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 .
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nighan, Jr. et al., U.S. Patent No. 5,692,965, in view of Coates, U.S. Patent Application No. 2006/0040758. As to Claim 1, Nighan teaches a take-away posture confirmation device (invention) including a head (6), a shaft (14), and a grip (16), Col. 8, ln. 23 and Col. 9, ln. 6-8. Nighan teaches a beam irradiation part (34) arranged on a predetermined portion of the shaft and irradiates a beam (30, 32) onto a ground surface on which a ball (12) may be placed, Col. 8, ln. 41-51 and see Figure 3. The beam may be a slit beam, Col. 8, ln. 51-53, noting beamsplitting mirror. It is inherent that a beam trajectory is formed. The slit beam irradiation part may include a fixing part (clamps) fixed to the shaft, Col. 8, ln. 58-64 and see Figure 4a. A laser generation part (2) may be fixed by the fixing part to irradiate the slit beam, Col. 8, ln. 64-66. Nighan teaches a hinge (two-piece clamp) connecting the fixing part to the shaft and configured to rotate the laser generation part changing the irradiation direction of the beam, Col. 10, ln. 60 – Col. 11, ln. 1. Nighan provides rotation of the slit beam irradiation part with respect to the shaft instead of rotation of the laser generation part with respect to the fixing part. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide rotation of the laser generation part with the laser generation part configured to rotate on a hinge connecting with the fixing part since it has been held that configuration of parts of an invention is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, 149 USPQ 47 (CCPA 1966). Nighan is silent as to an aperture. Coates teaches a beam irradiation part (36) fixed to a golf club shaft, paragraph 0040. A laser generation part (laser) may include an aperture (channel) controlling an irradiation angle of the beam, paragraphs 0040 and 0041. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Nighan, as modified, with an aperture configured as claimed and as taught by Coates, to provide Nighan, as modified, with a known substitute feature for establishing beam angles. As to Claim 3, Nighan teaches that the beam trajectory varies the location irradiated onto the ground surface depending on the position of the golf club during the take-away posture, and the beam trajectory is irradiated in the location where a user who takes the take-away posture can check (It is an object of the invention to utilize a visible laser source attached to the golf club in order to provide visual feedback to the golfer during the golf swing in order to help the golfer monitor or modify his or her golf swing by monitoring the position and motion of the head of the club, with said laser source projecting a visible spot onto the ground or a screen when the club is at various parts of the golf swing, col 6, lines 17-24). As to Claim 4, Nighan teaches that the slit beam irradiation part is arranged on the head or the predetermined portion of the shaft, and the beam trajectory irradiated from the laser generation part onto the ground surface controls the irradiation angle of a laser to be irradiated to a location where the user can check during the take-away posture (An additional clamp 38 and knob 42 are used to adjust the directional component of laser beam 30 within the plane defined by the club head 6 and the club shaft 14. This angle 46 can also be chosen between zero and 360 degrees, and is depicted in FIG. 4(b). With these two directional controls, the laser beam 30 can be adjusted to project upon the ground or a screen at any point during the golf swing, col 9, lines 4-11). As to Claims 5-9, Nignan teaches that the relative positions (claim 5), angle directions (claim 6), directions (claim 7), and beam trajectories (claims 8-9) are all functions that are inherent to the device of Nighan. This is because Nighan’s device recites the exact structure of claim 1 (as discussed above), and claims 5-9 are dependent from claim 1, thus inherently being able to perform the same functions as claimed; “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.
Response to Arguments
Applicant’s arguments submitted 16 July 2026 have been considered but are moot in view of the new ground of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 29 September 2026
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