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 .
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 recitation in claim 4 of “said trailing edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said heel opening”, the recitation in claim 8 of “said leading edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said toe opening” must be shown or the feature(s) canceled from the claim(s). It is noted that claim 4 is dependent on claim 1. Claim 1 recites “said second edge comprising a notch and a flap adjacent to said notch; said leading edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said toe opening, said tab comprising a permanent bend forming a hook adjacent to said toe opening”. Applicant’s drawings shows the “said second edge comprising a notch and a flap adjacent to said notch” and “said leading edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said toe opening, said tab comprising a permanent bend forming a hook adjacent to said toe opening”. Applicant’s specification discloses: “as shown in Figure 2, golf club head cover device material 11 is bounded by leading edge 12, trailing edge 14, first side edge 16, and second side edge 18”. Claim 4 requires all the limitations of claim 1 and therefore claim 4 requires a tab at both the leading edge and a tab at the trailing edge of the sheet material. The limitations of claim 4 are not shown in applicant’s drawings. It is noted that claim 8 is dependent on claim 5. Claim 5 recites “said second edge comprising a notch and a flap adjacent to said notch; said trailing edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said heel opening, said tab comprising a permanent bend forming a hook adjacent to said heel opening”. Claim 8 recites “said leading edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said toe opening”. Claim 8 requires all the limitations of claim 5 and therefore claim 8 requires a tab at both the leading edge and trailing edge. The limitations of claim 8 are not shown in applicant’s drawings. 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 4 and 8 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.
The recitation in claim 4 of “said trailing edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said heel opening” is indefinite because it is unclear what part/feature applicant considers to be the claimed “curvilinear segment”. Applicant’s specification discloses: “as shown in Figure 2, golf club head cover device material 11 is bounded by leading edge 12, trailing edge 14, first side edge 16, and second side edge 18”. Applicant’s specification discloses the claimed trailing edge as part number 14. It is unclear from applicant’s specification what part/feature applicant considers to be the curvilinear segment of the trailing edge.
The recitation in claim 8 of “said leading edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said toe opening” is indefinite because it is unclear what part/feature applicant considers to be the claimed “curvilinear segment”. It is noted that claim 8 is dependent on claim 5. Claim 5 recites “said second edge comprising a notch and a flap adjacent to said notch; said trailing edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said heel opening, said tab comprising a permanent bend forming a hook adjacent to said heel opening”. Claim 8 recites “said leading edge comprising a curvilinear segment, wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said toe opening”. Claim 8 requires all the limitations of claim 5 and therefore claim 8 requires a tab at both the leading edge and trailing edge, in addition to the claimed “flap” and “notch”.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Higdon (3398961) in view of Yarmuth (20150126295).
Regarding claim 1, Higdon (Figures 1-6) teaches a golf club head cover device comprising: a sheet material, said sheet material comprising a first edge (See fig. 1-3 and 5) and a second edge (See fig. 1-3 and 5) opposite said first edge, said second edge comprising a notch (Fig. 2-3 and 5, Part No. 47), and said notch is open to an interior of said shape; wherein when said first edge and said second edge are coupled said sheet material takes on a tubular shape having a heel opening and a toe opening at opposite ends of said tubular shape (See fig. 2 and 5), said sheet material further comprising a leading edge connecting said first edge and said second edge, said leading edge comprising a curvilinear segment (Fig. 1-3 and 5, Part No. 33), wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab (Fig. 2 and 5, Part No. 33) adjacent to said toe opening (See fig. 2, Part No. 33), said tab comprising a permanent bend (See fig. 2 and 5) forming a hook adjacent to said toe opening (See fig. 2 and 5).
It is noted that the claim recitation of “a permanent bend” is directed to bending the claimed “curvilinear segment” of the sheet material to provide a bend in the tab of the sheet material. Applicant’s specification discloses: “in at least one embodiment, hook 52 is formed by permanently forming an approximately 90 degree angle in tab 24 at approximately the midpoint of tab 24”. The claimed “permanent bend” is directed to a product formed by a process (a product-by process claim/limitation). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See: In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). In the instant case, the prior art of Higdon (Fig. 2) teaches the final product of a tab having a bend and therefore meets the claim. Alternatively, Higdon (Fig. 5) teaches a “permanent bend” (See Higdon: Fig. 5, part No. 33).
Higdon does not teach said second edge comprising a flap adjacent to said notch, said flap overlays said first edge.
Yarmuth (Fig. 5-7) teaches said second edge comprising a notch (See fig. 5-7) and a flap (Fig. 5-7, Part no. 134) adjacent to said notch, said flap (134) overlays said first edge (140), and said notch is open to an interior of said shape (See fig. 7) (Para. 0022).
It is noted that claimed are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of a “notch” is being interpreted to mean “a V-shaped indentation; an angular or v-shaped cut”.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Higdon with said second edge comprising a notch and a flap as taught by Yarmuth as a means of providing a golf club head cover edge with a cutout and a closable flap (Yarmuth: Para. 0022).
Regarding claim 2, the modified Higdon (Figures 1-6) teaches said sheet material comprises a semi-rigid material (Col. 2, Line 71; Col 3, Lines 1-10).
Regarding claim 3, the modified Higdon (Figures 1-6) teaches said sheet material comprises two or more layers (See fig. 4) (Col. 3, Lines 11-14).
Regarding claim 4, the modified Higdon (Figures 1-6) teaches said sheet material further comprises a trailing edge connecting said first edge and said second edge, said trailing edge comprising a curvilinear segment (See fig. 2-3 and 5), wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said heel opening (See fig. 2-3 and 5).
Regarding claim 5, Higdon (Figures 1-6) teaches a golf club head cover device comprising: a sheet material, said sheet material comprising a first edge and a second edge opposite said first edge See fig. 1-3 and 5); said second edge comprising a notch (Fig. 2-3 and 5, Part No. 47), and said notch is open to an interior of said shape; wherein when said first edge and said second edge are coupled, said sheet material takes on a tubular shape having a heel opening and a toe opening at opposite ends of said tubular shape (See fig. 2 and 5), said sheet material further comprising a trailing edge connecting said first edge and said second edge (See fig. 1-3 and 5), said trailing edge comprising a curvilinear segment (Fig. 2 and 5, Part No. 33), wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said heel opening (See fig. 2-5), said tab comprising a permanent bend (See fig. 2 and 5)forming a hook adjacent to said heel opening (See fig. 2 and 5).
It is noted that the claim recitation of “a permanent bend” is directed to bending the claimed “curvilinear segment” of the sheet material to provide a bend in the tab of the sheet material. Applicant’s specification discloses: “in at least one embodiment, hook 52 is formed by permanently forming an approximately 90 degree angle in tab 24 at approximately the midpoint of tab 24”. The claimed “permanent bend” is directed to a product formed by a process (a product-by process claim/limitation). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See: In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). In the instant case, the prior art of Higdon (Fig. 2) teaches the final product of a tab having a bend and therefore meets the claim. Alternatively, Higdon (Fig. 5) teaches a “permanent bend” (See Higdon: Fig. 5, part No. 33).
Higdon does not teach said second edge comprising a flap adjacent to said notch; said flap overlays said first edge.
Yarmuth (Fig. 5-7) teaches said second edge comprising a notch (See fig. 5-7) and a flap (Fig. 5-7, Part no. 134) adjacent to said notch, said flap (134) overlays said first edge (140) (Para. 0022).
It is noted that claimed are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of a “notch” is being interpreted to mean “an indentation or incision on an edge or surface; a V-shaped indentation; an angular or v-shaped cut”.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Higdon with said second edge comprising a notch and a flap as taught by Yarmuth as a means of providing a golf club head cover edge with a cutout and a closable flap (Yarmuth: Para. 0022).
Regarding claim 6, the modified Higdon (Figures 1-6) teaches said sheet material comprises a semi-rigid material (Col. 2, Line 71; Col 3, Lines 1-10).
Regarding claim 7, the modified Higdon (Figures 1-6) teaches said sheet material comprises two or more layers (See fig. 4) (Col. 3, Lines 11-14).
Regarding claim 8, the modified Higdon (Figures 1-6) teaches said sheet material further comprises a leading edge connecting said first edge and said second edge, said leading edge comprising a curvilinear segment (See fig. 1-3 and 5), wherein when said sheet material is formed into said tubular shape said curvilinear segment forms a tab adjacent to said toe opening (See fig. 1-3 and 5).
Regarding claim 9, Higdon (Figures 1-6) teaches a golf club head cover device comprising: a tubular material having a heel opening and a toe opening at opposite ends of said tubular material (See fig. 1-3 and 5), said heel opening and said toe opening being unobstructed, said tubular material being constructed of a sheet material formed into a tubular shape (See fig. 1-3 and 5), said sheet material having at least a first edge and a second edge, wherein said first edge and said second edge are coupled to create said tubular shape (See fig. 1-3 and 5), said toe opening comprises an external tab (Fig. 2 and 5, Part No. 33) adjacent to said toe opening, said tab comprising a permanent bend forming a hook adjacent to said toe opening (See fig. 2 and 5); a notch (Fig. 1-3 and 5, Part No. 47) in said tubular material, said notch being open to an interior of said tubular material (See fig. 2 and 5); said gap extending between said heel opening and said notch (See fig. 2 and 5).
It is noted that the claim recitation of “a permanent bend” is directed to bending the claimed “curvilinear segment” of the sheet material to provide a bend in the tab of the sheet material. Applicant’s specification discloses: “in at least one embodiment, hook 52 is formed by permanently forming an approximately 90 degree angle in tab 24 at approximately the midpoint of tab 24”. The claimed “permanent bend” is directed to a product formed by a process (a product-by process claim/limitation). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See: In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). In the instant case, the prior art of Higdon (Fig. 2) teaches the final product of a tab having a bend and therefore meets the claim. Alternatively, Higdon (Fig. 5) teaches a “permanent bend” (See Higdon: Fig. 5, part No. 33).
It is noted that claimed are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of a “notch” is being interpreted to mean “an indentation or incision on an edge or surface; a V-shaped indentation; an angular or v-shaped cut”.
Higdon does not teach a flap in said material adjacent to said notch, said flap overlaying said gap, said flap comprising a border that is oriented toward said notch.
Yarmuth (Fig. 5-7) teaches a flap (Fig. 5-7, Part no. 134) in said material adjacent to said notch; said flap overlaying said gap; said flap (134) comprising a border that is oriented toward said notch (See fig. 7) (Para. 0022).
It is noted that claimed are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of a “notch” is being interpreted to mean “an indentation or incision on an edge or surface; a V-shaped indentation; an angular or v-shaped cut”.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Higdon with a flap in said material adjacent to said notch as taught by Yarmuth as a means of providing a golf club head cover edge with a cutout and a closable flap (Yarmuth: Para. 0022).
Regarding claim 10, the modified Higdon (Figures 1-6) teaches said tubular material comprises a semi-rigid material (Col. 2, Line 71; Col 3, Lines 1-10).
Regarding claim 11, the modified Higdon (Figures 1-6) teaches said tubular material comprises two or more layers (See fig. 4) (Col. 3, Lines 11-14).
Regarding claim 12, the modified Higdon (Figures 1-6) teaches said heel opening comprises an external tab (Fig. 3, Part No. 41) adjacent to said heel opening.
Regarding claim 13, Higdon (Figures 1-6) teaches a golf club head cover device comprising: a tubular material having a heel opening and a toe opening at opposite ends of said tubular material (See fig. 1-3 and 5), said heel opening and said toe opening being unobstructed (See fig. 1-3 and 5), said tubular material being constructed of a sheet material formed into a tubular shape (See fig. 1-3 and 5), said sheet material having at least a first edge and a second edge (See fig. 1-3 and 5), wherein said first edge and said second edge are coupled to create said tubular shape (See fig. 1-3 and 5), said heel opening comprises an external tab (Fig. 1-3 and 5, Part No. 33) adjacent to said heel opening, said tab comprising a permanent bend forming a hook adjacent to said heel opening (See fig. 1-3 and 5); a notch (Fig. 2-3 and 5, part No. 47) in said tubular material, said notch being open to an interior of said tubular material (See fig. 2-3 and 5); said gap extending between said heel opening and said notch (See fig. 2 and 5); a gap (See fig. 2 and 5) in said tubular material; said gap being open to an interior of said tubular material (See fig. 2 and 5).
It is noted that claimed are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of a “notch” is being interpreted to mean “an indentation or incision on an edge or surface; a V-shaped indentation; an angular or v-shaped cut”.
It is noted that the claim recitation of “a permanent bend” is directed to bending the claimed “curvilinear segment” of the sheet material to provide a bend in the tab of the sheet material. Applicant’s specification discloses: “in at least one embodiment, hook 52 is formed by permanently forming an approximately 90 degree angle in tab 24 at approximately the midpoint of tab 24”. The claimed “permanent bend” is directed to a product formed by a process (a product-by process claim/limitation). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See: In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). In the instant case, the prior art of Higdon (Fig. 2) teaches the final product of a tab having a bend and therefore meets the claim. Alternatively, Higdon (Fig. 5) teaches a “permanent bend” (See Higdon: Fig. 5, part No. 33).
Higdon does not teach a flap in said material adjacent to said notch, said flap overlaying said gap, said flap comprising a border that is oriented toward said notch.
Yarmuth (Fig. 5-7) teaches a flap (Fig. 5-7, Part no. 134) in said material adjacent to said notch; said flap overlaying said gap, said flap (134) comprising a border that is oriented toward said notch (See fig. 7) (Para. 0022).
It is noted that claimed are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of a “notch” is being interpreted to mean “an indentation or incision on an edge or surface; a V-shaped indentation; an angular or v-shaped cut”.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Higdon with a flap in said material adjacent to said notch as taught by Yarmuth as a means of providing a golf club head cover edge with a cutout and a closable flap (Yarmuth: Para. 0022).
Regarding claim 14, the modified Higdon (Figures 1-6) teaches said tubular material comprises a semi-rigid material (Col. 2, Line 71; Col 3, Lines 1-10).
Regarding claim 15, the modified Higdon (Figures 1-6) teaches said tubular material comprises two or more layers (See fig. 4) (Col. 3, Lines 11-14).
Regarding claim 16, the modified Higdon (Figures 1-6) teaches said toe opening comprises an external tab (Fig. 3, part No. 41) adjacent to said toe opening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER GLENN whose telephone number is (571)272-1277. The examiner can normally be reached 9:00 a.m. - 5:00 p.m..
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/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
