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 .
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
Adhesive material on clip
must be shown and identified via reference number 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.
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.
Claims 1-10 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.
In claim 1, Applicant provides “for holding at least one of: one or more golf tees and one or more golf ball markers…wherein the one or more golf ball markers is configured to hold one or more barrels based on the force between the magnetic field of the at least one magnet arranged within the stainless steel block and the induced magnetic domain in the one or more golf ball markers, in a horizontal fashion offset from each barrel of the one or more barrels, wherein the one or more barrels, are configured to hold the one or more golf tees.” Applicant has chosen specific language in order to not positively claim the tees and to not positively claim the markers, which in itself, Applicant has not yet created the 112 issues. Applicant has not required that the tees and markers are part of the invention but merely the apparatus must be capable of holding the above items. However, Applicant provides that the barrels are attached to the markers and therefore Applicant’s intent is not clear, as the markers are not part of the invention. Claims 2-10 is/are rejected as being dependent on the above rejected claim(s). Claims 3-5, 13-15 are also rejected for the same above reasons.
The Office notes that Applicant’s claims are all subject to the above extensive 112 rejection. However, in order to expedite prosecution for Applicant, the Office provides the following rejection:
Claim Rejections - 35 USC § 103
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) 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hall (US 5050830 A) in view of Johnson (US 20020175131 A1) and Strahan (US 5143371 A).
Claims 12-15 are being treated as product-by-process limitations and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above). Furthermore, the prior art discloses the structure provided.
11: A wearable holder apparatus (figs 1-2) for holding at least one of: one or more golf tees and one or more golf ball markers (capable of performing the above intended use, the device is capable of holding tees and markers), the wearable holder apparatus comprising: a clip attached to one or more wearable apparels of one or more users (adjacent 3/4/7/11/8); attachment mechanism (adjacent 7); barrels (14s, 17s)
With respect to a stainless steel block mechanically arranged on the clip, wherein the stainless steel block comprises: at least one magnet arranged in a steel pocket within the stainless steel block, wherein the stainless steel block attached to the clip is configured to hold the one or more golf ball markers based on a force between magnetic field of the at least one magnet arranged within the stainless steel block and induced magnetic domain in the one or more golf ball markers, the Office notes that Hall discloses the above attachment mechanism of hook and loop material. Johnson also discloses attachment mechanism such as hook and loop material and also discloses that the above can be replaced with a stainless steel block with a magnet that is capable of attaching to steel elements (such as for example such as a tool or element made of steel; figure 4b such as with steel block 17, magnet 13 also shown in fig 3a, capable of attaching to steel as for example provided in paragraph 39). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Hall in view of Johnson (by replacing one attachment mechanism for another attachment mechanism such as steel with magnet, or by adding in additional mechanism of magnet while keeping the existing hook and loop ) in order to provide a material with a particular desired strength of attachment and feel, as well as ease of removal. Though not required, the Office merely notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute one attachment mechanism for another because it has been held that substituting equivalents known for the same purpose on the basis of its suitability for the intended use was an obvious extension of the prior teachings.. Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat.Inter. 1980), 209 USPQ at 759.
With respect to wherein the one or more golf ball markers is configured to hold one or more barrels based on the force between the magnetic field of the at least one magnet arranged within the stainless steel block and the induced magnetic domain in the one or more golf ball markers, in a horizontal fashion offset from each barrel of the one or more barrels, wherein the one or more barrels, are configured to hold the one or more golf tees, the Office again notes the 112 rejection above. The markers are not required and therefore attachment of the barrels to the markers is not required. Nevertheless, the barrels may be placed in any position such as an offset position. The structure remains the same. The device is also capable of the intended use of holding golf tees. The Office further notes that a magnet is provided above which is capable of inducing magnetic domain.
The Office notes that the prior art already discloses barrels (14s, 17s of Hall) of which are capable of being arranged on a clip and arranging on a adhesive material and scratched (as shown for example with element adjacent 3/7/1/11/4 in Hall; the Office notes that Applicant has not positively claimed the above elements). In order to expedite prosecution for Applicant and if there is any question to the above, the Office notes that Strahan discloses a combination of adhesive material and magnet to hold multiple items (such as adjacent 44, 56 as in figs 5, 6). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Strahan (by x) in order to y.
6. The wearable holder apparatus of claim 1, wherein a center of each of the one or more golf ball markers, is scratched to place the one or more barrels to optimize an adhesive connection between the one or more golf ball markers and the one or more barrels (capable of performing the above intended use, markers are not required by Applicant).
With respect to the following claims:
7. The wearable holder apparatus of claim 1, wherein diameter of the at least one magnet is 10 millimeter.
8. The wearable holder apparatus of claim 1, wherein length size of the stainless steel block is 25 millimeter and wherein breath of the stainless steel block is 20 millimeter.
9. The wearable holder apparatus of claim 1, wherein length of the wearable holder apparatus is 50 millimeter.
10. The wearable holder apparatus of claim 1, wherein thickness of the stainless steel block with the at least one magnet arranged in the center of the stainless steel block, is 3 millimeter.
The Office notes that, it is well within the skill of one ordinary skill in the art to provide a particular sized element such as to provide a desired strength and area of attachment, as well as to provide a desired size that would fit to a user, etc. In addition to the above, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide the above values because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Further, It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
16. The wearable holder apparatus of claim 11, wherein the clip is scratched to place the one or more barrels to optimize an adhesive connection between the clip and the one or more barrels (clip is capable of performing the above intended use, such as being scratched).
With respect to the following claims:
17. The wearable holder apparatus of claim 11, wherein diameter of the at least one magnet is 25 millimeter.
18. The wearable holder apparatus of claim 11, wherein diameter of the steel pocket is 30 millimeter.
19. The wearable holder apparatus of claim 11, wherein length of the wearable holder apparatus is 50 millimeter.
20. The wearable holder apparatus of claim 11, wherein thickness of the stainless steel block with the at least one magnet arranged in the center of the stainless steel block, is 3 millimeter.
The Office notes that, it is well within the skill of one ordinary skill in the art to provide a particular sized element such as to provide a desired strength and area of attachment, as well as to provide a desired size that would fit to a user, etc. In addition to the above, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide the above values because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Further, It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hall (US 5050830 A) in view of Johnson (US 20020175131 A1).
Claims 2-5, 12-15 are being treated as product-by-process limitations and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above). Furthermore, the prior art discloses the structure provided.
The Office notes the significant 112 rejection above. Nevertheless, Hall discloses:
1, 11: A wearable holder apparatus (figs 1-2) for holding at least one of: one or more golf tees and one or more golf ball markers (capable of performing the above intended use, the device is capable of holding tees and markers), the wearable holder apparatus comprising: a clip attached to one or more wearable apparels of one or more users (adjacent 3/4/7/11/8); attachment mechanism (adjacent 7); barrels (14s, 17s)
With respect to a stainless steel block mechanically arranged on the clip, wherein the stainless steel block comprises: at least one magnet arranged in a steel pocket within the stainless steel block, wherein the stainless steel block attached to the clip is configured to hold the one or more golf ball markers based on a force between magnetic field of the at least one magnet arranged within the stainless steel block and induced magnetic domain in the one or more golf ball markers, the Office notes that Hall discloses the above attachment mechanism of hook and loop material. Johnson also discloses attachment mechanism such as hook and loop material and also discloses that the above can be replaced with a stainless steel block with a magnet that is capable of attaching to steel elements (such as for example such as a tool or element made of steel; figure 4b such as with steel block 17, magnet 13 also shown in fig 3a, capable of attaching to steel as for example provided in paragraph 39). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Hall in view of Johnson (by replacing one attachment mechanism for another attachment mechanism such as steel with magnet, or by adding in additional mechanism of magnet while keeping the existing hook and loop ) in order to provide a material with a particular desired strength of attachment and feel, as well as ease of removal. Though not required, the Office merely notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute one attachment mechanism for another because it has been held that substituting equivalents known for the same purpose on the basis of its suitability for the intended use was an obvious extension of the prior teachings.. Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat.Inter. 1980), 209 USPQ at 759.
With respect to wherein the one or more golf ball markers is configured to hold one or more barrels based on the force between the magnetic field of the at least one magnet arranged within the stainless steel block and the induced magnetic domain in the one or more golf ball markers, in a horizontal fashion offset from each barrel of the one or more barrels, wherein the one or more barrels, are configured to hold the one or more golf tees, the Office again notes the 112 rejection above. The markers are not required and therefore attachment of the barrels to the markers is not required. Nevertheless, the barrels may be placed in any position such as an offset position. The structure remains the same. The device is also capable of the intended use of holding golf tees. The Office further notes that a magnet is provided above which is capable of inducing magnetic domain.
The Office notes that the prior art already discloses barrels (14s, 17s of Hall) of which are capable of being arranged on a clip and arranging on a adhesive material and scratched (as shown for example with element adjacent 3/7/1/11/4 in Hall; the Office notes that Applicant has not positively claimed the above elements)
6. The wearable holder apparatus of claim 1, wherein a center of each of the one or more golf ball markers, is scratched to place the one or more barrels to optimize an adhesive connection between the one or more golf ball markers and the one or more barrels (capable of performing the above intended use, markers are not required by Applicant).
With respect to the following claims:
7. The wearable holder apparatus of claim 1, wherein diameter of the at least one magnet is 10 millimeter.
8. The wearable holder apparatus of claim 1, wherein length size of the stainless steel block is 25 millimeter and wherein breath of the stainless steel block is 20 millimeter.
9. The wearable holder apparatus of claim 1, wherein length of the wearable holder apparatus is 50 millimeter.
10. The wearable holder apparatus of claim 1, wherein thickness of the stainless steel block with the at least one magnet arranged in the center of the stainless steel block, is 3 millimeter.
The Office notes that, it is well within the skill of one ordinary skill in the art to provide a particular sized element such as to provide a desired strength and area of attachment, as well as to provide a desired size that would fit to a user, etc. In addition to the above, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide the above values because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Further, It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
16. The wearable holder apparatus of claim 11, wherein the clip is scratched to place the one or more barrels to optimize an adhesive connection between the clip and the one or more barrels (clip is capable of performing the above intended use, such as being scratched).
With respect to the following claims:
17. The wearable holder apparatus of claim 11, wherein diameter of the at least one magnet is 25 millimeter.
18. The wearable holder apparatus of claim 11, wherein diameter of the steel pocket is 30 millimeter.
19. The wearable holder apparatus of claim 11, wherein length of the wearable holder apparatus is 50 millimeter.
20. The wearable holder apparatus of claim 11, wherein thickness of the stainless steel block with the at least one magnet arranged in the center of the stainless steel block, is 3 millimeter.
The Office notes that, it is well within the skill of one ordinary skill in the art to provide a particular sized element such as to provide a desired strength and area of attachment, as well as to provide a desired size that would fit to a user, etc. In addition to the above, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide the above values because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Further, It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Response to Arguments
Applicant's arguments with respect to the claims have been considered but are moot because in view of the amendment the search has been updated and a new rejection has been made. Nevertheless, Applicant states that Applicant has corrected the 112 issue but the language is still present. Applicant then states that the primary reference does not require metal. The Office notes that the primary reference does not teach away from including metal as the reference does not provide that it is limited to a device lacking metal. The Office further notes that adhesive material and magneti could be provided in combination. In response to applicant's argument that the prior art is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the Office notes that both prior art are both to technologies that include hook and loop and attaching elements to the exterior. The prior art is indeed analogous. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Office notes that Applicant’s device is not to a method of steps but rather to completed apparatus. Accordingly, Applicant/Appellant has not demonstrated error in the factual findings or reasoning set forth by the Office and the Office must maintain the 103 rejections.
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 ANDREW D PERREAULT whose telephone number is (571)270-5427. The examiner can normally be reached Monday - Friday 7:00am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D PERREAULT/Primary Examiner, Art Unit 3735