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 Objections
Claim 8 is objected to because of the following informalities: the first and second colors lack an antecedent basis. Appropriate correction is required.
Claim Rejections - 35 USC § 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.
Claim 11 is 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. The pre-determined alignment position is not a physical feature, suggesting that the third word in line 2 should be “of”. Further, the horizontal mark on the second horizontal component contradicts the limitation of Claim 1, from which Claim 11 depends, in that the horizontal mark is on the vertical component. It is not clear whether the vertical alignment is intended to be the same feature as the horizontal mark or whether the vertical alignment is a separate feature. The scope of the claim is indefinite.
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) 1-6, 9-11, 15, 18, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmaltz, U.S. Patent Application No. 2020/0360790, in view of Mortimer et al., U.S. Patent No. 7,815,516, and in further view of Rose, U.S. Patent Application No. 2008/0207347. As to Claim 1, Schmaltz teaches a golf putting training apparatus (10) comprising a first horizontal component having a first end connected to a vertical component, at a first position on a first side, a second horizontal component having a first end connected to the vertical component, at a second position on first side, and a third horizontal component having a first end, connected to the vertical component at a third position on second side, see drawing below. It is inherent that the first horizontal component, the second horizontal component, and the third horizontal components may each have pre-determined length, width, and thickness. Schmaltz teaches that the first pre-determined length may provide a first optimal length for a starting position of a golf club putter, paragraph 0035, noting markings (28) indicating the length of backswing appropriate for a putt of noted length. It follows that the first pre-determined length corresponds to an optimal length for a starting position based on a desired length of putt. The examiner finds that a first outer edge of the first horizontal component, the second horizontal component, and a first outer edge of the third horizonal component may provide first, second, and third alignment components, paragraph 0034, noting a ball placement area, wherein the first, second, and third alignment components may be in view when addressing a ball in the ball placement area. The examiner finds that the disclosed alignment components are capable of functioning, as claimed. Schmaltz teaches that markings and structural features associated with the ball placement area may be provided to assist a user, paragraph 0034, suggesting that a mark may be placed on the vertical component in alignment at a pre-determined alignment position on the second horizontal component to align the ball to be struck as a second visual aid. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide a mark on the vertical component located as claimed and as suggested. Schmaltz does not specify that the mark on the vertical component may be a horizontal mark. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the mark as a horizontal mark, since it has been held that configuration of parts on 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). Schmaltz does not specify that the second pre-determined width may be less than the first pre-determined width, or that the third pre-determined length may be shorter than the first pre-determined length. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure named widths and lengths in the relations as claimed, since it has been held that configuration of parts on 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, supra. Schmaltz teaches that first, second, and third pre-determined thicknesses provide an elevated surface over which the putter is swung, paragraph 0039 and see Figure 1B, noting that the putter follows an elevated path defined by the thickness of the apparatus. Schmaltz, as modified, discloses the claimed invention except for providing a gap of pre-determined distance between the first and second horizontal components and except for the third pre-determined length providing a second optimal length for an ending position of the putter after striking the ball. Mortimer teaches a golf putting training apparatus (10), comprising first and second horizontal components (24i, 24ii), Col. 6, ln. 11-14 and 40-44, and see Figures 1 and 2. The examiner notes that both components are in view when a ball is being addressed for a putt. It follows that the gap and the width of the components may create a visual contrast and may serve as a visual aid component between first and second horizontal components. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified, with a gap between the first and second horizontal components, as taught by Mortimer, to provide Schmaltz, as modified, with an observable space between edges of the horizontal components, to yield the predictable result of facilitating maintaining alignment during a backswing. Rose teaches a golf putting training apparatus (10) comprising a horizontal component (12) including a scale (30) indicating a length of ending position of a putter head, paragraphs 0018 and 0019 and see Figure 1A, noting that a pre-determined length of the forward extending portion beyond the swing center corresponds to a scale marking indicating a length of an ending position, which may be considered to be an optimal length for a putt of desired distance. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified, with a pre-determined length of a third component corresponding to an ending position for a putter, to yield the predictable result of guiding a follow through.
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As to Claim 2, Schmaltz, as modified, discloses the claimed invention except for specifying that the ratio of the first pre-determined length to the third pre-determined length may be 6 to 4. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the first and third pre-determined lengths in a ratio as claimed 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, supra. As to Claim 3, Schmaltz, as modified, discloses the claimed invention except for specifying that the first pre-determined length and the third pre-determined length may be 6 inches and 4 inches respectively. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the first and third pre-determined lengths as claimed 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, supra. As to Claim 4, the examiner finds it to be inherent that the first, second, and third horizontal components have a thickness. Schmaltz, as modified, discloses the claimed invention except for providing thickness of 0.25 to 0.50 inches. It would have been an obvious matter of design choice to set the thickness of the horizontal components within the claimed range, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art, In re Rose, 105 USPQ 237 (CCPA 1955). As to Claim 5, the examiner finds it to be inherent that the thicknesses of the horizontal components are the same or different. As to Claim 6, the examiner finds that the first, second, and third pre-determined thicknesses of prior art possess the structural features of the claimed components and therefore are capable of performing in the same manner, namely by allowing a golfer to develop muscle memory and elevate the putting stroke during actual golf on an actual course. “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), MPEP 2112. . As to Claim 9, Rose teaches that differing patterns may be used to create a visual contrast, paragraph 0063, suggesting that components of a golf putting practice apparatus may be provided with different patterns to create a visual contrast. It would have been obvious to one of ordinary skill in the art before the effective filing date to apply different patterns to the components of Schmaltz, as modified, to provide a known substitute visual contrast. Schmaltz, as modified, discloses the claimed invention except for specifying that the patterns are arranged with a first pattern on a top surface of the first horizontal component and the vertical component and with the second pattern on a top surface of the second horizontal component and the third horizontal component. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the first and second patterns as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 86 USPQ 70 (CCPA 1950). As to Claim 10, Schmaltz, as modified, discloses the claimed invention except for specifying that the pre-determined distance between first and second horizontal components to create the gap may be 0.5 inches. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a distance of 0.5 inches between the horizontal components since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art, In re Rose, 105 USPQ 237 (CCPA 1955). As to Claim 11, Schmaltz, as modified, discloses the claimed invention except for specifying that the horizontal mark may be configured to include a vertical alignment on the vertical component at a midpoint of the pre-determined width of the second horizontal component. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the horizontal mark as claimed, 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). Claim 11 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 15, Rose teaches a lighting component, (20) which may include a light emitting diode, paragraph 0019. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified, with a lighting component comprising a light emitting diode, as taught by Rose, to provide Schmaltz, as modified with a known substitute visual indicator. As to Claim 18, Schmaltz, as modified, discloses the claimed invention except for specifying that the components may comprise one or more of cardboard, composite, metal, paper plastic, rubber wood, or a combination. It would have been obvious to one of ordinary skill in the art before the effective filing date to form the components of material as claimed since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416 (CCPA 1960). As to Claim 21, Schmaltz, as modified, is applied as in Claim 1, with the same obviousness rationales being found applicable. Further, the examiner finds that the first and second pre-determined thicknesses may function in the same manner as the first, second, and third pre-determined thicknesses to provide an elevated surface. The examiner finds that Schmaltz, paragraph 0134 teaches alignment markings configured to aid a golfer, suggesting various alignment marks, as discussed above. It would have been obvious to one of ordinary skill in the art to provide a vertical mark perpendicular to the horizontal mark on the vertical component to align the golf ball, as suggested.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmaltz, in view of Mortimer and Rose, as applied to claim 1 above, and further in view of Rolfe, U.S. Patent No. 2,790,642. Schmaltz, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 7, Schmaltz, as modified, is silent as to different colors creating a visual contrast between components. Rolfe teaches a golf putting training apparatus (stroke guiding device) comprising horizontal components (10, 14) and vertical components (20, 21), Col. 2, ln. 25-26, 30-31, 36, and Col. 3, ln. 11-12. The horizontal components may be provided with different colors to create a visual contrast, Col. 2, ln. 50-56. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified, with a visual contrast between horizontal components, provided by different colors, as taught by Rolfe, to provide Schmaltz, as modified, with easily perceptible difference between adjacent components. Schmaltz, as modified, discloses the claimed invention except for duplicating parts of different colors for the vertical component and a third horizontal component. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a visual contrast between the vertical component and the third horizontal component, in the same manner, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmaltz, in view of Mortimer and Rose, as applied to claim 1 above, and further in view of Merwin, U.S. Patent Application No. 2017/0056747. Schmaltz, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 8, Schmaltz, as modified, is silent as to a first color and a different second color. Merwin teaches a golf putting training apparatus (10) comprising a first color and a different second color on surfaces (34, 35) which may include yellow or black as the second color, paragraphs 0012 and 0023. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide first and second different contrasting colors, as taught by Merwin, to provide Schmaltz, as modified, with different colored components to yield the predictable result of creating a visual color contrast.
Claim(s) 12, 13, 16, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmaltz, in view of Mortimer and Rose, as applied to claim 1 above, and further in view of Springer, U.S. Patent No. 5,437,458. Schmaltz, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 12, Schmaltz, as modified, is silent as to first and second additional guide components. Springer teaches a golf putting training apparatus comprising a first additional guide component (52, 36) attached perpendicular to a first outer edge of a first side of a horizontal component and providing a first alignment component for the first edge component the putting head of the golf club putter, Col. 4, ln. 18-25 and see Figure 5. Springer teaches a second additional guide component (52, 36) attached perpendicular to the first outer edge of a horizontal component providing a second additional alignment component for the second edge component of the putting head of the golf club putter, Col. 4, ln. 18-25 and see Figure 5. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified, with first and second additional guide components configured as claimed and as taught by Springer, to provide Schmaltz, as modified, with upstanding first and second guides to yield the predictable result of facilitating development of a consistent swing motion. Schmaltz, as modified, discloses the claimed invention except for arranging the first and second additional guide components on the outer edge of the first horizontal component and on the first outer edge of the third horizontal component respectively. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the first and second guide components as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, supra. As to Claim 13, Springer teaches that first and second guide components may be dynamically attachable and removable, Col. 4, ln. 28-37. It is inherent that removal may be the reverse operation from attachment. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified, with dynamically attachable and removable first and second additional guide components, as taught by Springer, to provide Schmaltz, as modified, with a device usable with or without additional guide components to yield the predictable result of improving versatility. As to Claim 16, Springer teaches a top surface of the golf putting training apparatus including a mirrored surface component (70), Col. 4, ln. 9-12. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified, with a mirrored surface component as taught by Springer, to provide Schmaltz, as modified, with a component for viewing a golfer’s eyes, to yield the predictable result of facilitating a proper putting stance looking over the ball. As to Claim 19, Springer teaches that a slider component (30) may be injection molded, suggesting that other components may be formed of the same process, Col. 3, ln. 60-61. It would have been obvious to one of ordinary skill in the art before the effective filing date to form the components by injection molding as taught and suggested by Springer to provide Schmaltz, as modified, with a known substitute component material.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmaltz, in view of Mortimer and Rose, as applied to claim 1 above, and further in view of Peterson et al., U.S. Patent Application No. 2019/0282871. Schmaltz, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 14, Schmaltz, as modified, is silent as to an attachable and removable golf ball marker. Peterson teaches a removable golf ball marker (marking disc), see Abstract. The marker may be attachable, paragraph 0029, noting magnet. The marker may have a horizontal mark, paragraph 0055 and see Figure 32. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified with an attachable and removable golf ball marker with a horizontal mark, as taught by Peterson, to provide Schmaltz, as modified, with an additional feature for putting to yield the predictable result of facilitating the process of repositioning a ball when required.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmaltz, in view of Mortimer and Rose, as applied to claim 1 above, and further in view of Deacon, U.S. Patent Application No. 2015/0038248. Schmaltz, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 17, Schmaltz, as modified, is silent as to one or more additional alignment components. Deacon teaches a golf training apparatus comprising first and second horizontal components (36) connected to a first side of a vertical component (34) and a third horizontal component (32) on a second side of the vertical component, paragraph 0032 and see Figure 8. An additional alignment component (136) may be used parallel to the training apparatus, paragraph 0049 and see Figure 17. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Schmaltz, as modified, with an additional parallel alignment component as taught by Deacon, to provide Schmaltz, as modified, with an additional alignment feature to yield the predictable result of augmenting the components assisting the golfer with alignment.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmaltz, in view of Mortimer and Rose, as applied to claim 1 above, in view of Peterson, as applied in Claim 14 above, and in further view of Springer, as applied in Claim 12 above. Schmaltz, as modified, is applied as in Claims 1 and 15, with the same obviousness rationale being found applicable. Peterson is applied as in Claim 14, with the same obviousness rationale being found applicable. Springer is applied as in Claim 12, with the same obviousness rationale being found applicable.
Conclusion
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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/JOHN E SIMMS JR/ Primary Examiner, Art Unit 3711 3 March 2026