DETAILED ACTION
This Office action is responsive to communication received 05/05/2026 – Amendment and Terminal Disclaimer.
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 .
Status of Claims
Claims 1-20 remain pending.
Terminal Disclaimer
The terminal disclaimer filed on 05/05/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPN 11911670 has been reviewed, but is not accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
A power of attorney that gives power to the attorney signing the terminal disclaimer must be submitted and approved, along with another copy of the terminal disclaimer. Or, a terminal disclaimer signed by the applicant must be submitted. No additional fee is required for resubmitting the terminal disclaimer.
It is also noted that no assignment data is on file for this application.
Response to Arguments
The remarks, received 05/05/2026, state that a terminal disclaimer has been submitted to overcome the rejection of claims 1-20 on the grounds of non-statutory double patenting over claims 1-18 of USPN 11,911,670 in view of US PUBS 2008/0146369 to Wahl et al.
The terminal disclaimer has not been accepted. No further response is needed, here.
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 1-20 STAND rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,911,670 in view of US PUBS 2008/0146369 to Wahl et al (hereinafter referred to as “Wahl”).
Although the claims at issue are not identical, they are not patentably distinct from each other because ethe differences are considered minor phrasing differences and/or obvious and well known in the art. See the explanations below:
As to independent claims 1, 9 and 14, the claimed invention of the prior ‘670 patent is, on one hand, more specific than the instant claims. For example, the claims of the ‘670 patent further require “wherein a ratio WSF/WB of the strike face width WSF to the body width WB is less than 0.75; a hosel attached to the body at a hosel connection point centered with respect to a hosel aperture defined in the body, the hosel aperture configured to receive the hosel, wherein the hosel comprises a hosel bore; wherein the hosel connection point is located rearward of the vertical midplane; wherein the putter-type golf club head further comprises a moment of inertia MOIyy between 1000 g-cm 2 to 2000 g-cm2; and wherein a ratio MOIyy /ASF of the moment of inertia MOIyy to the strike face surface area ASF is greater than 230 g” (i.e., claim 1 of the ‘670 patent).
On the other hand, the claims of the ‘670 patent lack the now-recited “wherein the putter-type golf club head further comprises a moment of inertia MOIyy between 1700 g-cm2 to 3000 g-cm2; and wherein a ratio MOIyy/WB of the moment of inertia MOIyy to the body width WB is greater than 305 g-cm” (claims 1 and 14) as well as the now-recited “wherein the putter-type golf club head further comprises a moment of inertia MOIyy between 2700 g-cm2 to 3000 g-cm2; and wherein a ratio MOIyy/WB of the moment of inertia MOIyy to the body width WB is greater than 400 g-cm” (claim 9). Here, Wahl teaches that a putter head may include a moment of inertia about a vertical axis of greater than 4000 g-cm2 and that a width (WF1) of a putter head body may be dimensioned as 8.4 cm, thereby providing a ratio of the moment of inertia about a vertical axis / the body width of 476 g-cm. See paragraphs [0018] and [0029] in Wahl. Although Wahl does not disclose the specific body width required by the instant claims, Wahl does note that a higher moment of inertia incorporated within the design and related to the dimensions of the putter head body provides added club head stability (i.e., see paragraph [0004]). It is further noted that the claims of the ‘670 patent already provide for a body width of 2.30 inches (5.84 cm), while providing a moment of inertia about a vertical axis (MOIyy) between 1000 g-cm2 to 2000 g-cm2. In view of the teaching in Wahl, 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 prior ‘670 patent by increasing the moment of inertia about the vertical axis (MOIyy) to include a value between 1700 g-cm2 to 3000 g-cm2, as required by independent claims 1 and 14, so that a ratio MOIyy/WB of the moment of inertia MOIyy to the body width WB is greater than 305 g-cm, or by increasing the moment of inertia about the vertical axis (MOIyy) to include a value between 2700 g-cm2 to 3000 g-cm2, as required by independent claim 9, so that a ratio MOIyy/WB of the moment of inertia MOIyy to the body width WB is greater than 400 g-cm, with there being a reasonable expectation of success that increasing the moment of inertia MOIyy would have enhanced the stability of the putter head during off-center impacts between the strike face and a golf ball, thus improving the performance characteristics of the putter head.
As to the remaining limitations in claims 1, 9 and 14, see claims 1, 5, 11 and 14 of the ‘670 patent.
As to claim 2, see claim 3 of the ‘670 patent.
As to claim 3, see claim 14 of the ‘670 patent. Any differences in the size (i.e., volume) of the putter head of the claimed invention would have been considered to be an obvious change in the size of the putter body over the volume of the putter head body recited in the ‘670 patent, as the claimed differences in relative dimensions would not have altered the manner in which the putter head is used or how the putter head operates. 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. See MPEP 2144.
As to claim 4, see claim 4 of the ‘670 patent.
As to claim 5, see claim 11 of the ‘670 patent.
As to claim 6, see claims 1 and 11 of the ‘670 patent.
As to claim 7, see claims 1, 5, 11 and 14 of the ‘670 patent.
As to claim 8, see claim 10 of the ‘670 patent.
As to claim 10, see claim 3 of the ‘670 patent.
As to claim 11, see claim 14 of the ‘670 patent. Again, any differences in the size (i.e., volume) of the putter head of the claimed invention would have been considered to be an obvious change in the size of the putter body over the volume of the putter head body recited in the ‘670 patent, as the claimed differences in relative dimensions would not have altered the manner in which the putter head is used or how the putter head operates. 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. See MPEP 2144.
As to claim 12, see claim 11 of the ‘670 patent.
As to claim 13, see claims 1 and 11 of the ‘670 patent.
As to claim 15, see claim 6 of the ‘670 patent.
As to claim 16, see claim 16 of the ‘670 patent. The broader range for the surface area value recited in claim 16 of the ‘670 patent encompasses the more specific range now-claimed.
As to claim 17, see claim 17 of the ‘670 patent. The broader range for the dimension of the strike face perimeter recited in claim 17 of the ‘670 patent encompasses the narrower range now-claimed.
As to claim 18, see claims 1, 11 and 14 of the ‘670 patent.
As to claim 19, see claims 1 and 11 of the ‘670 patent.
As to claim 20, see claim 5 of the ‘670 patent.
Conclusion
THIS ACTION IS MADE FINAL. 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
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