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 .
Procedural Summary
This is responsive to the claims filed 05/13/2024.
Claims 1-12 are pending.
Applicant’s IDS submission is acknowledged and provided herewith.
The Drawings filed on 05/13/2024 are noted.
Drawing
The drawings are objected to because the writings in the boxes as shown in Figures 1-4 appear to be blurry and difficult to read. 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.
Priority
This application makes reference to or appears to claim subject matter disclosed in Application No. 16/826,394 (Patent No. 11648443), filed 2020-03-23. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76; if the application was filed on or after September 16, 2012, the specific reference must be included in an ADS in compliance with 37 CFR 1.76. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the petition fee under 37 CFR 1.17(m), and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS in compliance with 37 CFR 1.76 with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76). See MPEP § 211.02.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,648,443. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the more generic or broader claims now pending (instant Claims 1 to 12). That is, the rationale of In re Goodman applies here in that once Applicant has received a patent for a species or a more specific embodiment, Applicant is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent.
Claims 1 to 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 to 13 of U.S. Patent No. 12,097,404. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the more generic or broader claims now pending (instant Claims 1 to 12). That is, the rationale of In re Goodman applies here in that once Applicant has received a patent for a species or a more specific embodiment, Applicant is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Each of Claims 1-12 has been analyzed to determine whether it is directed to any judicial exceptions.
The examiner follows the two step-analysis, as described in MPEP 2106. The following diagram is an overview of the steps involved.
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Step 1
Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims a method in claims 1-12. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A
Step 2A has been further divided into two prongs as shown in the following diagram.
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Step 2A, Prong 1
Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Specifically, independent Claim 1 “1. A method for fitting golfers with a golf club comprising:
applying a machine learning analysis to a data set of golf swings obtained from a motion tracking system to generate a predictive algorithm;
wherein the motion tracking system includes optical, accelerometer, LIDAR or markerless video based systems;
obtaining motion tracking data from a user; and
employing the predictive algorithm to recommend a golf club for the user based on the obtained motion tracking data from the user.”
The underlined portions of representative claim 1 generally encompass the abstract idea. The dependent claims further define the abstract idea by defining the predictive algorithm recommendations (e.g., identifying the recommended club based on at least one of weight, center of gravity of the head, coefficient of restitution, etc.). The abstract idea may be viewed, for example, as:
use of machine learning in a given environment (e.g., for analyzing wager information) as discussed in Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025); and/or
steps or instructions involving observations, judgements or evaluations, which are mental processes as these can be performed in the human mind under the 2019 PEG.
Like the claims in Recentive, the instant claims merely recite the use of generic machine learning applied to a given data environment. The Recentive court determined that claimed methods are not rendered patent eligible by the fact that using existing machine learning technology they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved. The courts have consistently held, in the context of computer-assisted methods, that such claims are not made patent eligible under § 101 simply because they speed up human activity. Dependent claims 2-12 include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. Accordingly, each of Claims 1 to 12 recites an abstract idea.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. Here, the abstract idea is not integrated into a practical application. According to 2019 PEG, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Here, the claims recite a motion tracking system and use of machine learning, generically recited/claimed (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
The applying, obtaining, and employing steps are deemed to be data gathering and data presentation for the use of the judicial exception and similarly are recited at a high level of generality. Thus, these limitations are a form of insignificant extra-solution activity (See MPEP 2106.05(g), See also selecting a particular source and type of data to be manipulated where “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)).
Additionally the additional elements are generically recited computer elements in the claims that do not improve the functioning of a computer, or any other technology or technical field. For example, applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. In order to be patent-eligible, software patents must make a technical improvement to a computer per se. The invention must provide a “technical solution to a technical problem.” A “technical problem” is a problem arising out of computers or networks. Applicant’s invention does not address a technical problem.
Furthermore, the additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Thus, since Applicant’s invention does not provide a “technical solution to a technical problem,” it is not eligible under 35 USC §101. For at least these reasons, the claims as a whole does not integrate the recited judicial exception into a practical application and these claims are directed to the judicial exception. Thus, Claims 1-12 lack the eligibility requirements of Step 2 Prong II.
Step 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
• add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present (MPEP 2106.05(d)); or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
Claims 1-12 do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. As discussed above with respect to the lack of a practical application, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components used as tools. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
Further, under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be reevaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. Here, the applying, obtaining, and employing steps of the claims are deemed to be data gathering and data presentation extra-solution activity. Court decisions cited in MPEP 2106.05(d)(II) indicate that these limitations are well-understood, routine, and conventional function when it is claimed in a merely generic manner (as they are here). See storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv) and then to present or display said information is well known as in presenting offers and gathering statistics (MPEP 2106.05(d)(II)(iii). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, these limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Thus, Claims 1-12 remain ineligible.
Dependent Claims are ineligible and lack a practical application. They recite further extra-solution activities and further define the abstract idea of the independent claims. Thus, claims 2-11 inherit the same abstract idea as Claim 1 and therefore remains ineligible.
AIA Notice
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 Rejections - 35 USC § 102 or 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 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.
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.
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.
Claims 1-9 and 12 are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. Patent 7,041,014 to Wright et al. (hereinafter Wright).
Regarding Claim 1, Wright discloses a method for fitting golfers with a golf club comprising:
applying a machine learning analysis to a data set of golf swings obtained from a motion tracking system to generate a predictive algorithm (the use of a processor (306) is disclosed and as shown in Figure 5, element 300 is a machine system … element 304 is an optical motion analysis system. column 4 lines 41-61 disclose that golfers with different types of golf clubs are used to identify the performance parameters useful in classifying a golfer's swing and more than 100 performance parameters were measured for the golf swings of more than 150 golfers using a three-dimensional motion analysis for measuring the motion of the golf club and the golfer during a golf swing and this is considered to be a data set of golf swings as recited … column 5 lines 44-52 discloses that the system has a database that is capable of determining which club is preferable for an individual golfer);
wherein the motion tracking system includes optical, accelerometer, LIDAR or markerless video based systems (Col. 3:14-26 discloses a three-dimensional motion analysis system, which preferably includes a micro-electro-mechanical system (MEMS) incorporating accelerometers and rate gyros);
obtaining motion tracking data from a user (as shown in Figure 5, optical motion data is collected from a user); and
employing the predictive algorithm to recommend a golf club for the user based on the obtained motion tracking data from the user (as shown in Figure 5, optical motion data is collected from a user and used to match a golf club to a golfer and a club matching system 300 including a performance data from the golfer’s swing. As discussed in column 9 lines 60-67 and column 1 lines 1-11 the golfer is matched to be fitted with a particular golf club that is selected from a group of golf club styles).
Regarding Claim 2, Wright discloses the method of claim 1, wherein the data set of golf swings is updated with new swing data (column 11 lines 17-19 discloses that additional parameter like a golfer’s weight and height could be used to match a golfer to be fitted with optimal golf club selection process. When this parameter is implemented, it will be a new swing data that will be updated as recited).
Regarding Claim 3, Wright discloses the method of clam 1, wherein the data set of golf swings is obtained from at least two golfers (as disclosed in the abstract, large number of pre-test golfers are recorded and their data is saved).
Regarding Claim 4, Wright discloses the method of claim 1, wherein the motion tracking system measures both body and club data throughout an entire swing of at least one golfer (as discussed in column 9 lines the processor (306) is configured to record the motion of a golfer’s hands and the motion of the club head).
Regarding Claim 5, Wright discloses the method of claim 1, wherein the predictive algorithm will identify, at least, a recommended shaft, recommended club, and recommended build for the user (for example in claim 10, the step of correlating each measurement in the set of measured performance parameters for the test golfer being fitted with the values in the data set for the corresponding performance parameter for each subgroup of previously fitted golfers, to provide a correlation value for each subgroup; and the step of selecting comprises combining the correlation values provided for each of the subgroups of previously fitted golfers and determining the particular subgroup that provides the highest combined correlation, and selecting for the test golfer being fitted the particular golf club (which is considered as being the recommended club for the test golfer) from the group of golf clubs that is associated with the subgroup of golfers providing the highest correlation in the step of correlating is disclosed).
Regarding Claim 6, Wright discloses the method of clam 5, wherein the predictive algorithm will identify the recommended shaft based on, at least one of, overall stiffness, overall weight, balance point, or torque of a tip section of the recommended shaft (as shown in Table II in column 6 lines 60-67, different stiffness of the clubs is disclosed as Preference Group 1 Division A or C Medium Group 2 Division B Medium, some Stiff Group 3 Division B Stiff Group 4 Division A Soft, some Medium Group 5 Division B Stiff Group 6 Division B Medium and Stiff Group 7 Division C Soft).
Regarding Claim 7, Wright discloses the method of claim 5, wherein the predictive algorithm will identify the recommended club based on, at least one of, weight, center of gravity of the head, coefficient of restitution of different areas of the face and moment of inertia (as shown in Figure 2, the shaft 102 varied with respect to: (i) the total weight of the shaft, and (ii) the distribution of weight along the length of the shaft. Specifically, the golf clubs in division A were characterized by a lightweight shaft having a mass of about 50 65 grams. The golf clubs in division B were characterized by a conventional-weight shaft having a mass of about 70 115 grams, and also by having about 15 grams of performance weight 106 added to their handles 104. The golf clubs in division C were characterized by shafts having a mass of about 70 95 grams, and also by having about 30 grams of performance weight 108 added to about the mid-point of the shaft 102).
Regarding Claim 8, Wright discloses the method of claim 5, wherein the predictive algorithm will identify the recommended build of the golf club based on, at least one of, length, swing weight, grip size, loft and lie (as shown in Figure 2, the shaft 102 varied with respect to: (i) the total weight of the shaft, and (ii) the distribution of weight along the length of the shaft. Specifically, the golf clubs in division A were characterized by a lightweight shaft having a mass of about 50 65 grams. The golf clubs in division B were characterized by a conventional-weight shaft having a mass of about 70 115 grams, and also by having about 15 grams of performance weight 106 added to their handles 104. The golf clubs in division C were characterized by shafts having a mass of about 70 95 grams, and also by having about 30 grams of performance weight 108 added to about the mid-point of the shaft 102).
Regarding Claim 9, Wright discloses the method of claim 1, wherein the data set of golf swings includes data from at least two golf clubs with different golf club attributes captured by the motion tracking system (column 4 lines 41-61 disclose that golfers with different types of golf clubs are used to identify the performance parameters useful in classifying a golfer's swing and more than 100 performance parameters were measured for the golf swings of more than 150 golfers using a three-dimensional motion analysis for measuring the motion of the golf club and the golfer during a golf swing).
Regarding Claim 11, Wright discloses the method of claim 1, wherein golfers with differing physical attributes are selected to generate the data set of golf swings (column 11 lines 17-19 discloses that additional parameter like a golfer’s weight and height could be used to match a golfer to be fitted with optimal golf club selection process).
Regarding Claim 12, Wright discloses the method of claim 1, further comprising generating at least one recommended golf club profile for the user (see abstract. Based on the measured performance parameters and the previously established data set, the test golfer/user is classified according to swing type, and the optimum golf club is then selected from the plurality of styles of golf clubs. Figure 4 also discloses profile of clubs).
It should be noted that examiner is giving the broadest reasonable interpretation of the claims as set forth in MPEP 904.01(a). The examiner notes that apparatus claims must be structurally distinguishable from the prior art. SEE MPEP 2114. During normal use and operation of the Wright invention, the method steps would inherently be performed. If it is argued that the method steps as recited in the instant application is not explicitly disclosed by the Wright invention, it is the examiner’s position that during normal use and operation of the Wright invention, the method steps as recited would obviously be performed.
.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wright in view of Rankin et al. (US Patent No. 6,966,843).
Regarding Claim 10, Wright discloses the invention as recited above but does not explicitly disclose, wherein the recommended club minimizes dispersion of where the recommended club strikes a golf ball on a club face to produce faster ball speeds with improved spin numbers. However using parameters that include ball speeds and spin is not a new concept and Rankin is one example of reference that teaches this concept (see column 9 lines 3-12). It would have been obvious to one of ordinary skill in the art before the effective filing to provide the Wright reference with additional collection of parameters that include ball speed and ball spin in order to make the device of Wright system to be capable of providing automated golf club fitting system that measures a number of parameters associated with a golf shot and that determines the consistency and/or performance of the golfer with a respective golf club as stated in column 1 lines 10-16 of the Rankin reference.
Conclusion
Claims 1-12 are examined above.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and is provided in the Notice of References cited.
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/S.N.H/Examiner, Art Unit 3715 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715