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.
Specification
The amendment to the specification, namely the amendment to the Abstract, received 05/05/2026, has been entered.
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 11907923 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
In the arguments, received 05/05/2026, the applicant notes that the claims of copending Application No. 19/018,048 have been amended to obviate the provisional rejection of claims 1-20 under 35 U.S.C. 101 as claiming the same invention as claims 1-20 of the copending ‘048 application. The applicant notes that the claims have been amended to overcome the outstanding rejections under 35 U.S.C. §112(b). The applicant notes that a terminal disclaimer has been filed to overcome the rejection of the claims on the ground of nonstatutory double patenting over the claims of USPN 11,907,923.
IN RESPONSE:
Receipt of the timely-submitted and properly-filed terminal disclaimer of 05/05/2026 is again acknowledged. The disclaimer obviates the rejection of claims 1-20 on the ground of nonstatutory double patenting over claims 1-20 of prior USPN 11,907,923 in view of US PUBS 2012/0264537 to Breier et al.
The amendments to copending Application No. 19/018,048 are noted. Although the rejection of claims 1-20 under 35 U.S.C. 101 has been overcome, the amended claims of the ‘048 patent raise consideration of a new ground of rejection, namely the provisional rejection of at least claims 1-2 on the ground of nonstatutory double patenting over new claim 21 of the copending ‘048 application. Note that the instant application and the copending ‘048 patent include the same effective filing date. Note MPEP 804(I)(B)(1)(b)(ii), which states: “If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. If the reply is sufficient, the examiner will withdraw the nonstatutory double patenting rejection in the application in which it was submitted.”
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending United States Application Serial No. 19/018,048 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending ‘048 application are more specific than the instant claims and thus encompass all of the limitations of instant claim 1. Here, the claims of the copending ‘048 application further require “and a sole portion void having a void proximal [sic] end, a void distal end, a void length, a void volume, and a void opening at an exterior surface; a void insert extending into the sole portion void from the void opening and having an insert volume of less than 25% of the void volume”. The remaining limitations in the ‘048 application include each of the limitations in instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending United States Application Serial No. 19/018,048 (reference application) in view of US PUBS 2012/0264537 to Breier et al (hereinafter referred to as “Breier”).
As to claim 2, the claimed invention of the copending ‘048 application lacks the required “wherein the machined sole portion area extends heelward of a par line established by a transition from a flat face portion to a non-planar surface”. The modification of the claimed invention of the copending ‘048 application to have included an extension of the machined sole portion heelward in order to modify the surface roughness would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention in view of the teaching in Breier, which teaches that a machining operation may be selectively performed on portions of an iron-type golf club head to provide a different surface finish for the completed golf club head (i.e., see paragraph [0043] in Breier).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 3-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11-20 are allowable over the prior art references of record in view of the timely-submitted and properly-filed terminal disclaimer, received 05/05/2026.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendment to the claims in the copending 19/018,048 application raises a question of provisional nonstatutory double patenting with respect to instant claims 1-2.
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
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