DETAILED ACTION
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 “indicia of the training glove comprises an area of varying thickness and the protrusions of the golf club are configured to align with the area of varying thickness” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. The Specification and Drawings show various indicia, but do not show indicia of varying thickness. It is merely stated in the Specification that the indicia may further include this property.
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 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.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claim states “wherein the indicia of the training glove comprises an area of varying thickness and the protrusions of the golf club are configured to align with the area of varying thickness”. It is not sufficiently described in the Specification how the “protrusions, grooves, or related changes in thickness” are configured to align with the protrusions on the grip.
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.
Claims 1-13 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by The Littlest Golfer (TLG, 2023).
In respect to claim 1, TLG discloses a golf club comprising: a clubhead on a first end; a grip at a second end; and a shaft extending from the clubhead to the grip. TLC does not explicitly disclose, at the time of Office Action, a particular clubhead volume, however, as seen below the overall dimensions of the golf club, specifically the over-sized nature of the clubhead, they appear very similar. Thus it is reasonable to conclude that the volume of the clubhead falls within the claimed range.
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Since the dimensions of the TLG club are not verified at this time due to time constraints, but are capable of being verified through the company, an anticipation of these claims is pending until further notice.
In respect to claims 2-13, TLG discloses a club of very similar dimensions, as is apparent in the comparison above. These dimensions will need to be verified by TLG, for proper anticipation.
In respect to claims 16 and 17, TLG discloses the grip comprises protrusions which extend in a longitudinal direction of the golf club, having a “V-shape” (sharp outward protrustions).
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.
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.
Claims 1-17 are additionally rejected under 35 U.S.C. 103 as being unpatentable over The Littlest Golfer (TLG, 2023).
In respect to claims 1-13 and 16-17, as indicated above, TLG appears to disclose very similar dimensions which likely fall within at least some of the disclosed ranges (pending confirmation by TLG). Regardless, any alleged differences in the claims from TLG amount to dimensions and where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In the instant case, the claimed application and TLG appear to have the same general dimensions as well as the same intended use of a teaching golf club for toddlers or young children. All of the claimed dimensions or ratios such as “shaft weight”, “swing weight”, “clubhead mass” etc. are well-known golf club metrics. The applicant has not provided any specificity to these ranges (and in fact includes at least 3 different non-overlapping subranges which further points to lack of specificity). The only reasonably specificity is to the clubhead volume, wherein the Specification clearly points to a non-obvious different performance from standard clubs (e.g. a clubhead volume of several times the legal clubhead limit), however TLG discloses or teaches this feature. It is lastly noted that TLG, before the time of the invention, further discloses a “TLG First Set Long 2.0” which further teaches obvious modifications to the dimensions (to accommodate older/taller children).
In respect to claims 14 and 15, TLG discloses that the clubhead is a “high-impact plastic” but does not explicitly disclose “HDPE”. TLG further discloses that the shaft is “graphite composite material” but does explicitly disclose “carbon fiber” (thought its very similar). In both cases, it would have been obvious to one ordinary skill in the art at the effective date of the application, to provide a well-known material in the art for the clubhead or shaft, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over The Littlest Golfer (TLG, 2023) in view of Liu (US 6,272,686).
In respect to claims 18 and 19, TLG discloses or teaches the claimed invention for the reasons stated above, including protrusions on the grip, but does not disclose an accompanying glove, which further includes indicia for aligning the grip. However, Liu teaches a similar golf club with includes indicia (e.g. 22) thereon which aligns with marks on the glove (e.g. 13) (Figs. 4, 5, & 7).
In respect to claim 20, the claim is not enabled by the Specification, however, Liu teaches that the indica may be “areas of varying thickness” which is readily inferred by printed patterns or lines.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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