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 .
The effective filing date for the instant claims appears to be 11/20/2023, the date of filing of the instant application. The subject matter of independent claim 1, calling for the size of the intermediary sandwiched layer width and length to be 4 times the width of the layer thickness and width first appears in the instant application at [0073] in reference to fig. 23 which is not found in the parent application to 17/692,576 from which this case is a CIP.
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 convex front surface of the intermediary sandwiched layer and its radius of curvature must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. While fig. 24 shows rounded corners, such is not considered evident of any convex shape or radius as being recited in the claims.
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.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 8, and 9 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 claim 1 of instant claims differs from claim 1 of the previous patented invention only with respect to the final limitation with respect to the size of the length and width of the intermediary sandwiched layer is limited to 4x greater than the width compared to ‘461 that limits the size of the internal support layer front surface to be between 25-75% of the back surface of the intermediary sandwich layer. To have selected the claimed size would have been an obvious matter of design choice in order to optimize the amount of support and dampening desired for the striking face. n 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).
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 1-10 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.
The scope of claim 1 is unclear where it lacks any structural relationship between the internal support layer and the “horizontal support portion”. Here one cannot determine what structures of the internal support layer the horizontal support portion is part of, is connected to, or whether such is a separate element that in some way cooperates with it. One should not have to guess if two elements are different parts of the same element or two separate element that make up the same part. (“[W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).”); Zletz, 893 F.2d at 322, 13 USPQ2d at 1322. For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate."
In claim 1, it is further ambiguous and unclear which element “having an internal support layer front surface” is intended to limit. Here such can either refer to the previously recited “internal support layer” or “horizontal support portion”.
It is further ambiguous how the intermediary sandwiched layer front surface can be “adjacent the striking face portion and an intermediary sandwiched layer back surface”.
The recitation of, “a sandwiched face layer hardness” is not clear in that one cannot determined if such pertains to some structure of the intermediary sandwiched layer or some additional element. Such is not clearly defined rendering the scope of the claim unclear. Speculatively, the limitation appears to be referring to the portion of the intermediary sandwiched layer that is in contact with the striking face portion. The term is not use in the specification in any context with any reference number.
“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.
Similarly, claim 1 is further indefinite where it recites dimensions in the final paragraph to the intermediary sandwiched layer in terms of width and length relative to its thickness without defining how such dimensions are to be measured relative to its structure. Since no structure with respect to the intermediary sandwiched layer is recited in the claim it is not clear how one is to determine how the recited dimensions are to be measured and compared with the prior art and for determining the scope of the claim. Further the wording is ambiguous where one cannot determine if it is just the sandwich layer length that is at least 4 time greater or if it is both the sandwich layer width and the sandwich layer length. This final recitation is ambiguous and unclear where it appears to recite, “a sandwich layer width…that is at least 4 times greater than…the sandwich layer width”.
“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.
“The sandwich layer thickness” and “the sandwich layer width” lacks a proper antecedent. It is not clear if such is referring to the previously recited, “intermediary sandwiched layer,” some other element, or a portion of it. If the former is intended, antecedent is lacking where the previous recitation of the intermediary sandwiched layer is recited absent of any structure having length and width dimension. As such, they are not inherent and are undefined so that one can unambiguously determine the scope of the claim.
Claim 2 is indefinite, in that one cannot determine is “grove length at face center” is attempting to alternatively define the striking face portion length as being further limiting only to that of the groove length. Further since no grooves are previously recited, this brings antecedent issues were no such length can be found previously recited. As such, the structures required and scope of the claim is unclear.
Claim 3 is unclear where no structure with respect to the horizontal support portion is recited such that one can determine how such can resemble the letter C to be described as “C-Shaped”. The claim further recited a list of and upper and lower wall both having widths without setting forth their structural relationship between the elements or how such a width is to be measured and defined. As such, the scope of the claim is unclear.
In claim 4, “the toe section” lacks a proper antecedent.
Claim 6 is inferential and unclear. The only previously recited relationship to the intermediary sandwiched layer and the striking face portion is that such as “juxtaposed” or adjacent the striking face portion”. Claim 6 now appears to imply that there is some manufacture, structures, or force relationship between the layer and striking face portion such that the shape now has a measure of width. Without knowing how such a “compression” occurs or what structures are responsible, the scope of the claim cannot be readily determined.
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, 2 and 8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Carr 2023/0285814
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claims 1 and 2 are identical with the exception of the recitation of a horizontal support portion extending from toe to heel and the limitations of the last paragraph. Element 104 of fig. 1 of Carr can be described as a horizontal support portion.
The claimed limitation, “wherein intermediary sandwiched layer has a sandwich layer width and a sandwich layer length that is at least 4 times greater than the sandwich layer thickness and the sandwich layer width, is broad and not considered distinct from ‘814. Where element 126 is disclosed as the intermediary sandwiched layer, from fig. 1 it is suggested that its width in the top to sole direction and its length in the toe to heel direction is at least 4 times greater than its width in the front to back direction as shown in his fig. 4. Now structure with respect to the shape of design of the intermediary sandwiched layer is recited in the claims that distinguish it over 126 of Carr.
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) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tseng 2005/0143188 in view of Parsons 10,905,920 in view of the Foam factory.
As to claim1, Tseng shows an iron type golf club with a striking face portion 17 and an aft body portion 10 forming a cavity 12 therebetween.
Element 11 is considered an internal support layer located in the cavity 12 and coupled to the aft body portion that has horizontal support portion in its upper area adjacent to air cavity 12 and extending from the toe portion to the heel portion having an internal support layer front surface that contacts element 16.
Element 15 is an intermediary sandwiched layer juxtaposed between the striking face portion 17 and the internal support layer 11.
While Tseng does not discuss his strike face thickness at the striking face portion a striking face portion face center, Parsons teaches that such a range in striking face thickness of less than .075 (1.9mm) (col. 7, ln. 51) is common in type iron clubs having a striking face attached to a body such as the instant claimed invention. To have selected a common thickness as taught in taught by way of example in Parsons would have been obvious to have designed the face plate to be of sufficient thickness to withstand impacts with a ball, the desired deflection and the desired weighting.
Similarly, Tseng does not discuss in detail the material for his intermediary sandwiched layer. All he suggests is that such is “resilient foam” which is a type of polymer as called for in the instant claims. Where “The Foam Factory” shows that commonly resilient foams fall at about 50A Shore hardness, the limitation of less than 75A is considered fairly suggested in the art.
While Tseng does not discuss thickness dimensions, the intermediary sandwiched layer of Tseng from his fig. 2 is about the thickness of the hosel or a shaft that is commonly .370 inches (9.3mm). As such, the claimed range of thickness of 1 mm and 10 mm is considered met. Note that the drawings can be relied upon for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977).
The internal support layer front surface 11 abuts the intermediary sandwiched layer 15 back surface as best shown in fig. 2. From figs. 1 and 2, the relative width of the intermediary sandwiched layer has length that is at least 4 times greater than the sandwich layer thickness and the sandwich layer width.
Claim 2 is considered show in fig. 1 where the intermediary sandwiched layer 15 length is between 90% and 110% of a striking face portion length where it appears to be the same length or at 100% of that of the striking face within the claimed range.
Claim 4 is considered shown where 14 is a toe aperture in the toe section having a first curved shape and the intermediary sandwich layer has a cross-sectional shape that also curved such that it is similar to the first shape. such that it can be inserted into the cavity through the toe aperture by injection as shown at [0036].
Claim 5 is considered shown in element 18 that is considered a cap for closing the toe aperture.
Claim 8 is considered fairly taught where closed-cell polyethylene foam such as that discussed by Foam Factory has a density in the upper range is 144kg/m^3 (.144g/cm^3) and resiliency up to 90%, the density of less than 0.9 g/cm3 and a resilience of greater than 50% is considered fairly suggested.
9. The golf club of claim 1, wherein the intermediary sandwiched layer is formed of a first portion that is adjacent to the face center and has a first hardness, a second portion in a toe portion of the intermediary sandwiched layer having a second hardness that is less than the first hardness, and a third portion in a heel portion of the intermediary sandwiched layer having a third hardness that is less than the first hardness.
10. The golf club of claim 9, wherein the at least the second portion and third portion are foamed and have a density of less than 0.9 g/cm3.
Conclusion
Claims 3, 6, 7 9, and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 3 adds a C-shaped horizontal support portion that is believed directed to embodiments such as that of fig. 23. In anticipation of clarifying the structures in overcoming the above issues under 112, such a cross-sectional shape taken across the length of the horizontal support bar and walls (940, 942) being less than the thickness of 926 as called for in claim 6 does not appear to be fairly shown in the art of record.
Claim 9 adds that the intermediary sandwich layer if formed of 3 portions of different hardness that does not appear to be generally shown by the applied art.
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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“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.”
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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