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 .
Claim Objections
Claims 7 and 10 are objected to because of the following informalities:
Claim 7, line 1, “plurality of extending members”, should read “plurality of members”.
Claim 10, lines 1-2, “configured to connected to a vacuum pump”, should read “configured to connect to a vacuum pump”.
Appropriate correction is required.
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.
Claim 7 is 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.
Claim 7 recites the limitation “extending members” in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12285664 B2.
Here U.S. Patent No. 12285664 B2 claim 1 recites:
Claim 1: A golf bag cover comprising: a flexible container lining; a plurality of members extending from an interior top surface of the golf bag cover to a bottom of the golf bag cover; wherein the plurality of extending members define at least one opening between the plurality of extending members; wherein the at least one opening is configured to receive at least one golf club; a plurality of microbeads contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining; and wherein the flexible container lining and the plurality of microbeads are configured to conform to the at least one golf club upon evacuation of air from the flexible container lining.
While Patent Application No. 19/188,691 Claim 1 requires:
Claim 1: A golf bag cover comprising: a flexible container lining; a plurality of members extending from an interior top surface of the golf bag cover to a bottom of the golf bag cover; wherein at least one opening is defined between the plurality of members; wherein the at least one opening is configured to receive at least one golf club; fill material contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining configured to connect to at least one pump.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 3 recites:
Claim 3: Wherein the at least one opening is smaller than a club head of the at least one golf club and is configured to deform to enable the club head to enter the golf bag cover.
While Patent Application No. 19/188,691 Claim 2 requires:
Claim 2: Wherein the at least one opening is smaller than a club head of the at least one golf club and is configured to deform to enable the club head to enter the golf bag cover.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 4 recites:
Claim 4: Wherein the plurality of microbeads are configured to granularly jam upon evacuation of air from the flexible container lining.
While Patent Application No. 19/188,691Claim 3 requires:
Claim 3: Wherein the plurality of microbeads are configured to granularly jam upon evacuation of air from the flexible container lining.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 5 recites:
Claim 5: Wherein the at least one opening includes an elongated stalk region configured to house a shaft of the at least one golf club and a head compartment configured to house a club head of the at least one golf club.
While Patent Application No. 19/188,691Claim 4 requires:
Claim 4: Wherein the at least one opening includes an elongated stalk region configured to house a shaft of the at least one golf club and a head compartment configured to house a club head of the at least one golf club.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 6 recites:
Claim 6: Further comprising a zipper mechanism configured to engage a corresponding zipper mechanism of a top rim of a golf bag.
While Patent Application No. 19/188,691 Claim 5 requires:
Claim 5: Further comprising a zipper mechanism configured to engage a corresponding zipper mechanism of a top rim of a golf bag.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 7 recites:
Claim 7: Wherein the flexible container lining is configured to enable a variable amount of air to be evacuated.
While Patent Application No. 19/188,691 Claim 6 requires:
Claim 6: Wherein the flexible container lining is configured to enable a variable amount of air to be evacuated.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 8 recites:
Claim 8: Wherein the plurality of extending members define one to seven openings.
While Patent Application No. 19/188,691 Claim 7 requires:
Claim 7: Wherein the plurality of extending members define one to seven openings.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 9 recites:
Claim 9: Further comprising a retainer configured to contact a section of a shaft of the at least one golf club.
While Patent Application No. 19/188,691 Claim 8 requires:
Claim 8: Further comprising a retainer configured to contact a section of a shaft of the at least one golf club.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 10 recites:
Claim 10: Wherein the retainer includes two to four linear extensions configured to attach to an interior surface of the golf bag cover.
While Patent Application No. 19/188,691 Claim 9 requires:
Claim 9: Wherein the retainer includes two to four linear extensions configured to attach to an interior surface of the golf bag cover.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 11 recites:
Claim 11: Wherein the retainer includes at least one valve configured to connected to a vacuum pump.
While Patent Application No. 19/188,691 Claim 10 requires:
Claim 10: Wherein the retainer includes at least one valve configured to connected to a vacuum pump.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 12 recites:
Claim 12: A system for housing golf clubs comprising: a golf bag cover; a flexible container lining; a plurality of members extending from an interior top surface of the golf bag cover to a bottom of the golf bag cover; wherein the plurality of extending members define at least one opening between the plurality of extending members; wherein the at least one opening is operable to receive at least one golf club; a plurality of microbeads contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining; and wherein the flexible container lining and the plurality of microbeads are operable to conform to the at least one golf club upon evacuation of air from the flexible container lining.
While Patent Application No. 19/188,691 Claim 11 requires:
Claim 11: A system for housing golf clubs comprising: a golf bag cover, including: a flexible container lining; at least one opening in the golf bag cover operable to receive at least one golf club; a plurality of microbeads contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining; and a pump configured to evacuate air from the flexible container lining via the at least one valve.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 14 recites:
Claim 14: Wherein the at least one opening is smaller than a club head of the at least one golf club and is operable to deform to enable the club head to enter the golf bag cover.
While Patent Application No. 19/188,691 Claim 13 requires:
Claim 13: Wherein the at least one opening is smaller than a club head of the at least one golf club and is operable to deform to enable the club head to enter the golf bag cover.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 15 recites:
Claim 15: Wherein the plurality of microbeads are operable to granularly jam upon evacuation of air from the flexible container lining.
While Patent Application No. 19/188,691 Claim 14 requires:
Claim 14: Wherein the plurality of microbeads are operable to granularly jam upon evacuation of air from the flexible container lining.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 16 recites:
Claim 16: Wherein the at least one opening includes an elongated stalk region configured to house a shaft of the at least one golf club and a head compartment configured to house a club head of the at least one golf club.
While Patent Application No. 19/188,691 Claim 15 requires:
Claim 15: Wherein the at least one opening includes an elongated stalk region configured to house a shaft of the at least one golf club and a head compartment configured to house a club head of the at least one golf club.
This is an obviousness-type double patenting rejection. Here U.S. Patent No. 12285664 B2 claim 17 recites:
Claim 17: A golf bag cover comprising: a flexible container lining; a plurality of members extending from an interior top surface of the golf bag cover to a bottom of the golf bag cover; wherein the plurality of extending members define at least one opening between the plurality of extending members; wherein the at least one opening is configured to receive at least one golf club; a plurality of microbeads contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining; wherein the flexible container lining and the plurality of microbeads are configured to conform to the at least one golf club upon evacuation of air from the flexible container lining; wherein the flexible container lining and the at least one valve are configured to connect to at least one vacuum pump operable to evacuate air from the flexible container lining; and wherein the at least one opening is smaller than a club head of the at least one golf club and is configured to deform to enable the club head to enter the golf bag cover.
While Patent Application No. 19/188,691 Claim 16 requires:
Claim 16: A golf bag cover comprising: a flexible container lining; a plurality of members extending from an interior top surface of the golf bag cover to a bottom of the golf bag cover; at least one opening configured to receive at least one golf club; fill material contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining; wherein the flexible container lining and the at least one valve are configured to connect to at least one pump; and wherein the at least one opening is smaller than a club head of the at least one golf club and is configured to deform to enable the club head to enter the golf bag cover.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 18 recites:
Claim 18: Wherein the plurality of microbeads are configured to granularly jam upon evacuation of air from the flexible container lining.
While Patent Application No. 19/188,691 Claim 17 requires:
Claim 17: Wherein the fill material is configured to granularly jam upon evacuation of air from the flexible container lining.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 19 recites:
Claim 19: Wherein the at least one opening includes an elongated stalk region configured to house a shaft of the at least one golf club and a head compartment configured to house a head of the at least one golf club.
While Patent Application No. 19/188,691 Claim 18 requires:
Claim 18: Wherein the at least one opening includes an elongated stalk region configured to house a shaft of the at least one golf club and a head compartment configured to house the club head of the at least one golf club.
This is an obviousness-type double patenting rejection.
Here U.S. Patent No. 12285664 B2 claim 20 recites:
Claim 20: Further comprising a zipper mechanism configured to engage a corresponding zipper mechanism of a top rim of a golf bag.
While Patent Application No. 19/188,691 Claim 19 requires:
Claim 19: Further comprising a zipper mechanism configured to engage a corresponding zipper mechanism of a top rim of a golf bag.
This is an obviousness-type double patenting rejection.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the double patenting rejections set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 1, Brunner (DE 20111200 U1), is considered the most relevant prior art of record. The prior art of record does not teach:
A golf bag cover comprising: a flexible container lining; a plurality of members extending from an interior top surface of the golf bag cover to a bottom of the golf bag cover; wherein at least one opening is defined between the plurality of members; wherein the at least one opening is configured to receive at least one golf club; fill material contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining configured to connect to at least one pump.
Since the prior art of record does not teach a plurality of extending members for retaining a golf club, wherein there is a fill material contained within a flexible lining layer with a valve connected to the container lining, the prior art does not anticipate the claimed subject matter. Furthermore, it would not have been obvious to a skilled artisan to have modified the prior art in order to arrive at the claimed invention without resorting to impermissible hindsight.
Regarding Claim 11, Brunner (DE 20111200 U1), is considered the most relevant prior art of record. The prior art of record does not teach:
A system for housing golf clubs comprising: a golf bag cover, including: a flexible container lining; at least one opening in the golf bag cover operable to receive at least one golf club; a plurality of microbeads contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining; and a pump configured to evacuate air from the flexible container lining via the at least one valve.
Since the prior art of record does not teach a plurality of extending members for retaining a golf club, wherein a plurality of microbeads are configured to conform to a golf club upon evacuation of air from the flexible lining container, and a pump configured to evacuate air via a valve, the prior art does not anticipate the claimed subject matter. Furthermore, it would not have been obvious to a skilled artisan to have modified the prior art in order to arrive at the claimed invention without resorting to impermissible hindsight.
Regarding Claim 16, Brunner (DE 20111200 U1), is considered the most relevant prior art of record. The prior art of record does not teach:
A golf bag cover comprising: a flexible container lining; a plurality of members extending from an interior top surface of the golf bag cover to a bottom of the golf bag cover; at least one opening configured to receive at least one golf club; fill material contained within at least one layer of the flexible container lining; at least one valve connected to the flexible container lining; wherein the flexible container lining and the at least one valve are configured to connect to at least one pump; and wherein the at least one opening is smaller than a club head of the at least one golf club and is configured to deform to enable the club head to enter the golf bag cover.
Since the prior art of record does not teach a plurality of extending members for retaining a golf club, wherein a plurality of microbeads are configured to conform to a golf club upon evacuation of air from the flexible lining container, and a pump configured to evacuate air via a valve, the prior art does not anticipate the claimed subject matter. Furthermore, it would not have been obvious to a skilled artisan to have modified the prior art in order to arrive at the claimed invention without resorting to impermissible hindsight.
Conclusion
The prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure.
Filler (US 2521573 A), teaches a golf bag.
Merrill et al. (US 5947282 A), teaches a golf club organizer.
Su (US 5645166 A), teaches a golf bag locating block.
Dulyea (US 5029703 A), teaches a golf club organizer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R CAUDILL whose telephone number is (303)297-4349. The examiner can normally be reached on Monday-Friday 8:30-5:30 MT.
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/JUSTIN CAUDILL/Examiner, Art Unit 3733 /NATHAN J JENNESS/Supervisory Patent Examiner, Art Unit 3733 28 July 2026
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