COMMISSIONER'S DECISION
OBVIOUS:Added Printed Matter [n~iden~a to Old Combination
The addition of printed numerals to the pockets of
the prior art tee holder for the alleged new use of keeping
score,held to the obvious in view of well known pocket and
peg scoring devices such as the cribbage score boards cited;
keeping score using the prior art structure.
FINAL ACTION: affirmed.
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This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action
dated April ~ 1972 on application ~~~,~89. This application
was filed in the name of ~erry ~.A~~~worth et al and refer
to Golf Score Marker ".
In the prosecution terminated by the Final Action the
examiner refused the subject matter of the application
as not containing patentable subject matter over the prior
and common knowledge. The prior art as cited is as follows
Canadian Patents
436,802 Sept 10,1946 Brooks
489,439 Nov.14, 1950 Tweed
493,310 June 2, 1953 Stockhouse
555,175 April 1,1958 Roxburgh
667,961 Aug.6, 1963 Kowalczyk
United States Patent
3,289,928 Dec.6, 1966 Gould
Publication
Canadian Tire Catalogue- Spring and Summer 1968- pg 211.
In the Final Action the examiner applied the references
and maintained that: the counting apparatus of any one of
the references to Brooks,Tweed,Stockhouse or Roxburgh is
the mechanical equivalent of a tee and holder apparatus etc;
it is considered that the position of a pointer with a
particilar position relative to slots, holes or numbers for
use as a counter is common ordinary knowledge,and the refer-
ences to Kowalczyk, Gould and the Canadian Tire Catalogue
were cited to show that ~~~~~~~~~ well known to ~~~ loops of
holes for tee supports ~~~~~~~~~~~~~~~~~obviously be used as
counting means.
In the applicant's response of June 12th and June
30th, 1972 he requested cancellation of the claims and submitt~~
new claims 1 and 2. In these actions the applicant maintained
that: the reference patents show score keeping devices for
the game of cribbage; the device of the application cannot be
used interchangeably with those of the reference patents;
the loops in golf caps or belts are used for tee storage
purposes and that numbering them for use as score keeping
devices would destroy their original purpose, and that the
prototype units have been placed on the market and are in
demand.
In view of the fact that the applicant has, by requesting
cancellation, declared no interest in the claims presently
on file the Board will not consider these claims; however,
new claims 1 and 2 will be considered on their merits.
The nature of the alleged invention is fairly indicated
by new claim 1 which reads.
A golf score marking device comprising a flat strip
of flexible material folded lengthwise and sealed
at the edges to form a passage therethrough; another
flat strip of the same material, somewhat narrower
than the folded strip, attached to the face of said
folded strip at equally spaced lines to form a
plurality of equal cavities of circular segment
in shape, said cavities being of a size to hold
freely the stem of a standard golf tee therein; and
each of said cavities being visibly numbered
consecutively, starting with number one on the
first cavity; in combination with a standard golf
tee for inserting into said cavities as means of
indicating the score.
Before passing to the determination of patentability
of this combination the Board agrees that the commercial success
may assist in determining the presence of invention in
cases of substantial doubt, but in all cases it must be
viewed with caution as such success mat well be due to
causes extraneous to the invention.
The elements of the applicant's combination particularly
relied upon for patentability are, therefore, a strip of
flexible material having a number of circular segment
pockets attached thereto, which pockets are numbered
consecutively starting with number one at the first of said
pockets.
The references to Brooks,Tweed,Stockhouse and Roxburgh
disclose various types of game boards with parallel columns
of holes in which a peg is manually advanced from a reference
point to count the total number of points accumulated during
the course of a cribbage game. The holes are usually grouped
in sequence of five in number.
The references to Kowalezyk,Gould and the Canadian
Tire Catalogue basically illustrate that it is well known
to use loops or holes to store the tees. More specifically
the patent to Gould discloses a golf cart accessory which
provides two sets of numbered wheels in conjunction with
a window to count golf strokes during the course of a
game. The patent to Kowalezyk shows a loop structure for
holding golf tees. The Canadian Tire Catalogue reference
shows a tee holder for twelve tees and a separate device
for keeping the game score.
First it is clear that the only difference in the
applicant's device from the state of the art, i.e. the
reference to Kowalczyk is that the applicant has added to
the pockets indicia in order of numerical sequence starting
from one for the purpose of keeping score of the game in
progress.
It is also clear that it is common in game scoring to
use markers in conjunction with pockets (holes) of a score
keeping device to record the score of a player, as for
example in the cited patent to Roxburgh in which the pockets
(holes) are numbered from 5 to 135 using every 5th indicia.
The reference and the like cited demonstrate that the use
of numerical indicia and markers to record game scores is
commonly used for the purpose presently in mind; as are other
devices such as a pointer positioned relative to slots,
holes or numbers for use as a counter.
Consequently, the applicant has used the prior art
tee holder structure and tees as a scoring device in
essentially the same manner as the well known pocket and
peg scoring devices, and the score is clearly indicated
whether or not the pockets bear numerical indicia, keeping
in mind that the Roxburgh device carries such indicia on
every 5th pocket. Thus,contrary to the holding of the
applicant, the presence of printed matter is merely a matter
incidental to the function or cooperation of the elements of
the prior art combination (as shown by Kowalczyk), and as a
score keeper, failing to provide any use which is not within
the capabilities of such combination, or at least one which
would not naturally occur to persons desirous of using any
pocket and peg means for scoring.
As fitting the circumstance and issue decided in the
present case, in Siddell v. Wickers, Sons & Co. (1890)
7.R.P.C.292 a test of obviousness was put forward. Is
the invention so obvious that it would at once occur to
anyone acquainted with the subject and desirous of
accomplishing the end?" Also in Savage & Harris (1896)
13 R.P.C. 364 at 370 the test of obviousness was set out
along the lines: "The material question to be considered
is whether the alleged discovery lies so much out of the
track of what was known before or not naturally to suggest
itself to anyone thinking on the subject. It must not be
the obvious or natural suggestion of what was previously
known." (emphasis added).
The Board, therefore, is satisfied that the applicant
has not made a patentable advance in the art in his appli-
cation of a well known scoring means to a golf tee holder.
While the idea may well be meritorious it does not, in the
opinion of the Board, merit the distinction which warrants
a claim to monopoly.
The Board recommends that the decision of the examiner,
to refuse the application on obviousness, be upheld.
R.E.Thomas,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board
and refuse to grant a patent on the subject matter of this
application. The applicant has six months in which to
appeal this decision in accordance with Section 44 of the
Patent Act.
Decision accordingly,
A.M.Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 24th day of August, 1972.
Agent for Applicant
Charles Krassov, Q.C.,
220 McEwan Ave.,
Windsor 11, Ont.