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 .
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)(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.
Claim(s) 1-4, 11-13, 15, 17, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Westrum et al. (USPN 8956244).
Regarding claim 1, Westrum et al. discloses a club head having striking face 30, crown 26, sole 28, heel, toe, hosel 32, and skirt. The club head is also divided into a first portion 100 and a second portion 120 (See Figure 14). The first portion incudes at least a striking face. The second portion includes at least a rear portion of the sole. The first portion is made of a first material and the second portion is made of a second material that is the same as the first material or different (See Column 2, lines 57 through 64). The first and second portions are also joined together via welding (See Column 3, lines 19 through 38).
Regarding claim 2, Westrum et al. discloses the first and second portions collectively defining a recess 110 and 130 in the sole. A first mass portion 42 is received within the recess wherein a first portion includes a forward portion of the crown, sole, toe, heel, and skirt. A second portion includes a rear portion of crown, toe, heel, and skirt (See Figures 14).
Regarding claim 3, Westrum et al. discloses a first mass proximate the sole.
Regarding claim 4, Westrum et al. discloses the first mass integrally formed with the second portion of the club head.
Regarding claim 11, Westrum et al. discloses the first portion accounting for 20% of the club head size (See Paragraph bridging columns 7 and 8).
Regarding claim 12, see the above regarding claim 11.
Regarding claim 13, see the above regarding claim 11.
Regarding claim 15, Westrum et al. discloses the striking face made of titanium (See Column 2, lines 57 through 64).
Regarding claim 17, see the above regarding claim 1. In addition, Westrum notes that the first and second portions can be combined using mechanical fasteners or adhesive (See Column 7, lines 18 through 49).
Regarding claim 18, see the above regarding claim 11.
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) 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Westrum et al. (USPN 8956244).
Regarding claim 19, Westrum et al. discloses the first and second portion may have different sizes (See Paragraph bridging columns 7 and 8) noting that first may be larger than the second or vice versa. The size of the portions would determine the position of the recess and weighting. One having ordinary skill in the art would have found it obvious to have the first portion smaller than the second portion, as taught by Westrum et al., in order to move the center of gravity closer to the striking face of the club head.
Regarding claim 20, see the above regarding claim 19.
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.
Claim 1-3, 5, 7, 8, 10-13, 15, and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11839797. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application does not claim a recess in the sole and a first mass portion in the recess. Though not in claim 1, the remaining limitations are encompassed by claim 1 of US Patent 11839797. In light of the above, claim 1 of the instant application is anticipated by claim 1 of US Patent 11839797.
Allowable Subject Matter
Claims 6, 9, 14, and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN A HUNTER whose telephone number is (571)272-4411. The examiner can normally be reached on Monday through Friday from 7:30AM to 4:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached at telephone number 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALVIN A HUNTER/Primary Examiner, Art Unit 3711