CTNF 17/978,877 CTNF 66876 DETAILED ACTION This Office action is responsive to communication received 11/01/2022 – application papers received, including power of attorney; 12/19/2022 – IDS; and 03/11/2025 – Petition to Make Special (applicant’s age). Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 Applicant’s attention is directed to the domestic priority data as claimed by applicant and as listed on the application filing receipt, mailed 11/10/2022. The priority data will not be repeated here, for brevity. Decision on Petition The petition to make special under 37 CFR 1.102(c)(1), filed 03/11/2025, has been GRANTED . See the decision, mailed 04/11/2025. Information Disclosure Statement The IDS, received 12/19/2022, omits the URL for the Non-Patent Literature Document, Cite No. 1, retrieved from the Internet. This citation has thus been lined-through. Note MPEP 609.04(a)(I). “ For publications obtained from the internet, the uniform resource locator (URL) of the webpage that is the source of the publication must be provided for the place of publication (e.g., "www.uspto.gov") . The publisher may be evident from the URL of the webpage. See MPEP § 707.05(e) for examples on listing documents retrieved from the internet, including social media posts and screen shots from videos. In particular, see examples 17 and 18. Further, for an internet publication obtained from a website that archives webpages, both the URL of the archived webpage submitted for consideration and the URL of the website from which the archived copy of the webpage was obtained should be provided on the document listing (e.g., "Hand Tools," webpage <http://www.farmshopstore.com/handtools.html>, 1 page, August 18, 2009, retrieved from Internet Archive Wayback Machine <http://web.archive.org/web/20090818144217/ http://www.farmshopstore.com/handtools.html> on December 20, 2012). Where the actual publication date of a non-patent document is not known, the applicant must, at a minimum, provide a date of retrieval (e.g., the date a webpage was retrieved) or a time frame (e.g., a year, a month and year, a certain period of time) when the document was available as a publication.” The IDS, received 12/19/2022, contains a discrepancy in the identification of Cite No. 2 under Non-Patent Literature Documents. Specifically, the citation has been identified as being “filed Apr. 102015”. The month/day/year have not been clearly identified. This citation has thus been lined-through. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a). Priority This application is a CON of 17/133,260, which claims the benefit of 63/008,654, filed 04/10/2020. The effective filing date of claims 1-20 has been determined to be the filing date of provisional application 63/008,654, namely 04/10/2020. Drawings 06-37 AIA The drawings were received on 11/01/2022 . These drawings are acceptable . 12-151 AIA 26-51 12-51 Status of Claims Claims 1-20 are pending. FOLLOWING IS AN ACTION ON THE MERITS : / / Claim Objections - Minor 07-29-01 AIA Claim 1 is objected to because of the following informalities: In lines 14-15, it appears the phrase “to at least a portion of the insert portion at least a portion of the transition portion” should instead read --to at least a portion of the insert portion and to at least a portion of the transition portion --. Appropriate correction is required. Double Patenting 08-33 AIA 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 1-3, 6-8, 11, 13-14, 16-17 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,517,798. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘798 patent are, on one hand, more specific than the instant claims. For example, the claims of the ‘798 patent further require “wherein the first channel is engaged to the adhesive to discourage vertical translation of the hosel portion within the cavity, wherein the second and third channels are engaged to the adhesive to discourage lateral translation of the hosel portion within the cavity, wherein a portion of the second channel extending across the transition portion has a depth that gradually shallows to zero or approximately zero toward the neck portion and terminates at or proximate the neck portion” . On the other hand, although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences or differences in the arrangement of phrases within the claims and/or represent obvious variations over the prior patent. Note the following comments: As to claim 1 , see claims 1, 8 and 14 of the ‘798 patent. As to claim 2 , the claims of the ‘798 patent encompass this feature, as the claimed invention of the prior patent requires that the transition portion provides an interference fit with the cavity proximate the opening of the cavity and since the transition portion is located between the insert portion and the neck portion, the insert portion has a total length that is greater than a length of the transition portion. As to claim 3 , see claim 1 of the ‘798 patent. As to claims 6 and 7 , see claim 1 of the ‘798 patent. As to claim 8 , see claims 1, 8 and 14 of the ‘798 patent. As to claim 11 , see claim 19 of the ‘798 patent, wherein the insert portion is recited as not contacting the base and sidewalls. To have provided less spacing between the first portion and the cavity wall as compared to the spacing between the first portion and the base portion in the claimed invention of the ‘798 patent for additional stability would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. As to claim 13 , see claim 1 of the ‘798 patent. As to claim 14 , see claims 1, 8 and 14 of the ‘798 patent. As to claim 16 , see claim 19 of the ‘798 patent, wherein the insert portion is recited as not contacting the base and sidewalls. Here, the now-claimed “first portion” is encompassed by the limitation of an insert portion of the ‘798 patent. To have provided less spacing between the first portion and the cavity wall as compared to the spacing between the first portion and the base portion in the claimed invention of the ‘798 patent for additional stability would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. As to claims 17 and 20 , see at least claims 1, 8 and 14 of the ‘798 patent. 08-36 AIA Claim s 4-5 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 11,517,798 in view of USPN 5,941,781 to Sessions . As to claims 4-5 and 12 , the claimed invention of the ‘798 patent does not require the specific arrangement of the first and second channels, as required by claim 4, nor the relationship between the first and second lengths, as required by claim 5. Moreover, the claims of the ‘798 patent do not require that the one or more channels have uniform widths or variable depths, as required by claim 12. Here, Sessions is cited to show that it is old in the art to provide a hosel insert portion with oppositely-disposed channels or grooves and to arrange any one or more of the pattern, the width, the depth, the number of grooves, or the length in order to increase the surface area for a more secure adhesive bond placement (i.e., see FIG. 14 and col. 6, lines 46-65 in Sessions). In view of the teachings in Sessions, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed invention of the ‘798 patent by incorporating the features “the first channel is disposed on a first side of the hosel portion and the second channel is disposed on a second side of the hosel portion that is opposite to the first side, and wherein the first side faces toward the face portion and the second side faces toward the rear portion” along with “wherein the first length is equal or about equal to the second length” and “wherein the one or more channels have uniform widths and variable depths” , with there being a reasonable expectation of success that arranging the channels in a specific orientation and sizing the channels with a particular width, depth and/or length would have desirably altered the placement of the epoxy or adhesive to improve the adhesive bond. For example, locating the claimed channels of the ‘798 patent on first and second sides of the hosel to improve the symmetry of the placement of the adhesive would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. In addition to the teachings gleaned from Sessions, it is noted that such a modification would simply have involved an obvious rearrangement of parts (i.e., an obvious relocation of the channels). In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice) . 08-36 AIA Claim s 9, 15 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 11,517,798 in view of USPN 6,354,959 to Nicolette et al (hereinafter referred to as “Nicolette”) . As to claims 9, 15 and 18 , the claimed invention of the ‘798 claims lacks front and rear sides of the hosel that are wider than toe and heel sides of the hosel, as required by claims 9 and 18, as well as an opening that has a rounded rectangular shape, as required by claim 15. Here, Nicolette, in at least FIG. 1, shows front and rear portions of the hosel that are wider than the heel and toe portions of the hosel, and further shows a rounded rectangular opening into which the hosel is fitted. The arrangement in Nicolette provides structural stability to the hosel in both a heel-toe direction as well as a front-back direction. In view of the teachings in Nicolette and the above reasoning, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed invention of the ‘798 patent to include the features “wherein the hosel portion has a front side, a rear side, a toe side, and a heel side, and wherein each of the front and rear sides are wider than each of the toe and heel sides” along with “wherein the second portion tapers toward the first portion” , with there being a reasonable expectation of success that the hosel, with wider portions on a front and a rear portion of the hosel and being inserted within a rounded rectangular opening, would have provided the hosel portion with additional stability and resistance to movement during an impact between the golf club head and a golf ball . 08-36 AIA Claim s 10 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 11,517,798 in view of USPN 6,354,959 to Nicolette et al (hereinafter referred to as “Nicolette”) and also in view of USPN 5,941,781 to Sessions . As to claims 10 and 19 , the claimed invention of the ‘798 patent, as modified by Nicolette, lacks the feature that the one or more channels is disposed on one of the front side and the rear side of the hosel portion. Here, Sessions is cited to show that it is old in the art to provide a hosel insert portion with oppositely-disposed channels or grooves and to arrange any one or more of the pattern, the width, the depth, the number of grooves, or the length in order to increase the surface area for a more secure adhesive bond placement (i.e., see FIG. 14 and col. 6, lines 46-65 in Sessions). In view of the teachings in Sessions, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed invention of the ‘798 patent by incorporating the features “wherein the one or more channels is disposed on one of the front side and the rear side” (claim 10) and “wherein the one or more channels are disposed on one of the front and rear sides” (claim 19), with there being a reasonable expectation of success that arranging the channels in a specific orientation would have desirably altered the placement of the epoxy or adhesive to improve the adhesive bond. For example, locating the claimed channels of the ‘798 patent on first and second sides of the hosel portion to improve the symmetry of the placement of the adhesive would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. In addition to the teachings gleaned from Sessions, it is noted that such a modification would simply have involved an obvious rearrangement of parts (i.e., an obvious relocation of the channels). In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). Further References of Interest 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kroloff (‘823), Kroloff (‘271) and Kroloff (‘781), with a common assignee, show hosel portions with channels and an adhesive connection; Figs. 2-3 and 7-8 in Burrows; Fig. 1 in Sugimae (‘401); Fig. 1 I Burch; Figs. 14 and 23 in Sanchez; Figs. 4-5 in Sugimae (‘755); Figs. 4-5 in Vald’Via; Fig. 5 in Evans; Fig. 1 in Imamoto; Figs. 2 and 7 in O’Shea III; Fig. 3B in Vrska; Fig. 3 in Kultala; Fig. 2A in Thomas et al (Canadian CA-2692345-C); and Figs. 1-2 in Chikaraishi (Japanese JP-H0956851-A) . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. SEBASTIANO PASSANITI Primary Examiner Art Unit 3711 /SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711 Application/Control Number: 17/978,877 Page 2 Art Unit: 3711 Application/Control Number: 17/978,877 Page 3 Art Unit: 3711 Application/Control Number: 17/978,877 Page 4 Art Unit: 3711 Application/Control Number: 17/978,877 Page 5 Art Unit: 3711 Application/Control Number: 17/978,877 Page 6 Art Unit: 3711 Application/Control Number: 17/978,877 Page 7 Art Unit: 3711 Application/Control Number: 17/978,877 Page 8 Art Unit: 3711 Application/Control Number: 17/978,877 Page 9 Art Unit: 3711 Application/Control Number: 17/978,877 Page 10 Art Unit: 3711 Application/Control Number: 17/978,877 Page 11 Art Unit: 3711