DETAILED ACTION
This Office action is responsive to communication received 02/19/2024 – application papers received, including IDS; and 02/23/2024 – Power of Attorney.
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 17/516,083 11/01/2021 PAT 11907923 which is a CON of 17/313,345 05/06/2021 PAT 11164171 which is a CON of 16/577,233 09/20/2019 PAT 11004046 which is a CON of 15/681,678 08/21/2017 PAT 10423945.
Drawings
The drawings were received on 02/19/2024. These drawings are acceptable.
Specification (Abstract)
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract fails to describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. Correction is required. See MPEP § 608.01(b).
Status of Claims
Claims 1-20 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Double Patenting (Statutory)
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20, respectively, of copending Application No. 19/018,048 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
As to independent claim 1, see claim 1 of the copending ‘048 application, which recites the exact same limitations.
As to claims 2-10, see claims 2-10, respectively, of the copending ‘048 application, wherein the corresponding claims recite the exact same limitations.
As to independent claim 11, see claim 11 of the copending ‘048 application, which recites the exact same limitations.
As to claims 12-20, see claims 12-20, respectively, of the copending ‘048 application, wherein the corresponding claims recite the exact same limitations.
No further explanation is deemed necessary, 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 1-10 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,907,923 in view of US PUBS 2012/0264537 to Breier et al (hereinafter referred to as “Breier”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences or differences in the arrangement of phrases within the claims and/or represent obvious variations over the prior patent.
As to independent claim 1, the claims of the ‘923 patent are, on one hand, more specific than the instant claims. For example, the claims of the ‘923 patent further require “the leading edge having a machined leading edge portion area of at least 50 mm2, wherein the machined leading edge portion area extends throughout at least 25% of the sole length and contacts a vertical midpoint demarcation plane; the face portion having a machined face portion area of at least 1800 mm2; wherein the machined leading edge portion area is adjacent the machined sole portion area”.
On the other hand, the claims of the ‘923 patent lack the now-required limitations of “a portion of the top-line is not machined, and a portion of the hosel is not machined”. Here, Breier 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). In view of the teaching in Breier, 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 club head in the claimed invention of the ‘923 patent by providing a top-line and a hosel that are not machined, the motivation being to alter the surface roughness and final appearance of the club head.
As to claim 2, the claimed invention of the ‘923 patent 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”. Similar to what has been set forth under claim 1 supra, the modification of the claimed invention of the ‘923 patent to include 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). Moreover, at least claim 14 of the ‘923 patent requires that the machined sole portion “extends through at least 50% of the sole length”, which generally encompasses the sole portion area heelward of a par line established by a transition from the flat face portion to a non-planar surface.
As to claims 3 and 14, see claim 4 of the ‘923 patent. Moreover, the teaching reference to Breier shows it to be obvious to extend the machined sole portion toeward (i.e., again, see paragraph [0043] in Breier).
As to claims 4 and 15, see claim 3 of the ‘923 patent, which requires the machined sole portion extends throughout at least 50% of the sole length. To have extended the machined portion throughout the entirety of the sole length of the claimed invention of the ‘923 patent would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to in order to modify the surface roughness of the club head 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).
As to claim 5, see claim 1 of the ‘923 patent.
As to claim 6, see claims 1 and 5 of the ‘923 patent. Note that at least claim 1 of the ‘923 patent requires a machined sole portion area of at least 900 mm2. Determining the final machined sole portion area would have obvious through routine experimentation. "[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 to claim 7, see claim 6 of the ‘923 patent.
As to claim 8, see claim 7 of the ‘923 patent.
As to claim 9, see claim 9 of the ‘923 patent.
As to claim 10, see claim 10 of the ‘923 patent.
As to claim 16, see claim 1 of the ‘923 patent. The claims of the ‘923 patent lack the now-required limitations of “a portion of the top-line is not machined, and a portion of the hosel is not machined”. Here, Breier 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). In view of the teaching in Breier, 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 club head in the claimed invention of the ‘923 patent by providing a top-line and a hosel that are not machined, the motivation being to alter the surface roughness and final appearance of the club head.
Claims 11-13 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,907,923.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences or differences in the arrangement of phrases within the claims and/or represent obvious variations over the prior patent.
As to independent claim 11, the claimed invention of the ‘923 patent is more specific than the instant claims. Here, the claims of the ‘923 patent further require “the sole portion having a machined sole portion area of at least 900 mm2”, as well as “and wherein the scallop height is 10-75% of the finished leading edge radius at the vertical midpoint demarcation plane, and the step-over distance is less than 150% of the finished leading edge radius at the vertical midpoint demarcation plane”. The claims of the ‘923 patent, specifically claim 4 (as dependent upon claim 3, which depends from claim 2, which depends from claim 1) encompasses all of the limitations of instant independent claim 11, including an iron-type golf club, comprising: a body including a hosel, a heel portion, a sole portion having a sole length, a toe portion, a top-line portion, a face portion having a loft angle of 17-60 degrees, and a leading edge joining the face portion and the sole portion and having a finished leading edge radius, wherein the sole portion extends rearwardly from the leading edge; the sole portion having a machined sole portion area; the leading edge having a machined leading edge portion area of at least 50 mm2, wherein the machined leading edge portion area extends throughout at least 25% of the sole length; wherein the machined leading edge portion area is adjacent the machined sole portion area and has a plurality of continuous machining scallop lines extending from the machined sole portion area to the machined leading edge portion area; and wherein the plurality of continuous machining scallop lines have a machine tool path defining a vertical tool path plane within a path angle from a vertical front-to-rear plane that is perpendicular to a vertical shaft axis plane, and the path angle is no more than 35 degrees.
As to claims 12 and 13, see claims 4 and 5 of the ‘923 patent.
As to claim 17, see claim 1 of the ‘923 patent.
As to claim 18, see claim 3 of the ‘923 patent.
As to claim 19, see claim 5 of the ‘923 patent.
As to claim 20, see claim 11 of the ‘923 patent.
Claim Rejections - 35 USC § 112(b)
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 1-10 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 1, line 7, after “portion”, the term --area-- should be inserted.
As to claim 1, lines 11-13, the phrase “the vertical midpoint demarcation plane” (both occurrences) lacks proper antecedent basis.
As to claim 1, line 19, after “top-line”, the term --portion-- should be inserted.
As to claims 2-4, these claims share the indefiniteness of claim 1.
As to claim 5, lines 2-4, the phrase “the vertical midpoint demarcation plane” (both occurrences) lacks proper antecedent basis.
As to claim 6, lines 2-4, the phrase “the vertical midpoint demarcation plane” (both occurrences) lacks proper antecedent basis.
As to claim 7, lines 1-2, the phrase “the vertical midpoint demarcation plane” lacks proper antecedent basis.
As to claim 8, lines 1-2, the phrase “the vertical midpoint demarcation plane” lacks proper antecedent basis.
As to claim 9, lines 2-3, the phrase “the vertical midpoint demarcation plane” (both occurrences) lacks proper antecedent basis.
As to claim 10, this claim shares the indefiniteness of claim 9 (which depends from claim 2, which depends from claim 1).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The U.S. Patent Application serial numbers listed on scanned page 1 of the specification, received 02/19/2024, have issued as United States patents or United States publications. For added convenience, the patents and publications have been included on the listing of references, attached to this Office action.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711