DETAILED ACTION
This Office action is responsive to communication received 02/08/2024 – application papers received, including IDS and Power of Attorney (two statements); 04/25/2024 – Response to Pre-exam Formalities Notice, including fee; 06/06/2024 – preliminary amendment, including amendment to claims, amendment to specification, and replacement drawings.
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 CON of 17/494,416 10/05/2021 PAT 11931631 which is a CON of 16/874,428 05/14/2020 PAT 11167183 which is a CON of 16/058,845 08/08/2018 PAT 10688352 which is a CON of 15/254,999 09/01/2016 PAT 10076688 which is a CON of 15/087,002 03/31/2016 PAT 9914027 which claims benefit of 62/205,601 08/14/2015.
Specification
The amendment to the specification, received 06/06/2024, has been entered.
Information Disclosure Statement
The IDS, received 02/08/2024, contains two documents, the significance of which is not understood insofar as the pending claims. The documents identified herein have been “considered’ to the extent that the document number, issue date and name of patentee listed on the IDS match the PTO records. Note the following citations:
USPN: 6612968 Issue Date: 09/02/2003 Patentee: Alvaro
USPN: 7954526 Issue Date: 06/07/2022 Patentee: Chen
Drawings
The drawings (FIGS. 1-15 and 17-26) were received on 02/08/2024. These drawings are acceptable. The replacement drawing (FIG. 16) was received 06/06/2024. This drawing is acceptable.
Status of Claims
Claims 1-20 have been canceled, as directed.
Claims 21-47 remain pending.
FOLLOWING IS AN ACTION ON THE MERITS:
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 21-27, 29-32, 34-39 and 41-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of USPN 11,931,631 in view of US PUBS 2014/0080629 to Sargent et al (hereinafter referred to as “Sargent”) and also in view of US PUBS 2011/0159986 to Chao et al (hereinafter referred to as “Chao”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘631 patent present differences that are considered to be minor phrasing differences, or are minor rearrangements of the claim limitations, and/or are obvious and well known in the art.
Here, at least claim 23 of the ‘631 patent encompasses substantially all of the limitations of instant claims 21-27, 29-32, 34-39 and 41-47, with the exception of the limitations directed towards the flight control technology (FCT) component, as required by each of independent claims 21, 45 and 46, the recitations directed to the sole opening and associated sole insert, as required by each of independent claims 21, 45 and 46, and the requirements of the convex and concave portions of the sole insert, as required by claims 23-26.
While dependent claim 23 (as dependent upon claim 22, which depends from claim 21, which depends from claim 20, which depends from independent claim 19) of the ‘631 patent lacks the features of the flight control technology (FCT) component, claim 1 of the ‘631 patent includes this feature. While claim 23 of the ‘631 patent lacks an explicit recitation of a sole insert, at least claim 1 of the ‘631 patent includes a sole insert to cover a sole opening. In addition, while claim 23 of the ‘631 patent lacks the features of convex and concave portions along the sole, claims 5-6 of the ‘631 patent include these features.
Moreover, the teaching reference to Sargent is cited to show that it is common in the golf club head art to provide a hollow wood-type club head with an FCT component in order to enable the lie and loft of the club head to be adjusted for enhanced ball striking performance (i.e., see paragraph [0435] in Sargent). Here, Sargent incorporates the teachings of USPN 7,887,431 in its entirety by reference for a teaching of a sleeve and fastening member to adjust loft angle, face angle and lie angle (i.e., see col. 18, lines 24-58 and FIGS. 19, 20, 27 and 31 in USPN 7,887,431). In view of the recitation of an FCT feature in claim 1 of the ‘631 patent, along with a teaching by Sargent of an FCT component, it would have been 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 claim 23 of the ‘631 patent to include an FCT component to enable the lie and loft of the club head to be adjusted for enhanced ball striking performance.
As for the claimed sole and sole insert, Chao shows a golf club head (12) having a sole (22), and a sole opening (46) along with a sole insert (50) made of a composite material (i.e., paragraphs [0042, 0046]) and joined to the frame to cover the sole opening. The arrangement in Chao, which makes use of a metal frame combined with a composite sole insert, provides a means for adjusting the mass distribution of the club head (i.e., see paragraphs [0010], [0011] and [0042]). In view of the recitation of a sole insert, as recited in claim 1 of the ‘631 patent, along with a teaching in Chao showing a sole insert attached to a sole opening, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed device of claim 23 of the prior ‘631 patent by incorporating a sole insert as part of the frame that makes up the club head body, the motivation being to enable the club head designer to redistribute the club head mass for enhanced club head performance.
As for the claimed convex and concave portions of the sole, note annotated FIG. 96B of Sargent below showing a plurality of transition regions and one or more concave portions and one or more convex portions.
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In view of the recitation of a sole insert comprising one or more convex or concave regions, as recited in claims 5-6 of the ‘631 patent, along with a teaching by Sargent of both concave and convex portions as part of a sole insert, 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 claim 23 of the ‘631 patent to include concave and convex portions as part of the sole insert for enhanced club head performance. These convex and/or concave curved portions of the sole insert would have served to help redistribute the weight of the sole insert.
More specific to the ratio of Ixx to Izz recited by instant claim 47, at least claim 23 of the ‘631 patent, which incorporates the limitations of claims 21 and 22 of the ‘631 patent and the values for Izz and Ixx, encompasses the range for the ratio required by instant claim 47.
Claims 28, 33 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of USPN 11,931,631 in view of US PUBS 2014/0080629 to Sargent et al (hereinafter referred to as “Sargent”) and also in view of US PUBS 2011/0159986 to Chao et al (hereinafter referred to as “Chao”) and also in view of US PUBS 2010/0139079 to Dawson et al (hereinafter referred to as “Dawson”).
The claimed invention of the ‘631, specifically claim 23 (as dependent upon claim 22, which depends from claim 21, which depends from claim 20, which depends from independent claim 19) of the ‘631 patent, lacks the now-claimed particulars of “at least one of the crown, the sole, and/or the frame comprises a first composite material comprising continuous fibers, and at least one of the crown, the sole, and/or the frame comprises a second composite material comprising chopped fibers”, as required by instant claims 28, 33 and 40. Here, Dawson shows it to be old in the art to form a hollow golf club head from multiple materials including composite materials comprising one or more of continuous fibers or chopper fibers. The selection of the type(s) of fibers is determined based upon club head performance needs and the availability of manufacturing techniques. See paragraph [0032] in Dawson. In view of the teachings 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 device of the ‘631 patent to include composite material comprising continuous fibers and chopped fibers, the motivation being to enable the clubmaker to select materials that are commonly available in the art and used for club head performance enhancement due to the lightweight and structural stability of the continuous and chopped fibers and the availability of common molding operations that offer efficient manufacturing of parts comprising composites with continuous and/or chopped fibers.
Observations on Obviousness-Type Double Patenting
Applicant is respectfully urged to maintain a clear line of demarcation between the instant claim set and the claims in each of the further, related applications and patents listed herein below. While no double patenting rejections based on the applications and patents listed below are currently being made of record, maintaining a clear distinction between the instant claims and the claims of each of the copending applications and patents listed here will help to reduce the likelihood of obviousness-type double patenting concerns arising during later prosecution in the instant case. It is clear that the applicant, who in this case is most familiar with the language, content and prosecution history of the related applications and patents identified here, is best equipped to recognize any potential double patenting concerns and should therefore make an effort to amend the instant claims or file appropriate terminal disclaimers. The applicant is respectfully requested to provide further comment as to whether the applicant believes that the claims of any of the applications and/or USPNs listed here conflict, or do not conflict, with the claims of the instant application.
USPNs: 8900069; 8430763; 8753222; 8956240; 9700769; 9220953; 8888607; 9186560; 9211447; 9700763; 9707457; 9914027; 9868036; 10035049; 10076688; 10086240; 10183202; 10603555; 10478679; 10646755; 10556158; 10874914; 10569144; 10843048; 10688352; 11167183; 11712606; 11331547; 12239890; 11628340; 11731010; 12357877; 12364906; 12434108; 12440732; 11148021; 10898764; 10252119; 10639524; 10434384; 10874914; 10569144; 11654336; 11331548; 11202943; 11964192; and 10974102.
Copending United States Applications: 18/355384; 19/015430; 19/020591; 18/595140; 19/011068; 19/240327; 18/502408; and 19/240327.
Claim Objections (Minor)
Claim 26 is objected to because of the following informalities: In lines 2-3, it would appear that it may be more accurate to recite that the transition is from a concave portion to a convex portion. Clarification is requested.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711