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 .
Double Patenting
14/920,480 and 15/004,541 are directed towards a tiered transition region in the sole and fails to claim the combination of a channel with an inset towards the striking face.
14/920,484 is directed to a cavity back club with an inflection point. It fails to claim the combination of a channel with an inset towards the striking face.
15/435,054 and 17/487,932 recites the shape of the channel as triangular lacking the recitation of the combination of an inset portion.
As such, no double patenting rejection with respect to the above has been made.
The claims of 11,027,177 do not recite the combination of an inset in the channel and as such no double patenting has been applied.
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 1-6, 8-14, 16, 17, and 19-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,717,730. Although the claims at issue are not identical, they are not patentably distinct from each other because such have been broadened to encompass the previously claimed invention by elimination of the recitation of the angles between the side wall and inner wall. ‘730 is narrower in how the inset portion is described with respect to its angle with a side wall and inner wall inner wall range of 85-95 degrees which has been eliminated from the instant claims. Omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-5, 8, 10-13, 17 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jertson 11,027,177.
The instant application and Jertson, application 15/435,054 are both CIPs from 14/920,484 with Jertson being filed 2/16/2017 before that of the instant invention and as such is considered prior art.
With respect to claims 1-5, 9-13 17, 20-22
‘177 shows the claimed invention with the exception numerically defining the radius of curvature to the rear wall that inherently exists. He discloses that such a convex shape results in a variable that conforms to the deflection of the club head on impact allowing increased the deflection and energy storage. (col. 27, ln. 59). At [0069] of the instant specification, numerical examples for the values of the convex radius of curvature are given, but fails to show how any such values are critical to any particular problem or any unexpected results. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As such, to have selected a range of 2-2.5 inches for the radius of curvature of the rear wall as now claimed would have been an obvious matter of design choice to have selected the optimum deflection and energy storage desired in the golf club head. Such characteristics are easily predictable and modeled on computers.
Similarly new claims define a rear wall thickness that is inherently shown by ‘177 to be between the range of .015-.080 inches. While the applied art does not discuss in detail the manipulation of such thickness, a change in form, proportions, or degree "will not sustain a patent" as set forth in Smith v. Nichols, 88 U.S. 112, 118-19 (1874). Here it is clear that a thickness in the rear wall is inherent and that adjusting its dimension will result in changes in weight and deflection of the channel. n re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
With respect to claims 3 and 19, while fig. 30 of ‘177 suggest a socket for a removable weight such is not explicitly discussed. However, such removable weights are considered old and well-known in golf to allow to customize the desired weighting of a club head and the addition of such would have been obvious for those purposes. Similarly the use of permanently attached weight members as called for in claim 4 are old in order to adjust the discretionary weight of a club and its desired weight properties.
Claim 5 is considered shown by D2 of fig. 30.
As to claim 10, a first and second tier is considered shown in fig. 28 and appear to be approximately equal as called for in claim 11.
The design of the tiered transition region features in a club head as relative the length and arcuate surfaces as called for in claim 11-13 and 17 is considered shown in figs. 1-4.
Claim(s) 6, 9, 14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jertson 11,027,177 in view of Jertson 2016/0213985.
While ‘177 does not appear to discuss a chamfer, the combination of such a chamfer to define a hinge point of the crown is considered known and as such the combination of such is considered fairly taught and would have been obvious.
Claim(s) 1-5, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bezilla et al. 9,211,448
With respect to the claims, Bezilla shows a club head with a channel having the claimed elements as shown in the annotated drawing.
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Bezilla does not discuss magnitudes for his radius of curvature on his rear wall or his thickness that inherently exists. He discloses that the variables of shape and “dimensions of flexure 36 are selected to provide a desired flexibility during a ball impact” (col. 8, lln. 55). At [0069] of the instant specification, numerical examples for the values of the convex radius of curvature are given, but fails to show how any such values are critical to any particular problem or any unexpected results. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As such, to have selected a range of 2-2.5 inches for the radius of curvature of the rear wall as now claimed would have been an obvious matter of design choice to have selected the optimum deflection and energy storage desired in the golf club head. Such characteristics are easily predictable and modeled on computers.
With respect to claims 3 and 19, such removable weights are considered old and well-known in golf to allow to customize the desired weighting of a club head and the addition of such would have been obvious for those purposes. Similarly, the use of permanently attached weight members as called for in claim 4 are old in order to adjust the discretionary weight of a club and its desired weight properties.
As to claim 5, the dimensional distance recited is not considered to distinguish over the applied art. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim(s) 10-13, 17 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bezilla et al. 9,211,448 in view of Jertson 11,027,177.
While Bezilla does not discuss the design of the claimed tiers, such features are taught by Jertson ‘177. To
As to claim 10, a first and second tier is considered shown in fig. 28 and appear to be approximately equal as called for in claim 11.
The design of the tiered transition region features in a club head as relative the length and arcuate surfaces as called for in claim 11-13 and 17 is considered shown in figs. 1-4.
Claim(s) 6, 9, 14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bezilla et al. 9,211,448 in view of Jertson 2016/0213985.
While Bezilla does not appear to discuss a chamfer, the combination of such a chamfer to define a hinge point of the crown is considered known and as such the combination of such is considered fairly taught and would have been obvious.
Conclusion
Applicant's arguments filed 10/29/25 have been fully considered but they are not persuasive as set forth in the grounds for rejection above.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711