DETAILED ACTION
Specification
1. The disclosure is objected to because of the following informalities: recitation to “application number 201831621” appears to be a typographical error as this is not an existing application number.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
2. 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 of this title, 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.
3. Claims 4-6 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia (ES 1220704) in view of Hines (US Pat. No. 5,924,938).
With respect to claims 4-6, 8, 10-16, Garcia teaches a support and fastening system for a portable device for playing golf, said system comprising: a counterweight 1 having a lower threaded rod 4 provided in a lower base of said counterweight 1, wherein the counterweight 1 is positioned between a lower surface 8 of an upper disc 5 and an upper surface 11 of a lower disc 10 of the device said lower threaded rod is adapted to screw on an internal threaded surface 12 provided on a center of the upper surface of said lower disc 10; further comprising anti-slip studs 20 provided on a lower surface of said lower disc to secure the device on a surface; wherein said counterweight 1 is cylindrical (Fig.’s 1-3); wherein said counterweight 1 further comprises an upper threaded rod 3 protruding from an upper surface of the counterweight 1 (Fig. 1); wherein said upper threaded rod 3 is adapted to pass through an opening 6 of said upper disc 5, wherein the opening 6 of said upper disc 5 is provided on a center of the upper disc 5 (Fig. 1); wherein said upper threaded rod 3 is adapted to thread with an end of a mast 21 (page 12, lines 25-27).
Admittedly, the counterweight 1 lower threaded rod 4 is positioned on the exterior of the bottom base portion, and not inside a cavity provided in a lower base of said counterweight. The threaded rod 4 is threadingly secured to a female internal threaded cavity 12 of an upper surface of the lower disc 10, as opposed to the claimed cylinder that protrudes from the upper surface of said lower disc. However, analogous art reference Hines teaches that it is known to couple golf components with a cylinder 78 having an internal threaded surface configured to receive threaded rod 76 positioned within a cylindrical cavity, wherein the cylinder 78 is covered by the cavity when threaded rod 76 is screwed on the internal threaded surface of the cylinder 78. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the coupling means used by Garcia to incorporate the coupling means taught by Hines. The rationale to combine is to utilize a known coupling arrangement to facilitate convenient removable connection between the counterweight and lower disc.
Examiner further notes that, per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). 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. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the combined teachings of Garcia and Hines includes a lower rod 4 positioned within a cavity portion of the counterweight and is configured to be screwed on an internal threaded surface of a cylinder that protrudes form the upper surface of the lower disc, wherein the cylinder is provided on a center of the upper surface of the lower disc and comprises a serrated washer surrounding it. That is to say, with respect to claims 4-6, the cylinder and the serrated washer are not positively recited, but are intended use / functional limitations.
With respect to claim 9, Garcia fails to expressly teach wherein said anti-slip studs 20 are made of silicone. However, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) per MPEP 2144.07. Here, silicone is known to be suitable for its compressibility and high frictional properties. A person ordinary skill in the art would have found it obvious to select silicone for the anti-slip studs. The rationale to combine is to minimize skidding of the device and promote normal usage on a variety of flat surfaces.
Allowable Subject Matter
4. Claim 7 is 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.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711