DETAILED ACTION
Claims Subject to Examination
Claims 1-15 of this application are subject to examination.
Claim Construction in Examination
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
Examiner’s Claim Construction
The current claim limitations are construed under the BRI standard. No explicit claim construction is deemed to be necessary.
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.
GROUND 1: Claim 13 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 13, the term “the cover” (l. 2) lacks proper antecedent basis. The examiner suggests changing this term to “the body”.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference for each document (listed alphabetically):
“Barrett”
US Patent No. 8,663,025 B2
“Duncan et al.”
WO Publication No. 00/23153 A1
“Fox”
US Publication No. 2003/0176230 A1
“Krause”
US Patent No. 5,885,165
“Lee et al.”
KR Publication No. 10-1105976 B1 (with translation)
“Sullivan”
US Publication No. 2009/0325730 A1
“Tardiff”
US Patent No. 4,664,387
“Yamamoto”
US Patent No. 4,209,172
“Yang et al.”
KR Publication No. 10-1915270 B1 (with translation)
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.
GROUND 2: Claims 1, 2 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al.
With respect to claim 1, Lee et al. discloses a golf putting training tool (practice ball) 100 comprising a body having opposite end portions 2 in the shape of rounded cones extending symmetrically from opposite sides of a central spherical portion 1. See Figs. 1-3; ¶¶ 0015, 0019.1 The training tool 100 has a width of 11 cm as measured along a central (or core) axis of the training tool, and an outer diameter of 4.3 cm as measured radially about the central axis, the width (11 cm) being at least twice the outer diameter (4.3 cm). See Figs. 1-2; ¶ 0018. An alignment indicator 3 extends circumferentially around the central axis of the training tool 100, the alignment indicator 3 being generally centered along the width of the training tool 100. See Figs. 1-3; ¶¶ 0016, 0022-0024.
Lee et al. teaches that the training tool 100 is made of the same material as a conventional golf ball, with urethane being one example of a conventional material, and with the material distributed in such a way that the training tool has the same weight (about 46 g) as a conventional golf ball. See ¶¶ 0018, 0025.
With respect to claim 2, Figs. 1-2 of Lee et al. show that the body of the training tool 100 is formed with conventional dimples.
With respect to claim 6, the alignment indicator 3 is in the form of a line that is marked on (i.e., surface indicia applied to) the outer surface of the central spherical portion 1.
With respect to claim 7, the opposite end portions 2 are in the shape of rounded cones, which gives the body a non-uniform thickness.
With respect to claim 8, the opposite end portions 2 are in the shape of rounded cones and, thus, are generally frustoconical in shape.
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.
GROUND 3: Claim 2 is rejected under 35 U.S.C. 103 as obvious over Lee et al. in view of Yang et al. and Fox.
See the detailed discussion of Lee et al. in GROUND 2. If Lee et al. is considered to fail to teach the dimples required by claim 2, this feature is taught by Yang et al. and Fox.
Yang et al. teaches a golf putting training aid 1 having an outer shell/surface 2 formed with dimples 3. See Figs. 2-5; ¶¶ 0034-0035.2 Fig. 6 shows the training aid 1 with a width greater than its outer diameter. See ¶¶ 0055-0060.
Fox teaches a golf putting training tool comprising two partially spherical end portions 2 that are joined together at a central portion of the training tool, with an alignment indicator 4 provided on the central portion. See Figs. 1, 4 and 6; ¶¶ 0105-0108. Fig. 3 illustrates a method of use in which the alignment indicator 4 is used to properly align a putter head 5. See ¶ 0109. In the embodiment of Fig. 2, the training tool has a core 11 extending circumferentially around a core axis, and a shell 12 disposed about the core 11. See ¶ 0110. The training tool may have the same kind of dimples as a conventional golf ball. See ¶¶ 0050-0052, 0066, 0110.
From the teachings of Yang et al. and Fox, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Lee et al. by providing the body of the training tool with conventional dimples in order to better mimic the look, feel and behavior of a conventional golf ball.
GROUND 4: Claim 4 is rejected under 35 U.S.C. 103 as obvious over Lee et al.
See the detailed discussion of Lee et al. in GROUND 2. As explained above, Lee et al. teaches an outer diameter of 4.3 cm (which is about 42.6 mm) and a width of 11 cm (or 110 mm). Lee et al. fails to teach a width of 156.6 mm. However, the skilled artisan possesses the ability to modify a specific dimension in order to tailor the device to an intended application. For example, the skilled artisan would understand that golf putters are sold in a variety of sizes and configurations and, thus, it would be beneficial for the training tool to be made available in smaller and/or larger sizes to tailor the training tool to different golf putters. Thus, the selection of a width of 156.6 mm is considered to be obvious to the person of ordinary skill in the art. Further, a modification involving a mere change in size or dimension is generally recognized to be within the level of ordinary skill in the art.
GROUND 5: Claim 5 is rejected under 35 U.S.C. 103 as obvious over Lee et al. in view of Duncan et al.
See the detailed discussion of Lee et al. in GROUND 2. Lee et al. fails to teach that the alignment indicator is in the form of a recessed groove.
Duncan et al. teaches a golf putting training tool comprising end discs 3a, 3b and a central disc 4 extending outwardly from a shaft 2, with the central disc 4 having an alignment indicator in the form of a recessed groove 5 (an additional indicator 6 being provided within the groove 5), and with the user aligning an alignment aid on a putter with the alignment groove 5 and alignment indicator 6 during use. See Figs. 1-2; p. 3, l. 29 to p. 5, l. 28. In the embodiment of Fig. 3, the central disc 4 is replaced with a central sphere 7. See p. 5, l. 30 to p. 5, l. 5. In the embodiment of Fig. 4, the shaft 2 tapers from a region of increased diameter proximate the central disc to regions of decreased diameter proximate the end discs 3a, 3b. See p. 6, ll. 7-14. The embodiment of Fig. 4 is illustrated as having a width that is at least twice its outer diameter.
From the teachings of Duncan et al., it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Lee et al. by using an alignment indicator in the form of a recessed groove because this allow the alignment indicator to be formed during the process of manufacturing the body and because this provides a pronounced indication for alignment. Further, such a modification involving the mere substitution of one well-known alternative for another is recognized to be within the level of ordinary skill in the art when, as here, the substitution yields only a predictable result.
GROUND 6: Claim 6 is rejected under 35 U.S.C. 103 as obvious over Lee et al. in view of Tardiff.
See the detailed discussion of Lee et al. in GROUND 2. If Lee et al. is considered to fail to teach the surface indicia required by claim 6, this feature is taught by Tardiff.
Tardiff teaches a golf putting training tool 10 comprising a core 24 extending circumferentially around a core axis, a shell 26 disposed about the core 24, and an alignment indicator 22 in the form of a colored stripe or a line of printing extending circumferentially around the core axis at the center of the training tool. See Figs. 1-1a; col. 2, ll. 52-63; col. 3, ll. 39-49.
From the teachings of Tardiff, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Lee et al. by using an alignment indicator in the form of surface indicia because this minimizes the cost of the alignment indicator while allowing for better visual appeal and/or a clearer indication of the proper use. Further, such a modification involving the mere substitution of one well-known alternative for another is recognized to be within the level of ordinary skill in the art when, as here, the substitution yields only a predictable result.
GROUND 7: Claims 9 and 10 are rejected under 35 U.S.C. 103 as obvious over Lee et al. in view of Yang et al. and Sullivan.
See the detailed discussion of Lee et al. in GROUND 2.
Lee et al. teaches that the training tool 100 is made of the same material as a conventional golf ball, with urethane being one example of a conventional material, and with the material distributed in such a way that the training tool has the same weight (about 46 g) as a conventional golf ball. See ¶¶ 0018, 0025. As shown in Figs. 1-2 of Lee et al., the training tool 100 has at least an outer cover that is formed with conventional dimples. Lee et al. fails to teach that the training tool has a core extending circumferentially around the central (or core) axis, a shell disposed about the core and having a first Shore D hardness, and the outer cover disposed about the shell and having a second Shore D hardness less than the first Shore D hardness. However, the skilled artisan would appreciate that it is well-known to manufacture a conventional training tool or golf ball having such a three-layer or three-component construction, as evidenced by the teachings of Yang et al. and Sullivan.
Yang et al. teaches that a conventional golf ball has (i) an inner core capable of elastic deformation, (ii) an outer shell/surface that covers the inner core, and (iii) a coating layer disposed about the outer shell/surface. See ¶¶ 0003-0004.3 Yang et al. further teaches a golf putting training aid 1 having this same type of construction as a conventional golf ball; and Fig. 4 shows the training aid 1 having the inner core 4 and the outer shell/surface 2, but the coating layer is not shown. See ¶¶ 0034-0035, 0074. Fig. 6 shows the training aid 1 with a width greater than its outer diameter. See ¶¶ 0055-0060.
Sullivan teaches a golf ball comprising (i) an inner core 12 made of a low deformation material such as a highly-cross linked and un-foamed rubber composition, (ii) an outer shell 14 disposed about the inner core 12 and made of a high coefficient of restitution material such as a foamed rubber composition, (iii) an inner cover 17 disposed about the outer shell 14 and made of a material having a first Shore D hardness, and (iv) an outer cover 18 disposed about the inner cover 17 and made of a material such as urethane having a second Shore D hardness less than the first Shore D hardness. See Fig. 1; ¶¶ 0045-0046, 0048-0058.
Sullivan also teaches a golf ball comprising (i) an inner core 22 made of a high coefficient of restitution material, (ii) an outer shell 24 disposed about the inner core 22 and made of a material having a first Shore D hardness, and (iii) an outer cover 26 disposed about the outer shell 24 and made of a material such as polyurethane having a second Shore D hardness less than the first Shore D hardness. See Fig. 2; ¶¶ 0059-0071.
From the teachings of Yang et al. and Sullivan, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Lee et al. by providing the training tool with a core extending circumferentially around the central (or core) axis, a shell disposed about the core and having a first Shore D hardness, and an outer cover disposed about the shell and having a second Shore D hardness less than the first Shore D hardness because such a construction (i) better mimics the behavior of a conventional golf ball, (ii) improves the performance of the training tool (e.g., improved coefficient of restitution while maintaining soft feel and superior control characteristics), and (iii) improves the appearance of the training tool so as to make it more attractive to potential users.
With respect to claim 10, as explained above, Sullivan teaches a core comprised of a foamed rubber composition, a shell comprised of a rubber material, and a cover comprised of a urethane material. The selection of an EPP foam is considered to be an obvious design choice. Further, the mere substitution of one well-known alternative material for another is recognized to be within the level of ordinary skill in the art when, as here, the substitution yields only a predictable result.
GROUND 8: Claim 15 is rejected under 35 U.S.C. 103 as obvious over Lee et al. in view of Yang et al. and Sullivan and further in view of Yamamoto and Krause.
See the detailed discussion of Lee et al. in GROUND 2.
Lee et al. teaches that the training tool 100 is made of the same material as a conventional golf ball, with urethane being one example of a conventional material, and with the material distributed in such a way that the training tool has the same weight (about 46 g) as a conventional golf ball. See ¶¶ 0018, 0025. As shown in Figs. 1-2 of Lee et al., the training tool 100 has at least an outer cover that is formed with conventional dimples. Lee et al. fails to teach that the training tool has a core extending circumferentially around the longitudinal (or core) axis, a shell disposed about the core, and the outer cover disposed about the shell. However, the skilled artisan would appreciate that it is well-known to manufacture a conventional training tool or golf ball having such a three-layer or three-component construction, as evidenced by the teachings of Yang et al. and Sullivan.
See the detailed discussion of Yang et al. and Sullivan in GROUND 7.
From the teachings of Yang et al. and Sullivan, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Lee et al. by providing the training tool with a core extending circumferentially around the longitudinal (or core) axis, a shell disposed about the core, and an outer cover disposed about the shell because such a construction (i) better mimics the behavior of a conventional golf ball, (ii) improves the performance of the training tool (e.g., improved coefficient of restitution while maintaining soft feel and superior control characteristics), and (iii) improves the appearance of the training tool so as to make it more attractive to potential users.
With respect to the claimed method of use, Lee et al. teaches the steps of: placing the golf putting training tool 100 on a ground surface; using the alignment indicator 3 to aid the user in properly aligning a putter with the training tool 100 so that the putter strikes the center of the training tool; and striking the training tool 100 with a face of the putter. See Fig. 3; ¶¶ 0020-0024. Lee et al. fails to teach aligning an alignment aid of a putter with the alignment indicator of the training tool. However, the skilled artisan would appreciate that it is well-known to provide a putter with an alignment aid to aid the user in properly aligning the putter with an alignment indicator on a training tool or golf ball, as evidenced by the teachings of Yamamoto and Krause.
Yamamoto teaches a method comprising: placing a golf ball 14 on a ground surface 30; aligning an alignment aid 24 on a putter head 18 with an alignment indicator 26 on the golf ball 14 to aid the user in properly aligning the putter head 18 with the golf ball 14; and striking the golf ball 14 with a face 20 of the putter head 18. See Figs. 1-2a and 7-8; col. 4, l. 66 to col. 6, l. 18.
Krause teaches a method comprising: placing a golf putting training tool 10 on a ground surface; aligning an alignment aid (see the ˄ in Fig. 2) on a putter head 70 with an alignment indicator 46 and/or 60 on the training tool 10 to aid the user in properly aligning the putter head 70 with the training tool 10; and striking the training tool 10 with a face 74 of the putter head 70. See Figs. 1-3; col. 2, ll. 43-51; col. 3, ll. 16-19; col. 4, ll. 5-14 and 18-43.
From the teachings of Yamamoto and Krause, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Lee et al. by providing the putter with an alignment aid and aligning the putter’s alignment aid with the alignment indicator of the training tool in order to aid the user in properly aligning the putter with the training tool.
Pertinent Prior Art
The following prior art is considered pertinent to the claimed invention but is not relied upon to reject any claim.
Barrett teaches a method comprising: placing a golf ball 10 on a ground surface; aligning an alignment aid 22 on a putter head 20 with an alignment indicator 16 on the golf ball 10 to aid the user in properly aligning the putter head 20 with the golf ball 10; and striking the golf ball 10 with a face of the putter head 20. See Fig. 6.
Claim Objections
Claims 4 and 11 are objected to because the recited width of about 156.6 mm does not correspond with the description of the invention in the specification. Claim 4 (due to its dependency on claim 1) and claim 11 are directed to an embodiment having two opposed end portions coupled to a generally spheroid central portion. In ¶¶ 0046, the specification describes such an embodiment as having a width of about 132.3 mm (not 156.6 mm). The specification or claims should be amended to provide correspondence between the claims and the specification.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11, 12 and 14 are allowed. However, see the objection to claim 11 above.
Claim 13 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach a golf putting training tool, as defined in claim 11, including a body having a width of about 156.6 mm and an outer diameter of about 42.6 mm in combination with the body including (i) a central portion that is generally spheroid in shape and includes a plurality of dimples disposed along an outer surface thereof, and (ii) two opposed end portions coupled to the central portion each of which are generally frustoconical in shape and are devoid of dimples.
Specification Objections
The specification is objected to because:
In ¶ 0058, “a body 1006, similar to cover 306” (4th line) is not accurate since element 1006 (in the embodiment as shown in Figs. 14-15) is a hollow body whereas element 306 (in the embodiment of Figs. 6-7) is a cover disposed over a shell.
In ¶ 0058, “cover 1006” (8th line) should read “cover” since element 1006 is a hollow body as shown in Figs. 14-15. The alternative embodiment (i.e., the modification of the embodiment of Figs. 14-15) having a core, shell and cover is not shown in the drawings.
In ¶ 0061, “cover 1106” (4th line) should read “cover” since element 1106 is a hollow body as shown in Figs. 16-17. The alternative embodiment (i.e., the modification of the embodiment of Figs. 16-17) having a core, shell and cover is not shown in the drawings.
In ¶ 0061, “cover 1006” (13th line) should read “body 1006”.
In ¶ 0065, “core axis A” (6th line) should read “core axis C”.
Drawing Objections
The drawings are objected to because: in Fig. 11, reference character D6 should be changed to D7. See ¶ 0053.
The objection to the drawings will not be held in abeyance.
Response Period
A shortened statutory period for response is set to expire THREE MONTHS from the mailing date of this action.
Filing and Contact Information
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By Patent Center4: Registered users may submit via the Patent Center at: https://patentcenter.uspto.gov/
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Primary Examiner, Art Unit 3993
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