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 .
Specification
The disclosure is objected to because of the following informalities:
Paragraphs 0091 to 0111 make reference to claims and should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 9 and 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.
Claim 9 recites the limitation "the x-axis" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the y-axis" in line 2. There is insufficient antecedent basis for this limitation in the claim.
In regards to claims 9 and 10, Applicant has not outlined what direction the x and y axes extend in; therefore, claims 9 and 10 are indefinite. For examination purposes, the x-axis will be interpreted as extending in the direction of the heel and toe and the y-axis will be interpreted as extending in the direction of the crown and sole.
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) 1-3, 7, 11-13, 16, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsunaga (USPN 7614964).
Regarding claim 1, Matsunaga discloses a club head having a face. The face has a thickness, striking surface and back surface opposite the striking surface. The back surface includes a perimeter region 10 and 15, transition region, intermediate region 11, and elliptical central region 9. The perimeter region has a constant perimeter thickness and extends inward from the outer edge of the striking surface toward a perimeter boundary wherein the perimeter boundary define the locations on the face where the thickness of the face deviates from the constant perimeter thickness. The transition region (area between element 11 and 10) includes a varying transition thickness and extends inward from the perimeter boundary toward a transition boundary wherein the transition boundary define the locations on the face where the thickness of the face deviates from the varying transition thickness (See Figure 8). The intermediate region comprises a constant intermediate thickness and extends inward from the transition boundary toward an intermediate boundary wherein the intermediate boundary define the locations on the face where the thickness of the face deviates from the constant intermediate thickness. The elliptical central region 9a and 9b encompassing a geometric center of the face and having a varying central thickness extending inward from the intermediate boundary toward a geometric center of the elliptical central region. The constant intermediate thickness is a minimum thickness of the face and the varying central thickness is a maximum thickness of the face. Figure 6 shows the intermediate region stretching to the perimeter edge in locations which implies that the perimeter region is discontinuous along the perimeter in certain locations to form perimeter region zones 15. The applicant does not disclose why the perimeter zones accounting for greater that 60% is critical in order to attain the invention. Matsunaga notes that the construction allows for increase durability while also improving rebound performance (See Summary of the Invention). Applicant does note that the perimeter zones are present in amounts of 1-10. Matsunaga show in Figures 2, 5, and 6 the face having 6 perimeter zones which is within the limits set forth by the applicant. In light of the above, one having ordinary skill in the art would have found Matsunaga to meet the 60% occupancy of the face for the perimeter zones. In addition, one having ordinary skill in the art would have found it obvious to have perimeter zones to occupy any percentage of the face so long as durability is improved without sacrificing rebound performance.
Regarding claim 2, Matsunaga discloses the constant perimeter thickness being 2 to 5mm, 0.08 to 0.2 inch (See Column 3, lines 55 through 64).
Regarding claim 3, see the above regarding claim 2.
Regarding claim 7, Matsunaga discloses the constant perimeter thickness being greater than the constant intermediate thickness and less than the varying central thickness.
Regarding claim 11, Matsunaga discloses the intermediate region extending discontinuously around the perimeter boundary forming one or more intermediate region zones. The applicant does not disclose why the intermediate zones accounting for greater that 50% is critical in order to attain the invention. Matsunaga notes that the construction allows for increase durability while also improving rebound performance (See Summary of the Invention). Applicant does note that the perimeter zones are present in amounts of 1-5. Matsunaga show, in Figures 2, 5, and 6, the face having 6 intermediate zones; however, in another embodiment, the intermediate zones are shows to be in numbers of 4 (See Figure 18). In light of the above, one having ordinary skill in the art would have found Matsunaga to meet the 50% occupancy of the face for the intermediate zones. In addition, one having ordinary skill in the art would have found it obvious to have intermediate zones to occupy any percentage of the face so long as durability is improved without sacrificing rebound performance.
Regarding claim 12, Matsunaga discloses the thickness of the perimeter region being greater than the thickness of the intermediate region but less than the thickness of the elliptical region (See Figure 6).
Regarding claim 13, see the above regarding claim 1 and 11.
Regarding claim 16, Matsunaga discloses the maximum face thickness being 1.6 to 4mm, or 0.06 to 0.16 inch (See Column 4, lines 11 through 16).
Regarding claim 18, Matsunaga discloses the intermediate region zones having a thickness less than the perimeter region zones.
Regarding claim 19, see the above regarding 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-19 of U.S. Patent No. 11850480. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent 11850480 does not claim the perimeter zones discontinuously extending greater than 60% around the perimeter. Though not in claim 1 of US Patent 11850480, claim 12 of US Patent 11850480 meets this limitation. In light of the above, one having ordinary skill in the art would have found claim 1 of the instant application to be obvious over claims 1 and 12 of US Patent 11850480.
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