DETAILED ACTION
Priority
For claims 1, 4, 5, 8, 9, 11, 12, and 18-20, the claims receive a priority date of 9/30/22 from this current application, because, at a minimum, the phrase “the thermoset material is cured” is first used in par. [0032] of this current application. Restated, both independent claims 1 and 12 claim “the thermoset material is cured” and thus all of the claims receive the same priority date.
Specification
The spec amendment received 4/30/26 is entered.
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1).
Regarding claim 1, Ines discloses a golf club head comprising (Fig. 2B or Fig. 59): a striking face (Fig. 2B, proximate item 218 or Fig. 60); a periphery portion surrounding and extending rearwards from the striking face (Figs. 2B and 4A, being exemplary, or Fig. 59); a coordinate system centered at a center of gravity of the golf club head, the coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when the golf club head is in an address position at a prescribed loft and lie, an x- axis perpendicular to the y-axis and parallel to the striking face, extending towards a heel of the golf club head, and a z-axis, perpendicular to the y-axis and the x-axis and extending through the striking face (Fig. 6A and par. [0117]; also noting a coordinate system is obvious or inherent; see also Figs. 51-60; noting this obvious or inherent); a hosel configured to receive a shaft (Fig. 2B; clearly showing a hosel, or Fig. 59 clearly showing a hosel), the hosel located on a heel side of the golf club head, the heel side located opposite a toe side (Fig. 4A; noting a heel and toe side are obvious or inherent, or Fig. 59); wherein the striking face comprises a front surface configured to strike a golf ball and a rear surface opposite the front surface (Fig. 1B, Fig. 60, item 1106 being the damping element); a damping element comprising a front surface and a rear surface, the rear surface of the damping element opposite the front surface of the damping element (Fig. 1B, item 102; noting a front and rear side is inherent, or Fig. 60); wherein the front surface of the damping element is in contact with the rear surface of the striking face (Fig. 1B or Fig. 60); a shelf extending inward from the periphery portion (Fig. 51 and Fig. 60 below; noting the “periphery portion” is simply the extreme outside surface of the club head that “extends rearwards from the striking face”; see also pars. [0228]-[0231]): and a back cover attached to the shelf to enclose a cavity in the golf club head (Figs. 54 as seen in Figs. 59 and 60), wherein the shelf includes a protruding section extending inward along a same plane as the shelf (see annotated, Fig. 60 below); wherein the protruding section spans the cavity from a topline region of the shelf to a lower toe region of the shelf (see Fig. 51, reproduced below; item 1014; noting this is obvious and/or inherent as the protruding section runs from what can be considered a “topline region” to “a lower toe region”); wherein the striking face comprises a first portion having a constant thickness (Fig. 2B, proximate item 222, Fig. 60; noting the striking face is all one thickness); wherein the striking face comprises a plurality of scorelines having the same length on the striking face (Fig. 10; noting “plurality” only requires two); wherein the front surface of the damping element contacts the first portion of the striking face (Fig. 2B, item 202 in contact with the portion 222, or Fig. 60); wherein the front surface of the damping element comprises a geometric center (Fig. 10, item 743, or Fig. 60, item 1106; noting a geometric center is inherent), that the rear surface of the striking face includes an elastomer material (par. [0237]; the Examiner noting that “rubber” actually can be either a “thermoplastic” or “thermoset”). Regarding the above rejection, the rejection is given under a 103 rejection as the Examiner utilizes multiple embodiments within a single disclosure. The Court held in Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009) that combining various embodiments within a single disclosure does not take a “leap of inventiveness”. As such, it would have been obvious to a POSA at the time of filing that features from various embodiments could be combined because all the embodiments deal with a single invention: an iron club head utilizing a dampening system. It is noted that Ines does not specifically disclose a center face plane parallel to the y-axis and the z-axis, the center face plane located equidistant from a heel-most extent of the plurality of scorelines and a toe-most extent of the plurality of scorelines. However, in Fig. 10, Ines clearly discloses a plurality of scorelines that can be used to denote an imaginary “center face plane” that is equidistant from the ends of the scorelines (see Fig. 10, reproduced below; noting the bottom two scorelines can be used). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Ines to use a center face plane located equidistant from the extreme edges of the scorelines as taught and suggested by Ines because doing so would be common sense by applying an imaginary center face plane at the middle of the scorelines. Finally, it is noted that the Ines does not specifically disclose that the elastomer material is a thermoset material; wherein the thermoset material is cured to the rear surface of the striking face with a thickness between 0.1 mm and 4.0 mm; wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D. However, Snyder discloses a similar iron golf club wherein the rear surface of the striking face includes a thermoset material (Fig. 2D, item 220 and pars. [0043] and [0088]); wherein the thermoset material is cured to the rear surface of the striking face (par. [0061]) with a thickness between 0.1 mm and 4.0 mm (par. [0078]; noting 0.5 to 3.0 mm anticipates the claimed range); wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D (par. [0088]; noting 25 to 85 Shore D makes obvious the claimed range, or 35 to 45 Shore D anticipates the claimed range). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Ines to make the rear surface of the striking face includes a thermoset material; wherein the thermoset material is cured to the rear surface of the striking face with a thickness between 0.1 mm and 4.0 mm: and wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D as taught by Snyder because doing so would be use of a known technique (using a thermoset layer behind a striking face, the layer having thickness of 0.1 to 4.0 mm and a Shore D of 30 to 50 Shore D) to improve a similar product (a golf club iron with a striking face with an elastomer placed directly adjacent the rear surface of the striking face) in the same way (using a thermoset layer directly behind a striking face, the layer having thickness of 0.1 to 4.0 mm and a Shore D of 30 to 50 Shore D, the thermoset layer supporting the front face while allowing it to “more easily flex” while providing dampening – see Snyder: pars. [0033] and [0042]).
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Regarding claim 9, the combined Ines and Snyder disclose that the thermoset material has a hardness of 40 Shore D (Snyder: par. [0088]; noting 25 to 85 Shore D or 35 to 45 Shore D makes obvious the claimed value).
Claims 4, 5, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) and in further view of Issertell et al. (herein “Issertell”; US Pub. No. 2016/0193508 A1).
Regarding claim 4, the combined Ines and Snyder discloses that the geometric center of the front surface of the damping element is located a damping offset distance toeward from the center face plane (Ines: Fig. 10 above; noting toeward is obvious). It is noted that the combined Ines and Snyder does not specifically disclose that the damping offset distance is of 5 mm or less. However, Ines discloses that a SROL length may be 24 mm with the tendency of the geometric center of the damping element to be toe side of the center face plane (Fig. 10, above, and par. [0179]; noting the SROL is measured at 1 mm off the heel end of the scorelines). In addition, Issertell discloses that the scoreline length of a plurality of scorelines of a similar iron can be 40 mm (Fig. 8 and par. [0137]). Finally, the Examiner notes that if the scoreline length is equal to 40 mm, and SROL is equal to 24 mm, the damping offset distance would be (24-1 mm) – (40/2) = 3 mm (the distance being within the claimed range). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines and Snyder to use a scoreline length of 40 mm as taught by Issertell so that the damping offset would be between 5 mm or less because doing so would be a simple substitution of one element (using a scoreline length of 40 mm) for another (a golf club that would inherently have a scoreline length as determined by a plurality of scorelines) to obtain predictable results (using a scoreline length of 40 mm so that the center face plane would be at 20 mm, and the damping offset would be 3 mm).
Regarding claim 5, the combined Ines, Snyder, and Issertell disclose that the first portion of the striking face has a thickness greater than 1.5 mm and less than 2.5 mm (Ines: par. [0182]; noting “less than or equal to 2.2 mm” makes obvious the claimed range).
Regarding claim 12, Ines discloses a golf club head comprising (Fig. 2B): a striking face (Fig. 2B, proximate item 218); a periphery portion surrounding and extending rearwards from the striking face (Figs. 2B and 4A, being exemplary); a coordinate system centered at a center of gravity of the golf club head, the coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when the golf club head is in an address position at a prescribed loft and lie, an x- axis perpendicular to the y-axis and parallel to the striking face, extending towards a heel of the golf club head, and a z-axis, perpendicular to the y-axis and the x-axis and extending through the striking face (Fig. 6A and par. [0117]; also noting a coordinate system is obvious or inherent); a hosel configured to receive a shaft (Fig. 2B; clearly showing a hosel), the hosel located on a heel side of the golf club head, the heel side located opposite a toe side (Fig. 4A; noting a heel and toe side are obvious or inherent); wherein the striking face comprises a front surface configured to strike a golf ball and a rear surface opposite the front surface (Fig. 1B); a damping element comprising a front surface and a rear surface, the rear surface of the damping element opposite the front surface of the damping element (Fig. 1B, item 102; noting a front and rear side is inherent); wherein the front surface of the damping element is in contact with the rear surface of the striking face (Fig. 1B); wherein the striking face comprises a first portion having a constant thickness (Fig. 2B, proximate item 222); wherein the striking face comprises a plurality of scorelines having the same length on the striking face (Fig. 10; noting “plurality” only requires two); wherein the periphery portion comprises a sole extending rearwards from a bottom of the striking face, a topline extending rearwards from a top of the striking face, and a back portion extending upwards from the sole and spaced from the striking face (Figs. 5A and 5B being exemplary), wherein the striking face and the periphery portion form a cavity, wherein the damping element resides within the cavity (Figs. 2B, 5A, and 5B, being exemplary); a shelf extending inward from the periphery portion (Fig. 51 and pars. [0228]-[0231]); and a back cover attached to the shelf to enclose the cavity (Figs. 54 as seen in Figs. 59 and 60); wherein the shelf includes a protruding section extending inward along a same plane as the shelf (see annotated, Fig. 60 above); wherein the protruding section spans the cavity from a topline region of the shelf to a lower toe region of the shelf (see Fig. 51, reproduced above; item 1014; noting this is obvious and/or inherent as the protruding section runs from what can be considered a “topline region” to “a lower toe region”); wherein the front surface of the damping element contacts the first portion of the striking face (Fig. 2B, item 202 in contact with the portion 222); wherein the front surface of the damping element comprises a geometric center (Fig. 10), wherein the first portion of the striking face has a thickness greater than 1.5 mm and less than 2.5 mm (par. [0182]; noting “less than or equal to 2.2 mm” makes obvious the claimed range), that the rear surface of the striking face includes an elastomer material (par. [0237]; the Examiner noting that “rubber” actually can be either a “thermoplastic” or “thermoset”). Regarding the above rejection, the rejection is given under a 103 rejection as the Examiner utilizes multiple embodiments within a single disclosure. The Court held in Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009) that combining various embodiments within a single disclosure does not take a “leap of inventiveness”. As such, it would have been obvious to a POSA at the time of filing that features from various embodiments could be combined because all the embodiments deal with a single invention: an iron club head utilizing a dampening system. It is noted that the Ines does not specifically disclose that the elastomer material is a thermoset material; wherein the thermoset material is cured to the rear surface of the striking face with a thickness between 0.1 mm and 4.0 mm; wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D. However, Snyder discloses a similar iron golf club wherein the rear surface of the striking face includes a thermoset material (Fig. 2D, item 220 and pars. [0043] and [0088]); wherein the thermoset material is cured to the rear surface of the striking face (par. [0061]) with a thickness between 0.1 mm and 4.0 mm (par. [0078]; noting 0.5 to 3.0 mm anticipates the claimed range); wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D (par. [0088]; noting 25 to 85 Shore D makes obvious the claimed range). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Ines to make the rear surface of the striking face includes a thermoset material; wherein the thermoset material is cured to the rear surface of the striking face with a thickness between 0.1 mm and 4.0 mm: and wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D as taught by Snyder because doing so would be use of a known technique (using a thermoset layer behind a striking face, the layer having thickness of 0.1 to 4.0 mm and a Shore D of 30 to 50 Shore D) to improve a similar product (a golf club iron with a striking face with an elastomer placed directly adjacent the rear surface of the striking face) in the same way (using a thermoset layer directly behind a striking face, the layer having thickness of 0.1 to 4.0 mm and a Shore D of 30 to 50 Shore D, the thermoset layer supporting the front face while allowing it to “more easily flex” while providing dampening – see Snyder: pars. [0033] and [0042]). Finally, it is noted that the combined Ines and Snyder do not specifically disclose a center face plane parallel to the y-axis and the z-axis, the center face plane located equidistant from a heel-most extent of the plurality of scorelines and a toe-most extent of the plurality of scoreline, and wherein at least a portion of the damping element overlaps the center face plane, wherein the geometric center of the front surface of the damping element is located a damping offset distance toeward from the center face plane of 5 mm or less. However, in Fig. 10, Ines clearly discloses a plurality of scorelines that can be used to denote an imaginary “center face plane” that is equidistant from the ends of the scorelines (see Fig. 10, reproduced above; noting the bottom two scorelines can be used). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Ines to use a center face plane located equidistant from the extreme edges of the scorelines as taught and suggested by Ines because doing so would be common sense by applying an imaginary center face plane at the middle of the scorelines. Furthermore, regarding using a portion of the dampening element to overlap the center face plane but also having a center of the damping element offset from the center plane by 5 mm, while Fig. 10 above tends to show a geometric center of the dampening element toeward of the center face plane, Ines actually states that the “elastomer element can be disposed behind the approximate geometric center of the striking face” (i.e. approximately the center face plane)(par. [0132]). Ines also generally teaches that a diameter of the damping element may be from 12.5 to 18.5 mm (par. [0186]). In summary, what is obvious from Ines is that that the geometric center of the damping element may be “approximately” at the center face plane, but also slightly toeward, and that the element diameter can be roughly 12.5 to 18.5 mm. In addition, Ines discloses that a SROL length may be 24 mm (Fig. 10, above, and par. [0179]; noting the SROL is measured at 1 mm off the heel end of the scorelines). Furthermore, Issertell discloses that the scoreline length of a plurality of scorelines of a similar iron can be 40 mm (Fig. 8 and par. [0137]). Finally, the Examiner notes that if the scoreline length is equal to 40 mm, and SROL is equal to 24 mm, the damping offset distance would be (24-1 mm) – (40/2) = 3 mm (the distance being within the claimed range). The Examiner further notes that if the offset distance for the geometric center of the damping element from the center face plane is 3 mm, and the damping element can be 12.5 to 18.5 mm, a portion of that damping element would inherently “overlap the center face plane” as a radius of the dampening element would be 6.25 to 9.25 mm (i.e. over 3 mm). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines and Snyder to use a scoreline length of 40 mm as taught by Issertell so that the damping offset would be between 5 mm or less and so that at least a portion of the damping element overlaps the center face plane because doing so would be a simple substitution of one element (using a scoreline length of 40 mm) for another (a golf club that would inherently have a scoreline length as determined by a plurality of scorelines, and also having a damping element diameter of 12.5 to 18.5 mm) to obtain predictable results (using a scoreline length of 40 mm so that the center face plane would be at 20 mm, and the damping offset would be 3 mm so that at least a portion of the 6.25 to 9.25 radius damping element would inherently overlap the center face plane that is 3 mm away).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) and in further view of Roach et al. (herein “Roach”; US Pub. No. 2012/0028727 A1).
Regarding claim 8, the combined Ines and Snyder disclose that the back cover includes a thermoplastic material (Ines: par. [0206]; specifically listing “acrylonitrile butadiene styrene”, which is a thermoplastic). It is noted that the combined Ines and Snyder do not specifically disclose that the back cover includes a thermoset material. However, Roach discloses a similar iron with a rear back cover (Fig. 7, item 81) wherein the back cover can be a thermoset (par. [0053]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines and Snyder to make the back cover a thermoset material as taught by Roach because doing so would be a simple substitution of one element (using a thermoset) for another (using a thermoplastic) to obtain predictable results (using a thermoset for the back cover, the thermoset continuing to add vibration dampening to the golf club head much like a thermoplastic – see Roach: par. [0053]; the thermoset known to work as a vibration damping material for golf club irons).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) and in further view of Gilbert (US Pub. No. 2004/0053704 A1).
Regarding claim 11, it is noted that the combined Ines and Snyder do not specifically disclose that the thermoset material includes a filler material. However, Gilbert makes obvious the ability to use a thermoset material behind the striking face wherein fillers are used within the thermoset (par. [0024]; making obvious “inorganic fillers” and mineral fillers”; also made obvious by “mixtures thereof” as “low density fiber glass” can be mixed with “thermoset rubbers”). Thus, it would have bene obvious to a person of ordinary skill in the art at the time of filing to modify the combined Ines and Snyder to use a filler in the thermoset material as taught by Gilbert because doing so would be a simple substitution of one element (a thermoset material with a filler used behind a striking face) for another (a thermoset material used behind a striking face) to obtain predictable results (the continued ability to use a thermoset material behind a striking face, the thermoset material having a filler, and the thermoset material with a filler known to work in golf club applications involving golf club irons).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) in view of Issertell et al. (herein “Issertell”; US Pub. No. 2016/0193508 A1) and in further view of Gilbert (US Pub. No. 2004/0053704 A1).
Regarding claim 18, it is noted that the combined Ines, Snyder, and Issertell do not specifically disclose that the thermoset material includes a filler material. However, Gilbert makes obvious the ability to use a thermoset material behind the striking face wherein fillers are used within the thermoset (par. [0024]; making obvious “inorganic fillers” and mineral fillers”; also made obvious by “mixtures thereof” as “low density fiber glass” can be mixed with “thermoset rubbers”). Thus, it would have bene obvious to a person of ordinary skill in the art at the time of filing to modify the combined Ines, Snyder, and Issertell to use a filler in the thermoset material as taught by Gilbert because doing so would be a simple substitution of one element (a thermoset material used behind a striking face) to obtain predictable results (the continued ability to use a thermoset material behind a striking face, the thermoset material having a filler, and the thermoset material with a filler known to work in golf club applications involving golf club irons).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) in view of Issertell et al. (herein “Issertell”; US Pub. No. 2016/0193508 A1) and in further view of Nakamura (US Pub. No. 2008/0287216 A1) as evidenced by Kosmatka (US Pat. No. 5,830,084).
Regarding claim 19, it is noted that the combined Ines, Snyder, and Issertell do not specifically disclose that the striking face comprises a second portion, the second portion of the striking face located heelward of the center face plane, the second portion of the striking face having a thickness which tapers from a maximum thickness at a thick end of the second portion to a minimum thickness at a thin end of the second portion, wherein the thick end is located toeward of the thin end. However, Ines discloses an iron golf club (Fig. 6E). In addition, Nakamura discloses an iron golf club, wherein the face comprises a second portion (see Figs 5 and 6, reproduced below), the second portion of the striking face located heelward of the center face plane (see Fig. 5 and 6, below, noting a center face plane would be inherent or obvious at roughly the center of the face denoted as “SS”), the second portion of the striking face having a thickness which tapers from a maximum thickness at a thick end of the second portion to a minimum thickness at a thin end of the second portion (Figs. 5 and 6; noting it goes from tc1 to ts), wherein the thick end is located toeward of the thin end (Figs. 5 and 6; noting thickness tc1). In addition, assuming arguendo that “taper” means a “gradual curve”, Kosmatka evidences that a gradual curve may be used in place of a stepped profile as shown in Nakamura (col. 5, lines 19-25). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines, Snyder, and Issertell to make the striking face comprises a second portion, the second portion of the striking face located heelward of the center face plane, the second portion of the striking face having a thickness which tapers from a maximum thickness at a thick end of the second portion to a minimum thickness at a thin end of the second portion, wherein the thick end is located toeward of the thin end as taught by Nakamura because doing so would be use of a known technique (using a variable face thickness in an iron) to improve a similar product (an iron having a damping element) in the same way (using a partial unsupported or thinned face plate to improve overall deflection of the face – see Nakamura: par. [0048]). In addition, it would have been obvious to one of ordinary skill in the art the time of filing that using a smooth contour over a stepped gradient would be a simple substitution of one element (a smooth contour) for another (a stepped gradient) to obtain predictable results (the continued ability to transition from a thick to thin region using a smooth contour).
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Regarding claim 20, the combined Ines, Snyder, and Issertell, and Nakamura disclose that the striking face comprises a third portion, the third portion of the striking face located toeward of the center face plane, the third portion of the striking face having a thickness which tapers from a maximum thickness at a heel end of the third portion to a minimum thickness at a toe end of the third portion (Nakamura: Figs. 5 and 6, reproduced above; see Kosmatka for evidencing that “taper” can encompasses a smooth curve).
Response to Arguments
Applicant's arguments filed 4/30/26 have been fully considered but they are not generally persuasive.
Rejections under 35 U.S.C. §112
Concerning the previous 112 rejection, the Examiner essentially gives applicant the benefit of the doubt. The Examiner does not think it entirely clear that Fig. 105 shows “wherein the shelf including a protruding section extending inward along a same plane as the shelf”. Especially, because Fig. 105 shows a conventional isometric view, and not a side view (noting a side view like Ines: Fig. 60 would more readily show a coplanar relationship). Nonetheless, applicant is now on the record why they believe support exists and has amended the specification accordingly.
Rejection under 35 U.S.C. §103
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1).
Based on the Examiner’s rejection, there appears to be some confusion on applicant’s behalf as to what is considered the “shelf” and what is considered “the protruding section”. However, the Examiner has given no less than two annotated figures in the body of the rejection describing the structure that is the “shelf” and the “protruding section”. In annotated Fig. 51 above, the Examiner clearly indicates that the shelf is item 1014. There is no ambiguity in that. In annotated Fig. 60 above, the Examiner clearly indicates the lower/upper portion of 1014 as being the “protruding section”. There does not appear to be any ambiguity in that. So, the Examiner is unclear how his rejection is “unclear”. However, assuming arguendo that any ambiguity on applicant’s behalf still existed, that ambiguity could have been cleared up by an interview. No interview was requested. As such, the rejection is maintained and this action is final.
Below is yet another annotated Ines: Fig. 60; completely consistent with the previous office action. The Examiner offers yet another annotated figure as he wants to make his position absolutely clear to applicant what structure he is referring to. Again, this position is completely consistent with the prior non-office action. As can be seen, the “shelf” is coplanar with “the protruding section”. In fact, this coplanar relationship in Ines: Fig. 60 is significantly more evident than applicant’s Fig. 105 ever can be (see Remarks, pages 8-9, applicant arguing that this is shown). So to answer applicant’s question: yes, structure 1014 is both the “shelf” and the “protruding section”; this position is clear from the previous office action. Furthermore, applicant claims “ the shelf including a protruding section”, so it is clear that the protruding section must be part of the shelf (emphasis added).
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Applicant next argues the holding in Boston Scientific. Applicant states that the Examiner “misapplies the holding in Boston Scientific” and the Examiner utilizes a “overly broad interpretation” of the holding. Respectfully submitted, applicant does not support this position with any specific citations or facts from Boston Scientific. Furthermore, the holding in Boston Scientific generally does state that incorporation of features in different embodiments onto the same base element does not take a “leap of inventiveness”. Various courts and Board decisions have generally found that the holding in Boston Scientific is not limited to combination of features from literally side-by-side embodiments; but rather applies to different embodiments within a single disclosure. As such, the Examiner’s application of Boston Scientific is completely consistent with the holding in Boston Scientific.
Claims 4, 5, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) and in further view of Issertell et al. (herein "Issertell"; US Pub. No. 2016/0193508 A1).
Under this section, applicant has repeated the exact same arguments as above regarding the shelf and the protruding section and the Examiner’s use of Boston Scientific (emphasis added). Those arguments have been addressed above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
5/18/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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