DETAILED ACTION
This Office action is responsive to communication received 11/12/2023 – application papers received, including IDS and power of attorney; 04/30/2024 – IDS.
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
The filing receipt, mailed 11/28/2023, has identified that this application is a CON of 17/377,696 07/16/2021 PAT 11826620 which is a CIP of 17/349,519 06/16/2021 PAT 11786789 which is a CIP of 17/138,618 12/30/2020 PAT 11794080 which is a CIP of 17/127,061 12/18/2020 PAT 11433284 which is a CIP of 17/085,474 10/30/2020 PAT 11202946 which is a CIP of 16/833,054 03/27/2020 PAT 11020639 which is a CIP of 16/286,412 02/26/2019 PAT 10625127 which is a CIP of 16/225,577 12/19/2018 ABN which is a CIP of 16/158,578 10/12/2018 PAT 10293226 which is a CIP of 16/027,077 07/03/2018 ABN which is a CIP of 15/220,122 07/26/2016 PAT 10086244 and said 17/085,474 10/30/2020 is a CIP of 16/592,170 10/03/2019 PAT 10821344 which is a CON of 16/214,405 12/10/2018 PAT 10471319 and said 17/085,474 10/30/2020 is a CIP of 16/401,926 05/02/2019 PAT 10821338 which is a CIP of 15/848,697 12/20/2017 ABN which is a CIP of 15/359,206 11/22/2016 PAT 10150019 which is a CIP of 15/220,107 07/26/2016 PAT 9993704.
Priority – Possible CIP Status
This application repeats a substantial portion of prior Application No. 17/377,696, filed 07/16/2021, and adds disclosure not presented in the prior application. More specifically, this application adds the limitation that “said second portion completely surrounding said first portion” (bold emphasis added), as first appearing in instant claim 1. The prior application makes no mention whatsoever of a first portion completely surrounding a second portion of a damping material.
Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The specification does not provide proper antecedent basis for the language “said second portion completely surrounding said first portion” (bold emphasis added), as first appearing in instant claim 1.
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 “said second portion completely surrounding said first portion” (bold emphasis added), as first appearing in instant claim 1, 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.
Status of Claims
Claims 1-20 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to independent claim 1, the specification does not reasonably convey to one skilled in the relevant art that the joint inventors had possession of the claimed feature “said second portion completely surrounding said first portion” (bold emphasis added), as first appearing in independent claim 1. The language “completely surrounding” generally connotes that an object, for example, is bordered or encircled or encased from all sides. The applicant has disclosed that a front surface of a first portion of the damping element contacts the rear surface of the striking face and that a rear surface of the first portion of the damping element contacts the support arm; thereby essentially leaving the remaining portion of the first portion of the damping element exposed. Here, a review of FIGS. 14D-14F,14L and FIGS. 84-85 along with a review of the corresponding description(s) in the specification reveals that the damping element may comprise a first portion and a second portion (e.g., a first material and a second material). However, none of these figures are described as explicitly showing “said second portion completely surrounding said first portion” (bold emphasis added), when detailing the first and second portions of the damping element. One of ordinary skill in the art would be at a loss to understand exactly what portions of the damping element are being referenced and what portion(s) of the damping element are being completely surrounded.
Even assuming arguendo that the applicant were to convincingly argue that support exists in the specification for the now-claimed language “said second portion completely surrounding said first portion”, the applicant is reminded to address and respond to the objections to both the specification and the drawings, as noted hereinabove.
As to claims 2-4, these claims share the deficiency of the written description requirement noted for claim 1.
/
/
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 12-13, 17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”).
At the outset, it is noted that the effective filing date of claims 12-13, 17 and 19-20 is the filing date of the earlier-filed application serial number 17/349,519, filed 06/16/2021.
As to independent claim 12, see annotated FIG. 1 hereinbelow of Roach showing a golf club head comprising: a striking face; a periphery portion surrounding and extending rearwards from said striking face. Roach includes a coordinate system centered at a center of gravity of said golf club head, said coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when said golf club head is in an address position at prescribed loft and lie, an x-axis perpendicular to said y-axis and parallel to the striking face, extending towards a heel of said golf club head, and a z-axis, perpendicular to said y-axis and said x-axis and extending through said striking face (i.e., FIG. 1 in Roach establishes a coordinate system; also, an xyz coordinate system may be established with any club head at the center of gravity in an address position); wherein said striking face (14) comprises a front surface configured to strike a golf ball and a rear surface opposite said front surface.
PNG
media_image1.png
593
908
media_image1.png
Greyscale
Roach shows a support arm (12) spaced from said rear surface of said striking face. Roach shows a damping element residing between said support arm and said rear surface of said striking face (i.e, as the truss members 12 may be spaced from the rear surface of the striking face, a filler may be inserted within the cavity, with the filler contacting the rear surface of the striking face as well as the support members 12; see paragraphs [0071], and [0101]); wherein said damping element (i.e., any of inserts 30, 32, 34; see paragraphs [0071], [0073] and [0101] along with FIGS. 2-4) comprises a front surface in contact with said rear surface of said striking face and a rear surface in contact with said support arm; a heel side weight member (16) and a toe side weight member (18); wherein the support arm extends from the weight member. Note that the claim language does not preclude the support arm from being fashioned from two separate portions. Note also that Roach explains how the truss members (12) may converge with, or nearly converge with, one another at the top periphery, as in paragraph [0065], with paragraph [0069] discussing that the support arm(s) or trusses (12) may be attached to the perimeter body. Roach also notes that the club head may include one or more truss members (12) (i.e., paragraphs [0007] and [0088]). Here, a first portion of said support arm (12) extends directly from said heel side weight member (16) and a second portion of said support arm (12) extends directly from said toe side weight member (18). Thus Roach anticipates a golf club head “comprising… a weight member located on a toe side or a heel side of said golf club head; wherein said support arm extends from said weight member”, as claimed.
As to claim 13, the damping element comprises a first portion and a second portion, with the second portion at least partially surrounding the first portion (i.e., with reference to the embodiment in FIGS. 1-4, a damping material may be placed between the support arms (12) and the rear surface of the striking face, with the damping material being in the form of inserts that fill the cavities in the toe, central and heel portions formed by the truss members 12; thus the damping element in the toe section and the damping element in the heel section may be considered as partially surrounding a first portion of the damping element situated within the central cavity; see paragraphs [0071] – [0074]).
As to claim 17, Roach notes that a plurality of fasteners may be used, with each of said plurality of fasteners engaging said support arm (12) (i.e., paragraph [0069]).
As to claim 19, said damping element in Roach comprises an elastomer (i.e., see paragraph [0101]).
As to claim 20, the damping element in Roach covers a majority of the rear surface of the striking face (i.e., with reference to the embodiment in FIGS. 1-4, a damping material may be placed between the support arms or trusses (12) and the rear surface of the striking face, with the damping material being in the form of inserts that fill the cavities in the toe, central and heel portions formed by the truss members (12); thus the damping element covers a majority of the rear surface of the striking face; see paragraphs [0071] – [0074]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2021/0339097 to Ines et al (hereinafter referred to as “Ines”) in view of US PUBS 2007/0191134 to Gilbert et al (hereinafter referred to as “Gilbert”).
At the outset, it is noted that the effective filing date of claims 1-4 is the actual filing date of the present application, namely 11/12/2023. Here, the language “said second portion completely surrounding said first portion” (bold emphasis added), as first appearing in independent claim 1, does not appear and is not shown nor described in the disclosure of the parent application 17/377,696.
As to independent claim 1, Ines shows a golf club head comprising: a striking face (118); a periphery portion surrounding and extending rearwards from said striking face (i.e., Abstract, paragraphs [0014] and [01895] – [0188]); a coordinate system centered at a center of gravity of said golf club head, said coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when said golf club head is in an address position at prescribed loft and lie, an x-axis perpendicular to said y-axis and parallel to the striking face, extending towards a heel of said golf club head, and a z-axis, perpendicular to said y-axis and said x-axis and extending through said striking face (i.e., see paragraphs [0003] – [0004] and [0014]); wherein said striking face comprises a front surface configured to strike a golf ball and a rear surface opposite said front surface; a support arm (1462A) spaced from said rear surface of said striking face; a damping element residing between said support arm and said rear surface of said striking face (i.e., Abstract); wherein said damping element (702) comprises a front surface in contact with said rear surface of said striking face and a rear surface in contact with said support arm (i.e., FIG. 84); wherein said damping element comprises a first portion (770) and a second portion (780), wherein said first portion (770) of said damping element has a greater durometer than said second portion (780) of said damping element (i.e., paragraphs [0282] – [0283].
Ines does not explicitly show the claimed feature “said second portion completely surrounding said first portion” (bold emphasis added). Here, Gilbert teaches using a damping element in which a second portion of the damping element completely surrounds a first portion of the damping element to provide enhanced protection against vibration of the club head during impact with a golf ball (i.e., see paragraphs [0042] - [0043], along with FIG. 4A, and first portion 1050 and second portion 1052). In view of the teaching in Gilbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Ines patent by providing that the second portion of the damping element completely surrounds the first portion of the damping element to enhance the damping effect and to provide for adequate shock absorption to improve the performance and feel of the golf club head.
As to claim 2, said damping element in Ines comprises an elastomer (i.e, paragraph [0280] .
As to claim 3, said support arm in Ines abuts said periphery portion at two distinct locations (i.e., see paragraph [0004]).
As to claim 4, Ines further comprises a plurality of fasteners, each of said plurality of fasteners engaging said support arm and said periphery portion (i.e., paragraphs [0003], [0005] and [0277]).
Claims 1-4 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2007/0191134 to Gilbert et al (hereinafter referred to as “Gilbert”) and also in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”).
At the outset, it is noted that the effective filing date of claims 1-4 is the actual filing date of the present application, namely 11/12/2023. Here, the language “said second portion completely surrounding said first portion” (bold emphasis added), as first appearing in independent claim 1, does not appear and is not shown nor described in the disclosure of the parent application 17/377,696.
As to independent claim 1, Roach shows a golf club head (FIGS. 1-3) comprising: a striking face (14); a periphery portion surrounding and extending rearwards from said striking face (the periphery is shown in FIG. 1 as extending rearwardly from a rear surface of the striking face); a coordinate system centered at a center of gravity of said golf club head, said coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when said golf club head is in an address position at prescribed loft and lie, an x-axis perpendicular to said y-axis and parallel to the striking face, extending towards a heel of said golf club head, and a z-axis perpendicular to said y-axis and said x-axis and extending through said striking face (i.e., Roach shows a coordinate system in FIG. 1; also, every club head can be identified with an xyz coordinate system centered at the center of gravity); wherein said striking face comprises a front surface configured to strike a golf ball (i.e., striking face 14 in FIGS, 2-3 is intended to strike a golf ball) and a rear surface (22) opposite said front surface (14); a support arm (12) spaced from said rear surface (22) of said striking face (14); a damping element residing between said support arm and said rear surface of said striking face; wherein said damping element comprises a front surface in contact with said rear surface of said striking face and a rear surface in contact with said support arm (i.e., paragraph [0101]), wherein the damping element comprises a first portion and a second portion (i.e., the damping element includes at least a first portion and a second portion, with Roach disclosing plural inserts 30, 32, 34; see paragraphs [0071], [0073] and [0101] along with FIGS. 2-4).
Roach does not explicitly show “said second portion completely surrounds said first portion” when detailing the damping element. Here, Gilbert teaches using a damping element in which a second portion of the damping element completely surrounds a first portion of the damping element to provide enhanced protection against vibration of the club head during impact with a golf ball (i.e., see paragraphs [0042] - [0043], along with FIG. 4A, and first portion 1050 and second portion 1052). In view of the teaching in Gilbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Roach by providing that the second portion of the damping element completely surrounds the first portion of the damping element to enhance the damping effect and to provide for adequate shock absorption to improve the performance and feel of the golf club head. The proposed modification would simply have involved applying a known technique (i.e., the use of a damping element utilizing a second portion completely surrounding a first portion, as taught by Gilbert) to a known device (i.e., each of Roach and Gilbert are directed to cavity-backed iron-type club heads) ready for improvement to yield predictable results (i.e., the arrangement of first and second portions taught by Gilbert enhance protection against vibration of the club head during impact with a golf ball, and such added vibration dampening would have similarly have been of a benefit to the modified Roach club head). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Moreover, Roach does not explicitly show “wherein said first portion of said damping element has a greater durometer than said second portion of said damping element”. Clausen shows it to be old in the art to make use of two, separate elastomeric materials, with the durometer of one of the elastomeric materials (34) being greater than the durometer of the other one of the elastomeric materials (36), whereby the damping effect of the combined materials is greatly enhanced over the use of just one material of a given durometer hardness. See paragraph [0014] in Clausen. According to paragraph [0013], a first portion (34) includes a Shore A hardness of between 70-80, while a second portion (36) that partially surrounds the first portion (34) includes a Shore A hardness of between 40-50. Note that Roach hints of using one or more or a variety of vibration damping materials not only for insert (26), but also for additional inserts that may be inserted within the heel, toe and central cavities and between the rear surface of the striking face and the support arms or trusses (12). See paragraphs [0070], [0071] in Roach. In view of the publication to Clausen, 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 device in Roach by incorporating a damping element having first and second portions, with each of the first and second portions having a different durometer hardness, with there being a reasonable expectation of success that combining materials of varying hardness would have served to enhance and provide a greater reduction in the vibration generated during impact with a golf ball. Here, modifying the club head in Roach would have involved the simple substitution of one known element (i.e., a damping element comprising two materials of diverse hardness, as taught by Clausen) for another (i.e., the damping inserts within the heel, central and toe portions within the cavity in Roach) to obtain predictable results (i.e., superior vibration damping). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
As to claim 2, said damping element in Roach comprises an elastomer (i.e., paragraph [0101]).
As to claim 3, in Roach, said support arm (12) abuts said periphery portion at two distinct locations (i.e., in FIG. 21A, a central support arm 12 extends from a periphery adjacent the top to a periphery adjacent the sole);
As to claim 4, Roach notes that a plurality of fasteners may be used, with each of said plurality of fasteners engaging said support arm (12) and said periphery portion (i.e., paragraph [0069]).
/
/
/
Claims 5-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”).
At the outset, it is noted that the effective filing date of claims 5-6 and 9-11 is the filing date of the parent application serial number 17/377,696, filed 07/16/2021.
As to independent claim 5, Roach shows a golf club head (FIGS. 1-3) comprising: a striking face (14); a periphery portion surrounding and extending rearwards from said striking face (the periphery is shown in FIG. 1 as extending rearwardly from a rear surface of the striking face); a coordinate system centered at a center of gravity of said golf club head, said coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when said golf club head is in an address position at prescribed loft and lie, an x-axis perpendicular to said y-axis and parallel to the striking face, extending towards a heel of said golf club head, and a z-axis perpendicular to said y-axis and said x-axis and extending through said striking face (i.e., Roach shows a coordinate system in FIG. 1; also, every club head can be identified with an xyz coordinate system centered at the center of gravity); wherein said striking face comprises a front surface configured to strike a golf ball (i.e., striking face 14 in FIGS, 2-3 is intended to strike a golf ball) and a rear surface (22) opposite said front surface (14); a support arm (12) spaced from said rear surface (22) of said striking face (14); wherein said support arm (12) abuts said periphery portion at two distinct locations (i.e., in FIG. 21A, a central support arm 12 extends from a periphery adjacent the top to a periphery adjacent the sole); a damping element residing between said support arm and said rear surface of said striking face; wherein said damping element comprises a front surface in contact with said rear surface of said striking face and a rear surface in contact with said support arm (i.e., paragraph [0101]), wherein the damping element comprises a first portion and a second portion, with the second portion at least partially surrounding the first portion (i.e., with reference to the embodiment in FIGS. 1-4, a damping material may be placed between the support arms (12) and the rear surface of the striking face, with the damping material being in the form of inserts that fill the cavities in the toe, central and heel portions formed by the truss members (12); thus the damping element in the toe section and the damping element in the heel section may be considered as partially surrounding a first portion of the damping element situated within the central cavity (i.e., see paragraphs [0071] – [0074]); said damping element comprises an elastomer (i.e., paragraph [0101]).
Roach does not explicitly show “wherein said first portion of said damping element has a greater durometer than said second portion of said damping element; wherein said first portion of said damping element has a Shore A hardness greater than 30 and less than 95; and wherein said second portion of said damping element has a Shore A hardness less than 20”. Clausen shows it to be old in the art to make use of two, separate elastomeric materials, with the durometer of one of the elastomeric materials (34) being greater than the durometer of the other one of the elastomeric materials (36), whereby the damping effect of the combined materials is greatly enhanced over the use of just one material of a given durometer hardness. See paragraph [0014] in Clausen. According to paragraph [0013] in Clausen, a first portion (34) includes a Shore A hardness of between 70-80, while a second portion (36) that partially surrounds the first portion (34) includes a Shore A hardness of between 40-50. Regarding the claimed “Shore A hardness less than 20” of the second portion, note that Roach hints of using one or more or a variety of vibration damping materials not only for insert (26), but also for additional inserts that may be inserted within the heel, toe and central cavities and between the rear surface of the striking face and the support arms or trusses (12). See paragraphs [0070], [0071] in Roach. In view of the publication to Clausen, 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 device in Roach by incorporating a damping element having first and second portions, with each of the first and second portions having a different durometer hardness, with there being a reasonable expectation of success that combining materials of varying hardness would have served to enhance and provide a greater reduction in the vibration generated during impact with a golf ball. Here, modifying the club head in Roach would have involved the simple substitution of one known element (i.e., a damping element comprising two materials of diverse hardness, as taught by Clausen) for another (i.e., the damping inserts within the heel, central and toe portions within the cavity in Roach) to obtain predictable results (i.e., superior vibration damping). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Moreover, the claimed “Shore A hardness less than 20” of the second portion is not deemed critical.
PNG
media_image2.png
18
19
media_image2.png
Greyscale
As to claim 6, Roach notes that a plurality of fasteners may be used, with each of said plurality of fasteners engaging said support arm (12) and said periphery portion (i.e., paragraph [0069]).
As to claim 9, said support arm (12) in Roach is formed separately from said periphery portion (i.e., paragraph [0069]).
As to claim 10, said support arm (12) in Roach extends substantially vertically (i.e., in at least FIG. 21A, a central support arm or truss member (12) extends from the topline to bottom line peripheral portions).
As to claim 11, said damping element in Roach comprises an elastomer (i.e., paragraph [0101]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”) and also in view of the combined teachings of USPN 8,974,317 to Griffin et al (hereinafter referred to as “Griffin”) and USPN 6,030,295 to Takeda.
At the outset, it is noted that the effective filing date of claim 7 is the filing date of the parent application serial number 17/377,696, filed 07/16/2021.
As to claim 7, Roach, as modified by Clausen, lacks “a medallion secured to said golf club head via said plurality of fasteners”. Each of Griffin and Takeda shows that a medallion or cover element may be assembled on the periphery of an iron-type golf club head to provide a closure for the rear cavity-back design of the iron-type club head, with the medallion or cover either serving some function in terms of weighting or vibration damping or simply being used to enhance the aesthetics of the club head. See cover (60) in FIGS. 6-7; col. 4, lines 1-8, lines 31-42 and lines 48-51 in Griffin. See cover (17) in FIG. 1; col. 3, lines 24-28; col. 4, lines 29-34; and col. 4, line 66 through col. 5, line 8 in Takeda. In view of the combined teachings to Griffin and Takeda, 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 club head in Roach by supplying the club head (e.g., the embodiment in FIG. 21A) with a rear medallion that forms a closed or covered interior cavity, whereby the support arms (12) and any filler material located within the cavity would have been hidden from view. In this way, the club head would have been provided with a more aesthetically-pleasing exterior while simultaneously protecting the support arm (12) and the filler material from any inadvertent damage. Here, the addition of a medallion (i.e., as taught by Griffin and Takeda, which show cavity-backed, iron-type club heads) to the cavity-backed iron-type club head of Roach would simply have involved combining prior art elements according to known methods to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). That the claim requires the medallion be secured to the golf club via the plurality of fasteners merely presents one of numerous and obvious means by which the skilled artisan would have been aware of to securely fasten the medallion to the periphery of the club head.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”) and also in view of USPN 7,476,162 to Stites et al (hereinafter referred to as “Stites”).
At the outset, it is noted that the effective filing date of claim 8 is the filing date of the parent application serial number 17/377,696, filed 07/16/2021.
As to claim 8, Roach, as modified by Clausen, lacks “wherein said support arm comprises a plurality of apertures configured to receive said plurality of fasteners, and wherein said periphery portion comprises a plurality of apertures configured to receive said plurality of fasteners”. Note that Roach does disclose that the strut members (12) may be attached to the rear of the face portion and/or to the perimeter via removable fasteners (i.e., see paragraph [0069]). Stites shows an arrangement in which a support (34) arm comprises a plurality of apertures configured to receive a plurality of fasteners (35), and wherein a periphery portion of a golf club head comprises a plurality of apertures configured to receive said plurality of fasteners. FIG. 3 shows that the support arm (34) is fastened to the periphery at heel and toe portions with screws (35) and thus the support arm and the periphery portions at the heel and toe must include apertures through which the screws (35) are fitted. In view of the teaching in Stites, 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 device in Roach by using a combination of fasteners and apertures on each of the struts (12) and the club head periphery in order to easily accommodate the removal and attachment of the struts (12), with such a modification involving the use of an obvious change in the mechanical expedient used to secure the struts (12) to the club head.
Claim 14 (as dependent upon claim 13) and claim 15 (as dependent upon claim 14) are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”).
At the outset, it is noted that the effective filing date of claims 14-15 is the filing date of the earlier-filed application serial number 17/349,519, filed 06/16/2021.
As to claims 14 and 15, Roach does not explicitly show “wherein said first portion of said damping element has a greater durometer than said second portion of said damping element” (claim 14); and “wherein said first portion of said damping element has a Shore A hardness greater than 30 and less than 95” (claim 15). Clausen shows it to be old in the art to make use of two, separate elastomeric materials, with the durometer of one of the elastomeric materials (34) being greater than the durometer of the other one of the elastomeric materials (36), whereby the damping effect of the combined materials is greatly enhanced over the use of just one material of a given durometer hardness. See paragraph [0014] in Clausen. According to paragraph [0013], a first portion (34) includes a Shore A hardness of between 70-80, while a second portion (36) that partially surrounds the first portion (34) includes a Shore A hardness of between 40-50. Note that Roach hints of using one or more or a variety of vibration damping materials not only for insert (26), but also for additional inserts that may be inserted within the heel, toe and central cavities and between the rear surface of the striking face and the support arms or trusses (12). See paragraphs [0070], [0071] in Roach. In view of the publication to Clausen, 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 device in Roach by incorporating a damping element having first and second portions, with each of the first and second portions having a different durometer hardness, with there being a reasonable expectation of success that combining materials of varying hardness would have served to enhance and provide a greater reduction in the vibration generated during impact with a golf ball. Here, modifying the club head in Roach would have involved the simple substitution of one known element (i.e., a damping element comprising two materials of diverse hardness, as taught by Clausen) for another (i.e., the damping inserts within the heel, central and toe portions within the cavity in Roach) to obtain predictable results (i.e., superior vibration damping). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
/
/
/
Claim 18 (as dependent upon claim 12) is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of the combined teachings of USPN 8,974,317 to Griffin et al (hereinafter referred to as “Griffin”) and USPN 6,030,295 to Takeda.
At the outset, it is noted that the effective filing date of claim 18 is the filing date of the earlier-filed application serial number 17/349,519, filed 06/16/2021.
As to claim 18, Roach differs from the claimed invention in that Roach does not explicitly show “a medallion adhered to said periphery portion of said golf club head creating an internal cavity; wherein said support arm and said damping element reside within said cavity”. Each of Griffin and Takeda shows that a medallion or cover element may be assembled on the periphery of an iron-type golf club head to provide a closure for the rear cavity-back design of the iron-type club head, with the medallion or cover either serving some function in terms of weighting or vibration damping or simply being used to enhance the aesthetics of the club head. See cover (60) in FIGS. 6-7; col. 4, lines 1-8, lines 31-42 and lines 48-51 in Griffin. See cover (17) in FIG. 1; col. 3, lines 24-28; col. 4, lines 29-34; and col. 4, line 66 through col. 5, line 8 in Takeda. In view of the combined teachings to Griffin and Takeda, 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 club head in Roach by supplying the club head (i.e., the embodiment in FIG. 21A) with a rear medallion that forms a closed or covered interior cavity, whereby the support member(s) (12) and any filler material located within the cavity would have been hidden from view. In this way, the club head would have been provided with a more aesthetically-pleasing exterior while simultaneously protecting the support members (12) and the filler material from any inadvertent damage. Here, the addition of a medallion (i.e., as taught by Griffin and Takeda, which show cavity-backed, iron-type club heads) to the cavity-backed iron-type club head of Roach would simply have involved combining prior art elements according to known methods to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of USPN 11,826,620 in view of US PUBS 2007/0191134 to Gilbert et al (hereinafter referred to as “Gilbert”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘620 patent are, on one hand, more specific than the instant claims. Specifically, the claims of the ‘620 patent further require “wherein said first portion is substantially cylindrical in shape and said second portion comprises a substantially cylindrical cavity, wherein said first portion resides within said substantially cylindrical cavity of said second portion”.
On the other hand, the claims of the ‘620 patent do not require that “said second portion completely surrounding said first portion” (bold emphasis added). Here, Gilbert teaches using a damping element in which a second portion of the damping element completely surrounds a first portion of the damping element to provide enhanced protection against vibration of the club head during impact with a golf ball (i.e., see paragraphs [0042] - [0043], along with FIG. 4A, and first portion 1050 and second portion 1052). In view of the teaching in Gilbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed device of the ‘620 patent by providing that the second portion of the damping element completely surrounds the first portion of the damping element to enhance the damping effect and to provide for adequate shock absorption to improve the performance and feel of the golf club head. Moreover, the claims are not patentably distinct from one another because any further differences are considered minor phrasing differences and/or obvious and well known in the art. Note the further comments below:
As to claim independent claim 1, see claim 1 of the ‘620 patent.
As to claim 2, see claim 8 of the ‘620 patent.
Claims 3-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of USPN 11,826,620 in view of US PUBS 2007/0191134 to Gilbert et al (hereinafter referred to as “Gilbert”) and also in view of US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”).
As to claim 3, to have modified the claimed invention of the ‘620 patent, as initially modified by Gilbert, to include that “said support arm abuts said periphery portion at two distinct locations” for improved support of the striking face, would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention in view of the publication to Roach, which teaches a support arm (12) abutting a periphery portion at two distinct locations (i.e., in FIG. 21A, a central support arm 12 extends from a periphery adjacent the top to a periphery adjacent the sole).
As to claim 4, see claim 5 of the ‘620 patent.
/
/
/
Claims 5-7 and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of USPN 11,826,620.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘620 patent are, on one hand, more specific than the instant claims. Specifically, the claims of the ‘620 patent further require “wherein said first portion is substantially cylindrical in shape and said second portion comprises a substantially cylindrical cavity, wherein said first portion resides within said substantially cylindrical cavity of said second portion”. Moreover, the claims are not patentably distinct from one another because any further differences are considered minor phrasing differences and/or obvious and well known in the art. Note the further comments below:
As to independent claim 5, see claims 1-3 of the ‘620 patent.
As to claim 6, see claim 5 of the ‘620 patent.
As to claim 7, see claim 7 of the ‘620 patent. That the instant claim requires the medallion be secured to the golf club via the plurality of fasteners merely presents one of numerous and obvious means by which the skilled artisan, before the effective filing date of the claimed invention, would have been aware of to securely fasten the medallion in the claimed invention of the ‘620 patent to the periphery of the club head.
As to claim 9, see claim 4 of the ‘620 patent.
As to claim 10, see claim 6 of the ‘620 patent.
As to claim 11, see claim 8 of the ‘620 patent.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of USPN 11,826,620 in view of USPN 7,476,162 to Stites et al (hereinafter referred to as “Stites”).
As to claim 8, the claimed invention of the ‘620 patent lacks “wherein said support arm comprises a plurality of apertures configured to receive said plurality of fasteners, and wherein said periphery portion comprises a plurality of apertures configured to receive said plurality of fasteners”. Stites shows an arrangement in which a support (34) arm comprises a plurality of apertures configured to receive a plurality of fasteners (35), and wherein a periphery portion of a golf club head comprises a plurality of apertures configured to receive said plurality of fasteners. FIG. 3 shows that the support arm (34) is fastened to the periphery at heel and toe portions with screws (35) and thus the support arm and the periphery portions at the heel and toe must include apertures through which the screws (35) are fitted. In view of the teaching in Stites, 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 device of the ‘620 patent by using a combination of fasteners and apertures on each of the support arm and the club head periphery in order to easily accommodate the removal and attachment of the support arm, with such a modification involving the use of an obvious change in the mechanical expedient used to secure the support arm to the club head.
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of USPN 11,826,620 in view of US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”).
As to independent claim 12, the claims of the ‘620 patent lack the now-claimed limitations directed towards “a weight member located on a toe side or a heel side of said golf club head; wherein said support arm extends from said weight member”. Roach shows at least a heel side weight member (16) and a toe side weight member (18); wherein a support arm (12) extends from the weight member(s). In Roach, a first portion of said support arm (12) extends directly from said heel side weight member (16) and a second portion of said support arm (12) extends directly from said toe side weight member (18). See annotated FIG. 1 of Roach below:
PNG
media_image1.png
593
908
media_image1.png
Greyscale
In view of the teaching in Roach, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed invention of the ‘620 patent to include a weight member on either a heel side or a toe side of the club head for enhanced weight distribution. Placing weight(s) at the heel and/or toe ends would have rearranged the location of the center of gravity for better ball impact response and would have enhanced the moment of inertia to improve the ability of the club head to reduce twisting during off-center shots.
Moreover, the remaining claims are not patentably distinct from one another because any further differences are considered minor phrasing differences and/or obvious and well known in the art. Note the further comments below:
As to claim 13, see claim 1 of the ‘620 patent.
As to claims 14-15, see claims 1-3 of the ‘620 patent.
As to claim 16, see claim 1 of the ‘620 patent.
As to claim 17, see claim 5 of the ‘620 patent.
As to claim 18, see claim 7 of the ‘620 patent.
As to claim 19, see claim 8 of the ‘620 patent.
As to claim 20, see claim 9 of the ‘620 patent.
Claims 12 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of USPN 11,786,789.
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.
Specific to claims 12 and 18-19, it is clear that all the elements of instant claims 12 and 18-19 are to be found in patent claims 1-15. The difference between instant claims 12 and 18-19 of the application and claims 1-15 of the patent lies in the fact that the patent claims include many more elements and are thus much more specific. For example, the claims of the ‘789 patent further require “wherein said first portion of said support arm has a first thickness along said z-axis and a first thickness along said x-axis, wherein said first thickness along said z-axis is greater than said first thickness along said x-axis; wherein said second portion of said support arm has a second thickness along said x-axis and a second thickness along said z-axis, wherein said second thickness along said x-axis is greater than said second thickness along said z-axis” … “wherein a perimeter of said front surface of said damping element defines a supported region; wherein said supported region comprises a geometric center; wherein said striking face comprises a plurality of scorelines; wherein said striking face comprises a heel reference plane extending parallel to said y-axis and said-x-axis; wherein said heel reference plane is offset 1 millimeter towards said heel from a heel-most extent of said scorelines; wherein said geometric center of said supported region is located a supported region offset length toeward from said heel reference plane measured parallel to said x-axis; wherein said striking face comprises a striking face length measured from said heel reference plane to a toe-most extent of said front surface of said striking face parallel to said x-axis; wherein said golf club head comprises a supported region offset ratio comprising said supported region offset length divided by said striking face length multiplied by 100%; wherein said supported region offset ratio is greater than or equal to 40%”. Thus the invention of claims 1-15 of the patent is in effect a “species” of the “generic” invention of claims 12 and 18-19. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 12 and 18-19 are anticipated by claims 1-15 of the patent, claims 12 and 18-19 are not patentably distinct from claims 1-15 of the patent.
As to the remaining limitations, note the following comments:
As to claim independent claim 12, see claim 1 of the ‘789 patent, along with the comments hereinabove.
As to claim 18, see claim 1 of the ‘789 patent, which recites “a medallion adhered to said periphery portion of said golf club head creating an internal cavity, wherein said support arm and said damping element reside within said cavity”.
As to claim 19, see claim 6 of the ‘789 patent, which recites “wherein said damping element comprises an elastomer”.
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 the copending application listed hereinbelow. While no double patenting rejections based on the copending application listed below are currently being made of record, maintaining a clear distinction between the instant claims and the claims of the copending application 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 copending application 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 copending application listed below conflict, or do not conflict, with the claims of the instant application.
United States Patent Application Serial No: 18/332123
Further Notes
At present, it is noted that dependent claim 16 has only been rejected on the ground of nonstatutory double patenting. Moreover, the effective filling date of claim 16 is the filing date of parent application 17/377,696, filed 07/16/2021. Dependent claim 16 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if presented with a timely-submitted and properly-filed terminal disclaimer that is responsive to the nonstatutory double patenting rejection set forth hereinabove.
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.
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.
SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711