DETAILED ACTION
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 .
Election/Restrictions
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on1/27/26.
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 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 application No. 17/471,040 and claims 1-20 of 17/941,418. Although the claims at issue are not identical, they are not patentably distinct from each other.
17/471,040 recites a scope of invention that departs from the instant claim only with respect to calling for the shape of the thickened stress reducing region to be described as horseshoe as oppose to a ring.
17/941,418 recites a scope of invention that departs from the instant claim only with respect to calling for the shape of the thickened stress reducing region to be described as horseshoe as oppose to a portion of a ring.
Where the changes in size and shape have been held to be obvious (n re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.) and controlling the amount and location of discretionary weight in a golf club are known and easily computer modeled, changing the shape to that of a horseshoe would have been obvious in order to locate the amount of material desired in the locations of the club head in order to obtain the desired amount of mass for the desired strength and weight properties within the club head.
Claim Rejections - 35 USC § 112
Claims 9-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claims 11-13 the introduction of “a crown leading edge of said striking face portion” is indefinite in that it fails to define the structural relationship of the feature or the element with respect to either the crown or the striking face. Here it is unclear if such an edge is part of the crown, the striking face portion or some separate element.
In claim 13, “the thickened central portion” lacks a proper antecedent.
It does not appear to be disclosed where the thickened central portion forms an incomplete circle as called for in claims 13 and 14. The specification sheds no clear light on how such is to be interpreted where 2002 of fig. 20 disclosed as the crown leading edge of the striking face portion leads to no clear features in the drawings.
Claims 11 and 12 are indefinite in that they recite a range within a range of about 1.5 then about .1mm effectively within a single claim such that the scope cannot be clearly determined.
As to claims 18-20, [00116] of the specification discusses crown apex point 2252, “generally defined as the highest point of the crown”. However, the claims are indefinite with respect to how the claimed distance is to be defined with respect to the central opening. Here the are multiple interpretations such as measured to an edge, to a central point or to some other feature of the central opening. As such, the scope of the claim cannot be clearly determined.
The term aspect ratio is considered defined in [00114] of the specification of width divided by height and interpreted as such with respect to the scope of the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sander 2015/0119165.
As to claim 9, Sander shows a golf club head with a striking face portion 12 located at a frontal portion of said golf club head, adapted to impact a golf ball, and a body portion 22, attached to a rear of said striking face portion, wherein said striking face portion further comprises a perimeter region 52 having a central opening wherein said perimeter region further comprises a thickened stress reducing region 48, having a fourth thickness, and a face insert 54 adapted to engage said central opening, wherein said face insert further comprises a thickened central region 50 located near a geometric center of said striking face portion, having a first thickness, wherein no part of said thickened stress reducing region engages said face insert, and wherein said fourth thickness is greater than said first thickness.
As to claims 10-12, where a top ledge of said central opening can be defied at 70 in fig. 3 and a crown leading edge of said striking face portion can be defined at 52 to coincide with it such that they are essentially 0 mm away from each other, such are considered to meet the range of less than .9mm away.
Claim 13 is considered met where the thickened central portion can be described as an incomplete circle in it ovular shape as shown in fig. 7.
Claim 14 is considered shown where the flatter crown side shape of the oval central portion can be described as a discontinuity of an incomplete circle.
Sanders in view of Galloway et al. 2002/0028715
As to claims 15-20, Sander is considered to inherently possesses the dimensions of an aspect ration and distance from some defined top ledge to a crown. However, discloses on dimensions.
Galloway teaches providing an aspect ratio of less than 1.7 and that such will affect the COR and face deflection. To have selected a size of the face insert of Sanders to possess an aspect ration below 1.7 meeting the claimed ranges set forth in claims 15-17 would have been obvious in order to achieve the desired deflection of the face plate.
As to claims 18-20, a top ledge is broadly recited with no limitations as to how such relates to other recited elements in the claims. As such on can select a point on the crown of Sander such defining it as the top ledge such that it is less than 8mm from an apex in order to meet the limitation of the claims.
Conclusion
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711