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 .
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 16, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Pub. 2026/0183631 by Kerbs.
Regarding claim 16, Kerbs discloses a ball marker comprising: a head defining a frusto-conical portion and having a planer top surface disposed proximate a larger axial end of the frusto-conical portion (fig. 2, 14 – see the frustoconical portion at 102); and a boss integrally coupled to the head distal the planar top surface (fig. 3 – see boss at 104); wherein:the ball marker is configured to securely mount to a golf club handle by selectively inserting the boss into a vent hole of a grip member at an end of the golf club handle (fig. 17 – para. 125-127); and the frusto-conical portion is configured to enable the planer top surface to lie flush with the surface of a putting green when the ball marker is pressed into the putting green (fig. 6).
Regarding claim 19, Kerbs discloses the ball marker of claim 16, wherein the head and the boss are composed of aluminum (para. 60).
Regarding claim 20, Kerbs discloses the ball marker of claim 16 wherein the head and the boss are coaxially aligned (fig. 1-3 – see the coaxial alignment).
Allowable Subject Matter
Claim 1-15 are allowed.
Claims 17-18 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 1-15, while prior art U.S. 4,957,293 by Byrd provides for a ball marker (abstract), comprising: a head including a body with a planer top surface (fig. 3; 82); and a boss coupled to the head distal the planar top surface (fig. 3 – see the stem), the boss including: a shank coupled to the head distal the top surface (fig. 3 – see the stem); and a bulb coupled to the shank distal the head (fig. 3 – see the bulb at the end of the stem); wherein: the shank has a narrower diameter than the bulb (fig. 3 – see the narrower diameter of the stem relative to the bulb) and the narrower diameter of the shank relative to the bulb is configured to securely and selectively mount the shank within a vent hole of a grip member at an end of a golf club handle (fig. 2-3 – see the positioning of the blub in the vent hole. Examiner notes that while Byrd provides for this via a fitting 42, it still meets this requirement). Byrd is silent regarding “the body tapering axially as it extends away from the planar top surface” and “the body tapering axially is configured to enable the planer top surface to lie flush with the surface of a putting green when the ball marker is pressed into the putting green” and while features similar to the claimed taper is found in prior art Kerbs as noted above, no motivation to include such a feature to Byrd from Kerbs, or any other prior art of record, is found without the addition of impermissible hindsight bias.
Regarding claim 17-18, similar to claims 1-15, the combination of the frustoconical section and bulb provide for a non-obvious combination of elements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER J IANNUZZI whose telephone number is (571)272-5793. The examiner can normally be reached M-F 9:30AM-5:30PM EST.
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/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715
