DETAILED ACTION
Priority
Claims 1-4 receive the priority date of 12/8/23 when this CIP is filed. That is, claim 1 claims “wherein a back end of the kinetic projectile is exposed and flush with an exterior surface of the golf ball…and is positioned to make direct contact with a face of a driver, fairway wood, or hybrid golf club” and claim 3 claims “wherein a back end of the kinetic projectile is exposed on an exterior surface of the golf ball…and is positioned to make direct contact with a face of a driver, fairway wood, or hybrid golf club” (emphasis added). This language is first found in this child application, par. [0014]. Restated, this language is not found in parent application 17/831,706.
In the Reply dated 11/20/25, applicant argues extensively that support for the above limitations are found in the parent application 17/831,706 and even the provisional application 63/270,597 (see Remarks, received 11/20/25, pages 5-6). As such, applicant argues that a different priority date should be afforded to the claims. However, and with all due respect, applicant appears to focus on the “flush” limitation. Respectfully submitted, the limitation that creates the new priority date is “wherein a back end of the kinetic projectile is exposed with an exterior surface of the golf ball” and “positioned to make direct contact” (emphasis added).
That is, the following is par. [0014] from the parent application 17/831706:
[0014] The invention provides that the kinetic projectile 14 may consist of a hammer
actuated single shot load, such as the hammer actuated single shot loads commonly
used in single nail shot hand tools / guns, e.g., the single shot loads commonly used
with Red Head style nail guns. In certain non-limiting examples, the invention provides
that the kinetic projectile 14 may consist of, for example, a hammer actuated 0.22
caliber single shot load or 27 caliber single shot load. The invention provides that a
front end 16 of the kinetic projectile 14 is inserted into the aperture 12, with the kinetic
projectile 14 then being pressed into the aperture 12 until the back end 18 of the kinetic
projectile 14 is flush, or substantially flush, with the exterior surface of the golf ball.
Accordingly, the invention provides that the diameter of the aperture 12 will be tailored and configured to fittingly hold the kinetic projectile 14 (i.e., the diameter of the aperture 12 drilled into the golf ball will take into account the diameter of the kinetic projectile 14).
However, the following par. [0014] is from the current child application 18/533,320. It should be noted that the child application 18/533,320 is filed as a CIP (continuation-in-part), and as such, applicant specifically acknowledges that the child application contains new matter as compared to the parent. The italicized language shows language added to child application that is not present in the parent (emphasis added).
[0014] The invention provides that the kinetic projectile 14 may consist of a hammer
actuated single shot load, such as the hammer actuated single shot loads commonly
used in single nail shot hand tools / guns, e.g., the single shot loads commonly used
with Red Head style nail guns. In certain non-limiting examples, the invention provides
that the kinetic projectile 14 may consist of, for example, a hammer actuated 0.22
caliber single shot load or 27 caliber single shot load. The invention provides that a
front end 16 of the kinetic projectile 14 is inserted into the aperture 12, with the kinetic
projectile 14 then being pressed into the aperture 12 until the back end 18 of the kinetic
projectile 14 is flush, or substantially flush, with the exterior surface of the golf ball.
Once the kinetic projectile 14 is inserted into the aperture 12, with the kinetic projectile 14 being pressed into the aperture 12 until the back end 18 of the kinetic projectile 14 is
flush with the exterior surface of the golf ball, the back end 18 of the kinetic projectile 14
is still exposed (i.e., the back end 18 is not covered by any surface material of the ball) -
- and, importantly, is positioned to make direct contact with a driver, fairway wood, or
hybrid golf club during a golfer's swing. The invention provides that the diameter of the
aperture 12 will be tailored and configured to fittingly hold the kinetic projectile 14 (i.e.,
the diameter of the aperture 12 drilled into the golf ball will take into account the
diameter of the kinetic projectile 14).
As such, the Examiner can only assume (possibly based on prosecution of the parent application) that applicant felt the need to elaborate that the kinetic projectile is flush with the exterior of the golf ball, but still “exposed” (i.e. not covered by any material) so that it can make “direct contact” with the golf club face occurs.
A review of par. [0016] also reveals similar new matter. Par. [0016] of the parent app 17/831/706 states:
[0016] During use, the golf balls of the present invention should be placed on a
conventional golf tee and oriented such that the back end 18 of the kinetic projectile 14
will make contact with a driver, fairway wood, or hybrid golf club during a golfer's swing.
The invention provides that when a driver, fairway wood, or hybrid golf club strikes the
golf ball, and thereby strikes the back end 18 of the kinetic projectile 14, the golf ball will
launch farther than conventional golf balls - - and/or it will produce a striking sound that
is much greater and different than traditional golf balls (e.g., a loud gunshot type of
sound is produced). This provides a type of entertainment among golfers that is not
achievable with traditional golf balls.
However, par. [0016] of this child application 18/533,320 states (again, italicized language identifying new matter found only in this child application):
[0016] During use, the golf balls of the present invention should be placed on a
conventional golf tee and oriented such that the back end 18 of the kinetic projectile 14
is positioned to make direct contact with a driver, fairway wood, or hybrid golf club
during a golfer's swing. As used herein, "direct contact" (and similar phrases) means
that the face of the driver, fairway wood, or hybrid golf club is capable of making direct
contact with the back end 18 of the kinetic projectile 14, with nothing between such face
of the golf club and the back end 18 of the kinetic projectile 14 at the time of contact.
The invention provides that when a driver, fairway wood, or hybrid golf club strikes the golf ball, and thereby directly strikes the back end 18 of the kinetic projectile 14, the golf
ball will launch farther than conventional golf balls - - and/or it will produce a striking
sound that is much greater and different than traditional golf balls, e.g., a loud gunshot
type of sound is produced. For example, if the sound of a golf club striking a
conventional / traditional golf ball is measured (e.g., measured in decibels), and if the
sound of the same golf club striking a ball of the present invention at the back end 18 of
the kinetic projectile 14 is also measured, the invention provides that striking the ball of
the present invention will produce at least a 10% louder (more intense) sound or, in
some cases, at least a 20% louder (more intense) sound, or in some cases, at least a
40% louder (more intense) sound. This provides a type of entertainment among golfers
that is not achievable with traditional golf balls (i.e., a traditional golf ball being a golf ball
without a kinetic projectile 14 as described herein). In addition, the invention provides
that a direct strike to the back end 18 of the kinetic projectile 14 causes the kinetic
projectile 14 to detonate, such that the kinetic projectile 14 and the associated golf ball
are no longer usable as described herein (i.e., such detonation expires the kinetic
projectile 14 and renders the surrounding golf ball no longer usable for golfing
purposes). The invention provides that rendering the golf ball no longer usable will be
acceptable to users, insofar as the golf ball of the present invention is intended to be a
novelty golf ball used strictly for entertainment purposes.
Based on the above, it is clear that applicant is more specifically elaborating on the fact that the kinetic projectile is “exposed” on the surface of the golf ball to make “direct contact” with the club head face. The above italicized language is clearly not found in the parent app 17/831,706 because the Examiner has clearly compared the parent and child applications above. This language is also not found in the provisional application. As such, the priority date previously given by the Examiner is maintained and the subsequent rejection using Kung as the primary reference is also maintained.
Drawings
The drawings filed 11/20/25 are entered.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Kung (i.e. Ryan Kung, This Golf Ball Can Kill You, 12/4/22, YouTube video, 5 pages of screenshots).
Regarding claim 1, Kung discloses a golf ball that comprises: (a) a centerline axis (screenshot 1 and time stamp 2:18; noting a centerline is inherent) (b) an aperture that is centered over, adjacent to, or offset from the centerline axis (screenshot 1 and time stamp 2:18; noting at least one of these is obvious; but it appears from screenshot 1, that the aperture created via the drill is on the centerline), and wherein the aperture has a diameter of 0.203 to 0.220 inches (screenshots 1-3; noting a diameter of 0.203 to 0.220 would be obvious as the hole is sized to specifically and snugly receive a 0.22 blank cartridge which measures 0.22 inches in diameter; listen to audio at 2:18-2:27 wherein he specifically states a “22 blank)”or (ii) a diameter of 0.250 to 0.27 inches (noting this is not needed); and (c) a kinetic projectile located within the aperture (screenshots 2 and 3; time stamp around 2:21; noting a “22 blank”), wherein the kinetic projectile is a 0.22 caliber single shot load when the diameter of the aperture is 0.203 to 0.220 inches (screenshots 2 to 3; and audio from 2:18-2:27; noting this is specifically a 0.22 blank) or a 0.27 caliber single shot load when the diameter of the aperture is 0.250 to 0.27 inches (noting this is not needed as a 0.22 caliber is used), wherein a back end of the kinetic projectile is exposed and is flush with an exterior surface of the golf ball (screenshots 3-4; noting the Examiner takes the broadest reasonable interpretation of “back end” and “flush”; noting the inner rim of the back end is “flush” with the ball surface so that the back end or rim is exposed), wherein the back end of the kinetic projectile is positioned to make direct contact with a face of a driver, fairway wood, or hybrid golf club (screenshots 3-5 and noting contact with a driver is obvious from the video; also noting that this is functionally possible given the structure), wherein such direct contact between the face of the driver, fairway wood, or hybrid golf club and the back end of the kinetic projectile (i) detonates the kinetic projectile and (ii) produces a sound that is significantly louder and more intense than a sound that is produced when the driver, fairway wood, or hybrid golf club strikes a traditional golf ball (screenshot 5; noting this is functional language that is possible given the structure; see also the sound generated at 2:31-2:38). It is noted that Kung does not specifically disclose that the aperture has a depth of 0.800 inches to 1.650 inches. However, Kung definitely discloses an aperture depth enough to hold a 0.22 blank cartridge and less than 1.684” (screenshots 1-2; noting a standard golf ball is 1.684” and the drill does not go all the way through the ball). In addition, regarding the exact diameter and/or depth of the aperture, it has been held that if a change in the relative dimensions over the prior does not make the claimed invention perform differently, the claimed device is not patentably distinct from the prior art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)(see applicant’s spec, par. [0013]; applicant giving no criticality to the depth and diameter other than “it needs to accommodate a 22 caliber” blank). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact diameter and/or depth of the aperture would not make the claimed invention perform differently: that is, the aperture diameter and depth would be large enough to accommodate a 0.220 inch blank so that the end rim is flush with the outside of the golf ball regardless of the exact diameter and/or depth. Finally, in the alternative, assuming arguendo that applicant means some other interpretation of “flush” than broadly construed by the Examiner, it has been held that the rearrangement of parts is not patentable unless it modifies the operation of the device. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)(see applicant’s spec, par. [0014]; noting the only criticality given to “flush” is that “back end is not covered by any surface material of the ball). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact definition of “flush” would not modify the operation of the device: that is, the back end of the cartridge would not be coved by any surface of the ball regardless of what the exact definition of “flush” means.
Regarding claim 3, Kung discloses a golf ball that comprises: (a) a centerline axis (screenshot 1 and time stamp 2:18; noting a centerline is inherent) (b) an aperture that is centered over, adjacent to, or offset from the centerline axis (screenshot 1 and time stamp 2:18; noting at least one of these is obvious; but it appears from screenshot 1, that the aperture created via the drill is on the centerline), and wherein the aperture has a diameter of 0.203 to 0.220 inches (screenshots 1-3; noting a diameter of 0.203 to 0.220 would be obvious as the hole is sized to specifically and snugly receive a 0.22 blank cartridge which measures 0.22 inches in diameter; listen to audio at 2:18-2:27 wherein he specifically states a “22 blank)”or (ii) a diameter of 0.250 to 0.27 inches (noting this is not needed); and (c) a kinetic projectile located within the aperture (screenshots 2 and 3; time stamp around 2:21; noting a “22 blank”), wherein the kinetic projectile is a 0.22 caliber single shot load when the diameter of the aperture is 0.203 to 0.220 inches (screenshots 2 to 3; and audio from 2:18-2:27; noting this is specifically a 0.22 blank) or a 0.27 caliber single shot load when the diameter of the aperture is 0.250 to 0.27 inches (noting this is not needed as a 0.22 caliber is used), wherein a back end of the kinetic projectile is exposed on an exterior surface of the golf ball (screenshots 3-4), wherein the back end of the kinetic projectile is positioned to make direct contact with a face of a driver, fairway wood, or hybrid golf club (screenshots 3-5 and noting contact with a driver is obvious from the video; also noting that this is functionally possible given the structure), wherein such direct contact between the face of the driver, fairway wood, or hybrid golf club and the back end of the kinetic projectile (i) detonates the kinetic projectile and (ii) produces a sound that is significantly louder and more intense than a sound that is produced when the driver, fairway wood, or hybrid golf club strikes a traditional golf ball (screenshot 5; noting this is functional language that is possible given the structure; see also the sound generated at 2:31-2:38). It is noted that Kung does not specifically disclose that the aperture has a depth of 0.800 inches to 1.650 inches. However, Kung definitely discloses an aperture depth enough to hold a 0.22 blank cartridge and less than 1.684” (screenshots 1-2; noting a standard golf ball is 1.684” and the drill does not go all the way through the ball). In addition, regarding the exact diameter and/or depth of the aperture, it has been held that if a change in the relative dimensions over the prior does not make the claimed invention perform differently, the claimed device is not patentably distinct from the prior art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)(see applicant’s spec, par. [0013]; applicant giving no criticality to the depth and diameter other than “it needs to accommodate a 22 caliber” blank). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing that the exact diameter and/or depth of the aperture would not make the claimed invention perform differently: that is, the aperture diameter and depth would be large enough to accommodate a 0.220 inch blank so that the end rim is flush with the outside of the golf ball regardless of the exact diameter and/or depth.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kung (i.e. Ryan Kung, This Golf Ball Can Kill You, 12/4/22, YouTube video, 5 pages of screenshots) in view of Abbott (US Pat. No. 3,672,301).
Regarding claims 2 and 4, it is noted that Kung does not specifically disclose that black powder within the aperture. However, Kung clearly discloses the use of an explosive cartridge blank (screenshots 2 and 4; commonly known as a red tip). In addition, Abbott discloses the use of an explosive cartridge blank (abstract) that utilizes black powder (col. 3, lines 32-58). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Kung to use black powder within the aperture as taught by Abbott because doing so would be a combining prior art elements (an explosive blank used in a golf ball and an explosive blank that uses black powder) according to known methods (use of black powder as a “suitable ignition charge” for the explosive blank) to obtain predictable results (an explosive blank used in a golf ball, the explosive blank using black powder as a “suitable ignition charge”).
Response to Arguments
Applicant's arguments filed 11/20/25 have been fully considered but they are not persuasive.
Priority
Applicant argues the priority date extensively. The arguments are not compelling. The Examiner’s response to priority is clearly noted above. By applicant’s own admission, they have filed a CIP (continuation-in-part) of parent application 17/831,706. The new language added to this child application 18/533,320 is specifically discussed above in the “Priority” section. That new language is utilized in both independent claims 1 and 3. As such, claims 1 and 3 (and thus all claims 1-4) get the priority date of this later filed child application.
Original Claims 1 & 2
The Kung reference continues to be used because applicant’s argument of a different priority date is not compelling.
New Claims 3 & 4
Applicant appears to focus in on the “flush” limitation and thus remove it from claim 3 to try to obtain an earlier filing date. Respectfully submitted, the new language that creates the a later priority date is not “flush”, it is such language as “exposed” and “direct contact”. In fact, an argument can be made that since both claims 1 and 3 claim “direct contact”, and par. [0017] attempts to create a new special definition for the term, the use of this phrase “direct contact” alone in claims 1 and 3 creates the later priority date only found in this child application (see par. [0016] of this current child specification, cited in full above; noting applicant states that ‘”direct contact” means that the face of the driver, fairway wood, or hybrid golf club is capable of making direct contact with the back end 18 of the kinetic projection 14, with noting between such face of the golf club and the back end 18 of the kinetic projection 14 at the time of contact’).
No other arguments are advanced.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
1/12/26
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711