DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. It is noted that while the examination of the current reissue application falls under the pre-AlA first to invent provisions because this application has not contained at any time a claim to a claimed invention having an effective filing date on or after March 16, 2013 due to the filing date of US Patent No. 10,427,011, the application for reissue filing date is after September 16, 2012 and therefore is subject to the reissue rule changes enacted under the Leahy-Smith American Invents Act (AIA ), see Federal
Register, Vol. 77, No. 157, pg. 48820, August 16, 2012, i.e., the current provisions of 35
U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73.
Status of Submission
This Office action is responsive to the amendment filed on August 5, 2020, which has been entered. Original patent claims 1-17 are pending. Claim 18 has been canceled.
Status of Petition under 37 CFR 1.78(c) and 1.78(e)
The petition under 37 CRF 1.78(c) and 1.78(e) filed 10/5/20 (treated as a renewed petition) was again DISMISSED on 2/18/21. The petition was dismissed, in pertinent part, because:
“Therefore, the original patent will not be corrected unless a reissue application is granted in the prior-filed application in the benefit chain for which a reissue application has been filed”.
The instant reissue application is a reissue of 16/140759, which is a continuous of US 15/410521. The priority or benefit claims were corrected in US 15/410521 by reissue 16/986118, which issued as RE50,231. Thus, Applicant is reminded to file a renewed petition, including all appropriate fees, if the intent to correct the priority claim of the instant application remains under 37 CRF 1.78(c) and 1.78(e).
Related Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,427,011 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Decision on Protest
On October 14, 2020, a third party (hereinafter “Protester’) filed a “Protest Under 37 C.F.R. § 1.291” (hereinafter “Protest’) in the instant reissue application (i.e., serial no. 16/986,109 attempting to reissue U.S. Patent No. 10,427,011 (hereinafter “the 011 Patent”). As background, Protester asserts that Reissue Applicant is owner of two families of patents. Protest, p. 2. A first family (hereinafter “Solheim Family”)1 of the two patent families includes inventor John A. Solheim and relates to “grooves for iron-type club heads” (emphases added). /d. A second family (hereinafter “Non-Solheim Family’)2 of the two patent families does not include inventor John A. Solheim, relates to “grooves of putter type club heads” (emphases added), and includes the ‘011 Patent attempting to be reissued by the instant reissue application. Id.
Protester fashions the question presented in the instant Reissue Application “as whether [Reissue] Applicant’s prior decision [during the prosecution of the underlying application that became the 011 Patent] not to identify Mr. Solheim as an inventor in the non-Solheim Family, as well as its decision not to claim priority to the Solheim Family, can somehow be considered unintentional error.” Id. Protester asserts that Reissue Applicant set forth the purported reissue “error” as “failure to appreciate that the Non-Solheim Family shares several common figures and discussion with the Solheim Family.” Id. Protester alleges that Reissue “Applicant consciously considered both the identity of the inventors and whether to claim priority to an earlier patent family before filing the application that resulted in the ‘011 Patent.” Protest, p. 1. Accordingly, Protester argues that Reissue Applicant has not satisfied the burden to demonstrate an unintentional error in the instant reissue application with respect to both the inventorship and priority issues. Protest, pp. 1-2.
More specifically, Protester asserts the record makes clear that during the prosecution of the underlying application which became the ‘011 Patent, Reissue Applicant considered both the inventorship and priority issues before the '011 Patent was filed and “made an affirmative decision to proceed as it did.” Protest, p. 2. Therefore, Protester argues that the instant Reissue Application attempting to correct inventorship (i.e., adding inventor Solheim) and priority (i.e., claiming benefit of the Solheim Family of patents) is improper for following three reasons:
[f]irst, during the relevant time period, the same outside counsel prosecuted both the Solheim and Non-Solheim Patent Families, showing his direct knowledge of the content and inventors in each Family, and he was thus well aware of the common disclosure issue[;]
[s]econd, current in-house counsel, Mr. Jenny, did, in fact, have knowledge of the material content of both patent families when he assumed responsibility for their prosecution and maintenance[;and]
[t]hird, Mr. Solheim’s contribution of known prior art is insufficient to establish him as a co-inventor given the Applicant's assertions in the underlying litigation regarding the state of the prior art.
Protest, pp. 2-3.
In a Miscellaneous Office communication mailed January 21, 2021, the Examiner provided Reissue Applicant with the opportunity to comment on the October 14, 2020 Protest. In particular, the Examiner indicated that Reissue Applicant was invited to reflect on Protester’s contentions that: (1) the delayed claim for benefit was not unintentional; (2) the failure to name Mr. Solheim as an inventor of the Non-Solheim Family of patents is not an unintentional error; and (3) Mr. Solheim is not an inventor of the claimed subject matter.
On January 26, 2021, Reissue Applicant responded to the Examiner’s January 21, 2021 Miscellaneous Office communication and commented on the October 14, 2020 Protest in “APPLICANT'S COMMENTS TO PROTEST UNDER 37 C.F.R. § 1.291 (a) and OFFICE COMMUNICATION” (hereinafter “Comments’).
Protester’s three above-mentioned contentions, Reissue Applicant's comments with respect to Protester’s contentions, and the Examiner’s determinations are discussed below.
I. ISSUES WITH RESPECT TO OUTSIDE PATENT COUNSEL MIRSAFIAN
Protester contends that from 2011 to 2014 outside patent counsel Mirsafian “prepared, filed and prosecuted applications in the Solheim Family [of patents],” and thus, Mirsafian was “invariably aware of the content and inventorship in the Solheim Family [of patents].” Protest, p. 3. Protester also contends that, during this same time period, Mirsafian was preparing applications that lead to the Non-Solheim Family of patents including two applications filed in September of 2012. Id. Protester notes that, in the two September 2012 applications of the Non-Solheim Family of patents, Mirsafian
included common figures from the Solheim Family of patents and an incorporation by reference of an application from the Solheim Family of patents. Protest, pp. 3-4. Protester argues that given the fact that the two September 2012 applications from the Non-Solheim Family did not list inventor Solheim, “it cannot be credibly asserted that Mr. Mirsafian had knowledge of the common disclosures and indeed made the conscious decision to include this common disclosure.” Protest, p. 4.
Reissue Applicant opines “[t]he entire premise of the Protest is the unsupported allegation that ‘Applicant consciously considered both the identity of the inventors and whether to claim priority to an earlier patent family before filing the application that resulted in the ‘802 Patent,” and “[t]here is absolutely no evidence of any such alleged conscious decisions.” Comments, p. 2. Reissue Applicant notes there is no evidence to support Protester’s conclusion that the same outside counsel, Mirsafian, prosecuted both Solheim and Non-Solheim families of applications because “the applications and prosecution histories are silent as to who ‘prepared’ the applications.” Comments, p. 2. Indeed, Reissue Applicant argues that “even if there was a commonality of prosecution counsel, it would not rebut the fact that the mistake in not claiming priority was unintentional.” Id.
The Examiner finds Protester’s arguments unpersuasive and agrees with Reissue Applicant’s comments. Whether or not outside counsel Mirsafian prepared and/or prosecuted patent applications in both the Solheim Family and Non-Solheim Family does not necessarily prove any conscious decisions on inventorship and priority which would now preclude a reissue application due to unintentionality. The Examiner finds that Protester’s contentions appear to be nothing more than unsupported attorney argument.3
Protester notes that Mirsafian added inventor Wang to the September 27, 2012 application and did not include inventor Solheim. Protest, p. 4. Protester alleges that Mirsafian’s actions show an investigation into inventorship which must lead to the conclusion that Reissue Applicant cannot now add inventor Solheim as unintentional error. Id. Protester then relies on attorney argument that the record makes clear the Reissue Applicant’s actions with respect to inventorship and priority were conscious decisions and thereby are not reissuable errors as not unintentional. Comments, pp. 4-
5. To support that Reissue Applicant’s actions were not unintentional, Protester relies on the case law of In re Weiler, 790 F2.d 1576 (Fed. Cir. 1986) and In re Serenkin, 479 F.3d 1359 (Fed. Cir. 2007). Protest, pp. 1-2.
Reissue Applicant argues that there is no factual support for the contention that Mr. Mirsafian investigated whether Mr. Solheim was a co-inventor. Comments, p. 3. More particularly, Reissue Applicant further argues that the addition of Mr. Wang in the Non-Solheim Family patent applications only establishes that Mr. Wang was identified as a co-inventor and does nothing to link any determination to Mr. Solheim. Id. In addition, Reissue Applicant also argues that the cited case law of Weiler and Serenkin is inapposite to the facts of the present reissue application. Comments, pp.3-5. Reissue Applicant indicates that Weiler “has nothing to do with inadvertently failing to claim priority or name a co-inventor.” Comment, p. 4. Rather, Reissue Applicant argues Weiler has to do with the fact that “applicant's ‘failure to timely file a divisional application including non-elected claims is a deliberate act and not error in the prosecution of the original application.” Comment, p.5. Reissue Applicant alleges that Weiler’s facts are diametrically different from the facts of the instant reissue application where “Applicants made the inadvertent and unintentional mistake of failing to claim priority and name a co-inventor.” Id. As to Serenkin, Reissue Applicant notes that there “an applicant knowingly, intentionally, and expressly chose to surrender a claim of priority.” Comments, p. 3. Reissue Applicant indicates that “the Federal Circuit distinguished In re Serenkin from cases and situations like [the instant reissue application], where an attorney or applicant through inadvertence, accident, or mistake, failed to claim priority.” Comments, p.4.
The Examiner does not agree with Protester’s arguments concerning the addition of inventor Wang. The addition of inventor Wang in the Non-Solheim Family of patents is not absolute proof that Reissue Applicant investigated inventorship and made a conscious, intentional decision to not add inventor Solheim. The Examiner is persuaded by Reissue Applicant's comments that the inventorship and priority errors were inadvertent and are appropriately being corrected in the instant Reissue Application. Protester’s contentions appear to be unsupported attorney argument.
ll. ISSUES WITH RESPECT TO IN-HOUSE PATENT COUNSEL JENNY
Protester’s contends that “current in-house counsel, Mr. Jenny, did, in fact, have knowledge of the material content of both patent families when he assumed responsibility for their prosecution and maintenance.” Protest, p. 3. Protester argues Applicant’s assertion that “current in house counsel, Mr. Jenny ‘was not provided with any communications or information that linked the cases or the common inventorship of [Non-Solheim] and Solheim Families including, for example, attorney, any inventor or draftsman notes” does not provide any evidence that refutes what the public record makes clear (i.e., “conscious decisions that cannot be corrected through the present reissue”) and does not demonstrate unintentional error. Protest, p.4. Protester also argues that “[t]he public record calls into serious question Mr. Jenny’s statement that he has no knowledge of the Solheim Family (which he assumed responsibility for), and its relationship to the Non-Solheim Patents he was prosecuting. Protest, pp. 4-5.
Reissue Applicant argues that Paul Jenny did not take over management of these cases for over three years after the filing of the Non-Solheim family applications. Comments, p. 3. Reissue Applicant also argues that the incorporation by reference of the Solheim Patent serves to verify the unintentional error of failing to name Solheim as a co-inventor. Id. Further, Reissue Applicant notes in house counsel Jenny stands by his representation regarding the reissue that he did not recognize that the Non-Solheim Family incorporated a material portion of the Solheim Patent and that a mistake was made to not claim priority to that patent in the Non-Solheim Family. Comments, p. 5. Reissue Applicant provides seven points of rebuttal arguments with respect to in house counsel Jenny:
(1) in house counsel Jenny did not file or prosecute the Solheim Patent, did not file the Non-Solheim Patent, and took over management responsibility for the cases later in time;
(2) in house counsel Jenny did not conclude, and had no reason to conclude, that the attorney(s) who filed the respective applications made an error in not claiming priority or naming Mr. Solheim as a co-inventor;
(3) in house counsel Jenney appropriately assumed that the attorneys’ who initially prepared and prosecuted the applications made any appropriate assessment of inventorship and claims of priority;
(4) the citation of a reference in an IDS does not reflect or require a detailed comparison of specifications and figures to assess whether a mistake was made in claiming priority, is not a common practice, is not something in house counsel Jenny performed in connection with the subject applications, and is not something in house counsel Jenny performs in the ordinary course of his practice;
(5) contrary to Protestor’s argument, the figures it relies upon that were reproduced in the Response to Office Action (then Figures 54 & 55) are not common to both patents — and are only in the [Non-Solheim] Family (see Protest, Exhibit 1);
(6) the few other figures identified in the text of the Response (then Figures 2-9) were referenced to explain that the Solheim Patent was directed to varying widths of grooves and not an increase in depth portion lengths, as such figures only showed “cross-sectional shapes” and not an increase in depth portion lengths (see Protest, Exhibit 1);
(7) had in house counsel Jenny appreciated that an error had occurred at the time, the easiest way for the undersigned to have overcome the rejection would have been to simply claim priority, but in house counsel Jenny did not do so because he did not realize at that time that an error had been made.
Comments, p. 6.
The Examiner finds Reissue Applicant’s comments persuasive. None of the actions of in house counsel Jenny appear to suggest that in house counsel Jenny “knew that an error had occurred and made a conscious decision not to address the mistake.” See Id. Protester has not provided evidence that the failure to name Solheim as an inventor and to claim priority to the Solheim Family of patents was anything other than an inadvertent, unintentional error that is correctable by reissue.
lll. ISSUES WITH RESPECT TO WHETHER SOLHEIM IS AN INVENTOR
Protester notes Reissue Applicant’s declaration of in-house counsel Jenny “uncovered that Mr. Solheim ‘conceived of the concept of varying width grooves in irons and putters as disclosed and claimed in the Solheim and [Non-Solheim] Families.” Protest, p. 7. Protester also notes that Reissue Applicant “asserted in litigation that ‘[i]n or about 2003-2004, Mr. Billing developed, offered for sale, sold, publicly used, and other[wise] made available to the public ‘Stevenson Putters’ that employ varying width grooves.” Id. Protester further notes Reissue “Applicant has asserted in the underlying litigation that Solheim’s contribution to the claimed subject matter is nothing more than known prior art,” and “the law is clear that ‘[a] contribution of information in the prior art cannot give rise to joint inventorship because it is not a contribution to conception.” Id. Accordingly, Protester argues that “Solheim’s ‘conception’ of varying width grooves in golf clubs does not give rise to co-inventor status given . . . that this same subject matter was invented several years prior.” Id.
Reissue Applicant notes Protester contends “despite the fact that fifteen (15) of the inventive figures and concepts in the Solheim Patent were copied into the [Non- Solheim] Patent Family, John A. Solheim somehow cannot be a co-inventor of the [Non- Solheim] Family.” Comments, p. 6. Reissue Applicant opines that “Protester’s sole basis for its argument is that other prior art, namely Stevenson Putters, teach varying width groove and, as such, Mr. Solheim cannot be a co-inventor.”. Comments, pp. 6-7. However, Reissue Applicant argues that the Solheim Family of Patents consists of three issued patents that are presumed valid and “encompass a host of patentable subject matter as depicted and claimed in the numerous groove designed exhibited and claimed in the patent. Comments, p. 7. Finally, as to the comments concerning prior art, Reissue Applicant notes in house counsel Jenny correctly points out that, while the prior art Stevenson Putters may teach varying groove widths, the Solheim patent additionally teaches (and claims) concepts beyond variable width grooves.
The Examiner agrees with Reissue Applicant's comments and is unpersuaded by Protester’s arguments that Mr. Solheim cannot be considered an inventor of the claimed subject matter of the instant reissue application.
EXAMINER’S DETERMINATION:
In response to the Protest and Reissue Applicant's Comments, after a thorough review of both sets of arguments and the relevant case law citations, it is the Examiner’s determination the facts asserted by Protester in the October 14, 2020 Protest do not necessarily demonstrate that Reissue Applicant’s failure to name inventor Solheim and delay in claiming priority was an intentional act by Reissue Applicant. Thus, the effective filing date of the Solheim ‘011 Patent is August 7, 2008 (i.e., the date of the earliest filed provisional application, namely, 61/087,158).
As to the matter of prior art and Solhiem, it is noted that the Solheim patent (e.g. US 8,282,505) is not the subject of this reissue, nor of a current reexamination. As such, this point is moot. However, to that end, it is noted that the claimed subject matter in Solheim does not merely claim the genus of “varying width grooves,” but rather the species wherein grooves vary in two different areas. For example, Claim 1 calls for: “wherein the variable depth comprises a first depth associated with a first depth portion and a second depth associated with a second depth portion, the first depth being greater than the second depth, the first depth portion extending from a location between
the first end and the center to a location between the second end and the center, the
second depth portions having same depths and extending between the first end and the
first depth portion and extending between the second end and the first depth portion,
wherein a greatest depth of the at least one groove is between the first end and the
second end and is at least partly offset relative to a center of the length, wherein first
depth portion has the same depth as the greatest depth, wherein the depths of the
second depth portions are less than the greatest depth, and wherein the first depth
portion extends less than half of the length of the at least one groove.”
Similarly, Claim 11 calls for: “wherein at least a portion of a bottom surface of the
groove between the heel end and the center is convex relative to the club face and
faces away from the heel end and faces generally toward the toe end, or wherein at
least a portion of the bottom surface of the groove between the toe end and the center
is convex relative to the club face and faces away from the toe end and faces generally
toward the heel end.”
Thus, it can be readily seen that the Solheim ‘505 claims are much more specific
as to the groove variability than to merely require any variability as the arguments imply.
This argument by Protester is not persuasive.
Consent of Assignee
Applicant’s statement of assignee consent filed 8/5/20 has been accepted.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
GROUND 1: Claims 1-17 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over JP 2003-000777 to Ota in view of U.S. Patent No. 5,354,059 to Stuff.
In regard to claims 1, 6 and 11, Ota disclose a putter type golf club head comprising: a putter type club face defined by a toe end 8, a heel end 9, a top rail and a sole (see Figs. 4-5); and a plurality of grooves 7 disposed on the putter type club face between the top rail and the sole of the putter type club head, each groove extending between the toe end and the heel end (see Figs. 1a-b); wherein a deepest portion of at least one groove is defined by a generally planar bottom surface portion of the groove (see Figs. 1a-b); wherein the plurality of grooves are separated by a plurality of land portions (See Fig. 5), and a width of the land portions varies in a direction extending between the top rail and the sole, or in a direction extending between the heel end and the toe end (see Figs. 5); and wherein a depth of a portion of the plurality of grooves is about 0.003 inch (see Figs. 1a-b and 3d). Ota is silent with respect to wherein the width of the grooves vary in a direction extending between the top rail and the sole or in a direction extending between the heel end and the toe end. Stuff teaches of an analogous putter type golf club head wherein a variety of groove configurations are disclosed (see Figs. 1-8, 11, 14-16 and 18-20), which may be selected to achieve an extended range of different corrective actions for golf balls (see Col. 5, Lines 28-33). Specifically, Figure 18 illustrates an embodiment wherein grooves 153 are provided on the face of the club striking surface which taper from a small dimension at one end 157, to a larger dimension at the other end 155 (see Col. 5, Lines 16-20). Thus, demonstrating it was well known at the time the invention was filed to modify club grooves to vary in width, as well as the land portions between the grooves. It would have been obvious to one skilled in the art at the time the invention was filed to modify the club head of Ota to impart different corrective actions (i.e. spin) to the ball as desired by the user, as taught by Stuff. In regard to claim 11, both Ota and Stuff disclose a separate face portion attached to the putter type club face, wherein the grooves are located on the face portion (see Figs. 3a-d of Ota and Figs. 8-20 and Col.4, Lines 6-10 and Col. 5, Lines 3-33 of Stuff).
In regard to claims 2, 7 and 12, Ota disclose a putter type golf club head, wherein the widths of the land portions increase in a direction from a generally center portion of the putter face to the top rail (see Fig. 5). It is further noted, as discussed above, Stuff also discloses wherein the widths of the land portions increase in a direction from a generally center portion of the putter face to the top rail (see Figs. 7-8, 18-20 and Col. 3, Lines 38-67 and Col. 5, Lines 16-27).
In regard to claims 3, 8 and 13, Ota disclose a putter type golf club head, wherein the widths of the land portions increase in a direction from a generally center portion of the putter face to the sole (See Fig. 5). It is further noted, as discussed above, Stuff also discloses wherein the widths of the land portions increase/decrease in a direction from a generally center portion of the putter face to the sole (see Figs. 7-8, 18-20 and Col. 3, Lines 38-67 and Col. 5, Lines 16-27).
In regard to claims 4, 9, 14 and 16, Ota disclose a putter type golf club head, wherein the widths of the land portions increase/decrease in a direction from a generally center portion of the putter face to the toe end (See Fig. 5). It is further noted, as discussed above, Stuff also discloses wherein the widths of the land portions increase in a direction from a generally center portion of the putter face to the toe end (see Figs. 7-8, 18-20 and Col. 3, Lines 38-67 and Col. 5, Lines 16-27).
In regard to claims 5, 10, 15 and 17, Ota disclose a putter type golf club head, wherein the widths of the land portions increase/decrease in a direction from a generally center portion of the putter face to the heel end (See Fig. 5). It is further noted, as discussed above, Stuff also discloses wherein the widths of the land portions increase/decrease in a direction from a generally center portion of the putter face to the heel end (see Figs. 7-8, 18-20 and Col. 3, Lines 38-67 and Col. 5, Lines 16-27).
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.
GROUND 2: Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9-12 of U.S. Patent No. 8066586 to Solheim et al. in view of U.S. Patent No. 5,354,059 to Stuff.
US 8066586 claims the same subject matter, including in particular the variable
groove width and specified depth thereof, except for the club head being a putter and land portions extending between the grooves with varying widths. Stuff teaches of varying groove configurations as a matter of design choice at the time of the invention (See Col. 5, Lines 27-33). Specifically, a groove configuration wherein land portions extending between the grooves may vary as desired (see Figs. 18-20), and that the club can be a putter, (see Figs. 7-8 and Col. 4, Lines 3-17). Stuff further discloses a separate face portion attached to the putter type club face, wherein the grooves are located on the face portion (see Col.4, Lines 6-10 and Col. 5, Lines 3-33). As such, given the combined teachings, it would have been obvious to those having ordinary skill in the art to have incorporated the groove shape with land portions having varying widths, on the club face or insert attached thereto, of Stuff as a matter of engineering design choice.
GROUND 3: Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-21 of copending Application No. 16/986161.
The ‘109 application claims amount to an obvious variant of the ‘161 application claims.
GROUND 4: Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-13 and 5-18 of copending Application No. 16/986140.
The ‘109 application claims amount to an obvious variant of the ‘140 application claims.
GROUND 5: Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 and of RE50,231 Application in view of U.S. Patent No. 5,354,059 to Stuff.
RE50231 claims the same subject matter, including in particular the variable
groove width and specified depth thereof, except for the putter club head comprising land portions extending between the grooves with varying widths. Stuff teaches of varying groove configurations as a matter of design choice at the time of the invention (See Col. 5, Lines 27-33). Specifically, a groove configuration wherein land portions extending between the grooves may vary as desired (see Figs. 18-20). As such, given the combined teachings, it would have been obvious to those having ordinary skill in the art to have incorporated the groove shape with land portions having varying widths, on the club face or insert attached thereto, of Stuff as a matter of engineering design choice.
GROUND 6: Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 and of copending Application No. 16/986150 in view of U.S. Patent No. 5,354,059 to Stuff and .
The ‘150 application claims the same subject matter, including in particular the variable groove width, except for the putter club head comprising land portions extending between the grooves with varying widths and a specified depth of the grooves. Stuff teaches of varying groove configurations as a matter of design choice at the time of the invention (See Col. 5, Lines 27-33). Specifically, a groove configuration wherein land portions extending between the grooves may vary as desired (see Figs. 18-20). As such, given the combined teachings, it would have been obvious to those having ordinary skill in the art to have incorporated the groove shape with land portions having varying widths, on the club face or insert attached thereto, of Stuff as a matter of engineering design choice.
GROUND 7: Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 10-12 and of copending Application No. 16/986156 in view of U.S. Patent No. 5,354,059 to Stuff.
The ‘156 application claims the same subject matter, including in particular an insert with a variable groove width, except for the putter club head comprising land portions extending between the grooves with varying widths. Stuff teaches of varying groove configurations as a matter of design choice at the time of the invention (See Col. 5, Lines 27-33). Specifically, a groove configuration wherein land portions extending between the grooves may vary as desired (see Figs. 18-20). As such, given the combined teachings, it would have been obvious to those having ordinary skill in the art to have incorporated the groove shape with land portions having varying widths, on the club face or insert attached thereto, of Stuff as a matter of engineering design choice.
GROUND 8: Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-8, 10, 13 and 17 and of RE49,856 Application in view of U.S. Patent No. 5,354,059 to Stuff and JP 2003-000777 to Ota.
RE49856 claims the same subject matter, including in particular the variable
groove width and specified depth thereof, except for the putter club head comprising land portions extending between the grooves with varying widths. Stuff teaches of varying groove configurations as a matter of design choice at the time of the invention (See Col. 5, Lines 27-33). Specifically, a groove configuration wherein land portions extending between the grooves may vary as desired (see Figs. 18-20). Ota teaches of a putter head having grooves with a depth of .0003 inches (See Figs. 1a-b). As such, given the combined teachings, it would have been obvious to those having ordinary skill in the art to have incorporated the groove shape with land portions having varying widths, on the club face or insert attached thereto, of Stuff as a matter of engineering design choice.
Amendments in Reissue Applications
Applicant is notified that any subsequent amendment to the specification, claims or drawings must comply with 37 CFR 1.173(b)-(g). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
The provisions of 37 CFR 1.173(b)(1), (d), (f) and (g) govern amendments to the specification (other than the claims) in reissue applications. The following guidance is provided as to the procedure for amending the specification:
a) All amendments which include deletions or additions must be made by submission of the entire text of each added or rewritten paragraph containing the bracketing and/or underlining required by 37 CFR 1.173(d).
b) An entire paragraph of specification text may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
c) Applicant must indicate the precise point where each amendment is made.
d) All bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application. Thus, all paragraphs which are newly added to the specification of the original patent must be submitted as completely underlined each time they are re-submitted in the reissue application.
The provisions of 37 CFR 1.173(b)(2), (c)-(e) and (g) govern amendments to the claims in reissue applications. The following guidance is provided as to the procedure for amending the claims:
a) For each claim that is being amended, the entire text of the claim must be presented with the bracketing and/or underlining required by 37 CFR 1.173(d).
b) For each new claim added to the reissue, the entire text of the added claim must be presented completely underlined.
c) A patent claim should be canceled by a direction to cancel that claim. There is no need to present the patent claim surrounded by brackets.
d) A new claim (previously added in the reissue) should be canceled by a direction to cancel that claim.
e) Pursuant to 37 CFR 1.173(b)(2), each claim that is amended or added should include the appropriate status indicator following the claim number, e.g., “(amended)”, “(twice amended)”, “(new)”, and “(canceled)”.
f) Pursuant to 37 CFR 1.173(c), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending or canceled.
g) Also pursuant to 37 CFR 1.173(c), each claim amendment must be accompanied by an explanation of the support in the patent’s disclosure for all changes made in the claim(s), whether insertions or deletions.
h) Pursuant to 37 CFR 1.173(e), original patent claims are never to be renumbered. A patent claim retains its number even if it is canceled in the reissue proceeding, and the numbering of any added claims must begin after the last original patent claim.
i) Pursuant to 37 CFR 1.173(g), all bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application.
The provisions of 37 CFR 1.173(b)(3) govern amendments to the drawings in reissue applications. The following guidance is provided as to the procedure for amending drawings:
a) Amending the original or printed patent drawing sheets by physically changing or altering them is not permitted.
b) Where a change to the drawings is desired, applicant must submit a replacement sheet for each sheet of drawings containing a figure to be revised. Any replacement sheet must comply with 37 CFR 1.84 and include all of the figures appearing on the original version of the sheet, even if only one figure is being amended. Each figure that is amended must be identified by placing the word “Amended” at the bottom of that figure. Any added figure must be identified as “New”. In the event that a figure is canceled, the figure must be identified as “Canceled” and also surrounded by brackets.
c) All changes to the figure(s) must be explained, in detail, beginning on a separate sheet which accompanies the papers including the amendment to the drawings.
d) If desired, applicant may include a marked-up copy of any amended drawing figure, including annotations indicating the changes made. Such a marked-up copy must be clearly labeled as “Annotated Marked-up Drawings”, and it must be presented in the amendment or remarks section that explains the change to the drawings.
Failure to fully comply with 37 CFR 1.173(b)-(g) will generally result in a notification to applicant that an amendment before final rejection is not completely responsive. Such an amendment after final rejection will not be entered.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J KASZTEJNA whose telephone number is (571)272-6086. The examiner can normally be reached M-F, 7AM--3PM.
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, Eileen Lillis can be reached on 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW J KASZTEJNA/ Reexamination Specialist, Art Unit 3993
Conferees:
/WILLIAM V GILBERT/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 The Solheim Family includes U.S. Patent Nos. 8,764,578, 8,282,505, and U.S. Patent No. 8,066,586.
2 The Non-Solheim Family includes at least U.S. Patent Nos. 8,790,193, 9,108,088, 9,452,326, 10683308 9,987,530, 10,092,802, 10,099,091, 10,315,079, 10,398,947, 10,427,011, and 10,583,338.
3 The arguments of counsel cannot take the place of evidence in the record. See In re Schulze, 346 F.2d 600, 602 (CCPA 1965).