DETAILED ACTION
This Office action is responsive to communication received 08/24/2023 – application papers received, including preliminary amendment and IDS; 12/12/2023 – Power of Attorney.
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 .
Continuing Data
This application is a 371 of PCT/GB2022/050569 03/03/2022.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings, received 08/24/2023, are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed method steps of claims 6-7 and 14-15 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.
Response to Arguments
It is noted that the applicant has presented arguments with the preliminary amendment, received 08/24/2023, which allegedly respond to rejections applied by the international examiner in a previous, foreign-filed application. While the arguments are of record, no further response is deemed necessary here, since the reference discussed by the applicant’s attorney is not the subject of any prior art rejection applied under the current examination and since the arguments do not respond to any action on the merits in the instant application.
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 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.
Specification (Arrangement and Abstract)
The disclosure is objected to because of the following informalities:
The specification lacks one or more of the lettered items discussed hereinbelow, which are used to separate the various portions of the specification. Appropriate correction is required.
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Abstract
The abstract of the disclosure is objected to. The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). 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).
Status of Claims
Claims 16-17 have been canceled, as directed.
Claims 1-15 remain pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections (Minor)
Claims 1, 5, 7 and 15 are objected to because of the following informalities:
As to claim 1, line 6, “engagable” should read --engageable--.
As to claim 5, line 2, it is suggested that the chiefly British spelling of “colour” be changed to read --color-- so as to conform to the spelling most-often seen in United States Patents. Appropriate correction is required.
As to claim 7, line 2, “3m” should read --3 m--.
As to claim 15, line 2, “3m” should read --3 m--.
Claim Rejections - 35 USC § 112(b)
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 1-15 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.
As to claim 1, line 11, “to thus inform a putting stroke selection” is not understood. With consideration of line 3 reciting that the referencing indicium is “engaged” with the putter shaft, and further considering that lines 5-6 recite that the referencing indicium is “engagable” [sic] with the putter shaft, it is not clear how the referencing indicium is arranged on the shaft (i.e., in a vertical orientation or a horizontal orientation).
As to claim 2, while the structure of the putter attachment is further limited, the referencing indicium is not limited to being a putter attachment. In other words, the claim should distinctly point out that the referencing indicium is the putter attachment and that the putter attachment is provided as an elongate member having a securing means for engaging with the putter shaft.
As to claim 3, this claim shares the indefiniteness of claim 2.
As to claim 4, line 2, what is an “in-use upper end thereof”?
As to claim 5, this claim shares the indefiniteness of claim 1.
As to claim 6, line 4, it is not clear if the claim is trying to claim a user as part of the method. Why not simply delete “a user”. In line 7, “vertical distance between the golf ball and the target” is vague. While a horizontal distance may be observed between the golf ball and a target (e.g., disclosure, FIGS. 8, 9), it is not clear exactly what vertical distance is being referenced by the claim language. In line 7, “visually inferring” is indefinite. In line 8, “to inform a putting stroke selection” is indefinite. Here, the fact that independent claim 1 is drawn to a product, namely “a putter”, while dependent claim 6, which is drawn to a method, are in different statutory classes does not, in itself, render claim 6 indefinite. However, to avoid any undue confusion in determining exactly which features of the putter are being referred to, it is highly suggested to draft claim 6 in independent form to explicitly recite all of the limitations of the base independent claim 1. See MPEP 608.01(n).
As to claim 7, this claim shares the indefiniteness of claim 6.
As to claim 8, line 5, what exactly is the correspondence between the calibrated stroke-length markers and the calibrated distance markers. In other words, is the distance between calibrated stroke-length markers the same as the distance between the calibrated distance markers? Is the number of calibrated stroke-length markers equal to the number of calibrated distance markers? Do the calibrated stroke-length markers and the calibrated distance markers present like indicia (e.g., the same numerals, symbols, representations, etc.)?
As to claims 9-13, these claims share the indefiniteness of claim 8 (as dependent upon claim 1).
As to claim 14, line 5, it is not clear if the claim is trying to claim a user as part of the method. Why not simply delete “a user”. In line 7, again, it is not clear if the claim is trying to claim a user as part of the method. Why not simply delete “a user”. In lines 9-10, while a horizontal distance may be observed between the golf ball and a target (e.g., disclosure, FIGS. 8, 9), it is not clear exactly what vertical distance is being referenced by the claim language. In line 14, there is no way to determine what putting stroke to use, as a plurality of available putting strokes has not been clearly defined. In lines 14-16, what exactly is the correspondence between the calibrated stroke-length markers and the calibrated distance markers. In other words, is the distance between calibrated stroke-length markers the same as the distance between the calibrated distance markers? Is the number of calibrated stroke-length markers equal to the number of calibrated distance markers? Do the calibrated stroke-length markers and the calibrated distance markers present like indicia (e.g., the same numerals, symbols, representations, etc.)? Here, the fact that dependent claim 8 is drawn to a product, namely “a putter stroke selection system”, which itself depends from independent claim 1, which is directed to a product, namely “a putter”, and while dependent claim 14, which is drawn to a method and depends from claim 8, are in different statutory classes does not, in itself, render claim 14 indefinite. However, to avoid any undue confusion in determining exactly which features of the putter stroke selection system and which features of the putter are being referred to, it is highly suggested to draft claim 14 in independent form to explicitly recite all of the limitations of both the base independent claim 1 and dependent claim 8. See MPEP 608.01(n).
As to claim 15, this claim shares the indefiniteness of claim 14 (as dependent upon claim 8, which depends from claim 1).
The Office has made every effort to identify all instances of indefiniteness in the current claim set. To the extent that any remaining occurrences of indefiniteness may exist in the claims, the applicant is respectfully asked to thoroughly review the claims and to amend the claims to capture and to correct any remaining instances of indefiniteness of which the applicant may become aware of during the preparation of a response to this action.
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, 4 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US PUBS 2004/0204261 to Port et al (hereinafter referred to as “Port”).
As to claim 1, Port discloses a putter (34) comprising: a putter head (i.e., paragraph [0024]) and a putter shaft (32); and a referencing indicium (30) engaged with the putter shaft (32); the referencing indicium (30) being provided directly on the putter shaft (32); the referencing indicium (30) being positioned along the length of the putter shaft (32; FIG. 1); the referencing indicium (30) comprising a plurality of calibrated distance markers which are uniformly separated (i.e., paragraph [0025] discloses calibration decal 30, with FIG. 1 showing equally-spaced markings) for allowing a user to visually infer a distance between a golf ball and a putting target when the user is holding the putter in a vertical condition, to thus inform a putting stroke selection. Here, the language “for allowing a user to visually infer a distance between a golf ball and a putting target when the user is holding the putter in a vertical condition, to thus inform a putting stroke selection” is merely functional. The markings associated with the calibration decal (30), as structured, are clearly capable of performing this intended function.
As to claim 4, an origin of the referencing indicium is provided at an in-use upper end thereof. With reference to FIG. 1, an “in-use upper end” of the referencing indicium may be identified at the point to which the lead line of numeral (30) points.
As to claim 8, note the putter, as described under claim 1, hereinabove. In addition, note the stroke-length measurement tool including the training aid (10) with crossbar (12) and a plurality of stroke-length indicium including a plurality of stroke-length markers on a calibration decal (14), wherein the stroke-length markers correspond to the plurality of calibrated distance markers on the calibration scale that holds the referencing indium (30).
As to claims 9 and 10, see annotated FIG. 7, depicting an origin of the stroke-length indicium provided at a central portion of the stroke-length measurement tool (claim 9) as well as a backswing indicium portion and a follow-through indicium portion (claim 10).
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Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US PUBS 2013/0040751 to Wise.
As to claim 1, Wise discloses a putter (FIG. 3A) comprising: a putter head (200) and a putter shaft (201; FIG. 2A; paragraph [0058]; FIG. 2D and paragraph [0064]); and a referencing indicium (i.e., numbers on part 211; FIGS. 3A, 3B) engaged with the putter shaft (201); the referencing indicium being provided on a putter attachment (i.e., a decal) which is attached to the shaft (201); the referencing indicium being positioned along the length of the putter shaft (201; FIG. 3A); the referencing indicium comprising a plurality of calibrated distance markers (i.e., paragraph [0065] and [0068] detail a measuring device; a measuring device is necessarily calibrated) which are uniformly separated (FIGS. 3A, 3B show a uniform separation of numbers) for allowing a user to visually infer a distance between a golf ball and a putting target when the user is holding the putter in a vertical condition, to thus inform a putting stroke selection. Here, the language “for allowing a user to visually infer a distance between a golf ball and a putting target when the user is holding the putter in a vertical condition, to thus inform a putting stroke selection” is merely functional. Here, the scale (i.e., numbers on part 211), as structured, is clearly capable of performing this intended function.
As to claim 4, an origin of the referencing indicium is provided at an in-use upper end thereof. With reference to annotated FIG. 3A, an origin at an upper end of the referencing indicium may be identified, as shown, below:
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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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2004/0204261 to Port et al (hereinafter referred to as “Port”) in view of US PUBS 2008/0076593 to Costa et al (hereinafter “Costa”).
As to claim 2, Port does not explicitly disclose “securing means” for securing the putter attachment to the putter shaft. Note that the putter attachment is a decal, which might normally be associated with having some type of adhesive or magnetic attraction property. Here, Costa is cited to show that it is old in the art to attach a decal to a shaft using adhesive (i.e., see paragraphs [0010], [0018], and [0021] – [0022]). In view of the teaching in Costa, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the club in Port by attaching the putter attachment comprising the referencing indicium (30) to the shaft via a securing means such as adhesive in order to prevent the putter attachment from becoming dislodged during use.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2004/0204261 to Port et al (hereinafter referred to as “Port”) in view of US PUBS 2008/0076593 to Costa et al (hereinafter “Costa”) and also in view of US PUBS 2005/0187028 to Chang et al (hereinafter referred to as “Chang”).
As to claim 3, Port in view of Costa provides for a securing means in the form of an adhesive, but lacks “at least one of: a magnetic attachment element; a vice or clamp, or a fastener” for the securing means. Here, Chang teaches that a practice device may be attached to either a putter head or a shaft via a variety of means, including magnetic, adhesive or mechanical attraction (i.e., a clamp). See paragraph [0003] in Chang. In view of the teaching in Chang, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the club in Port by securing the putter attachment comprising the referencing indicium (30) to the shaft using a clamp in order to simply provide another type of attraction between the putter attachment and the shaft, wherein a clamp would have facilitated removably attaching the putter attachment (i.e., the referencing indicium) to the shaft. The substitution of a clamp for either an adhesive-type of attachment would have involved a simple substitution of one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2004/0204261 to Port et al (hereinafter referred to as “Port”).
As to claim 5, Port does not explicitly disclose “colour coded” [sic] when describing the plurality of calibrated distance markers. It would appear that the color aspect serves no mechanical function and is perhaps integrated as a matter of aesthetics. One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the invention in Port by providing the calibrated distance markers with color in order to make it easier to distinguish the separate indicia among various calibrated markings. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was directed to an advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up which was adapted to fit over and cover the neck of the bottle, wherein the hollow member and the bottle together give the impression of a human body. Appellant argued that certain limitations in the upper part of the body, including the arrangement of the arms, were not taught by the prior art. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.). But see Ex parte Hilton, 148 USPQ 356 (Bd. App. 1965) (Claims were directed to fried potato chips with a specified moisture and fat content, whereas the prior art was directed to french fries having a higher moisture content. While recognizing that in some cases the particular shape of a product is of no patentable significance, the Board held in this case the shape (chips) is important because it results in a product which is distinct from the reference product (french fries).). See MPEP 2144.04.
Claims 1 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 9,011,274 to Fox in view of US PUBS 2004/0204261 to Port et al (hereinafter referred to as “Port”).
As to claim 1, Fox shows a putter head and a putter shaft (i.e., FIG. 7). Fox provides referencing indicium comprising calibrated distance markers (i.e., FIG. 4), but does not explicitly disclose that these calibrated distance markers are “engaged with the putter shaft” or are “engageable with the putter shaft”. Instead, the calibrated distance markers identified in Fox are located on a grip portion. Port shows an arrangement in which calibrated markers are provided on a shaft portion (i.e., see FIG. 1 in Port). In view of the teaching in Port, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club in Fox by relocating the referencing indicium located on the grip to a location along the shaft, whereby such a modification would simply have involved a rearrangement of parts. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). See MPEP 2144.04. In this case, the relocation of the referencing indicium identified hereinabove in Fox would not have altered the operation of the Fox club, as a golfer would still have been able to use the vertical markings to judge the distance between a golf ball and a target.
As to claim 6, Fox includes a putter and shaft with referencing indicium, as outlined under claim 1 above, and further includes steps to hold the putter shaft in a vertical and use the referencing indicium to interpret a distance between a golf ball and a target (i.e., col. 1, lines 46-60; col. 2, lines 26-43). With the information gathered from the interpretation of the referencing indicium, a golfer may make a putting stroke selection (i.e., col. 2, lines 38-43; Fox notes a golfer can use the distance markers to know how hard to putt the ball).
As to claim 7, there is no criticality disclosed with respect to the claimed “approximately 3m”. Instead, the 3 meter distance appears to be set arbitrarily. One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the method in Fox, as modified by Port, such that a golfer is to stand approximately 3 meters away from the golf ball in order to simulate an actual putting location/position commonly experienced on a putting green (i.e., a distance resembling a short-putt or “gimme-putt”).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2004/0204261 to Port et al (hereinafter referred to as “Port”) in view of USPN 7,238,116 to Sulzener.
As to claims 11-12, Port lacks an explicit disclosure that that tool body is collapsible (claim 11) and that a hinge is provided to allow for a collapsed state (claim 12). In an analogous golf swing practice device, Sulzener shows it to be old in the art to provide an apparatus with a hinge mechanism to assist in providing a collapsible body that may be more conveniently transported and stored (i.e., col. 2, lines 40-44; col. 6, line 59 through col. 7, line 2). In view of the teaching in Sulzener, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Port by incorporating at least one hinge such that the stroke-length measurement tool including the training aid (10) with crossbar (12) would have had the ability to be collapsed or folded for ease of transport and storage.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2004/0204261 to Port et al (hereinafter referred to as “Port”) in view of USPN 9,011,274 to Fox.
As to claim 13, Port does not explicitly disclose that “numerals” are provided for each of the calibrated distance markers and the calibrated stroke-length markers. Port appears to show general markings on a calibration decal (30) for providing measurement criteria (i.e., paragraphs [0003] and [0010] – [0012]). Fox teaches that numbers may be incorporated into a practice/training club to refer to distances (i.e., FIG. 2 and col. 1, lines 46-60). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Port by taking advantage of numerals to provide an indication of distance, given that Fox shows that the incorporation of numerals into a measuring device is known in the art. The proposed modification of Port described herein reflects a simple substitution of one known element (i.e., a numeral as taught by Fox) for another (i.e., a measurement marking depicted by Port) to obtain predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Allowable Subject Matter
Claims 14 and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fig. 1 in Doenges;
Figs. 1-2 in Davis;
Fig. 1 in Walton (‘185);
Fig. 1 in Cemel;
Fig. 4 in Walton (‘513);
Fig. 1 in Anda;
Figs. 3A-3B in Wise;
Fig. 1C in Tischler;
Fig. 1A in Rose;
Fig. 1 in Costa;
Fig. 1 in Whitaker;
Figs. 1-1A in Reilly;
Fig. 1 in Adams;
Fig. 1 in Hamblin;
Fig. 4 in Fazio; and
Figs. 1-2 in Self.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711