DETAILED ACTION
This Office action is responsive to communication received 04/10/2024 – application papers received, including power of attorney and IDS; 06/24/2024 – IDS; and 11/15/2024 – IDS.
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 .
Continuation Data
This application is a CON of 17/515,270 10/29/2021 PAT 11980801 which is a CON of 16/693,036 11/22/2019 PAT 11173370.
Status of Claims
Claims 1-20 are pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Based upon the current record, it would appear that claims 1-20 are accorded the actual filing date of the instant application, namely 04/10/2024. See MPEP 2152.01.
Here, the disclosure of the prior-filed application, Application No. 17/515,270, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, there is no adequate support for the language “a stroke-plane indicator coupled to said apparatus body through one of said second opening and said third opening” (emphasis added), as recited in claims 1 and 12, along with the language “wherein said second opening and said third opening have the same dimensions” (emphasis added), as recited in each of claims 2 and 16, and further along with the language “and said stroke-plane indicator is coupled to said apparatus body through said third opening” (emphasis added), as recited in claims 5 and 19. The specification in both the parent application and the instant application has identified “first openings” as (402), “second openings” as (405) and “third openings” as (406). While there appear to be multiple “second openings” that are disclosed as having a same diameter, and while there is a disclosure of multiple “third openings”, there is no description that the second openings have the same dimensions as the third openings. Moreover, the stroke-plane indicator is only described as being secured within one of the second openings. There is no description of the stroke-plane indicator as being coupled to the apparatus body through the third opening.
Assuming, arguendo, that the applicant is able to substantiate that the disclosure of the instant application and the prior-filed Application No. 17/515,270 do provide support for the language identified hereinabove, note that there still exists an objection to both the specification and the drawings, as outlined hereinbelow, which the applicant must address and respond to.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the feature “wherein said second opening and said third opening have the same dimensions” (claims 2 and 16) along with “and said stroke-plane indicator is coupled to said apparatus body through said third opening” (claims 5 and 19) 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification lacks proper antecedent basis for the following feature:
“a stroke-plane indicator coupled to said apparatus body through one of said second opening and said third opening” (emphasis added), as recited in claims 1 and 12;
“wherein said second opening and said third opening have the same dimensions” (emphasis added), as recited in each of claims 2 and 16; and
“and said stroke-plane indicator is coupled to said apparatus body through said third opening” (emphasis added), as recited in claims 5 and 19.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 U.S.C. § 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 1-20 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 claims 1, 5, 12 and 19, it is not understood how the stroke-plane indicator is coupled through the third opening? The “third opening” has instead been identified and described as receiving and maintaining one of the first angle indicator and the second angle indicator. See paragraph [0086] of the specification. Although limitations from the specification are not imported into the claims, the fact that there is some inconsistency between how the coupling between the stroke-plane indicator and the opening in the apparatus is described in the specification versus how the relationship is being claimed creates confusion.
As to claims 2 and 16, there is no way to understand which “second opening” and which “third opening” are being referenced. On one hand, labels or designations such as “first”, “second”, “third”, or “A”, “B”, “C”, or “1”, “2”, “3” generally present a way to distinguish one or more elements, each from the other, in a generic manner. On the other hand, when these labels or designations have been described with specific attributes, it is important that the claims maintain consistency with the specification in referring to the different elements in order to provide clarity so that the scope of the claim may be positively ascertained. Here, the “second opening” and the “third opening” have been identified as distinct openings, one from the other. For example, paragraphs [0066], [0071] and [0079] – [0083] identify the second opening(s) as element (405). For instance, paragraphs [0066] and [0086] identify the third opening(s) as element (406). Moreover, the specification, at paragraph [0071], describes that multiple “second openings” may include a same diameter “D”. The specification does not mention any further “dimensions” for either the “second opening” or the “third opening”. While it may be said that the fitting apparatus comprises a first “second opening” and a second “second opening” having the same diameter, or while it may be said that the fitting apparatus comprises a first and a second “second opening” having the same diameter, or while it may be said that the fitting apparatus comprises one or more second openings having a same diameter, it simply is not understood how the second opening and the third opening have the same dimension. Also, it is not exactly clear which “dimension” is being referred to. The notations of “second” and “third” used in the claims 2 and 16 create an inconsistency with the language presented in the specification and thus cloud the scope of the claim.
As to dependent claims 3-4 and 6-11, these claims share the indefiniteness of independent claim 1.
As to dependent claims 13-15, 17-18 and 20, these claims share the indefiniteness of independent claim 12.
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, 6, 8-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US PUBS 2015/0300818 to De Cino.
As to independent claim 1, De Cino shows a fitting apparatus “for a golf club” (i.e., the apparatus in De Cino is clearly capable of being fitted or attached to a shaft of a golf club), comprising: an apparatus body (100); a first opening (i.e., gap 108) defined in said apparatus body (100) “for receiving a shaft of said golf club” (i.e., the gap 108 is clearly capable of receiving a shaft of a golf club); a second opening (140) defined in said apparatus body (100); a third opening (132) defined in said apparatus body (100); and a stroke-plane indicator (i.e., spirit or bubble level 144 serves as the claimed stroke-plane indicator, as broadly as claimed) coupled to said apparatus body through said second opening (140), wherein said stroke-plane indicator (144) is configured generally parallel to said shaft of said golf club when said shaft is received within said first opening (i.e., a review of FIG. 1 indicates that if a golf club shaft were to be placed within the first opening or gap 108 in a substantially vertical orientation, the stroke-plane indicator identified herein as the housing that contains the bubble level 144 would be oriented generally parallel to the shaft of the club head).
As to claim 6, said first opening or gap (108) is defined in said apparatus body (100) at a first predetermined angle relative to a normal of a lower surface of said apparatus body, and wherein said first predetermined angle is between about 0° and about 30° relative to said normal of said lower surface of said apparatus body (i.e., a vertical axis passing through gap 108 and oriented perpendicular to the lower surface of the apparatus body 100 is considered to be oriented at a first predetermined angle that is about 0° relative to said normal of said lower surface of said apparatus body 100; and see FIGS. 1 and 6).
As to claim 8, said first opening or gap (108) is defined in said apparatus body (100) at a first predetermined angle relative to a normal of a lower surface of said apparatus body, and wherein said first predetermined angle corresponds to a prescribed lie angle of said golf club. (i.e., a vertical axis passing through gap 108 and oriented perpendicular to the lower surface of the apparatus body 100 is considered to be oriented at a first predetermined angle that is about 0° relative to said normal of said lower surface of said apparatus body 100; thus corresponding to a prescribed lie angle; and see FIGS. 1 and 6).
As to claim 9, a first angle indicator coupled to said apparatus body and exposed on an upper surface of said apparatus body, wherein said first angle indicator is configured to measure changes corresponding to an effective lie angle of said golf club. De Cino shows a first angle indicator (136) coupled to said apparatus body (100) and exposed on an upper surface of said apparatus body (i.e., see the top view presented in FIG. 2). The indicator (136) is clearly capable of measuring changes of lie angle.
As to claim 11, a fastener that is configured to apply a force to said shaft within said first opening. De Cino shows a fastener (i.e., thumbscrew 120 and its pointed tip 126 and threaded member 206) that is configured to apply a force to said shaft within said first opening. A golf club shaft placed within the opening 108 would be subjected to a force applied when the thumbscrew (120) is turned.
Claims 1-2, 6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 4,949,971 to Thornton.
As to independent claim 1, Thornton shows a fitting apparatus (FIG. 1) for a golf club (1), comprising: an apparatus body (i.e., blocks 11, 12, combined); a first opening (13) defined in said apparatus body for receiving a shaft (2) of said golf club; a second opening (19) defined in said apparatus body; a third opening (19) defined in said apparatus body; and a stroke-plane indicator (i.e., as broadly as claimed, screw 20 may serve as a stroke-plane indicator; in other words, the screw would clearly be visible from a top view in an address position and may serve as an indicator or reference point to a golfer) coupled to said apparatus body through one of said second opening (19) and said third opening (19), noting that each of the second and third openings are labeled (19); wherein said stroke-plane indicator is configured generally parallel to said shaft (2) of said golf club (1) when said shaft (2) is received within said first opening (13). Here, with the shaft (2) is oriented in a generally vertical position with respect to a lower surface of the club head (3), as shown in FIG. 1, and the stroke-plane indicator identified herein as element (20) is likewise oriented in a generally vertical position.
Attention is directed to the annotated version of FIG. 1, below:
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As to claim 2, said second opening and said third opening have the same dimensions. Since the plural openings (19) are referenced by a single numerical designation and explained in the specification as passageways for like-numbered screws (20), it is clear that the openings, which are also like-numbered as element (19), have the same dimensions.
As to claim 6, said first opening (13) is defined in said apparatus body at a first predetermined angle relative to a normal of a lower surface of said apparatus body, and wherein said first predetermined angle is between about 0° and about 30° relative to said normal of said lower surface of said apparatus body. With reference to FIG. 1, the orientation of an imaginary longitudinal axis passing through opening (13) would reveal that the axis, and thus the opening (13), is oriented at 0 degrees relative to a normal of said lower surface of the apparatus body .
As to claim 8, said first opening is defined in said apparatus body at a first predetermined angle relative to a normal of a lower surface of said apparatus body, and wherein said first predetermined angle corresponds to a prescribed lie angle of said golf club. With reference to FIG. 1, the orientation of an imaginary longitudinal axis passing through opening (13) would reveal that the axis, and thus the opening (13), is oriented at a 0 degrees lie angle relative to a normal of said lower surface. This interpretation would be consistent with the showing of the shaft (2) of the club (1) being oriented substantially vertically with respect to a lower surface of the club head (3).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 6-17 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,173,370 in view of USPN 8,061,051 to Allemand.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘370 patent are, on one hand, more specific than the instant claims. For example, the claims of the ‘370 patent further require “and a reflective member removably attached to said striking face; wherein, in a first configuration said fitting apparatus is coupled to said shaft of said putter such that said collimated light source emits light in a direction parallel to said shaft toward said ground plane, and wherein, in a second configuration said collimated light source emits light in a direction parallel to an aiming line toward said reflective member”. The claims of the ‘370 patent further set forth “A method for fitting a putter with a fitting apparatus”.
On the other hand, the claims of the ‘370 patent lack the “third opening defined in said apparatus body”. Here, Allemand shows it to be old in the art of leveling devices to provide a leveling device with multiple apertures or openings (130) within which a leveling device may be situated and contained. See col. 3, lines 17-33 and FIG. 2 along with openings (130). Note that two of the openings (130) are circular in appearance with a same dimension while the other two of the openings (130) are generally square with rounded corners with a same dimension. In view of the teaching in Allemand, 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 claimed device of the ’370 patent to include a third opening that is appropriately-shaped to accommodate one or more angle indicators or a stroke-plane indicator so that a golfer may readily view the angle indicator(s) while setting up the golf club at address. With respect to the remaining limitations in the claims, note the following comments:
As to independent claim 1, see claims 1 and 9 of the ‘370 patent.
As to claim 2, note the comments hereinabove, wherein it is noted that Allemand shows it to be obvious to include a levelling device with multiple openings having a same dimension.
As to claim 3, see claims 6 and 9 of the ‘370 patent.
As to claim 6, see claim 10 of the ‘370 patent.
As to claim 7, see claim 11 of the ‘370 patent.
As to claims 8-10, see claim 9 of the ‘370 patent.
As to claim 11, see claims 7 and 8 of the ‘370 patent.
As to independent claim 12, see claims 1 and 9 of the ‘370 patent.
As to claim 13, see claim 10 of the ‘370 patent.
As to claim 14, see claim 11 of the ‘370 patent.
As to claim 15, see claim 9 of the ‘370 patent.
As to claim 16, note the comments hereinabove, wherein it is noted that Allemand shows it to be obvious to include a levelling device with multiple openings having a same dimension.
As to claim 17, see claims 6 and 9 of the ‘370 patent.
As to claim 20, see claims 7 and 8 of the ‘370 patent.
Claims 4-5 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,173,370 in view of USPN 8,061,051 to Allemand and also in view of USPN 3,953,034 to Nelson.
As to claims 4-5 and 18-19, the claimed invention of the ‘370 patent, even as modified by Allemand, lacks the specific feature “wherein when said apparatus body is coupled to a shaft of a right-handed golf club and said stroke-plane indicator is coupled to said apparatus body through said second opening, said collimated light source is positioned to emit collimated light in front of a striking face of said right-handed golf club” and the feature “wherein when said apparatus body is coupled to a shaft of a left-handed golf club and said stroke-plane indicator is coupled to said apparatus body through said third opening, said collimated light source is positioned to emit collimated light in front of a striking face of said left-handed golf club”. Nelson shows it to be old in the art to arrange a training device comprising a stroke-plane indicator in the form of a collimated light source (i.e., a laser beam) so that both a right-handed and a left-handed player may benefit from the practice device. See col. 3, lines 3-21 in Nelson. In view of the teaching in Nelson, 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 claimed invention of the ‘370 patent to have coupled the stroke-plane indicator in a manner that facilitates and permits the stroke-plane indicator to be used on clubs arranged for either left-handed or right-handed play and thus making it easier for both left-handed and right-handed players to properly align the club at address.
Claims 1-3, 6-17 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,980,801 in view of USPN 8,061,051 to Allemand.
Here, the claims of the ‘801 patent lack the specific recitation of “a second opening defined in said apparatus body” and “a third opening defined in said apparatus body”. Here, Allemand shows it to be old in the art of leveling devices to provide a leveling device with multiple apertures or openings (130) within which a leveling device may be situated and contained. See col. 3, lines 17-33 and FIG. 2 along with openings (130). Note that two of the openings (130) are circular in appearance with a same dimension while the other two of the openings (130) are generally square with rounded corners with a same dimension. In view of the teaching in Allemand, 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 claimed device of the ’801 patent to include second and/or third openings appropriately-shaped to accommodate one or more angle indicators or a stroke-plane indicator so that a golfer may readily view the angle indicator(s) while setting up the golf club at address. With respect to the remaining limitations in the claims, note the following comments:
As to independent claim 1, see claim 1 of the ‘801 patent.
As to claim 2, note the comments hereinabove, wherein it is noted that Allemand shows it to be obvious to include a levelling device with multiple openings having a same dimension.
As to claim 3, see claim 9 of the ‘801 patent.
As to claim 6, see claim 3 of the ‘801 patent.
As to claim 7, see claim 4 (as dependent upon claim 3) of the ‘801 patent.
As to claims 8-10, see claim 7 (as dependent upon claim 1) of the ‘801 patent.
As to claim 11, see claim 6 (as dependent upon claim 2, which depends from claim 1) of the ‘801 patent.
As to independent claim 12, see claims 1 and 7 (as dependent upon claim 1) of the ‘801 patent.
As to claim 13, see claim 3 of the ‘801 patent.
As to claim 14, see claim 4 of the ‘801 patent.
As to claim 15, see claims 1 and 7 of the ‘801 patent.
As to claim 16, note the comments hereinabove, wherein it is noted that Allemand shows it to be obvious to include a levelling device with multiple openings having a same dimension.
As to claim 17, see claim 9 of the ‘801 patent.
As to claim 20, see claim 6 (as dependent upon claim 2, which depends from claim 1) of the ‘801 patent.
Claims 4-5 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,173,370 in view of USPN 8,061,051 to Allemand and also in view of USPN 3,953,034 to Nelson.
As to claims 4-5 and 18-19, the claimed invention of the ‘801 patent, even as modified by Allemand, lacks the specific feature “wherein when said apparatus body is coupled to a shaft of a right-handed golf club and said stroke-plane indicator is coupled to said apparatus body through said second opening, said collimated light source is positioned to emit collimated light in front of a striking face of said right-handed golf club” and the feature “wherein when said apparatus body is coupled to a shaft of a left-handed golf club and said stroke-plane indicator is coupled to said apparatus body through said third opening, said collimated light source is positioned to emit collimated light in front of a striking face of said left-handed golf club”. Nelson shows it to be old in the art to arrange a training device comprising a stroke-plane indicator in the form of a collimated light source (i.e., a laser beam) so that both a right-handed and a left-handed player may benefit from the practice device. See col. 3, lines 3-21 in Nelson. In view of the teaching in Nelson, 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 claimed invention of the ‘801 patent to have coupled the stroke-plane indicator in a manner that facilitates and permits the stroke-plane indicator to be used on clubs arranged for either left-handed or right-handed play and thus making it easier for both left-handed and right-handed players to properly align the club at address.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIG. 4 in Chen, which utilizes a light source as an aiming device.
FIG. 1 in Ritson shows a light source attached to a golf club shaft;
Note FIGS. 1-2 in Hooker; and
FIG. 1 in Alexandre shows an apparatus with multiple openings, of interest.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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