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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the cap (claim 3) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show “surface 228” and “outer surface 184” (e.g., specification paragraph [0050]); “outer wall length 265” ([0041]) and “a transition section length 261”([0043]), as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application 18/611,662 (“ ‘662 ”). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitations in the above claim 1 is recited in claim 1 of ‘662, namely “A golf club, comprising: a shaft having a shaft connection end and defining a shaft exterior surface; a club head comprising a body, a sole, a top opposite the sole, a toe, a heel opposite the toe, and a hosel, wherein the hosel comprises a hosel interior surface defining a hosel bore, a hosel exterior surface, and a hosel connection section; a ferrule for joining the hosel connection section to the shaft connection end, the ferrule comprising: a transition section having a transition exterior surface (equivalent to an extension section of ‘662); an insertion section coupled to the transition section and comprising: an inner wall sized for insertion into the hosel bore, the inner wall having an inner wall exterior surface defining a first hosel-bonding area facing the hosel interior surface, and an inner wall interior surface sized to receive the shaft connection end and defining a shaft-bonding area facing the shaft exterior surface; and an outer wall spaced from and surrounding at least a portion of the inner wall, the outer wall having an outer wall interior surface defining a second hosel-bonding area facing the hosel exterior surface; wherein the outer wall interior surface and the inner wall exterior surface define a receptacle sized to receive the hosel connection section”, and thus above claim 1 is anticipated by claim 1 of ‘662.
Claims 2-10, each recite the same limitations as claims 2-10, respectively, of ‘662.
Every limitations in the above claim 11 is recited in claim 11 of ‘662, namely “ A ferrule for joining a shaft, comprising a shaft connection end and defining a shaft exterior surface, to a golf club head, comprising a hosel having a hosel interior surface defining a hosel bore, a hosel exterior surface, and a hosel connection section, the ferrule comprising: a transition section having a ferrule transition exterior surface (equivalent to an extension section of ‘662); an insertion section coupled to the transition section and comprising: an inner wall sized for insertion into a hosel bore of the golf club head, the inner wall having an inner wall exterior surface defining a first hosel-bonding area facing the hosel interior surface, and an inner wall interior surface sized to receive a connection end of the shaft and defining a shaft-bonding area facing the shaft exterior surface; an outer wall spaced from and surrounding at least a portion of the inner wall, the outer wall having an outer wall interior surface defining a second hosel-bonding area facing the hosel exterior surface; wherein the outer wall interior surface and the inner wall exterior surface define a receptacle sized to receive a hosel connection section of the golf club head”, and thus above claim 11 is anticipated by claim 11 of ‘662.
Claims 12-17, each recite the same limitations as claims 12-17, respectively, of ‘662.
Every limitations in the above claim 18 is recited in claim 18 of ‘662, namely “A golf club connection assembly for joining a shaft, comprising a shaft connection end and defining a shaft exterior surface, to a golf club head, comprising a hosel having a hosel interior surface defining a hosel bore, a hosel bore bottom end, a hosel exterior surface, and a hosel connection end, the golf club connection assembly comprising: a ferrule, comprising; a transition section having a ferrule transition exterior surface (equivalent to an extension section of ‘662); an insertion section coupled to the transition section and comprising: an inner wall sized for insertion into a hosel bore of the golf club head, the inner wall having an inner wall exterior surface defining a first hosel-bonding area facing the hosel interior surface, and an inner wall interior surface sized to receive a connection end of the shaft and defining a shaft-bonding area facing the shaft exterior surface; and an outer wall spaced from and surrounding at least a portion of the inner wall, the outer wall having an outer wall interior surface defining a second hosel-bonding area facing the hosel exterior surface; wherein the outer wall interior surface and the inner wall exterior surface define a receptacle sized to receive a hosel connection section of the golf club head; and a tip weight disposed in the hosel bore and between the hosel bore bottom end and the ferrule”, and thus above claim 18 is anticipated by claim 18 of ‘662.
Claims 19 and 20, each recite the same limitations as claims 19 and 20, respectively, of ‘662. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Comment
The closest prior art to Nakajima et al JP2014018520A, Galloway US 7,892,105 (“Galloway”), JP5625850B2, and Ballmer US 3,625,513, alone or in combination is not specific regarding “a ferrule for joining the hosel connection section to the shaft connection end, the ferrule comprising an outer wall spaced from and surrounding at least a portion of the inner wall, the outer wall having an outer wall interior surface defining a second hosel-bonding area facing the hosel exterior surface”, as require within independence claims 1, 11 and 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.K/Examiner, Art Unit 3711 3/11/2026
/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711