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 first strap being continuous and also comprising a first attachment end and a second attachment end, wherein the first attachment end is immovably coupled to the first attachment opening; and the second attachment end of the first strap is immovably coupled to the second attachment opening (as recited in claims 1 and 3) must be shown or the feature(s) canceled from the claim(s). 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: it does not disclose the first strap being continuous and also comprising a first attachment end and a second attachment end, wherein the first attachment end is immovably coupled to the first attachment opening; and the second attachment end of the first strap is immovably coupled to the second attachment opening (as recited in claims 1 and 3).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With Respect to Claims 1 and 3
Claim 1 recites that the first strap is continuous, but claim 3 recites that the first strap has two attachment ends that each immovably couple to one of the attachment openings, but there is no embodiment which includes a continuous first strap that is immovably coupled at two ends to each of the attachment openings. As such, this subject matter was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
For clarity, although it is the subject matter of claim 3 that fails to comply with the written description requirement, the issue with claim 3 arises in part due to the language of claim 1 (i.e. the meaning of “continuous”) and casts doubt as to the meaning of terms in claim 1 and how they should be interpreted and their support in the specification.
With Respect to Claims 2 and 4-11
These claims are rejected as they depend from a rejected claim and so incorporate its failure to comply with the written description requirement.
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 1-11 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.
With Respect to Claims 1 and 3
It is unclear how to interpret the scope of claims 1 and 3 to encompass the subject matter of the invention, and as such these claims are indefinite. For clarity, claim 1 recites a continuous first strap, but claim 3 recites the first strap having two attachment ends immovably coupled to respective first attachment openings of the back puck, which subject matter is unclear and does not appear to fit any of the disclosed embodiments.
With Respect to Claims 2 and 4-11
These claims are rejected as they depend from a rejected claim and so incorporate its indefinite scope.
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- are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2010/0170065 to Paik (Paik) in view of U.S. Patent #6,152,342 to Suk (Suk) and U.S. Patent #8,764,360 to Vick (Vick), either alone or further in view of U.S. Patent #4,757,927 to Rutty (Rutty).
With Respect to Claim 1
Paik discloses a strap system (see, e.g. [0013] and [0060]) for a golf bag (capable of use with a golf bag) comprising: a first strap; a second strap; and a back puck (FIG. 10 embodiment, it is a back puck as it is capable of use as such) comprising a first attachment opening (either 114), a second attachment opening (the other 114), a first side comprising a first arm (either arm 122), and a second side comprising a second arm (the other 122); wherein: the first side and the second side are angled from a remainder of the back puck (FIG. 10); the first side defines a first side opening (124), the first arm forming an edge of the first side opening; the second side defines a second side opening (124), the second arm forming an edge of the second side opening; the second strap is configured to fit within the first side opening and the second side opening along a linear pathway that extends through the first side opening and the second side opening (it is Examiner’s position that the two openings and rearward angling of 124 as shown provide a linear pathway for the second strap to extend, similar to the nonlinear pathway formed by the other two openings for the first strap); the second strap can freely move along the linear pathway (noting that there is nothing shown that would interfere with such free movement); the second strap is disengaged with the back puck in a single-strap configuration; and the second strap is engaged with the back puck in a double-strap configuration (capable of this use, or to the degree that the straps might be permanently attached so as to prevent removal it would clearly be obvious to make one or both removable for repair/replacement/cleaning and/or as doing so constitutes at most merely making separable which does not patentably distinguish over the prior art (MPEP 2144.04)); but does not provide details of the strap and so does not disclose that the first strap is continuous and does not disclose a golf bag and so does not disclose the second strap including a first and second end both coupled to the golf bag (for clarity although clearly capable of such use, this is clearly a structural limitation requiring the golf bag and is not merely functional), and does not disclose each arm having a slit.
However, Suk discloses the use of a similar buckle (noting FIG. 4) used as/that is a back puck (FIG. 2) having two perpendicular pairs of openings for first and second straps on a golf bag, with the second strap having first and second ends coupled to the golf bag (see, e.g. FIG. 3 and description).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Suk, to use the buckle/back puck of Paik as a back puck of a golf bag with a second strap having ends coupled to the golf bag, as a mere selection of an art appropriate bag or backpack structure (i.e. this kind of golf bag is a type of backpack) and/or to obtain the benefits of the Suk structure with a golf bag.
Vick discloses forming a similar strap connector/buckle/puck with two pairs of openings (106) for perpendicular straps to pass through formed by arms, each arm having a slit (108) for entry and removal of the strap to allow for attachment of the strap(s) to the connector/buckle/puck and removal therefrom while preventing unintentional removal.
It would also have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Vick, to add slots to the arms in order to allow for insertion and removal of the straps while preventing unintentional removal as taught by Vick.
Alternately, although Examiner maintains that Paik’s description effectively discloses the second strap passing through both openings and the drawings show an apparently linear pathway, to the degree that this is not explicitly stated, the disclosure of Suk renders obvious having the second strap pass through both openings in the arms for the same purpose as Suk’s second strap doing so, and forming the arms to allow for a linear pathway would have been obvious in order to allow for easy sliding of the strap along the buckle. Alternately, Rutty discloses forming a similar strap connector with rearwardly angled arms (noting 44) forming a linear pathway for a strap/belt (see FIGS. 9-10 noting FIG. 9 apparently shows the strap/belt 12 extending linearly through the back and FIG. 10 shows a flat surface of the rear of the connector to form a linear path) which provides further evidence of the obviousness of and/or motivation of such construction.
With Respect to Claim 4
The strap system of claim 1, wherein: the second side opening has a second side opening width; the second strap has a strap width; and the second side opening width is greater than the strap width (obvious size selection to have the second strap fit into the opening and/or obvious in view of Suk and/or Vick and/or Rutty disclosing/showing such sizing).
With Respect to Claim 5
The strap system of claim 1, wherein: the second side opening has a second side opening height; the second strap has a strap thickness; and the second side opening height is greater than the strap thickness (obvious size selection to have the second strap fit into the opening and/or obvious in view of Suk and/or Vick and/or Rutty disclosing/showing such sizing).
With Respect to Claim 6
The strap system of claim 1, wherein: the back puck further comprises a central body, a front, and a rear; and the first side and the second side are angled downward from the central body towards the rear (per Paik).
With Respect to Claim 7
The strap system of claim 6, wherein: the first side and the second side are angled downward from the central body at equal angles; the first side is angled downward at a first side angle, which is measured from a top view between the first side and the central body; and the second side is angled downward at a second side angle, which is measured from a top view between the second side and the central body (the structure as shown in FIG. 10 appears to be symmetrical and have the same angle).
Alternately, to the degree that the drawings may not be to scale or there may be some imperceptible difference between the angles of the first and second sides, having them have the same angle would have been obvious to provide a symmetrical structure to allow for use in either orientation and/or enhance aesthetic appeal, and/or using the same angle for each constitutes at most a mere selection of an art appropriate angle/shape, routine optimization, or at most a mere change in shape and/or change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04).
With Respect to Claim 8
The strap system of claim 7, wherein the first side angle and the second side angle have values within an angle range selected from the group consisting of: 10 and 20 degrees, 20 and 30 degrees, 30 and 40 degrees, 40 and 50 degrees, 50 and 60 degrees, 60 and 70 degrees,70 and 80 degrees, and 80 and 90 degrees (FIG. 10 shows an angle well within this claimed group of ranges which encompasses 10 to 90 degrees, and/or to the degree the drawings may not be to scale using an angle in the claimed range would constitute at most a mere selection of an art appropriate angle, routine optimization, or at most a mere change in shape and/or change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04)).
With Respect to Claim 9
The strap system of claim 1, wherein the first slit is closer to a top of the back puck than the second slit (Vick discloses this offset location of the slits).
With Respect to Claim 10
The strap system of claim 1, wherein: the second strap is removable through the first slit and the second slit to convert the strap system from the double-strap configuration to the single-strap configuration; and the second strap is insertable through the first slit and the second slit to convert the strap system from the single-strap configuration to the double-strap configuration (inasmuch as the second strap is insertable/removable through the slit and this allows for a double strap configuration when it is in the strap and attached to the connector or a single strap configuration when it is detached from the connector).
With Respect to Claim 11
The strap system of claim 1, but does not explicitly detail how the second strap is attached to the golf bag and so does not disclose wherein the second strap is fully removable from the golf bag when the strap system is in the single-strap configuration.
However, having it be fully removable would have been obvious to one of ordinary skill in the art before the filing date of this application in order to allow for removal for repair/replacement/cleaning, to allow for complete removal when the optional double strap configuration is not desired to reduce weight and/or avoid the second strap getting in the way of use of the golf bag, and/or as doing so constitutes at most merely making separable which does not patentably distinguish over the prior art (MPEP 2144.04).
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 1-2 and 4-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-, 5, 8-10, of U.S. Patent No. 12,233,320 (‘320). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 has many limitations that are the same or similar to those of claim 13 of the ‘320 patent but is largely broader as it does not require some of the limitations of claim 13 of the ‘320 patent such as the second strap positioned below the first strap, the channel, or the second strap sliding unrestrained, and claim 14 discloses slits in the arms of each side, claims 8-10 disclose angled sides/arms on another embodiment and it is obvious to form the claim 13+ embodiment with angled sides as one means of allowing the front to rear openings to allow the second strap to slide unrestrained in the channel between the front to rear openings or as a mere selection of an art appropriate shape/formation method for the arms or at most a mere change in shape which does not patentably distinguish over the prior art or a mere change in size/proportion (i.e. it merely changes the size/proportion of the angle between these parts) which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)), claim 2 adds similar limitations to those in claim 13 of the ‘320 patent which are not in claim 1 (e.g. the second strap in a channel extending from the first opening to the second opening, allowed to slide unrestrained which indicates there is no bend/fold/turn/resistance/clamping and not fixed in position on the back puck) and the other limitations are inherent or obvious (e.g. the ‘320 doesn’t specify the channel cuts into the central body, but as it is located in the central body and one strap is on top of the other in the channel it is inherently cut into or to the degree some other construction might be possible it is clear to have it be formed in this fashion); as to claims 4-5, having the second side opening be sided as claimed is inherent in having the second strap fit through the openings and slide unrestrained in the channel or to the degree some other construction might be possible is clearly obvious for this purpose and/or constitutes at most a mere selection of an art appropriate size or at most a mere change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)) (it is noted that claim 5 of the ‘320 patent discloses this subject matter for the similar second strap of another embodiment which provides additional evidence of the obviousness of such construction); as to claims 6-8, it is obvious to locate the channel in the rear and have the first and second sides angled towards the rear in order to provide openings facing the channel to allow for unrestrained sliding therein, and the particular angles and values shown are obvious as a mere selection of art appropriate angles or at most a mere change in shape and/or change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04), noting also that claims 8-10 disclose this subject matter for the similar second strap of another embodiment which provides additional motivation for and/or evidence of the obviousness of such construction; as to claim 9, claim 11 of the ‘320 patent discloses the slit located as claimed with respect to another embodiment and renders obvious such location for the claim 13 embodiment for the disclosed and/or obvious benefits of that location, as a mere selection of an art appropriate location or at most a mere rearrangement of parts which does not patentably distinguish over the prior art (MPEP 2144.04); as to claim 10, claim 12 of the ‘320 discloses this use for the similar slits and second strap of another embodiment, and so render obvious this use for the slits and second strap of the claim 13 embodiment; as to claim 11, although the ‘320 patent’s claims do not state what is done to the second strap in the single strap configuration, having it be fully removable would have been obvious to one of ordinary skill in the art before the filing date of this application in order to allow for removal for repair/replacement/cleaning, to allow for complete removal when the optional double strap configuration is not desired to reduce weight and/or avoid the second strap getting in the way of use of the golf bag, and/or as doing so constitutes at most merely making separable which does not patentably distinguish over the prior art (MPEP 2144.04).
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, and 14-20 of U.S. Patent No. 12,233,320 (‘320). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘320 patent recites many limitations that are similar to those of this application, noting that the first strap is disclosed as two sections attached to side openings of the back puck and the golf bag similar to the discontinuous first strap of claim 12 of this application, claim 8 indicates that the first and second sides of the puck are angled and the selection of an acute angle is obvious as a mere selection of an art appropriate angle or at most a mere change in size/proportion (i.e. it changes the size/proportion of that angle) which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)) or a mere change in shape which does not patentably distinguish over the prior art (MPEP 2144.04), and the other limitations of claim 12 similarly correspond to or are obvious in view of those of claim 1 of the ‘320 patent; as to claims 13-14, claim 1 of the ‘320 patent recites that the first and second sides comprise arms with slits and claim 12 of the ‘320 patent discloses the second strap being removable through the slits which indicate or clearly render obvious the first and second sides being discontinuous to allow for this (noting also claims 14 and 16 indicating discontinuous sides on the other embodiments and slits wider than the strap width which further render obvious this subject matter); as to claim 15, claim 11 of the ‘320 patent discloses one slit closer to a top corner and the other closer to the bottom corner and claim 15 of the ‘320 patent discloses forming first and second slits with this location assisting in retaining the second strap within the pathway which renders obvious having the slits of the claim 1/11 embodiment also doing so given their similar positioning; as to claim 16, forming the slit width greater than the strap width is clearly obvious in view of the disclosure of claim 12 of the strap being removable through the slit, noting also that claim 16 also discloses this subject matter for another embodiment which further renders it obvious to do so for the claim 1/12 embodiment; as to claim 17, the disclosed values are obvious as a mere selection of an art appropriate size for the slits or at most a mere change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)) and/or to fit an appropriate strap, and/or claim 17 of the ‘320 patent discloses these values for the similar slits of its embodiment which renders obvious using such for the claim 1/12 embodiment; as to claim 18, forming the slits diagonally as claimed is obvious as a mere selection of an art appropriate angle/shape of the slits and/or claim 18 of the ‘320 patent discloses angled slits for the similar slits of its embodiment which renders obvious using such for the claim 1/12 embodiment; as to claim 19, having the slits have the same angle is obvious as a mere selection of an art appropriate angle for each, to have them be symmetrical to improve aesthetic appeal, and/or claim 19 of the ‘320 patent discloses slits as claimed for the similar slits of its embodiment which renders obvious using such for the claim 1/12 embodiment; as to claim 20, selecting the slit angle to be within the claimed range constitutes at most a mere selection of an art appropriate angle or at most a mere change in size/proportion (i.e. changing the angle) which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)) or a mere change in shape which does not patentably distinguish over the prior art (MPEP 2144.04), and/or claim 20 of the ‘320 patent discloses slits angled as claimed for the similar slits of its embodiment which renders obvious using such for the claim 1/12 embodiment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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, Nathan Newhouse can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734
Prosecution Insights