformance to posterior portions of the wrist and the back of the hand as the shaft of the golf club is being gripped (see column 2 lines 44-51 and see Figures 1-4), the shell (30) configured to prevent extension of the wrist (see abstract and column 1 lines 43-49) and to allow radial deviation of the wrist during the golf stroke (as shown in Figure 3, as disclosed in column 2 lines 38-51, the device is disclosed as having slopes (12) inwardly at 35s and 35b reducing neck portion 36 near the player’s wrist (26) and this clearly will allow radial deviation of the wrist as recited). Cox teaches the shell to be made of rigid material that could be plastic (see column 1 lines 70-72) but does not explicitly disclose that the shell is of an “individually molded construction”. However, it would have been obvious to one of ordinary skill in the art at the time the invention to form Cox’s rigid shell as an individually molded component because individually molding is a well-known manufacturing and conventional manufacturing technique for producing rigid polymer shells having consistent dimensions, structural integrity, and repeatable quality. Applying this known manufacturing technique to fabricate Cox’s plastic shell would have been nothing more than the predictable use of a known process to manufacture the disclosed device, yielding no unexpected result.
Regarding claims 2-3, wherein the arm is configured as the lead arm and wherein the arm is configured as the trail arm (column 1 lines 63-67 disclose that the golfing aid could be used on the lead or trail arm).
Regarding claim 13, as shown in Figures 1 and 3 of Cox, the distal end (36,40) of the shell (30) is disposed over the carpal bones proximal of the metacarpal bones.
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.
Claim 8 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Cox.
Cox discloses a golf aid (12), comprising: means for aligning the portion of the arm (30) with a shaft of a golf club as the shaft of the golf club is being gripped (see Figure 1), the means configured to prevent extension of the wrist and to allow radial deviation of the wrist during a golf stroke (see abstract, see Figures 1-3 and column 1 lines 43-49).
Claims 5-7, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Cox in view of Von Bonin et al. (US patent No. 4,411,262).
Regarding claim 5, Cox teaches the shell as discussed in claim 1 above but does not expressly disclose wherein the shell of rigid construction comprises a material transformable from a compliant state to a rigid state, the material of the shell of rigid construction being in the rigid state. Von Bonin teaches a constructional material comprising a flexible substrate impregnated with a one-component reactive system that is compliant before curing and hardens into a rigid constructional material after curing (for example, see column 1, lines 43-67; column 2, lines 1-10). It would have been obvious to one of ordinary skill in the art to fabricate Cox’s shell using the transformable material taught by Von Bonin because doing so would permit the shell to conform during application and thereafter get rigid to provide structural support and maintain the desired shape, which is the predictable use of a known hardenable construction material for its intended purpose.
Regarding claim 6, Von Bonin expressly teaches that the reactive material hardens upon exposure to air by reaction with atmospheric moisture (see column 1, lines 61-64; see column 2, lines 1-10). Therefore,, it would have been obvious to fabricate the shell of Cox using the moisture-curable construction of Von Bonin’s to allow the shell to remain compliant during fitting and automatically transform into a rigid support after exposure to air.
Regarding claim 7, regarding the shell being custom molded, see the rejection of claim 1 above. Von Bonin teaches a shell material that transforms from a compliant state to a rigid state after exposure to air/moisture (see column 1, lines 61-64; see column 2, lines 1-10). It would have been obvious to one of ordinary skill in the art to construct Cox’s custom-molded shell from the transformable material taught by Von Bonin because the material is specifically intended to be shaped while compliant and subsequently hardened into a rigid structure, thereby predictably providing a custom-fitted shell that conforms to the user’s anatomy while providing increased rigidity and support after curing.
Regarding claim 10, Cox teaches a method of using a golf aid including positioning a shell about the posterior portion of a user’s forearm, wrist, and back of the hand while leaving the palm and thumb exposed, securing the shell about the arm, and using the shell during a golf stroke to maintain the wrist in proper alignment while preventing wrist extension and allowing radial deviation (for example, see Figures 1-4; column 2, lines 38-51). However, Cox does not expressly disclose activating a material in a compliant state, wrapping the compliant material about the user’s arm, and allowing the material to transform into a rigid shell. Von Bonin teaches a construction material comprising a flexible substrate impregnated with a one-component moisture-curable reactive system that is initially compliant and can be wrapped, shaped, or applied while compliant, and thereafter hardens upon exposure to atmospheric moisture to form a rigid constructional material (see column 1 lines 54-67; column 2, lines 1-20; and column 7, lines 20-40). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Cox by forming its shell from the moisture-curable material taught by Von Bonin such that the shell is wrapped and molded about the user’s arm while compliant and subsequently allowed to cure into a rigid shell. One of ordinary skill would have been motivated to do so because forming the shell directly on the user’s arm while the material is compliant would produce a shell precisely conforming to the user’s forearm, wrist, and hand, thereby more effectively maintaining the wrist in the desired neutral alignment during the golf stroke while preventing unwanted wrist extension. Employing Von Bonin’s known moisture-curable molding technique in Cox merely substitutes one known shell-forming technique for another to obtain the predictable result of a custom-conforming rigid support having improved anatomical conformity and immobilization, thereby enhancing Cox’s intended function without changing its principle of operation.
Regarding claim 12, wherein a club face is oriented perpendicular to the stroke by performing the step of engaging the shell in the rigid state with the portion of the arm while performing a golf stroke (see Figures 1-4; column 2 lines 38-51 of the Cox reference).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Cox in view of Harvey (US Patent Application Publication No. 2013/0225336).
Cox teaches the apparatus of claim 1 comprising a rigid shell configured to receive a user’s forearm, wrist, and back of the hand to control wrist movement during a golf stroke. However, Cox does not expressly disclose a second shell configured to receive the opposite arm. Harvey teaches an athletic training device configured to be worn on either the user’s left arm or right arm (see for example, figures 4A and 4B; paragraphs 38-39). Harvey therefore teaches that substantially identical wrist-support devices may be provided for either arm to control wrist movement during athletic activity. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Cox by providing a second shell corresponding to the shell already taught by Cox for the user’s opposite arm, as taught by Harvey, so that both wrists may be simultaneously supported and controlled during the golf stroke. One of ordinary skill would have been motivated to do so because controlling the motion of both wrists predictably improves bilaterial wrist positioning and consistency throughout the golf swing. Moreover, duplication Cox’s known shell on the opposite arm merely constitutes the duplication of known element performing the same function on its corresponding counterpart, yielding no more than the predictable result of simultaneously controlling both wrists without changing Cox’s principle of operation.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cox in view of Von Bonin et al., and further in view of Harvey (US 2013/0225336).
Cox, as modified by Von Bonin as discussed with respect to claim 10, teaches activating a compliant material, wrapping the material about a user’s arm, allowing the material about a user’s arm, allowing the material to transform into a rigid shell, and engaging the shell during a golf stroke to maintain wrist alignment. However, Cox and Von Bonin do not expressly disclose performing the same method on another arm by forming another shell about the other arm. Harvey teaches providing substantially identical wrist training devices for either the user’s left arm or right arm (see for example, Figures 4A and 4B; paragraph 38-39), thereby recognizing that wrist motion of either arm may be controlled during athletic activity. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Cox as modified by Von Bonin by repeating the same shell-forming steps on the user’s opposite arm, as suggested by Harvey, so that both wrists are simultaneously controlled during the golf stroke. One of ordinary skill would have been motivated to do so because controlling both wrists predictably improves bilateral wrist positioning, swing consistency, and repeatability during the golf stroke. Moreover, repeating the known shell forming method on the opposite arm merely duplicates a known method step to perform the same function on a corresponding body part, yielding the predictable result of simultaneously controlling both wrists without altering the principle of operation of Cox.
Response to Arguments
Applicant’s arguments with respect to claims 1-8 and 10-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas J. Weiss can be reached at (571) 207-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NINI F LEGESSE/Primary Examiner, Art Unit 3711
Prosecution Insights