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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,208,317 (17/725,075), 18/092,733 and 18/673,823 each individually and further in view of Mizutani et al. 2018/0185710. The instant claims call for the combination of an upper and lower hosel opening and upper and lower hosel component. Such a hosel design to allow a shaft to be attached is considered known in the art as taught by Muzutani. To have combined such with individually with each parent application set forth above would have been obvious in order to attach a shaft to a club with a fastener through the opening in the sole.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/482,392 in view of Ogg 12,179,076.
This is a provisional nonstatutory double patenting rejection.
While ‘392 recites the additional combination of hosel ridges or tubulators to have added such to would have been obvious as taught by Ogg in order to improve the aerodynamic properties of the club head.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/987,098.
This is a provisional nonstatutory double patenting rejection.
‘098 omits limitations with respect to the crown forming part of the sole. However, the elimination of an element and it function have been found to be obvious. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 6-10, and 15-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Galloway et al. 6,575,845.
As to claim 1 and 10, Galloway teaches a golf club head comprising a body 40 with main body chassis 50 having an upper hosel opening 59 and a lower hosel opening as shown in fig. 6, wherein said main body chassis forms a striking face portion 72 that defines a forwardmost vertical plane at 73, and wherein said main body chassis further comprises a recess 80 around a perimeter of said main body chassis, an upper hosel component 121 adapted to engage said upper hosel opening, and a lower hosel component 120 adapted to engage said lower hosel opening, and a crown portion 62 wrapping around a skirt 64 of said golf club head forming at least a portion of a sole where 64 is in the lower portion of the club capable of being defined as the sole of the club.
The crown of a first material is considered shown where the crown portion 60 is “non-metal” (col. 7, ln. 11) and a body of a second material is considered met where the 6-4 titanium alloy has a density of 4.43 g/cc (col. 6, ln. 21) meeting the density of about 4.5 g/cc as further called for by claim 19.
Claims 6-9 are considered shown where the hosel 54 “may be composed of a non-similar material that is light weight” (col. 8, ln. 20).
Claim 18 is met where “other thermoplastics” (col. 7, ln. 14) such as high-density plastics are known to range between 1.16-1.58 g/cc that is inherently below the about 2.0 g/cc being claimed.
As to claims 15-17 and 20, the crown portion overlaps said body portion at said recess of said body portion as best shown in fig. 9 and wherein a forwardmost point of said crown portion is located less than about 17.5 mm away from said forwardmost vertical plane where Galloway teaches that d ranges from .2-1 inch (5.08-25.4mm) (col. 6, ln. 51).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) s 2-5 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galloway in view of Ogg 12,179,076.
While the design of Galloway’s hosel around an external surface appears to be smooth, Ogg teaches the addition of hosel ridges or tubulators to be added to the external surface in order to improve the aerodynamic properties of the club head. To have added such to Galloway would have been obvious for its purposes taught by the prior art.
Conclusion
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 Nicholas Weiss at (571)270-1775.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
Prosecution Insights