DETAILED ACTION
This Office action is responsive to communication received 09/20/2022 – application papers received; and 11/28/2023 – IDS.
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 .
Continuation Data
This application is a CIP of 16/913,975 06/26/2020 PAT 11446553 which is a CIP of 15/276,576 09/26/2016 PAT 10695620 which claims benefit of 62/334,623 05/11/2016 and is a CIP of 14/072,190 11/05/2013 ABN.
Drawings
The drawings were received on 09/20/2022. These drawings are acceptable.
Specification - Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract lacks a statement of a technical disclosure that describes the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The abstract should include the technical disclosure of the improvement. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Status of Claims
Claims 1-4 and 7-20 are originally pending, as submitted by the applicant.
However, the numbering of the originally-filed claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. The numbering should be consecutive. In this case, claims 5 and 6 are missing from the originally-filed claims listing. In order to provide consecutive numbering of the claim set, originally-filed claims 7-20 have been renumbered as claims 5-18, with appropriate renumbering of the dependency of these claims, as needed.
When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
The applicant is required to address the initially missing claims and provide an appropriate amendment to correct and present a proper numbering of all of the claims.
FOLLOWING IS AN ACTION ON THE MERITS:
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 1-18 (recall the renumbering of claims, as explained above under “Status of Claims”) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,695,620.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered to be grammatical in nature and/or otherwise obvious design choices. Moreover, the claims of the ‘620 patent are, on one hand, more specific than the instant claims. For example, the ‘620 patent claims require the first material of the face portion being subjected to a first heat treating step for approximately 60 minutes at a temperature equal to or greater than 600 degrees Celsius, followed by a quenching cooling process, followed by the first material being subjected to a second heat treating step for a period of time greater than 6 hours at a temperature greater than or equal to 500 degrees Celsius. On the other hand, the claims of the ‘620 patent lack a specific recitation of the first material comprising “a carpenter grade 475 steel” (claims 3 and 13) and lack a specific recitation of the second material comprising substantially a “17-4 steel alloy” (claims 4 and 14). Any changes in the specific material selected for the claimed second material would have involved an obvious selection of a known material based on is suitability for its intended use. Also, see MPEP 2144.07 noting: “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.)”.
Moreover, any distinctions over the claimed “first yield strength”, “second yield strength” or “yield strength ratio” recited throughout claims 1-2, 11-12 and 17-18 would have involved an obvious design choice in order to help prevent plastic deformation, cracking, and clubhead failure and thus reducing the stress between the face portion and the support body. The pertinent values for “first yield strength”, “second yield strength” and “yield strength ratio” would have been attainable through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note the following additional remarks:
As to claim 5, see claim 7 of the ‘620 patent.
As to claim 6, see claim 8 of the ‘620 patent.
As to claim 7, see claim 9 of the ‘620 patent.
As to claim 8, see claim 12 of the ‘620 patent.
As to claim 9, see claim 13 of the ‘620 patent.
As to claim 10, see claim 14 of the ‘620 patent.
As to claim 15, see claim 7 of the ‘620 patent.
As to claim 16, see claim 8 of the ‘620 patent.
Claims 1-18 (recall the renumbering of claims, as explained above under “Status of Claims”) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of USPN 11,446,553.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered to be grammatical in nature and/or otherwise obvious design choices. Here, the claims of the ‘553 patent lack a specific recitation of the first material comprising “a carpenter grade 475 steel” (claims 3 and 13) and lack a specific recitation of the second material comprising substantially a “17-4 steel alloy” (claims 4 and 14). Any changes in the specific material selected for the claimed second material would have involved an obvious selection of a known material based on is suitability for its intended use. Also, see MPEP 2144.07 noting: “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.)”.
Moreover, any distinctions over the claimed “first yield strength”, “second yield strength” or “yield strength ratio” recited throughout claims 1-2, 11-12 and 17-18 would have involved an obvious design choice in order to help prevent plastic deformation, cracking, and clubhead failure and thus reducing the stress between the face portion and the support body. The pertinent values for “first yield strength”, “second yield strength” and “yield strength ratio” would have been attainable through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note the following additional remarks:
As to claim 5, see claim 7 of the ‘553 patent.
As to claim 6, see claim 8 of the ‘553 patent.
As to claim 7, see claim 9 of the ‘553 patent.
As to claim 8, see claim 10 of the ‘553 patent.
As to claim 9, see claim 11 of the ‘553 patent.
As to claim 10, see claim 12 of the ‘553 patent.
As to claim 15, see claim 7 of the ‘553 patent.
As to claim 16, see claim 8 of the ‘553 patent.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights