DETAILED ACTION
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 .
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.
Instant claims call for a horizontal support portion in the internal support extending from toe to heel and a relationship of the intermediary sandwich layer width and the thickness of the sandwich lay thickness.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 16, and 18 of U.S. Patent No. 11,850,461. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 1 combines claims 1 and 2 and 4. Claim 10 of the instant claim appears the same as previously recited in claims 16 and 18 while reciting a range in the width of the horizontal support. 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. Additionally, "[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).
Double patenting has not been invoked with respect to the following parent applications.
In 17/735520 claim 1 lacks the horizontal support section and recites the combination of a plurality of standoffs on the face portion and locating holes in the aft body for mounting the striking face portion. In claim 16, the horizontal support section and its width is not recited.
In 18/495882 claim 1 lacks the recitation of the perimeter support portion and the % of abutment between the elements.
In 18/501944 his claims call for the construction of a club head with a filled front cavity between a wall and the striking face.
Claim Rejections - 35 USC § 112
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 1-15 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.
In claims 1 and 10, “A thickness” of the intermediary sandwiched layer is unclear in that it is undefined how such is to be measured with respect to any recited structures of the element. Since no size or shape of the intermediary sandwich layer is recited, it is unclear how one is to measure and determine a thickness rendering the scope of the claim unclear.
“The face center” lacks a proper antecedent in that such is undefined and open to multiple interpretations. One cannot determine if such is referring back to some center of the previously striking face portion or attempting to refer to some other element or feature of the club. Further a center is open to many interpretations such as a center from toe/heel, a center from top/sole, geometric center of a striking face insert or a center of the entire frontal area or striking face portion of the club. Since the claim does not define how the center is to be located, it is considered indefinite.
Conclusion
Tseng 2005/0143188 in view of Parsons 10,905,920 in view of the Foam factory has not been applied to the instant claims in at least the extent that “abuts” used in claim 1 is taken to mean by its definition that such is touching. A review of fig. 2 of Tseng shows the internal support layer does not touch the back surface of the striking face portion. Even where the prior art of his fig. 6 may suggest abutting with the back surface of the striking face, such does not reasonably appear to be 90-100% of the back surface of the striking face portion. Further see reasons for allowance in 17/735520.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Eugene Kim at (571)272-4463.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711