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 .
Specification
The attempt to incorporate subject matter into this application by reference to “application number 201831621” is ineffective because this is not a valid application number.
Claim Objections
Claims 3-14 are objected to because of the following informalities: Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). MPEP 2173.05(s).
Appropriate correction is required.
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 3-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-16 of copending Application No. 18/555,689 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claim limitations disclosed by instant claims 3-14 are being disclosed by claims 4-16 of copending Application No. 18/555,689.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 3-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over GARCIA [ES1220704], in view of Hines [US5924938].
Regarding claim 3, GARCIA discloses a support and fastening system for a portable device for playing golf (Fig. 1), said system comprising:
a counterweight (3) having an upper threaded rod (12) provided on an upper surface of said counterweight (3) and a lower threaded rod (4) (Fig. 1, counterweight (2), a threaded upper shaft (3) and a threaded lower stem (4));
an upper disc (8) with a orifice (9) (Fig. 1, “the disk in upper position (5) of the device is provided with a threaded central hole (6)”); and a mast (10) having a thread (11) configured to receive said upper threaded rod (12) that passes through said orifice (9) so that said upper disc (8) is secured between said mast (10) and said counterweight (3) (Fig. 1, mast 21), wherein said counterweight (3) is secured between said upper disc (8) (“the disk in upper position (5)”) and said lower disc (6) (“the disc in lower position (10)”) providing a perimeter cavity configured to hold a golf ball (14) (Fig. 2).
The difference between the device disclosed by GARCIA and the claimed invention is that GARCIA does not disclose the lower threaded rod is provided inside a recess (1) in a lower base (2) of said counterweight (3), wherein said lower threaded rod (4) is configured to screw into an internal threaded surface of a cylinder (5) that protrudes from an upper surface of a lower disc (6), a serrated washer (7) surrounding the cylinder (5).
In a related disclosure, Hines discloses a coupling structure wherein the lower threaded rod is provided inside a recess in a lower base (Fig. 4, 66 in a recess in a lower base of 78), wherein said lower threaded rod is configured to screw into an internal threaded surface of a cylinder that protrudes from an upper surface of a lower disc (Fig. 4, 76, “a plug 78 secured therein by a corresponding fastener 76”), a serrated washer surrounding the cylinder (Fig. 4, 64).
Accordingly, the prior art references teach all of the claimed elements.
The combination of the known elements is achieved by a known method of choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Furthermore, all the claimed elements would continue to operate in the same manner. Specifically, the device disclosed by GARCIA has the structure/elements to couple the counterweight and the lower disc with a male connector. A person of ordinary skill has good reason to pursue the female connector as disclosed by Hines since it will achieve the equal result. Therefore, the results would have been predictable to one of ordinary skill in the art.
Based on the above findings, it would have been obvious to one of ordinary skill in the art to modify the device of GARCIA with the female connector as suggested by Hines, as merely performing the same function as it does separately and being no more “than the predictable use of prior-art elements according to their established functions.” See KSR International Co. v. Teleflex, Inc.
Regarding claims 4-6, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 3. However, the combination of GARCIA and Hines does not explicitly disclose wherein said counterweight (5) measures 43 mm in diameter and 54 mm in length, said counterweight (5) weights 57g, and
said counterweight (3) is made from anodized aluminum.
The Applicant's specification does not disclose that the specifically claimed size, weight and material for said counterweight are for any particular purpose or to solve any stated problem that distinguishes it from the other size, weight and material disclosed. The specification therefore lacks disclosure of the criticality required by the Courts in providing patentability to the claimed range(s).
In addition to a lack of disclosed criticality in the specification, an obviousness rejection based upon optimization must rely on prior art that discloses the optimized parameter is a result-effective variable. See MPEP 2144.05.
Since the combination of GARCIA and Hines teaches a counterweight with its size, weight and material to provide a stable assembly in a vertical position, the prior art therefore provides teaching that the size, weight and material of the counterweight are variables that achieve a recognized result, and satisfies the above requirement of a result-effective variable in order to set forth an obviousness rejection based on optimization.
Because Applicants fail to disclose that the claimed range provides a criticality to the invention that separates it from the other ranges, and the prior art discloses that the size, weight and material of the counterweight absent unexpected results, it would therefore have been obvious for one of ordinary skill to discover the optimum workable range(s) as disclosed in claims 4-6 by normal optimization procedures known in the art.
Regarding claim 7, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 3, wherein said cylinder (5) is provided on a center of the upper surface of said lower disc (6) (GARCIA, Fig. 1).
Regarding claim 8, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 3, wherein the serrated washer (7) is fixed to the upper surface of said lower disc (6) (Hines, 64 is fixed to the upper surface of the bottom plate 24).
Regarding claim 9, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 3, further comprising anti-slip studs (13) provided on a lower surface of said lower disc (6) configured to secure the device on a surface (Fig. 3, 20).
Regarding claim 10, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 9. However, the combination of GARCIA and Hines does not explicitly disclose wherein said anti-slip studs (13) are made of silicone.
Nevertheless, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. V. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) per MPEP 2144.07. Here, silicone is known to be suitable for its compressibility and high frictional properties. A person ordinary skill in the art would have found it obvious to select silicone for the anti-slip studs. The rationale to combine is to minimize skidding of the device and promote normal usage on a variety of flat surfaces.
Regarding claim 11, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 3, wherein said counterweight (3) is cylindrical (GARCIA, Fig. 1).
Regarding claim 12, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 3, wherein said recess (1) is cylindrical (Hines, Fig. 4, 66 is cylindrical).
Regarding claim 13, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 3, wherein the cylinder (5) is covered by said recess (1) when the lower threaded rod (4) is screwed on the internal threaded surface of said cylinder (5) (Hines, Fig. 4).
Regarding claim 14, the combination of GARCIA and Hines disclose the support and fastening system for a portable device for playing golf according to claim 3, wherein the orifice (9) of the upper disc (8) is provided on a center of said upper disc (8) (GARCIA, Fig. 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YINGCHUAN ZHANG whose telephone number is (571)272-1375. The examiner can normally be reached 8:00 - 4:30 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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/YINGCHUAN ZHANG/Primary Examiner, Art Unit 3711
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