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 .
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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 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.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 10,814,201. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of Patent 10,814,201 disclose a distance calculator including memory storing target positions, a GPS receiver, a controller configured to calculate distances from stored target position, a plurality of distance displays, and a user actuated update interface for updating displayed distances. See, e.g., claims 1-28. Regarding claim 1 of the instant application differs from the claim 1 of the 10,814,201 patent primarily in omitting recitations directed to the housing, stored power source, target indicators, and power down functionality. These omissions merely broaden the scope of the claim and do not render the claimed invention patentably distance from the patented invention;
Regarding claim 2, see button update recitation disclosed in claim 2 of ‘201;
Regarding claim 3, see mechanical button recitation disclosed in claim 3 of ‘201;
Regarding claim 4, see remote control recitation disclosed in claim 4 of ‘201;
Regarding claim 5, see wireless remote control recitation disclosed in claim 5 of ‘201;
Regarding claims 6-7, see auxiliary user interface and membrane recitation disclosed in claims 6-7 of ‘201;
Regarding claims 8-9, see display retaining information after power removal and electrophoretic display recitation disclosed in claims 13-14 of ‘201;
Regarding claims 10-12, see display configurations recitation disclosed in 15-17 of ‘201;
Regarding claim 13, see 2 to 20 displays recitation disclosed in claim 20 of ‘201;
Regarding claims 14-15, see stored power source and battery recitations disclosed in claims 21-22 of ‘201;
Regarding claim 16, see electrically erasable programmable read-only memory recitation disclosed in claim 26 of ‘201.
Regarding claims 17-19, see communication link and wireless communication link recitations disclosed in claims 27-28 in claims 27-28 of ‘201.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,194,359. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the patent discloses a distance calculator comprising memory storage configured to stored target positions, a global positioning system receiver configured to determine the position of the distance calculator, a controller configured to calculate distances from the stored target positions, a plurality of distance displays, a target indicator disposed adjacent each of the plurality of distance displays, and a user-actuated update interface configured to initiate interface configured to initiate calculation and updating of the display distances.
Regarding claim 1, the claim differs from patented claim 1 in omitting the limitation directed to “a target indicator disposed adjacent each of the plurality of distance displays”. The omission of this feature merely broadens the scope of the claim and would have been an obvious modification because the target indicator is an additional feature that is not required for the operation of the claimed distance calculator. Accordingly, the instant claim 1 is not patentably distinct from patented claim 1.
Dependent claims 2-18 recite limitations corresponding to patented claims 2-18, including the button update interface, recessed mechanical button, remote control, wireless communication link, auxiliary user interface, membrane switch, display configurations, power source, electrically erasable programmable read-only memory, and communication link. These additional limitations do not render the claimed subject matter patentably distinct from the patented invention.
Independent claim 19 likewise differs from patented claim 19 only by omitting the limitation requiring a target indicator disposed adjacent each of the plurality of distance displays. For the reasons discussed above with respect to claim 1, claim 19 is likewise not patentably distinct form patented claim 19.
Claims 20-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,691,064. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and patented claim 1 recites a method of calculating distances on a golf course comprising positioning a first distance calculator at a target, determining the target position using a global positioning system receiver, storing the target position, positioning system receiver, storing the target position, positioning the distance calculator at a hitting position, determining the hitting position, and transmitting the stored target position to a second distance calculator. Dependent claims 21-23 correspond to patented claims 2-4, respectively, by further reciting wireless communication, calculating a display distance value, and displaying the calculated display distance. These limitations likewise do not render the claimed subject matter patentably distinct from the patented claims.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 6, 10, 11, 13-18 and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Jo et al. (US Patent Publication No. 2013/0144778) in view of Balardeta et al. (US Patent Publication No. 2010/0309220).
Regarding claim 1, Jo teaches a GPS-based portable golf distance indicator (100) comprising a memory (130) configured to store golf course map data including registered target object locations (tee boxes and hole cups), a GPS receiver (110) configured to determine the current location of the golf distance indicator by receiving GPS satellite signals, a processor/controller (140) operatively coupled to the memory (130) and GPS receiver (110) for calculating distances between the current location and stored target positions, a keypad/user interface (120) for receiving user inputs, and a display/audio output (160) for presenting calculated distance information. Jo further teaches that the user actuates the keypad (120) to register target positions and initiate distance calculations based upon the stored target coordinates. Jo does not explicitly disclose simultaneously displaying a plurality of calculated distances corresponding a multiple stored target positions. Balardeta teaches a portable GPS device (10) including a display (18), processor (12) memory (20), GPS chipset (14), and user input device (16), wherein the processor simultaneously displays multiple calculated distances (60,62,64) to a plurality of golf course features on a single display and continuously updates those displayed distances as the GPS position changes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Jo’s GPS golf distance indicator to simultaneously display multiple calculated distances using the display techniques taught by Balardeta in order to provide additional distance information to the golfer while reducing menu navigation and improving usability during play. The modification merely applies a known display presentation technique to known GPS golf distance indicator and would have yielded predictable results.
Regarding claim 2, Jo teaches that the update interface comprises keypad buttons (120) disposed on the housing of the golf distance indicator for receiving user inputs to register locations and initiate distance calculations.
Regarding claim 6, Jo teaches an auxiliary user interface comprising keypad (120) operatively coupled to processor (140) for controlling operation of the golf distance indicator.
Regarding claim 10, Balardeta teaches simultaneously displaying multiple calculated distance values (60,62,64) on a single display screen (18).
Regarding claim 11, Jo teaches a display for presenting distance information. Balardeta teaches simultaneously presenting multiple distance displays in separate display regions on display (18). Under the broadest reasonable interpretation, each display region presenting a separate distance display may reasonably be considered a display screen.
Regarding claim 13, Balardeta teaches simultaneously displaying a plurality of distance values corresponding to multiple golf course features on display (18). Selecting between two and twenty displayed distances would have been an obvious matter of design choice depending upon the display size and desired amount of information presented to the golfer.
Regarding claim 14, Jo teaches a portable battery powered golf distance indicator including a power supply (150) operatively coupled to processor (140).
Regarding claim 15, Jo teaches that power supply (150) comprises a battery for supplying operating power to the portable golf distance indicator.
Regarding claim 16, Jo teaches memory (130) for storing map data and target position information. Alternatively, Balardeta expressly teaches memory (20) including memory storage comprises electrically erasable programmable read-only memory and flash memory for storing golf course data.
Regarding claim 17, Jo teaches a communication interface including USB interface (170) and wireless transmission interface for transmitting stored map data and registered target coordinate data between GPS golf distance indicators through server (510), first user terminal (520), and second user terminal (530).
Regarding claim 18, Jo expressly teaches transmitting stored target data through a wireless communication interface.
Regarding claim 19, Jo teaches a location system including GPS receiver (110), processor (140), memory (130), keypad (120), and display/audio output (160), wherein the processor calculates distances between the current location and stored target locations. Balardeta teaches simultaneously displaying multiple calculated distances. Accordingly, the instant claim would have been obvious for the reasons set forth as discussed in claim 1.
Regarding claim 20, Jo teaches a method including: determining target object coordinates using GPS receiver (110); registering and storing the target coordinates in memory (130); transmitting stored map and target coordinate data through USB interface (170) or wireless communication interface to another GPS distance indicator.
Regarding claim 21, Jo expressly teaches transmitting target position information through wireless communication.
Regarding claim 22, Jo teaches calculating the distance between the golfer’s current location and a stored target object using a processor (140) and GPS receiver (110).
Regarding claim 23, Jo teaches displaying the calculated distance through display/audio output (160).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 1 above, and further in view of Pippin et al. (US Patent Application Publication No. 2002/0082122).
Regarding claim 4, Jo and Balardeta teach the portable golf distance calculator and update interface as discussed with respect to claim 1. However, Jo and Balardeta do not explicitly disclose that the update interface comprises a remote control. Pippin teaches a remotely located base station computer (50) communicating with the handheld distance determination unit (18) through RF transmitter (30) and RF antennas (36,38), wherein the base station remotely activates the handheld unit, downloads operating modes, updates point-of-interest information, and transmits operational commands to the handheld unit. It would have been obvious to modify Jo’s golf distance calculator to employ Pippin’s remote updating arrangement to permit remote updating of stored target information, thereby improving convenience and eliminating the need for direct user access to the portable device.
Regarding claim 5, Pippin teaches wireless RF communication between base station (50) and handheld distance unit (18) using RF transmitter (30) and antennas (36,38), thereby providing wireless communication between the remotely located controller and the portable golf distance device. It would have been obvious to utilize Pippin’s wireless communication arrangement for remotely updating Jo’s golf distance calculator.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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/NINI F LEGESSE/Primary Examiner, Art Unit 3711
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