DETAILED ACTION
This Office action is responsive to communication received 11/28/2023 – application papers received.
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 / Priority Benefit
It would appear that the Application Data Sheet (ADS), received 11/28/2023, contains an error in the application serial number and the filing date identified for a prior application. See the annotated version of the ADS, hereinbelow. The ADS lists Prior Application Number 17108867, filed 2020-12-01. The 17108867 application is not related to the instant invention. Applicant is requested to review, verify and correct the deficiency in the ADS and provide a corrected ADS in response to this Office action. See MPEP §601.05(a). Note MPEP §210, §211.02(a) and 37 CFR 1.78 along with MPEP §211.03 for guidance on requesting a corrected filing receipt.
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In addition, the cross reference to related applications contained in the specification is deficient. Although the specification identifies the prior 17/108,967 application, the specification notes that this 17/108,967 application is abandoned, as shown in the annotated snapshot of scanned page 1 of the specification hereinbelow. It would appear that the 17/108,967 application issued as U.S. Patent No. 11,266,887 on March 08, 2022. The applicant is requested to review, verify and correct the information in the specification with respect to the cross reference to related applications.
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Again, note MPEP §210, §211.02(a) and 37 CFR 1.78 for guidance on requesting a corrected filing receipt. Again, note MPEP §211.03 relating to the time period for making a claim for benefit under 37 CFR 1.78, and stating:
“If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt. This is because the application will have been scheduled for publication on the basis of such information concerning the benefit claim. Applicant must still submit the benefit claim in the manner specified in 37 CFR 1.78 (i.e., in an ADS in compliance with 37 CFR 1.76 (or for applications filed prior to September 16, 2012 by an amendment to the first sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR 1.76 ) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the benefit of a prior application. If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on the first filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the correction is sought after expiration of the time period set in 37 CFR 1.78. This is because the application will not have been scheduled for publication on the basis of the information concerning the benefit claim contained elsewhere in the application.”
If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted); (2) an applicable petition fee under 37 CFR 1.17(m)(1) or (2); and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. 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. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Drawings
The drawings were received on 11/28/2023. These drawings are acceptable.
Status of Claims
Claims 1-10 are pending.
Specification - Objections
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 following terms/phrases lack proper antecedent basis in the specification:
Claim 1:
“a toe-side external rib and a heel-side external rib”;
“a first, toe-side external rib endpoint”;
“a second, toe-side external rib endpoint”;
“a toe-side external rib axis”;
“a first, heel-side external rib endpoint”;
“a second, heel-side external rib endpoint”;
“a heel-side external rib axis”; and
“a crown front portion length that is 25% to 50% of the crown length”.
Claims 2-4:
“a toe-side external rib” and
“a heel-side external rib”.
Claims 8-9:
“toe-side external rib length”; and
“heel-side external rib length”.
Claims 9-10:
“toe-side external rib width”; and “heel-side external rib width”.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
As to claim 1, line 37, --of-- should be inserted after “rearward”.
As to claim 6, line 4, --a-- should precede “direction”.
As to claim 6, line 5, --the-- should precede “direction”.
Appropriate correction is required.
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 1-10 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.
As to claim 1, line 26, the “direction” has not been clearly defined. Instead of “wherein the crown length extends from the front end to the back end direction”, why not say --wherein the crown length extends in a direction from the front end to the back end--.
As to claims 2-8, these claims share the indefiniteness of claim 1.
As to claim 9, line 3, the “direction” has not been clearly defined. Instead of “measured in a heel portion to toe portion direction”, why not say --measured in a direction from the heel portion to the toe portion--.
As to claim 9, lines 4, 6 and 8, the term “can” is indefinite, as the scope of the claim cannot be clearly ascertained. In line 4, why not change “can vary” to read --varies--. In lines 6 and 8, why not change “can range” to read --ranges--.
As to claim 10, this claim shares the indefiniteness of claim 9 (dependent upon 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 1-3 and 5-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,449,427. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered to be minor phrasing differences and/or obvious and well known in the art.
Here, the now-claimed “toe-side external rib” and “heel-side external rib” correspond to, and are obvious variations of, the claimed first external rib and second external rib, respectively, of the ‘427 patent. Here, the now-claimed “a first, toe-side external rib endpoint” and “a second, toe-side external rib endpoint” correspond to, and are obvious variations of, the claimed first, first external rib endpoint and the second, first external rib endpoint, respectively, of the ‘427 patent. Similarly, the now-claimed “a first, heel-side external rib endpoint” and “a second, heel-side external rib endpoint” correspond to, and are obvious variations of, the claimed first, second external rib endpoint and the second, second external rib endpoint, respectively, of the ‘427 patent.
Moreover, the claims of the ‘427 patent are, on one hand, more specific than the instant claims in that the claimed invention of the ‘427 patent further requires the rear portion of the crown is proximal to the back end and comprises a length that is ⅓ of the length of the crown: the middle portion of the crown is between the rear portion and the front portion and comprises a length that is ⅓ of the length of the crown.
In addition, note the following remarks:
As to claim 1, see claim 3 (as dependent upon claim 1) of the ‘427 patent.
As to claim 2, locating the toe-side external rib and the heel-side external rib so as to abut the crown front portion is an obvious variation of the language wherein the one or more external ribs extend from near the back end toward near [sic] front end of the club head in the ribbed region in claim 1 of the ‘427 patent.
As to claim 3, see claim 5 of the ‘427 patent.
As to claims 5 and 6, see claims 6 and 7 of the ‘427 patent.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,449,427 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”).
As to claim 4, the claimed invention of the ‘427 patent lacks “wherein the front distance varies between the toe-side external rib and the heel-side external rib”. Here, the combination of FIGS. 13 and 16 in Solheim suggests that the distance between the faceplate top and the heel-side rib is different than the distance between the faceplate top and the toe-side rib. For example, if one were to overlay FIG. 13 onto FIG. 16, one can recognize that the distance from the faceplate top to at least a portion of toe-side rib (219B) is greater than the distance from the faceplate top to at least a portion of heel-side rib (219C). Note that Solheim teaches that the orientation and location of the ribs (219) may be strategically manipulated so as to coincide with areas of greater stress on the crown portion (i.e., col. 12, lines 4-31). In view of the teaching in Solheim, 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 ‘427 patent by providing appropriate diverse distances between the faceplate top and each of the heel-side and toe-side ribs in order to be able to more selectively enhance and maintain the structural integrity of specific areas of the crown portion
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Claims 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,449,427 in view of US PUBS 2011/0244979 to Snyder.
As to claims 7-10, the claimed invention of the ‘427 patent lacks the features “the toe-side rear distance and the heel-side rear distance vary in a range of 0.1 inch to 2.0 inches” (claim 7); “the toe-side external rib comprises a toe-side external rib length, and the heel-side external rib comprises a heel-side external rib length; and wherein the toe-side external rib length and the heel-side external rib length are each at least 50% of the club head length” (claim 8); “wherein the toe-side external rib comprises a toe-side external rib width, and the heel-side external rib comprises a heel-side external rib width each of which are measured in a heel portion to toe potion direction; and wherein the toe-side external rib width and the heel-side external rib width can vary along the toe-side external rib length and the heel-side external rib length, respectively; wherein the toe-side external rib width can range from 0.1 inch (2.54mm) to 1.5 inches (38.1mm) and wherein the heel-side external rib width can range from 0.1 inch (2.54mm) to 1.5 inches (38.1mm)” (claim 9); and “the toe-side external rib width and the heel-side external rib width are each greater near the front end than near the back end” (claim 10). Here, Snyder shows it to be old in the art to provide the crown portion with toe-side and heel-side ribs having a width between 2 mm and 7 mm, with the ribs each having a larger width adjacent the front end of the club head as compared to a width adjacent the rear end of the club head, and arranged to take up at least 50% of the club head length across the crown portion (i.e., see paragraph [0047] and FIGS. 1A-1B). In addition, Snyder teaches that the spacing between the ribs and the placement of the ribs may be adjusted to customize the drag-reduction characteristics of the ribs (i.e., see paragraphs [0042] and [0045] – [0045]). In view of the teachings in Snyder, 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 ‘427 patent to include the limitations required by instant claims 8-10 in combination with the claimed ‘427 club head, the motivation being to arrange the heel-side and toe-side ribs to enhance the performance of the club head. More specific to claim 7, the applicant has not disclosed any criticality for the claimed range of the toe-side rear distance and the heel-side rear distance. Rather, the dimensions of the toe-side rear distance and the heel-side rear distance have been disclosed as potential dimensions, with no further explanation as to the purpose of this claimed range (i.e., see instant Specification, paragraph [095]). Given the teachings in Snyder with respect to placement of the ribs, as described above, one of ordinary skill in the art and before the effective filing date of the claimed invention would have been able to arrive at the specific dimensions of the toe-side rear distance and the heel-side rear distance through routine experimentation. "[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).
Claims 1-3 and 5-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of USPN 10,850,172. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered to be minor phrasing differences and/or obvious and well known in the art.
Here, the now-claimed “toe-side external rib” and “heel-side external rib” correspond to, and are obvious variations of, the claimed first external rib and second external rib, respectively, of the ‘172 patent. Here, the now-claimed “a first, toe-side external rib endpoint” and “a second, toe-side external rib endpoint” correspond to, and are obvious variations of, the claimed first, first external rib endpoint and the second, first external rib endpoint, respectively, of the ‘172 patent. Similarly, the now-claimed “a first, heel-side external rib endpoint” and “a second, heel-side external rib endpoint” correspond to, and are obvious variations of, the claimed first, second external rib endpoint and the second, second external rib endpoint, respectively, of the ‘172 patent.
Moreover, the claims of the ‘172 patent are, on one hand, more specific than the instant claims in that the claimed of the ‘172 patent further require the rear portion of the crown is proximal to the back end and comprises a length that is ⅓ of the length of the crown: the middle portion of the crown is between the rear portion and the front portion and comprises a length that is ⅓ of the length of the crown.
In addition, note the following remarks:
As to claim 1, see claim 3 (as dependent upon claim 1) of the ‘172 patent.
As to claim 2, locating the toe-side external rib and the heel-side external rib so as to abut the crown front portion is an obvious variation of the language wherein the one or more external ribs extend from near the back end toward near the front end of the club head in the ribbed region recited in claim 1 of the ‘172 patent.
As to claim 3, see claim 5 of the ‘172 patent.
As to claims 5 and 6, see claims 6 and 7 of the ‘172 patent.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of USPN 10,850,172 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”).
As to claim 4, the claimed invention of the ‘172 patent lacks “wherein the front distance varies between the toe-side external rib and the heel-side external rib”. Here, the combination of FIGS. 13 and 16 in Solheim suggests that the distance between the faceplate top and the heel-side rib is different than the distance between the faceplate top and the toe-side rib. For example, if one were to overlay FIG. 13 onto FIG. 16, one can recognize that the distance from the faceplate top to at least a portion of toe-side rib (219B) is greater than the distance from the faceplate top to at least a portion of heel-side rib (219C). Note that Solheim teaches that the orientation and location of the ribs (219) may be strategically manipulated so as to coincide with areas of greater stress on the crown portion (i.e., col. 12, lines 4-31). In view of the teaching in Solheim, 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 ‘172 patent by providing appropriate diverse distances between the faceplate top and each of the heel-side and toe-side ribs in order to be able to more selectively enhance and maintain the structural integrity of specific areas of the crown portion.
Claims 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of USPN 10,850,172 in view of US PUBS 2011/0244979 to Snyder.
As to claims 7-10, the claimed invention of the ‘172 patent lacks the features “the toe-side rear distance and the heel-side rear distance vary in a range of 0.1 inch to 2.0 inches” (claim 7); “the toe-side external rib comprises a toe-side external rib length, and the heel-side external rib comprises a heel-side external rib length; and wherein the toe-side external rib length and the heel-side external rib length are each at least 50% of the club head length” (claim 8); “wherein the toe-side external rib comprises a toe-side external rib width, and the heel-side external rib comprises a heel-side external rib width each of which are measured in a heel portion to toe potion direction; and wherein the toe-side external rib width and the heel-side external rib width can vary along the toe-side external rib length and the heel-side external rib length, respectively; wherein the toe-side external rib width can range from 0.1 inch (2.54mm) to 1.5 inches (38.1mm) and wherein the heel-side external rib width can range from 0.1 inch (2.54mm) to 1.5 inches (38.1mm)” (claim 9); and “the toe-side external rib width and the heel-side external rib width are each greater near the front end than near the back end” (claim 10). Here, Snyder shows it to be old in the art to provide the crown portion with toe-side and heel-side ribs having a width between 2 mm and 7 mm, with the ribs each having a larger width adjacent the front end of the club head as compared to a width adjacent the rear end of the club head, and arranged to take up at least 50% of the club head length across the crown portion (i.e., see paragraph [0047] and FIGS. 1A-1B). In addition, Snyder teaches that the spacing between the ribs and the placement of the ribs may be adjusted to customize the drag-reduction characteristics of the ribs (i.e., see paragraphs [0042] and [0045] – [0045]). In view of the teachings in Snyder, 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 ‘172 patent to include the limitations required by instant claims 8-10 in combination with the claimed ‘172 club head, the motivation being to arrange the heel-side and toe-side ribs to enhance the performance of the club head. More specific to claim 7, the applicant has not disclosed any criticality for the claimed range of the toe-side rear distance and the heel-side rear distance. Rather, the dimensions of the toe-side rear distance and the heel-side rear distance have been disclosed as potential dimensions, with no further explanation as to the purpose of this claimed range (i.e., see instant Specification, paragraph [095]). Given the teachings in Snyder with respect to placement of the ribs, as described above, one of ordinary skill in the art and before the effective filing date of the claimed invention would have been able to arrive at the specific dimensions of the toe-side rear distance and the heel-side rear distance through routine experimentation. "[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).
Further 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 related prior patents listed below. While no double patenting rejections based on the prior patents listed below are currently being made of record, maintaining a clear distinction between the instant claims and the claims of each of the related patents 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 prior patents 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 prior patents listed here conflict, or do not conflict, with the claims of the instant application.
USPNs: 11826618; 11266887; 10258838; 9925430; 9776056; and 9393465
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711