DETAILED ACTION
This Office action is responsive to the following communication received:
11/15/2023 – application papers received, including IDS (4 statements) and power of attorney;
03/04/2024 – IDS;
06/24/2024 – IDS;
10/23/2024 – IDS; and
11/14/2024 – 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
This application is a CON of 17/691,649 03/10/2022 PAT 12246225 which is a CON of 17/124,134 12/16/2020 PAT 12121780.
Drawings
The drawings were received on 11/15/2023. These drawings are acceptable.
Information Disclosure Statement
It is noted that one of the IDS papers, received 11/15/2023, cites a non-patent literature document styled as “Office Action for Chinese Patent Application No. 202111541194.2 dated May 19, 2023”. This document was actually received with a later-filed IDS paper on 11/14/2024 and is cited in the section directed to non-patent literature documents. To avoid confusion in the file history, the earlier citation of this document in the 11/15/2023 IDS has been lined-through.
Status of Claims
Claims 1-19 are pending.
Specification
The disclosure is objected to because of the following informalities:
Here, TABLE 2, located at the top of scanned page 68, and before paragraph [00223], is not clearly legible;
Here, TABLE 3, which is located between paragraph [00259] on scanned page 83 and paragraph [00260] on scanned page 84, is not clearly legible;
Here, portions of scanned page 95, and containing the illustrated polymer structures, are not clearly legible. Appropriate correction is required.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(b)
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 1-19 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.
As to claim 1, lines 21-22, the phrase “a first mass no less than 45% of the total mass of the driver-type golf club head” presents an open-ended range that renders the claim indefinite. The scope of what exactly is covered by the claim is not clearly discernible. See MPEP 2173.05(c).
As to claim 1, line 23, “the” (first occurrence) should read --a-- to establish proper antecedent basis for a second mass (of the at least one second material), which is first recited in line 23.
As to claim 1, lines 26-27, the claim must initially clarify that the cup itself is of a multi-piece construction or includes a first distinct part and a second distinct part, with the first part comprising an upper portion of the cup and made of the at least one first material; and with the second part comprising a lower portion of the cup and is made of the at least one second material. Moreover, and even with consideration of this proposed change, it is not exactly clear if the at least one first material that makes up the upper portion of the cup contributes to the first mass which presently accounts for no less than 45% of the total mass of the driver-type golf club head. Similarly, it is not exactly clear if the at least one second material that makes up the lower portion of the cup contributes to the second mass which presently accounts for no less than 20% and no more than 50% of the total mass of the driver-type golf club head.
As to claims 2-4, these claims share the indefiniteness of claim 1.
As to claim 5, line 2, “the” (third occurrence) should read --a-- in order to set forth proper antecedent basis for a total mass (of the lower portion of the cup), which is first recited in line 2. In addition, there is some added confusion presented by the fact that a total mass of the upper portion of the cup is now expressed as a percentage with respect to the mass of the lower portion of the cup when in fact it is not even clear if the limitations in claim 1 regarding the materials of the upper and lower cup portions actually contribute to the distinct percentages of total mass of the driver-type golf club head (i.e., see the comments under claim 1, lines 26-27, supra).
As to claim 6, this claim shares the indefiniteness of claim 1.
As to claim 7, in one sense, the claim appears to be further limiting the upper portion and the lower portion with what would resemble product-by-process limitations. However, in another sense, it is not explicitly clear what the scope of the claim is, as there are not further limitations introduced for the upper portion and the lower portion as a result of the first and second, different manufacturing techniques. It is simply not clear if the applicant is claiming a product or a process.
As to claims 8-12, these claims share the indefiniteness of claim 1.
As to claim 13, line 4, the phrase “of at least 50 millimeters” presents an open-ended range, which renders the claim indefinite. The scope of what exactly is covered by the claim is not clearly discernible. See MPEP 2173.05(c).
As to claims 14-19, these claims share the indefiniteness of claim 1.
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 1-5, 9-15, and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,121,780. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the prior ‘780 patent are, on one hand, more specific than the instant claims and thus encompass many of the limitations of the instant claims. For example, the claims of the ‘780 patent further require “wherein a mass element is attached to the ring and the mass element is located rearward of the sole insert and forms an exterior portion of the driver-type golf club head”. On the other hand, the claims of the ‘780 patent differ only in the arrangement of the limitations and/or present minor phrasing differences and/or present limitations deemed obvious in the art. Note the following comments:
As to independent claim 1 and dependent claims 2-3 and 5, see claim 4 (as dependent upon claim 1) of the ‘780 patent.
As to claim 4, see claim 5 (as dependent upon claim 1) of the ‘780 patent.
As to claims 9-14, see claims 1, 4, 5 and 19 of the ‘780 patent. Here, any differences between the materials recited in the instant claims and the materials claimed in the ‘780 patent insofar as the claimed, material selections for the ring, crown insert and/or sole insert would have involved an obvious selection of a known material to take advantage of the properties of a known material. See MPEP 2144.07 stating: “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).”
As to claim 15, see claim 7 (as dependent upon claim 6, which depends from claim 1) of the ‘780 patent.
As to claims 17-19, see claim 10, and see claim 12 (as dependent upon claim 9, which depends from claim 1) of the ‘780 patent.
Claims 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,121,780 in view of US PUBS 2018/0126228 to Penney et al (hereinafter referred to as “Penney”).
As to claims 6-7, the claimed invention of the ‘780 patent lacks the features “the upper portion of the cup is formed separately from the lower portion of the cup; the upper portion of the cup is joined to the lower portion of the cup” (claim 6) as well as “the upper portion of the cup is made using a first manufacturing technique; the lower portion of the cup is made using a second manufacturing technique; and the first manufacturing technique is different than the second manufacturing technique” (claim 7). The prior art to Penney recognizes that club heads may include parts that are formed integrally or formed separately and subsequently attached to one another to construct a completed golf club head. Moreover, Penney recognizes that a variety of manufacturing and forming techniques are available to the skilled artisan for construction of a golf club head and its associated parts. See paragraphs [0078], [0141], [0195] and [0211] in Penney. In view of the teachings in Penney, 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 ‘780 patent by separately forming and subsequently joining the upper and lower cup portions together and to select a manufacturing technique commensurate with the materials selected for each of the upper and lower cup portions in order to facilitate the construction of the club head. For example, forging and casting techniques are better-suited when dealing with club head parts formed form metallic materials, whereas injection molding, thermosetting procedures and thermoforming techniques are more efficient and readily available for the making of club head parts using non-metallic and composite materials.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,121,780 in view of US PUBS 2018/0126228 to Penney et al (hereinafter referred to as “Penney”) and also in view of USPN 6,475,100 to Helmstetter et al (hereinafter referred to as “Helmstetter”).
As to claim 8, the claimed invention of the ’780 patent, as modified by Penney, lacks the features “wherein the cup comprises a hosel of the driver-type golf club head; the upper portion of the cup comprises a hosel bore of the hosel; and the lower portion of the cup comprises a port in communication with the hosel”. Helmstetter shows an arrangement in which a forward cup-shaped portion of the club head includes a hosel portion (50) as part of an upper portion of the cup-shaped face portion along with a hosel bore, and a port (i.e., FIGS. 8-10) in a bottom portion of the cup-shaped face portion, with the port in communication with the hosel bore. The arrangement in Helmstetter provides a way of accessing the shaft and hosel bore for fine tuning the orientation of the shaft with respect to the club face (i.e., col. 3, lines 13-53 and col. 5, line 57 through col. 6, line 6). In view of the teaching in Helmstetter, 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 ‘780 patent by providing the cup with a hosel, a hosel bore and a port, collectively being arranged to accept and to secure a shaft in a proper orientation.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,121,780 in view of USPN 5,797,807 to Moore.
As to claim 16, the claims of the ‘780 patent lack the feature “a thickness of the sole insert is greater than a thickness of the crown insert”. Moore teaches that reducing a thickness of a crown portion helps to lower a center of gravity of the club head for improved ball flight (i.e., col. 1, lines 16-28), and further teaches that the crown portion may be of a reduced thickness as compared to the sole portion (i.e., col. 2, lines 40-58 and FIG. 10). In view of the teaching in Moore, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘780 patent by providing for a reduced thickness in the crown portion (i.e., in the crown insert portion) of the club head as compared to the sole portion (i.e., in the sole insert portion), with there being a reasonable expectation of success than a reduced crown thickness, with consideration of the materials used for the crown and sole inserts, would have helped to lower the center of gravity of the club head for improved club head performance.
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Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711