DETAILED ACTION
This Office action is responsive to communication received 09/15/2023 – application papers received, including power of attorney and IDS; 11/22/2023 – Amendment and Response to Notice to File Missing Parts, including Replacement Drawings; and 03/05/2024 – Preliminary Amendment.
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 17/513,716 10/28/2021 PAT 11771965 which is a CON of 17/107,462 11/30/2020 PAT 11185746 which is a CON of 16/696,924 11/26/2019 PAT 10874920 which is a CON of 15/649,508 07/13/2017 PAT 10493335 which is a CON of 14/981,330 12/28/2015 PAT 9731176 which is a CIP of 14/843,856 09/02/2015 PAT 9849348 which is a CON of 13/789,484 03/07/2013 PAT 9132323 and said 14/981,330 12/28/2015 claims benefit of 62/098,707 12/31/2014 and claims benefit of 62/099,012 12/31/2014.
Drawings
The drawings (FIGS. 1-8, 13a-15c and 16b-36) were received on 09/15/2023. These drawings are acceptable.
The replacement drawings (FIGS. 9-12, 15d and 16a) were received on 11/22/2023. These drawings are acceptable.
Status of Claims
Claims 1-28 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
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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.
Applicant’s attention is directed to the following rejections on the ground of nonstatutory double patenting and referring to USPNs 11771965; 11185746;10874920; and 10943335.
Claims 1-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,771,965 in view of USPN 8,088,025 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 the differences are considered to be minor phrasing differences and/or obvious and well known in the art. See the comments below:
As to independent claims 1, 27 and 28, the claims of the ‘965 patent are more specific than the instant claims in that the claims of the ‘965 patent further require “the bond length region of the hosel extends from about the hosel top edge along the longitudinal axis of the hosel bore to a point on the hosel that is at least 10 mm from the hosel top edge; within the bond length region the hosel has a mass per unit length of less than about 0.35 g/mm” and also further require “within the bond length region the hosel has a wall having a thickness that varies from a minimum wall thickness to a maximum wall thickness, wherein the maximum wall thickness of the hosel is no more than 2.3 mm; the wall of the hosel within the bond length region is free of apertures; and a section of the hosel including at least a portion of the bond length region has a length of 28 mm and a mass no more than 11 grams; wherein the weight reduction zone comprises at least three thinned regions separated by thicker regions; the at least three thinned regions of the topline portion are defined in part by a rear surface of the face portion, an inner surface of the back portion, and an inner surface of the topline portion; and at least one of the at least three thinned regions is positioned closer to the toe portion than the heel portion”. The remaining limitations required by independent claims 1, 27 and 28 with respect to the vibration dampening material may be found in at least claims 11 and 16 of the ‘965 patent. The remaining limitations required by independent claims 1, 27 and 28 with respect to the upper portion of the face portion being thinner than a central portion of the face portion as well as a width of the interior cavity may be found in at least claims 6-9 and 15 of the ‘965 patent. Note the following additional remarks:
As to claim 8, see claim 20 of the ‘965 patent.
As to claims 14 and 20, see claim 8 of the ‘965 patent.
As to claim 16, see claim 7 of the ‘965 patent.
As to claims 9 and 15, see claim 15 of the ‘965 patent.
As to claim 22, see claim 5 of the ‘965 patent.
As to claim 23, see claim 1 of the ‘965 patent, which requires at least three thinned regions.
As to claim 25, see claim 2 of the ‘965 patent.
As to claim 26, see claim 3 of the ‘965 patent.
In addition, it is clear that many of the instant-claimed features related to the vibration dampening material are found throughout the claims of the ‘965 patent. For example, as to claim 2, see claims 13 and 18 of the ‘965 patent. As to claim 12, see claim 19 of the ‘965 patent. As to claims 21 and 24, see claims 13 and 14 of the ‘965 patent. While it may be argued that the specific combination of elements are not similarly incorporated within the claims of the ‘965 patent, Wahl is cited here to teach that it to be old in the art to provide an iron-type club head body with an interior cavity within which a filler material may be injected for dampening vibration. Wahl teaches a vibration dampening material, as required by claims 1, 27 and 28, wherein the vibration dampening material is fashioned as a filler material, as required by claim 13, or fashioned as a vibration dampening insert, as required by claims 2-5, 7, 10-11, 18 and 19, with the vibration dampening insert comprising weighting elements, as required by claims 21 and 24, along with the particulars of the location of the vibration dampening material with respect to its position within the interior cavity, as required by claims 1-5, 10-13, 17-19, 27 and 28. Further, a vibration dampening insert (320) may be positioned within the interior cavity through an aperture. See col. 9, lines 60-66; col. 10, lines 26-28 and col. 11, lines 48-58 in Wahl, wherein the particulars of the filler material for improving sound and feel of the club head along with the necessary weighting elements are detailed. See FIG. 3B, wherein the vibration dampening insert is shown. The weighting elements that are a part of the insert may be provided as outlined in USPN 6,811,496, which is incorporated by reference within the Wahl ‘025 patent. Note that Wahl also provides that vibration dampening material is provided within an upper portion of the interior cavity, as required by claim 17, and that a portion of the cavity is located above and below the vibration dampening insert, as required by clams 4 and 18-19 (i.e., see filler material 120 in FIG. 1B; see upper and lower interior cavity portions arranged with respect to the vibration dampening insert 320, as shown in FIG. 3B). In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘965 patent by incorporating the necessary vibration dampening material and weighting elements in order to enhance club head performance.
More specific to claim 6, note that Wahl also teaches an ideal striking location (i.e., location 101 shown in FIGS. 1A and 1D) while further teaching that at least a portion of the vibration dampening insert (320) may be located above the ideal striking location (i.e., comparing FIGS. 1A, 1D and 3B, and considering the description in col. 3, lines 46-60 and col. 10, lines 26-38 of the location of the ideal striking location and the insert 320). In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘965 patent by locating at least a portion of the vibration dampening insert above an ideal striking location in order to enhance club head performance.
Claims 1-8 and 10-28 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-15 of USPN 10,874,920 in view of USPN 8,550,933 to Demkowski et al (hereinafter referred to as “Demkowski”) and also in view of USPN 5,813,919 to Best et al (hereinafter referred to as “Best”) and also in view of USPN 8,088,025 to Wahl et al (hereinafter referred to as “Wahl”). For double patenting to exist as between the rejected claims and patent claims 1-15, it must be determined that the rejected claims are not patentably distinct from patent claims 1-15. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims 1-15 and, if so, whether those differences render the claims patentably distinct.
As to independent claims 1, 27 and 28, the claimed invention of the ‘920 patent lacks the details of “the iron-type golf club head defines a z-up location defined as a vertical distance to a center-of-gravity of the iron-type golf club head from a ground plane when the iron-type golf club head is soled in a normal address position on the ground plane” and “a hypothetical par line is defined at a transition from the flat surface of the striking face to a curved surface of the face portion between the flat surface and the hosel; the heel portion is between the hosel and the center-of-gravity of the iron-type golf club head; the center-of-gravity of the iron-type golf club head and the topline portion are located between the heel portion and the toe portion”. The teaching reference to Demkowski makes note of the conventional manner in referencing the vertical distance (Zup) that locates the center of gravity above a ground surface (i.e., col. 3, lines 23-25 and TABLE 1). In addition, the teaching reference to Best illustrates the conventional designation of a par area adjacent both the heel portion and the hosel along with a hypothetical par line (202) that serves to highlight the transition between the flat striking face and the more curved surface of the face portion near the hosel. Here, the topline, heel portion and toe portion are clearly shown in FIG. 5A in Best. Note also col. 5, lines 41-53 in Best and discussing the location of the center of gravity (CG) closer to the heel (i.e., this places the CG between the heel and toe portions). In view of the patents to Demkowski and Best, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘920 patent by requiring that the Zup be located vertically above the ground plane to help establish the location of the center of gravity, with the center of gravity being located between the heel and toe portions, as well as including a designation for a hypothetical par line for distinguishing the transition between the flat and curved portions of the striking face adjacent the hosel, as these limitations would help to better define the characteristics, features and arrangements of the center of gravity, Zup, par line and location of the topline, heel and toe portions with respect to the center of gravity, which are commonly found in an iron-type club head.
The claimed invention of the ‘920 patent further lacks the particulars of the vibration dampening material, either fashioned as a filler material, as required by claim 13, or fashioned as a vibration dampening insert, as required by claims 2-5, 7, 10-11, 18 and 19, with the vibration dampening insert comprising weighting elements, as required by claims 21 and 24, along with the particulars of the location of the vibration dampening material with respect to its position within the interior cavity, as required by claims 1-5, 10-13, 17-19, 27 and 28. Wahl shows it to be old in the art to provide an iron-type club head body with an interior cavity within which a filler material may be injected for dampening vibration. Further, a vibration dampening insert (320) may be positioned within the interior cavity through an aperture. See col. 9, lines 60-66; col. 10, lines 26-28 and col. 11, lines 48-58 in Wahl, wherein the particulars of the filler material for improving sound and feel of the club head along with the necessary weighting elements are detailed. See FIG. 3B, wherein the vibration dampening insert is shown. The weighting elements that are a part of the insert may be provided as outlined in USPN 6,811,496, which is incorporated by reference within the Wahl ‘025 patent. Note that Wahl also provides that vibration dampening material is provided within an upper portion of the interior cavity, as required by claim 17, and that a portion of the cavity is located above and below the vibration dampening insert, as required by clams 4 and 18-19 (i.e., see filler material 120 in FIG. 1B; see upper and lower interior cavity portions arranged with respect to the vibration dampening insert 320, as shown in FIG. 3B). In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘920 patent by incorporating the necessary vibration dampening material and weighting elements in order to enhance club head performance.
More specific to claim 6, note that Wahl also teaches an ideal striking location (i.e., location 101 shown in FIGS. 1A and 1D) while further teaching that at least a portion of the vibration dampening insert (320) may be located above the ideal striking location (i.e., comparing FIGS. 1A, 1D and 3B, and considering the description in col. 3, lines 46-60 and col. 10, lines 26-38 of the location of the ideal striking location and the insert 320). In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘920 patent by locating at least a portion of the vibration dampening insert above an ideal striking location in order to enhance club head performance.
As to claims 8, 14 and 16, see claims 6-9 of the ‘920 patent.
As to claim 20, see claim 11 of the ‘920 patent.
As to claim 22, see claim 5 of the ‘920 patent.
As to claim 23, see claims 11-12 of the ‘920 patent.
As to claim 25, see claims 10 and 15 of the ‘920 patent.
As to claim 26, see claim 1 of the ‘920 patent.
Claims 9 and 15 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-15 of USPN 10,874,920 in view of USPN 8,550,933 to Demkowski et al (hereinafter referred to as “Demkowski”) and also in view of USPN 5,813,919 to Best et al (hereinafter referred to as “Best”) and also in view of USPN 8,088,025 to Wahl et al (hereinafter referred to as “Wahl”) and also in view of US PUBS 2012/0202615 to Beach et al (hereinafter referred to as “Beach”).
As to claims 9 and 15, the claimed invention of the ‘920 patent further lacks “wherein the z-up of the golf club head is no more than 18.4 mm”. Beach shows it to be old in the art to provide a z-up of less than 18.4 in order to maintain a lower center of gravity, which improves club head performance. See paragraphs [0011] and [0014] in Beach. In view of the publication to Beach, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘920 patent by incorporating a Zup of less than 18.4 mm to maintain a lower center of gravity so as to improve forgiveness, ball speed and playability.
Claims 1-8 and 10-28 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-29 of USPN 10,493,335 in view of USPN 8,550,933 to Demkowski et al (hereinafter referred to as “Demkowski”) and also in view of USPN 5,813,919 to Best et al (hereinafter referred to as “Best”) and also in view of USPN 8,088,025 to Wahl et al (hereinafter referred to as “Wahl”). For double patenting to exist as between the rejected claims and patent claims 1-29, it must be determined that the rejected claims are not patentably distinct from patent claims 1-29. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims 1-29 and, if so, whether those differences render the claims patentably distinct.
As to independent claims 1, 27 and 28, the claimed invention of the ‘335 patent lacks the details of “the iron-type golf club head defines a z-up location defined as a vertical distance to a center-of-gravity of the iron-type golf club head from a ground plane when the iron-type golf club head is soled in a normal address position on the ground plane” and “a hypothetical par line is defined at a transition from the flat surface of the striking face to a curved surface of the face portion between the flat surface and the hosel; the heel portion is between the hosel and the center-of-gravity of the iron-type golf club head; the center-of-gravity of the iron-type golf club head and the topline portion are located between the heel portion and the toe portion”. The teaching reference to Demkowski makes note of the conventional manner in referencing the vertical distance (Zup) that locates the center of gravity above a ground surface (i.e., col. 3, lines 23-25 and TABLE 1). In addition, the teaching reference to Best illustrates the conventional designation of a par area adjacent both the heel portion and the hosel along with a hypothetical par line (202) that serves to highlight the transition between the flat striking face and the more curved surface of the face portion near the hosel. Here, the topline, heel portion and toe portion are clearly shown in FIG. 5A in Best. Note also col. 5, lines 41-53 in Best and discussing the location of the center of gravity (CG) closer to the heel (i.e., this places the CG between the heel and toe portions). In view of the patents to Demkowski and Best, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘335 patent by requiring that the Zup be located vertically above the ground plane to help establish the location of the center of gravity, with the center of gravity being located between the heel and toe portions, as well as including a designation for a hypothetical par line for distinguishing the transition between the flat and curved portions of the striking face adjacent the hosel, as these limitations would help to better define the characteristics, features and arrangements of the center of gravity, Zup, par line and location of the topline, heel and toe portions with respect to the center of gravity, which are commonly found in an iron-type club head.
The claimed invention of the ‘335 patent further lacks the particulars of the vibration dampening material, either fashioned as a filler material, as required by claim 13, or fashioned as a vibration dampening insert, as required by claims 2-5, 7, 10-11, 18 and 19, with the vibration dampening insert comprising weighting elements, as required by claims 21 and 24, along with the particulars of the location of the vibration dampening material with respect to its position within the interior cavity, as required by claims 1-5, 10-13, 17-19, 27 and 28. Wahl shows it to be old in the art to provide an iron-type club head body with an interior cavity within which a filler material may be injected for dampening vibration. Further, a vibration dampening insert (320) may be positioned within the interior cavity through an aperture. See col. 9, lines 60-66; col. 10, lines 26-28 and col. 11, lines 48-58 in Wahl, wherein the particulars of the filler material for improving sound and feel of the club head along with the necessary weighting elements are detailed. See FIG. 3B, wherein the vibration dampening insert is shown. The weighting elements that are a part of the insert may be provided as outlined in USPN 6,811,496, which is incorporated by reference within the Wahl ‘025 patent. Note that Wahl also provides that vibration dampening material is provided within an upper portion of the interior cavity, as required by claim 17, and that a portion of the cavity is located above and below the vibration dampening insert, as required by clams 4 and 18-19 (i.e., see filler material 120 in FIG. 1B; see upper and lower interior cavity portions arranged with respect to the vibration dampening insert 320, as shown in FIG. 3B). In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘335 patent by incorporating the necessary vibration dampening material and weighting elements in order to enhance club head performance.
More specific to claim 6, note that Wahl also teaches an ideal striking location (i.e., location 101 shown in FIGS. 1A and 1D) while further teaching that at least a portion of the vibration dampening insert (320) may be located above the ideal striking location (i.e., comparing FIGS. 1A, 1D and 3B, and considering the description in col. 3, lines 46-60 and col. 10, lines 26-38 of the location of the ideal striking location and the insert 320). In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘335 patent by locating at least a portion of the vibration dampening insert above an ideal striking location in order to enhance club head performance.
As to claims 8, 14, 16 and 20, note that Wahl ‘025 teaches a varying face thickness as well as a varying interior cavity width. See col. 4, lines 1-17 and FIG. 1B in Wahl. In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘335 patent by incorporating by incorporating a varying wall thickness as well as a varying interior cavity width in order to enhance club head performance.
As to claim 22, see claim 15 of the ‘335 patent.
As to claim 23, see claims 1, 26 and 29 of the ‘335 patent.
As to claim 25, although the ‘335 patent does not specifically recite plastic material, the ‘335 patent claims recognize that diverse materials may be used in the construction of the club head (e.g., claims 1, 8 and 12). Here, the use of plastic, which is so widely recognized in the art for being lightweight and easily formed into a variety of shapes, for any portion of the club head to help with weight distribution and to simplify construction would simply have involved the selection of a known material to take advantage of the properties of the known material. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
As to claim 26, see claim 12 of the ‘335 patent.
Claims 9 and 15 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-29 of USPN 10,493,335 in view of USPN 8,550,933 to Demkowski et al (hereinafter referred to as “Demkowski”) and also in view of USPN 5,813,919 to Best et al (hereinafter referred to as “Best”) and also in view of USPN 8,088,025 to Wahl et al (hereinafter referred to as “Wahl”) and also in view of US PUBS 2012/0202615 to Beach et al (hereinafter referred to as “Beach”).
As to claims 9 and 15, the claimed invention of the ‘335 patent further lacks “wherein the z-up of the golf club head is no more than 18.4 mm”. Beach shows it to be old in the art to provide a z-up of less than 18.4 in order to maintain a lower center of gravity, which improves club head performance. See paragraphs [0011] and [0014] in Beach. In view of the publication to Beach, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘335 patent by incorporating a Zup of less than 18.4 mm to maintain a lower center of gravity so as to improve forgiveness, ball speed and playability.
Claims 1-8 and 10-28 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-20 of USPN 11,185,746 in view of USPN 8,088,025 to Wahl et al (hereinafter referred to as “Wahl”). For double patenting to exist as between the rejected claims and patent claims 1-20, it must be determined that the rejected claims are not patentably distinct from patent claims 1-20. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims 1-20 and, if so, whether those differences render the claims patentably distinct.
As to independent claims 1, 27 and 28, the claimed invention of the ‘746 patent lacks the particulars of the vibration dampening material, either fashioned as a filler material, as required by claim 13, or fashioned as a vibration dampening insert, as required by claims 2-5, 7, 10-11, 18 and 19, with the vibration dampening insert comprising weighting elements, as required by claims 12, 21 and 24, along with the particulars of the location of the vibration dampening material with respect to its position within the interior cavity, as required by claims 1-5, 10-13, 17-19, 27 and 28. Wahl shows it to be old in the art to provide an iron-type club head body with an interior cavity within which a filler material may be injected for dampening vibration. Further, a vibration dampening insert (320) may be positioned within the interior cavity through an aperture. See col. 9, lines 60-66; col. 10, lines 26-28 and col. 11, lines 48-58 in Wahl, wherein the particulars of the filler material for improving sound and feel of the club head along with the necessary weighting elements are detailed. See FIG. 3B, wherein the vibration dampening insert is shown. The weighting elements that are a part of the insert may be provided as outlined in USPN 6,811,496, which is incorporated by reference within the Wahl ‘025 patent. Note that Wahl also provides that vibration dampening material is provided within an upper portion of the interior cavity, as required by claim 17, and that a portion of the cavity is located above and below the vibration dampening insert, as required by clams 4 and 18-19 (i.e., see filler material 120 in FIG. 1B; see upper and lower interior cavity portions arranged with respect to the vibration dampening insert 320, as shown in FIG. 3B). In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘746 patent by incorporating the necessary vibration dampening material and weighting elements in order to enhance club head performance.
More specific to claim 6, note that Wahl also teaches an ideal striking location (i.e., location 101 shown in FIGS. 1A and 1D) while further teaching that at least a portion of the vibration dampening insert (320) may be located above the ideal striking location (i.e., comparing FIGS. 1A, 1D and 3B, and considering the description in col. 3, lines 46-60 and col. 10, lines 26-38 of the location of the ideal striking location and the insert 320). In view of the teachings in Wahl, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘746 patent by locating at least a portion of the vibration dampening insert above an ideal striking location in order to enhance club head performance.
As to claims 8, 14, 16 and 20, see claims 8-9 and 16 of the ‘746 patent.
As to claim 22, see claim 5 of the ‘746 patent.
As to claim 23, see claims 3-4 and 17-18 of the ‘746 patent.
As to claim 25, see claims 2, 10, 19 and 20 of the ‘746 patent.
As to claim 26, see claim 1 of the ‘746 patent.
Claims 9 and 15 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-20 of USPN 11,185,746 in view of USPN 8,088,025 to Wahl et al (hereinafter referred to as “Wahl”) and also in view of US PUBS 2012/0202615 to Beach et al (hereinafter referred to as “Beach”).
As to claims 9 and 15, the claimed invention of the ‘746 patent lacks “wherein the z-up of the golf club head is no more than 18.4 mm”. Beach shows it to be old in the art to provide a z-up of less than 18.4 in order to maintain a lower center of gravity, which improves club head performance. See paragraphs [0011] and [0014] in Beach. In view of the publication to Beach, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘746 patent by incorporating a Zup of less than 18.4 mm to maintain a lower center of gravity so as to improve forgiveness, ball speed and playability.
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 prior patents listed herein below. While no double patenting rejections based on the applications and prior 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 prior 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 prior 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 the prior patents and copending
applications listed below conflict, or do not conflict, with the claims of the instant
application.
USPNs: 11338183; 9132323; 9849348; 9731176; 10363469; 11975249; and 10493336.
US Patent Applications: 18/612969; and 19/023172.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711