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 § 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) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roach et al. (US 2015/0126303) in view of Matsunaga (EP 1757334).
Regarding claim 1, Roach et al. discloses a club head having an aft body with a crown portion, sole portion, and bridge portion connecting the crown portion and the sole portion. Roach also discloses a skirt portion formed between the outer perimeter of the sole portion at a rear end of the aft body (See Figure 14). The crown and sole portions are made of a lightweight material such as composite (See Paragraph 0079). Roach et al. also disclose the skirt being made of metal or polymer (See Paragraph 0074). The crown and sole have a thickness ranging from 0.015 to 0.025 inch, or 0.381 to 0.635mm (See Paragraph 0067). Roach et al. does not disclose if the sole is thicker than the crown. Matsunaga discloses a club head wherein the sole is thicker than the crown (See Paragraph 0016). Matsunaga notes that the thinner crown and thicker sole increases launch angle (See Summary of the Invention). One having ordinary skill in the art would have found it obvious to have the sole thicker than the crown, as taught by Matsunaga, in order to increase the rigidity of the sole and increase the launch angle of the club head.
Regarding claim 2, see the above regarding claim 1.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roach et al. (US 2015/0126303) in view of Stevens et al. (US 2005/0026714).
Regarding claim 13, Roach et al. discloses a club head having an aft body with a crown portion, sole portion, and bridge portion connecting the crown portion and the sole portion. Roach also discloses a skirt portion formed between the outer perimeter of the sole portion at a rear end of the aft body (See Figure 14). The crown and sole portions are made of a lightweight material such as composite (See Paragraph 0079). Roach et al. also disclose the skirt being made of metal or polymer (See Paragraph 0074). The crown and sole have a thickness ranging from 0.015 to 0.025 inch, or 0.381 to 0.635mm (See Paragraph 0067). Roach et al. does not disclose if ledges are present for attachment. Stevens et al. discloses a club head having an aft body with ledges 62a and 64a along the perimeter of the crown and sole (See Figures 7 and 8). The ledge facilitates attachment of a face portion to the aft body to assemble the club head. One having ordinary skill in the art would have found it obvious to have ledges on the crown and sole portions, as taught by Stevens et al., in order to attach the face portion to the aft body.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 9, and 10 of copending Application No. 18/501959 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of Application 18/501959 does not claim the sole being thicker than the crown. Though not in claim 1 of Application 18/501959, claim 9 of Application 18/501959 claims the sole being thicker than the crown. Based on the above, one having ordinary skill in the art would have found claim 1 of the instant application to be obvious over Application 18/501959.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 13 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/501959 in view of Stevens et al. (US 2005/0026714). Application 18/501959 claims the same subject matter except for the ledges on the crown and sole portions. Stevens et al. discloses a club head having an aft body with ledges 62a and 64a along the perimeter of the crown and sole (See Figures 7 and 8). The ledge facilitates attachment of a face portion to the aft body to assemble the club head. One having ordinary skill in the art would have found it obvious to have ledges on the crown and sole portions, as taught by Stevens et al., in order to attach the face portion to the aft body.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 4-12 and 14-20 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