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 .
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 10,776,929. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. More particularly, both sets of claims are directed to systems, methods, and non-transitory computer recording media for monitoring a ball that is hit by a golf club. In both sets of the claims, various physical aspects of the ball strike are monitored using sensors in order to create a prediction of where the ball would travel. Both sets of claims predict a moving direction of the ball using this information.
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 9-15 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 following claim limitations have been interpreted under 35 U.S.C. 112(f) because they use a non-structural term, which is not preceded by a structural modifier, coupled with functional language without reciting sufficient structure to achieve the function:
an information generation unit configured to generate (claim 9), and
an information display unit configured to visualize and display (claim 9).
Because these claim limitations invoke 35 U.S.C. 112(f), claims 9-15 are interpreted to cover the corresponding structure described in the specification that achieves the claimed functions, and equivalents thereof. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f); or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2005/0272516 to Gobush (hereinafter Gobush).
Regarding claims 1, 8, and 9, Gobush teaches a method, system, and computer readable medium for providing shot information on golf balls, the method comprising the steps of:
generating strike information and direction information of a ball with reference to information on a physical quantity of the ball measured or estimated from at least one swing (e.g., ball, speed, launch angle, side angle, etc. in ¶¶ 221 and 231); and
visualizing and displaying the generated strike information and direction information of the ball in a first region or a second region (see at least Figs. 14-19 showing various visualizations of club and ball and resulting projection of ball motion).
Regarding claim 2, Gobush teaches wherein the strike information includes information on a spot associated with a strike of the ball or a face angle of a club measured or estimated from the swing, and wherein the direction information includes information on a launch angle or a side angle of the ball measured or estimated from the swing (e.g., launch angle and face angle on Fig. 19; see also Figs. 14-18).
Regarding claims 3 and 11, Gobush teaches wherein in the displaying step, the first region is a region that is divided into four parts on the basis of a launch angle associated with a travel distance of the ball and a side angle associated with a travel direction of the ball (see at least trajectory, carry plot, and distance in Fig. 14, which are created using launch angle and side angle in ¶¶ 221 and 231).
Regarding claims 4 and 12, Gobush teaches wherein in the displaying step, the second region includes a region in which a speed of the ball or a speed of a club head measured or estimated from the swing is capable of being displayed together with at least one reference speed range (see at least carry plot in Fig. 14, which includes an individual ball speed along with reference ball speeds).
Regarding claims 5 and 13, Gobush teaches wherein in the displaying step, a graphic object generated with reference to the strike information and the direction information is displayed in the first region at a location that takes into account the launch angle and the side angle (e.g., the circular ball graphic generated in addition to the carry plot and other information of Fig. 14).
Regarding claims 6 and 14, Gobush teaches wherein in the displaying step, a plurality of graphic objects generated from a plurality of swings are cumulatively displayed (see at least Fig. 15 showing an ordered list of a plurality of shots taken with the same club and Fig. 19 showing a color coded carry plot for several different clubs corresponding to different shots).
Regarding claims 7 and 15, Gobush teaches wherein in the displaying step, the plurality of graphic objects are displayed to be chronologically distinct (see at least Fig. 15 showing an ordered list of a plurality of shots taken with the same club and Fig. 19 showing a color coded carry plot for several different clubs corresponding to different shots).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited. For instance, US 2004/0032970 to Kiraly teaches a flight parameter measurement system. Additionally, US 2005/0268705 to Gobush teaches a launch monitor system similar to that of US 2005/0272516. Finally, US 2009/0036237 to Nipper et al. teaches golf gaming systems and methods that collect launch monitoring data to create a virtual golf game between different players.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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