DETAILED ACTION
This Office action is responsive to communication received 11/05/2025 – Amendment.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 21-48 remain pending.
Response to Arguments
In the arguments received 11/05/2025, the applicant addresses the outstanding rejections of claims 31 and 41-42 under 35 U.S.C. §112. The applicant provides a detailed explanation as to how the amended claims now define over the prior USPNs 11819745; 10596432; 10143903; and 10888753, which were applied in various nonstatutory double patenting rejections, and further notes that the amended claims patentably define over the remaining United States Patents identified by the Office action, which belong to the same family, when considering obviousness-type double patenting.
IN RESPONSE:
Applicant’s amendments to claims 31 and 41-42 to address the outstanding rejections under 35 U.S.C. §112 have been acknowledged.
Applicant’s comments regarding the outstanding rejections on the grounds of nonstatutory double patenting have been acknowledged.
While the amended claims appear to currently overcome the outstanding nonstatutory double patenting rejections and the outstanding rejections under 35 U.S.C. §112, second paragraph, the amended claims present new concerns under both 35 U.S.C. §112, first paragraph and 35 U.S.C. §112, second paragraph as well as concerns with respect to a lack of antecedent basis in the specification, minor objections to the claims and objections to the drawings. No further discussion is deemed necessary, here.
Should the applicant decide to further amend the claims, the applicant is once again respectfully urged to maintain a clear line of distinction between the instant claim set and the claims in each of the further, related patents and pending application previously identified in the non-final Office action, mailed 09/03/2025.
Claim Objections - Minor
Claim 48 is objected to because of the following informalities: In line 1, after “position”, the coma should be deleted. Appropriate correction is required.
Specification - Objections
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The specification lacks proper antecedent basis for the language newly-added to the claims in the amendment, received 11/05/2025. Note the following claimed terms/phrases that are not found in the specification:
Claim 21 – “wherein, at a normal address position: a rearmost portion of the golf club head is toeward of the origin; a peak crown height of the crown portion is toeward of the origin; the golf club head center-of-gravity is below at least a forward portion of the skirt portion; and a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claim 33 – “and the center of gravity of the golf club head is below a rearmost location of the crown portion”;
Claim 36 – “wherein a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claim 37 – “and at a normal address position a peak crown height of the crown portion is toeward of the origin”;
Claim 38 – “and wherein the center of gravity is below the rearmost location of the crown portion”;
Claim 41 – “wherein the golf club head center-of-gravity is below at least a forward portion of the skirt portion; and wherein a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claim 47 – “wherein, at a normal address position: a rearmost portion of the golf club head is toeward of a golf club head center-of-gravity y-axis; and a peak crown height of the crown portion is toeward of the golf club head center-of- gravity y-axis”;
Claim 48 – “wherein, at a normal address position,: a peak crown height of the crown portion is forward of a center-of-gravity of the golf club head; a toewardmost portion of the golf club head is rearward of a peak crown height of the crown portion; and a toewardmost portion of the golf club head is forward of a golf club head center-of- gravity X-axis”.
Drawings - Objections
In view of the amendments to the claims, received 11/05/2025, the drawings are now objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features noted hereinbelow, which have been introduced in the claims with the amendment of 11/05/2025, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Here, the drawings have not been identified as being drawn to scale. Note the following features that are not currently depicted in the drawings:
Claim 21 – “wherein, at a normal address position: a rearmost portion of the golf club head is toeward of the origin; a peak crown height of the crown portion is toeward of the origin; the golf club head center-of-gravity is below at least a forward portion of the skirt portion; and a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claim 33 – “and the center of gravity of the golf club head is below a rearmost location of the crown portion”;
Claim 36 – “wherein a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claim 37 – “and at a normal address position a peak crown height of the crown portion is toeward of the origin”;
Claim 38 – “wherein the center of gravity is below the rearmost location of the crown portion”;
Claim 41 – “wherein the golf club head center-of-gravity is below at least a forward portion of the skirt portion; and wherein a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claim 47 – “wherein, at a normal address position: a rearmost portion of the golf club head is toeward of a golf club head center-of-gravity y-axis; and a peak crown height of the crown portion is toeward of the golf club head center-of-gravity y-axis”;
Claim 48 – “wherein, at a normal address position,: a peak crown height of the crown portion is forward of a center-of-gravity of the golf club head; a toewardmost portion of the golf club head is rearward of a peak crown height of the crown portion; and a toewardmost portion of the golf club head is forward of a golf club head center-of-gravity x-axis”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 U.S.C. § 112, first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The subject matter detailed hereinbelow is not described anywhere within the originally-filed specification of the instant application. Assuming, arguendo, that the applicant is able to substantiate that the specification does provide support for the language identified herein, note that there exists an objection to both the specification and the drawings, as outlined hereinabove, which the applicant must address and respond to. At present. there is no way to determine that the joint inventors, at the time the application was filed, had possession of the following, claimed subject matter:
Claim 21 – “wherein, at a normal address position: a rearmost portion of the golf club head is toeward of the origin; a peak crown height of the crown portion is toeward of the origin; the golf club head center-of-gravity is below at least a forward portion of the skirt portion; and a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claims 22-32, 34-35 and 43 share the deficiency of claim 21 under 35 U.S.C. §112(a);
Claim 33 – “and the center of gravity of the golf club head is below a rearmost location of the crown portion”;
Claim 36 – “wherein a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claim 37 – “and at a normal address position a peak crown height of the crown portion is toeward of the origin”;
Claim 38 – “wherein the center of gravity is below the rearmost location of the crown portion”;
Claim 41 – “wherein the golf club head center-of-gravity is below at least a forward portion of the skirt portion; and wherein a rearmost location of the crown portion is below the geometric center of the ball striking face”;
Claims 42 and 45-46 share the deficiency of claim 41 under 35 USC §112(a);
Claim 47 – “wherein, at a normal address position: a rearmost portion of the golf club head is toeward of a golf club head center-of-gravity y-axis; and a peak crown height of the crown portion is toeward of the golf club head center-of-gravity y-axis”; and
Claim 48 – “wherein, at a normal address position,: a peak crown height of the crown portion is forward of a center-of-gravity of the golf club head; a toewardmost portion of the golf club head is rearward of a peak crown height of the crown portion; and a toewardmost portion of the golf club head is forward of a golf club head center-of- gravity X-axis”.
Claim Rejections - 35 U.S.C. § 112, second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-48 are 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.
As to claim 21, it is not understood how “the golf club head center-of-gravity is below at least a forward portion of the skirt portion”. If the skirt portion is generally understood to be positioned around a periphery between the sole and the crown, where exactly is the forward portion of the skirt portion and how can the center-of-gravity be located below this forward portion? Also, with respect to the language “and a rearmost location of the crown portion is below the geometric center of the ball striking face”, is the rearmost location of the crown portion below the y-axis, which extends rearwardly from the geometric center towards the rear portion of the golf club head? As presently recited, the claim appears to connote that the rearmost location of the crown portion is physically located below the geometric center of the ball striking face.
As to claims 22-32, these claims share the indefiniteness of claim 21.
As to claim 33, it is not understood how “the center of gravity of the golf club head is below a rearmost location of the crown portion”.
As to claims 34-35, these claims share the indefiniteness of claim 33 (dependent upon claim 21).
As to claim 36, it is not understood how “a rearmost location of the crown portion is below the geometric center of the ball striking face”. Is the rearmost location of the crown portion below the y-axis, which extends rearwardly from the geometric center towards the rear portion of the golf club head? As presently recited, the claim appears to connote that the rearmost location of the crown portion is physically located below the geometric center of the ball striking face.
As to claims 37 and 39-40, these claims chare the indefiniteness of claim 36.
As to claim 38, the language “and wherein the center of gravity is below the rearmost location of the crown portion” is not understood. As presently recited, the claim appears to connote that the center of gravity is physically located below the rearmost location of the crown portion. Is the center of gravity perhaps located below a plane that contains the rearmost location of the crown portion and is parallel to the y-axis?
As to claim 41, it is not understood how “the golf club head center-of-gravity is below at least a forward portion of the skirt portion. If the skirt portion is generally understood to be positioned around a periphery between the sole and the crown, where exactly is the forward portion of the skirt portion and how can the center-of-gravity be located below this forward portion? Also, with respect to the language “and a rearmost location of the crown portion is below the geometric center of the ball striking face”, is the rearmost location of the crown portion below the y-axis, which extends rearwardly from the geometric center towards the rear portion of the golf club head? As presently recited, the claim appears to connote that the rearmost location of the crown portion is physically located below the geometric center of the ball striking face.
As to claims 42 and 45-46, these claims share the indefiniteness of claim 41.
As to claim 43, this claim shares the indefiniteness of claim 21.
As to claim 44, line 2, the claim should clearly state that the sole portion has a thickness that is greater than the first portion thickness and greater than a thickness of the skirt portion. As to claim 47, line 2, note that a golf club head center-of-gravity has already been set forth in claim 41, line 16. Perhaps, in claim 47, line 2, “a” (second occurrence) should instead read --the--.
As to claim 48, line 2, note that a golf club head center-of-gravity has already been set forth in claim 41, line 16. Perhaps, in claim 48, line 2, “a” (second occurrence) should instead read --the--.
The Office has made every effort to identify all remaining instances of indefiniteness in the current claim set. To the extent that any remaining occurrences of indefiniteness may exist in the claims, the applicant is respectfully asked to thoroughly review the claims and to amend the claims to capture and to correct any remaining instances of indefiniteness of which the applicant may become aware of during the preparation of response to this action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, language presented throughout the amended claims necessitated the new ground(s) of rejection under both 35 U.S.C. §112, first paragraph and 35 U.S.C. §112, second paragraph, and raised concerns with respect to a lack of antecedent basis in the specification, minor objections to the claims and objections to the drawings.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711