DETAILED ACTION
This Office action is responsive to communication received 11/29/2022 – application papers received.
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 17/468,940 09/08/2021 PAT 11534667 which is a CON of 16/875,883 05/15/2020 PAT 11141636 which claims benefit of 62/901,555 09/17/2019.
Priority Date
A review of the claims in his CIP application reveals that claims 1-2 and 5-12 are entitled to the effective filing date of the parent application 16/875,883, filed 05/15/2020, which claims benefit of 62/901,555 09/17/2019. Claims 3-4 are entitled to the effective filing date of the instant application, namely 11/29/2022, as the limitations in claims 3-4 first find support in the specification, claims and drawings of the instant application. See MPEP 2152.01, stating “(B) If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application. Any claims which are fully supported under 35 U.S.C. §112 by the earlier parent application have the effective filing date of that earlier parent application.”
Drawings
The drawings were received on 11/29/2022. These drawings are acceptable.
Status of Claims
Claims 1-12 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections (minor)
Claims 2 and 4 are objected to because of the following informalities:
As to claim 2, line 3, “such” should read --said--.
As to claim 4, line 3, “Tungsten” should read --tungsten--.
Appropriate correction is required.
Double Patenting (nonstatutory)
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 and 5-12 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-8 of USPN 11,141,636.
For double patenting to exist as between the rejected claims and patent claims 1-8, it
must be determined that the rejected claims are not patentably distinct from patent claims 1-8.
In order to make this determination, it first must be determined whether there are any
differences between the rejected claims and patent claims 1-8 and, if so, whether those
differences render the claims patentably distinct.
Specific to instant independent claim 1 and claims 5-12, it is clear that all the elements of instant claims 1 and 5-12 are to be found in patent claims 1-8. The difference between instant claims 1 and 5-12 of the application and claims 1-8 of the patent lies in the fact that the patent claims include many more elements and are thus much more specific. For example, the patent claims further require "and a top post that is threaded and configured to be reversibly attached to a correspondingly threaded bottom aperture of the threaded shaft connector, wherein the threaded shaft connector further includes a top threaded aperture located on a top surface thereof that is configured to receive and to be connected to a correspondingly threaded area of the putter shaft". Thus the invention of claims 1-8 of the patent is in effect a "species" of the "generic" invention of claims 1 and 5-12 of the application. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant claims 1 and 5-12 are anticipated by claims 1-8 of the patent, instant claims 1 and 5-12 are not patentably distinct from claims 1-8 of the patent.
With respect to the remaining limitations in the instant claims, note the following comments:
As to independent claim 1, also see claim 1 of the '636 patent.
As to claim 5, see claim 2 of the '636 patent.
As to claim 6, see claim 3 of the '636 patent.
As to claim 7, see claim 1 of the '636 patent.
As to claim 8, see claim 4 of the '636 patent.
As to claim 9, see claim 5 of the '636 patent.
As to claim 10, see claim 7 of the '636 patent.
As to claim 11, see claim 8 of the '636 patent.
As to claim 12, see claim 6 of the ‘636 patent.
Claim 2 is rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-8 of USPN 11,141,636 in view of US PUBS 2006/0058112 to Haralason et al (hereinafter referred to as “Haralason”).
As to claim 2, the claims of the ‘636 patent lack “a rubber gasket positioned between each of the one or more peg fillers and an interior area of each hosel receiving channel in which each of such one or more per fillers are disposed”. Haralason shows it to be old in the art to provide a gasket between a plug or weight member and a recess or cavity within which the weight member is to be received (i.e., see paragraph [0055] and FIG. 3). The gasket provides cushioning between the weight member and the recess and affords a snug fit. In view of the teaching in Haralason, it would have been obvious to one or ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed device of the ’636 patent by incorporating a gasket between the one or more peg fillers and an interior area of the hosel, the motivation being to create a snug fit and reduce any noise or unwanted vibration during use of the putter.
Claims 3-4 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-8 of USPN 11,141,636 in view of US PUBS 2014/0186138 to Dawson et al (hereinafter referred to as “Dawson”).
The claims of the prior ‘636 patent lack the features “wherein each of the one or more peg fillers comprises a top cap element and an inner weighting element, wherein (a) the
top cap element is connected to the inner weighting element; and (b) the top cap
element and the inner weighting element are comprised of different material” (claim 3) and “wherein the top cap element is comprised of stainless steel and the inner weighting element is comprised of Tungsten” (claim 4). Here, Dawson is cited to show that it is old in the art to take advantage of weights of multi-construction in order to selectively provide increased weighting options for a golf club head. In paragraphs [0049] – [0051], Dawson explains that a weight screw may include an upper cap portion (20) along with a lower threaded portion (30), wherein the materials of the different portions of the weight screw may be the same or different. In view of the teaching in Dawson, 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 ‘636 patent by forming the top surface of the peg filler from a first material and providing the remainder of the peg filler with a second material in order to provide more options for weighting the putter head. Note that Dawson shows that materials such as metal alloys including steel and tungsten are known in the art. Here, the use of stainless steel and tungsten, as currently required by the claims, for the modified peg filler of the claimed invention in the ‘636 patent would have involved an obvious choice in the selection of known materials to take advantage of the properties of these known materials. 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. MPEP 2144.07.
Claims 1, 5-6 and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,534,667.
For double patenting to exist as between the rejected claims and patent claims 1-8, it must be determined that the rejected claims are not patentably distinct from patent claims 1-8. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims 1-8 and, if so, whether those differences render the claims patentably distinct.
Specific to independent claim 1 and claims 5-6 and 10-11, it is clear that all the elements of instant claims 1, 5-6 and 10-11 are to be found in patent claims 1-8. The difference between instant claims 1, 5-6 and 10-11 of the application and claims 1-8 of the patent lies in the fact that the patent claims include many more elements and are thus much more specific. For example, the patent claims further require “d) a threaded shaft connector that is connected to the hosel and to a putter shaft” (see claim 1 of the ‘667 patent). Thus the invention of claims 1-8 of the patent is in effect a “species” of the “generic” invention of claims 1, 5-6 and 10-11. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1, 5-6 and 10-11 are anticipated by claims 1-8 of the patent, claims 1, 5-6 and 10-11 are not patentably distinct from claims 1-8 of the patent.
With respect to the remaining limitations in the instant claims, note the following comments:
As to independent claim 1, also see claim 1 of the ‘667 patent.
As to claim 5, see claim 2 of the ‘667 patent.
As to claim 6, see claim 3 of the ‘667 patent.
As to claim 10, see claim 7 of the ‘667 patent.
As to claim 11, see claim 8 of the ‘667 patent.
Claim 2 is rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-8 of USPN 11,534,667 in view of US PUBS 2006/0058112 to Haralason et al (hereinafter referred to as “Haralason”).
As to claim 2, the claims of the ‘667 patent lack “a rubber gasket positioned between each of the one or more peg fillers and an interior area of each hosel receiving channel in which each of such one or more per fillers are disposed”. Haralason shows it to be old in the art to provide a gasket between a plug or weight member and a recess or cavity within which the weight member is to be received (i.e., see paragraph [0055] and FIG. 3). The gasket provides cushioning between the weight member and the recess and affords a snug fit. In view of the teaching in Haralason, it would have been obvious to one or ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed device of the ’667 patent by incorporating a gasket between the one or more peg fillers and an interior area of the hosel, the motivation being to create a snug fit and reduce any noise or unwanted vibration during use of the putter.
Claims 3-4 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-8 of USPN 11,534,667 in view of US PUBS 2014/0186138 to Dawson et al (hereinafter referred to as “Dawson”).
The claims of the prior ‘667 patent lack the features “wherein each of the one or more peg fillers comprises a top cap element and an inner weighting element, wherein (a) the
top cap element is connected to the inner weighting element; and (b) the top cap
element and the inner weighting element are comprised of different material” (claim 3) and “wherein the top cap element is comprised of stainless steel and the inner weighting element is comprised of Tungsten” (claim 4). Here, Dawson is cited to show that it is old in the art to take advantage of weights of multi-construction in order to selectively provide increased weighting options for a golf club head. In paragraphs [0049] – [0051], Dawson explains that a weight screw may include an upper cap portion (20) along with a lower threaded portion (30), wherein the materials of the different portions of the weight screw may be the same or different. In view of the teaching in Dawson, 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 ‘667 patent by forming the top surface of the peg filler from a first material and providing the remainder of the peg filler with a second material in order to provide more options for weighting the putter head. Note that Dawson shows that materials such as metal alloys including steel and tungsten are known in the art. Here, the use of stainless steel and tungsten, as currently required by the claims, for the modified peg filler of the claimed invention in the ‘667 patent would have involved an obvious choice in the selection of known materials to take advantage of the properties of these known materials. 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. MPEP 2144.07.
Double Patenting (statutory)
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 7, 8, 9 and 12 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 4, 5, 6, respectively, of prior USPN 11,534,667. This is a statutory double patenting rejection.
In the instant claims, claim 7 depends from independent claim 1. Here, dependent claim 7 includes all of the limitations of independent claim 1 and dependent claim 7. Independent claim 1 of the prior ‘667 patent contains exactly all of the limitations of the combination of instant claims 1 and 7.
In the instant claims, claim 8 depends from claim 7, which depends from independent claim 1. Here, dependent claim 8 includes all of the limitations of independent claim 1 and dependent claims 7 and 8. Dependent claim 4 of the ‘667 patent includes all of the limitations of claims 1 and 4 of the ‘667 patent and contains exactly all of the limitations of the combination of instant claims 1, 7 and 8.
In the instant claims, claim 9 depends from claim 8, which depends from claim 7, which depends from independent claim 1. Here, dependent claim 9 includes all of the limitations of independent claim 1 and dependent claims 7, 8 and 9. Dependent claim 5 of the ‘667 patent includes all of the limitations of claims 1, 4 and 5 of the ‘667 patent and contains exactly all of the limitations of the combination of instant claims 1, 7, 8 and 9.
In the instant claims, claim 12 depends from claim 9, which depends from claim 8, which depends from claim 7, which depends from independent claim 1. Here, dependent claim 12 includes all of the limitations of independent claim 1 and dependent claims 7, 8, 9 and 12. Dependent claim 6 of the ‘667 patent includes all of the limitations of claims 1, 4, 5 and 6 of the ‘667 patent and contains exactly all of the limitations of the combination of instant claim 1, 7, 8, 9 and 12.
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 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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 11,141,636 to Dixon et al (hereinafter referred to as “Dixon”) in view of US PUBS 2014/0186138 to Dawson et al (hereinafter referred to as “Dawson”).
At the outset, it is noted that claims 3-4 are entitled to the effective filing date of the instant application, namely 11/29/2022, as the limitations in claims 3-4, specifically “wherein each of the one or more peg fillers comprises a top cap element and an inner weighting element, wherein (a) the top cap element is connected to the inner weighting element; and (b) the top cap element and the inner weighting element are comprised of different material” (claim 3) and “wherein the top cap element is comprised of stainless steel and the inner weighting element is comprised of Tungsten” (claim 4), first find support in the specification, claims and drawings of the instant application. See MPEP 2152.01. The prior USPN 11,141,636 was patented more than one year before the effective filing date of claims 3-4 and is eligible as a reference under 35 U.S.C. §103.
The patent to Dixon lacks the now-claimed features “wherein each of the one or more peg fillers comprises a top cap element and an inner weighting element, wherein (a) the
top cap element is connected to the inner weighting element; and (b) the top cap
element and the inner weighting element are comprised of different material” (claim 3) and “wherein the top cap element is comprised of stainless steel and the inner weighting element is comprised of Tungsten” (claim 4). Note, Dixon does disclose that the peg fillers may comprise different materials to provide weighting options for the putter head (i.e., col. 6, lines 8-34). Here, Dawson is cited to show that it is old in the art to take advantage of weights of multi-construction in order to selectively provide increased weighting options for a golf club head. In paragraphs [0049] – [0051], Dawson explains that a weight screw may include an upper cap portion (20) along with a lower threaded portion (30), wherein the materials of the different portions of the weight screw may be the same or different. In view of the teaching in Dawson, 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 putter head in Dixon by forming the top surface of the peg filler from a first material and providing the remainder of the peg filler with a second material in order to provide more options for weighting the putter head. Note that Dawson shows that materials such as metal alloys including steel and tungsten are known in the art. Here, the use of stainless steel and tungsten, as currently required by the claims, for the modified peg filler disclosed in Dixon would have involved an obvious choice in the selection of known materials to take advantage of the properties of these known materials. 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. MPEP 2144.07.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McKinley discloses weights of various materials for a putter; and
Yamamoto shows a weight construction, of interest.
Moreover, all references cited in applicant’s prior patents, USPN 11534667 and USPN 11141636, are deemed pertinent to this instant application. These references have also been cited on the attached PTO-892.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711