DETAILED ACTION
This Office action is responsive to communication received 02/20/2024 – application papers received; and 08/15/2024 – IDS.
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
This application is a CON of 17/645,510 12/22/2021 PAT 11904217 which is a CON of 16/724,021 12/20/2019 PAT 11213725 which claims benefit of 62/783,957 12/21/2018 and is a CIP of 16/543,356 08/16/2019 PAT 11491375 which is a CON of 16/104,835 08/17/2018 PAT 10413788 which is a CIP of 15/656,340 07/21/2017 PAT 10232232 and claims benefit of 62/547,524 08/18/2017 and said 15/656,340 07/21/2017 claims benefit of 62/517,104 06/08/2017 and claims benefit of 62/515,363 06/05/2017 and claims benefit of 62/365,911 07/22/2016 and is a CIP of 15/354,697 11/17/2016 PAT 10300349 which is a CON of 14/710,420 05/12/2015 PAT 9555294 which is a CON of 14/093,967 12/02/2013 PAT 9168432 which claims benefit of 61/775,982 03/11/2013 and is a CIP of 13/536,753 06/28/2012 PAT 8608587 which claims benefit of 61/651,392 05/24/2012 and claims benefit of 61/553,428 10/31/2011.
Drawings
The drawings were received on 02/20/2024. These drawings are acceptable.
Information Disclosure Statement
The IDS of 08/15/2024 includes Cite No. 50, identified as Patent Number 10354477, with an Issue Date of 2019-07-16 and a Name of Patentee of Magno, and titled “Beverage Vending Machine”. The relevance of this citation to the claimed invention is not readily understood. This prior art document has been ‘considered’ only to the extent that the Patent Number, Issue Date, and Name of Patentee provided on the IDS match the PTO records.
Status of Claims
Claims 1-20 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections - Minor
Claims 14 and 20 are objected to because of the following informalities:
As to claim 14, line 1, after “apex”, the phrase --of each ridge of the plurality of ridges--should be inserted for consistency throughout the claims.
As to claim 20, line 2, after “ridges” (first occurrence), the phrase --of the plurality of ridges-- should be inserted for consistency throughout the claims. In line 3, after “ridge”, the phrase --of the plurality of ridges-- should be inserted for consistency throughout the claims. In line 6, after “each” (first occurrence), the term --of-- should be inserted. Also, the formatting of the last two lines in claim 20 may lead to confusion in that it is not clear if language is missing from the claim. While the sentence structure appears complete, the uncharacteristic spacing and placement of the last line “pair of ridges that define the space.” currently located in the middle of the line should simply be adjusted/corrected. 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.
Claim 8 is 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 8, line 1, “the ridge length” lacks proper antecedent basis.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Here, claim 16 depends from claim 15. It is noted that claim 15 depends from claim 14, which depends from claim 13 and wherein claim 13 already sets forth the limitation “wherein the ridge apex of each ridge of the plurality of ridges is positioned within a first 50% of a ridge length”. Claim 13 depends from claim 12, which depends from independent claim 11. Thus, the invention defined by claim 15 already includes all of the limitations of claims 11, 12, 13, 14 and 15. The limitations in claim 16 recite the exact same limitation as claim 13, and thus claim 16 does not further limit the invention of claim 15.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Applicant’s attention is directed to the following rejections based upon nonstatutory double patenting and referencing nine (9) prior patents, including USPNs 11904217; 10232232; 9555294; 9168432; 8608587; 10413788; 11491375; 11213725; and 12161919.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,904,217 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences, or differences in the arrangement of phrases within the claims and/or represent obvious variations over the prior patent.
As to independent claim 1, the claims of the prior ‘217 patent do not require that the crown insert is “formed from a composite material”. Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 prior ‘217 patent by providing composite material for the construction of the crown insert for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance. Regarding the remaining limitations in claim 1, see claim 1 of the ‘217 patent.
As to claims 2-4, see claim 1 of the ‘217 patent.
As to claim 5, see claim 2 of the ‘217 patent.
As to claim 6, see claim 3 of the ‘217 patent.
As to claim 7, see claim 4 of the ‘217 patent.
As to claim 8, see claim 5 of the ‘217 patent.
As to claim 9, see claim 9 of the ‘217 patent.
As to claim 10, see claim 8 of the ‘217 patent.
Claims 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,904,217 in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences, or differences in the arrangement of phrases within the claims and/or represent obvious variations over the prior patent.
As to independent claim 11, the claims of the ‘217 patent, on one hand, are more specific than the instant claims. For example, the claims of the ‘217 patent further require “the crown further comprises a crown apex; the crown further comprises a length measured from the face portion to the rear portion: the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head” (i.e., see claim 11 of the ‘217 patent). On the other hand, the claims of the ‘217 patent lack the now-required features “at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material”. As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘217 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
As to claims 12-14, see claim 11 of the ‘217 patent.
As to claim 15, see claim 12 of the ‘217 patent.
As to claim 16, see claim 11 of the ‘217 patent.
As to claim 17, see claim 14 of the ‘217 patent.
As to claim 18, see claim 18 of the ‘217 patent.
As to claim 19, see claim 17 of the ‘217 patent.
As to claim 20, see claim 20 of the ‘217 patent.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,232,232 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
As to independent claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘232 patent are, on one hand, more specific than the instant claims. For example, the ‘232 patent claims require either “a curved surface”, “a concave curvature”, “a convex curvature” or “a planar surface” for the top surface of the ridges. On the other hand, the claims of the ‘232 patent lack the features found in claim 1, specifically “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head; the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”.
Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed device in the ‘232 patent by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in the ‘232 patent by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
Here, Burnett teaches that the location of the crown apex plays an important part in the aerodynamic performance of the club head. The location of the crown apex is generally dependent upon the curvature of the crown from the rear end to the front end. See paragraphs [0057] and [0058] in Burnett. In view of the publication to Burnett, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to locate the crown apex of the claimed device in the ‘232 patent rearwardly of the face plane in order to assist in creating more desirable airflow across the crown surface.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,232,232 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, the claims of the ‘232 patent lack the additional features in instant claim 11, specifically “a crown insert comprising a top surface and a bottom surface”… with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material; and the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”.
As for integrally forming the plurality of ridges on the top surface of the crown insert, see the explanation under claim 1 above, with consideration of the teaching in Solheim.
As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘232 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Here, the skilled artisan would have found it obvious to further modify the claimed device of the ‘232 patent, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of USPN 9,555,294 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
As to independent claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘294 patent are, on one hand, more specific than the instant claims. For example, the ‘294 claims require a height for the crown turbulator as well as a curved configuration for the turbulator. On the other hand, the claims of the ‘294 patent lack the features found in claim 1, specifically “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head; the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”.
Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed device in the ‘294 patent by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in the ‘294 patent by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
Here, Burnett teaches that the location of the crown apex plays an important part in the aerodynamic performance of the club head. The location of the crown apex is generally dependent upon the curvature of the crown from the rear end to the front end. See paragraphs [0057] and [0058] in Burnett. In view of the publication to Burnett, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to locate the crown apex of the claimed device in the ‘294 patent rearwardly of the face plane in order to assist in creating more desirable airflow across the crown surface.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of USPN 9,555,294 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, the claims of the ‘294 patent lack the additional features in instant claim 11, specifically “a crown insert comprising a top surface and a bottom surface” … with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material; and the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”.
As for integrally forming the plurality of ridges on the top surface of the crown insert, see the explanation under claim 1 above, with consideration of the teaching in Solheim.
As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘294 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Here, the skilled artisan would have found it obvious to further modify the claimed device of the ‘294 patent, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of USPN 9,168,432 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
As to independent claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘432 patent are, on one hand, more specific than the instant claims. For example, the ‘432 claims require a plurality of grooves on the sole. On the other hand, the claims of the ‘432 patent lack the features found in claim 1, specifically “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head; the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”.
Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed device in the ‘432 patent by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in the ‘432 patent by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
Here, Burnett teaches that the location of the crown apex plays an important part in the aerodynamic performance of the club head. The location of the crown apex is generally dependent upon the curvature of the crown from the rear end to the front end. See paragraphs [0057] and [0058] in Burnett. In view of the publication to Burnett, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to locate the crown apex of the claimed device in the ‘432 patent rearwardly of the face plane in order to assist in creating more desirable airflow across the crown surface.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of USPN 9,168,432 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, the claims of the ‘432 patent lack the additional features in instant claim 11, specifically “a crown insert comprising a top surface and a bottom surface” … with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material; and the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”.
As for integrally forming the plurality of ridges on the top surface of the crown insert, see the explanation under claim 1 above, with consideration of the teaching in Solheim.
As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘432 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Here, the skilled artisan would have found it obvious to further modify the claimed device of the ‘432 patent, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of USPN 8,608,587 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
As to independent claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘587 patent are, on one hand, more specific than the instant claims. For example, the ‘587 claims require a plurality of turbulators on the sole. On the other hand, the claims of the ‘587 patent lack the features found in claim 1, specifically “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head; the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”.
Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed device in the ‘587 patent by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in the ‘587 patent by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
Here, Burnett teaches that the location of the crown apex plays an important part in the aerodynamic performance of the club head. The location of the crown apex is generally dependent upon the curvature of the crown from the rear end to the front end. See paragraphs [0057] and [0058] in Burnett. In view of the publication to Burnett, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to locate the crown apex of the claimed device in the ‘587 patent rearwardly of the face plane in order to assist in creating more desirable airflow across the crown surface.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of USPN 8,608,587 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, the claims of the ‘587 patent lack the additional features in instant claim 11, specifically “a crown insert comprising a top surface and a bottom surface”… with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material; and the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”.
As for integrally forming the plurality of ridges on the top surface of the crown insert, see the explanation under claim 1 above, with consideration of the teaching in Solheim.
As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘587 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Here, the skilled artisan would have found it obvious to further modify the claimed device of the ‘587 patent, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,413,788 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
As to independent claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘788 patent are, on one hand, more specific than the instant claims. For example, the ‘788 patent claims require that each ridge of the plurality of ridges includes at least two angled planar surfaces. On the other hand, the claims of the ‘788 patent lack the features found in claim 1, specifically “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head; the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”.
Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed device in the ‘788 patent by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in the ‘788 patent by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
Here, Burnett teaches that the location of the crown apex plays an important part in the aerodynamic performance of the club head. The location of the crown apex is generally dependent upon the curvature of the crown from the rear end to the front end. See paragraphs [0057] and [0058] in Burnett. In view of the publication to Burnett, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to locate the crown apex of the claimed device in the ‘788 patent rearwardly of the face plane in order to assist in creating more desirable airflow across the crown surface.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,413,788 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, the claims of the ‘788 patent lack the additional features in instant claim 11, specifically “a crown insert comprising a top surface and a bottom surface” … with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material; and the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”.
As for integrally forming the plurality of ridges on the top surface of the crown insert, see the explanation under claim 1 above, with consideration of the teaching in Solheim.
As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘788 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Here, the skilled artisan would have found it obvious to further modify the claimed device of the ‘788 patent, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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).
Claim 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,491,375 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
As to independent claim 1, the difference between the instant claims and the claims of the ‘375 patent is that the claims of the ‘375 patent lack the features found in instant claim 1, specifically “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head; the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”.
Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed device in the ‘375 patent by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in the ‘375 patent by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
As to claims 2-3, see claim 1 of the ‘375 patent.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,491,375 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, the claims of the ‘375 patent lack the additional features in instant claim 11, specifically “a crown insert comprising a top surface and a bottom surface”… with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material; and the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”.
As for integrally forming the plurality of ridges on the top surface of the crown insert, see the explanation under claim 1 above, with consideration of the teaching in Solheim.
As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘375 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Here, the skilled artisan would have found it obvious to further modify the claimed device of the ‘375 patent, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,213,725 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
As to independent claim 1, the difference between the instant claims and the claims of the ‘725 patent is that the claims of the ‘725 patent lack the features found in instant claim 1, specifically “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head; the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”.
Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed device in the ‘725 patent by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in the ‘725 patent by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
As to claims 2-4, see claim 1 of the ‘725 patent.
Claims 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,4213,725 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, the claims of the ‘725 patent lack the additional features in instant claim 11, specifically “a crown insert comprising a top surface and a bottom surface” … with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material; and the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”.
As for integrally forming the plurality of ridges on the top surface of the crown insert, see the explanation under claim 1 above, with consideration of the teaching in Solheim.
As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘725 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Here, the skilled artisan would have found it obvious to further modify the claimed device of the ‘725 patent, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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).
As to claims 12-14, see claim 13 (dependent upon claim 11) of the ‘725 patent.
Claim 1-3 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 12,161,919 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
As to independent claim 1, the difference between the instant claims and the claims of the ‘919 patent is that the claims of the ‘919 patent lack the features found in instant claim 1, specifically “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head; the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”.
Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed device in the ‘919 patent by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in the ‘919 patent by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
As to claim 2, see claim 1 of the ‘919 patent.
As to claim 3, see claim 4 of the ‘919 patent.
As to claim 10, see claim 8 of the ‘919 patent.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 12,161,919 in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, the claims of the ‘919 patent lack the additional features in instant claim 11, specifically “a crown insert comprising a top surface and a bottom surface”… with a plurality of ridges “integrally formed on the top surface of the crown insert”… and “the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material; and the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”.
As for integrally forming the plurality of ridges on the top surface of the crown insert, see the explanation under claim 1 above, with consideration of the teaching in Solheim.
As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head of the ‘919 patent by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Here, the skilled artisan would have found it obvious to further modify the claimed device of the ‘919 patent, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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).
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, 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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,360,900 to Snyder in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”).
Reference is made to annotated FIG. 6A of Snyder, shown below:
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As to independent claim 1, Snyder shows a golf club head comprising: a crown, a sole, a toe end, a heel end, a face portion defining a loft plane, a rear portion, and a leading edge between the face portion and the crown; and a plurality of turbulators including a plurality of ridges disposed on the crown, wherein each ridge of the plurality of ridges includes: a base positioned directly adjacent to the crown; a top surface opposite the base of the ridge; a ridge apex defined as a maximum height of the ridge measured in a direction perpendicular from the base of the ridge; a front surface comprises a first end closest to the face portion and a second end closest to the ridge apex; and a rear surface defining a portion of the ridge being closest to the rear portion of the golf club head, extending from behind the ridge apex towards the rear portion of the club head.
Snyder lacks the features “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”. Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Snyder by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, 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 device in Snyder by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
Snyder also lacks the feature “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head”. Here, Burnett teaches that the location of the crown apex plays an important part in the aerodynamic performance of the club head. The location of the crown apex is generally dependent upon the curvature of the crown from the rear end to the front end. See paragraphs [0057] and [0058] in Burnett. In view of the publication to Burnett, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to locate the crown apex of the Snyder device rearwardly of the face plane in order to assist in creating more desirable airflow across the crown surface.
Claims 2-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,360,900 to Snyder in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”) and also in view of US PUBS 2013/0109494 to Henrikson et al (hereinafter referred to as “Henrikson”).
As to claim 2, Snyder, as modified by Solheim and Burnett, lacks an explicit teaching of positioning the identified turbulators “in a forward two-fifths of the length of the crown”. Here, Henrikson shows it to be old in the art to position a set of turbulators within a forwardmost portion of the crown (i.e., FIG. 30 in Henrikson shows turbulators 403 clearly located completely within a forward two-fifths of the length of the crown) in order to create a turbulent wake and reduce the speed of the club head during a swing (i.e. see paragraph [0057] in Henrikson). In view of the teaching in Henrikson, it would have been obvious to modify the club head in Burnett by arranging the identified turbulators to be situated completely within a forward two-fifths of the length of the crown, the motivation being to provide a particular boundary layer effect.
As to claim 3, Snyder shows that an apex of the ridge is positioned within a first 50% of a ridge length (i.e., see annotated FIG. 6 under claim 1, above).
As to claim 5, Solheim obviates placement of the crown insert to sit flush with the crown to create a smooth and continuous surface. Again, see col. 32, line 61 through col. 33, line 15 and FIGS. 41-43 in Solheim.
As to claim 6, FIGS. 6A and 6B in Snyder show that the ridges extend in a direction substantially perpendicular to the face portion.
As to claim 7, Solheim obviates attachment of the crown inset to the recess via adhesive. Again, see col. 32, line 61 through col. 33, line 15 and FIGS. 41-43 in Solheim.
As to claim 8, the ridge length in a front-to-rear-direction is substantially greater than a ridge width in a heel-to-toe direction. Again, see FIG. 6A in Snyder.
As to claim 9, FIG. 6C in Snyder clearly shows that the first end of the front surface of the ridge is positioned on the leading edge. Also, note col. 8, lines 36-43.
As to claims 10, Snyder shows at least two ridges. See each of FIGS. 6A-6F.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,360,900 to Snyder in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”).
As to independent claim 11, Snyder shows a golf club head comprising: a crown, a sole, a toe end, a heel end, a face portion defining a loft plane, a rear portion, and a leading edge between the face portion and the crown; and a plurality of turbulators including a plurality of ridges disposed on the crown, wherein each ridge of the plurality of ridges includes: a base positioned directly adjacent to the crown; a top surface opposite the base of the ridge; a ridge apex defined as a maximum height of the ridge measured in a direction perpendicular from the base of the ridge; a front surface comprises a first end closest to the face portion and a second end closest to the ridge apex; and a rear surface defining a portion of the ridge being closest to the rear portion of the golf club head, extending from behind the ridge apex towards the rear portion of the club head. See annotated FIG. 6A above, below:
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Snyder lacks the features “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the crown insert is configured to be received by a recess in the crown”….”at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material”. Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Snyder by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, 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 club head in Snyder by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Snyder, as modified by Solheim and Onoda, also lacks the feature “the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”. Here, the skilled artisan would have found it obvious to further modify the Snyder device, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved 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 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,360,900 to Snyder in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”) and also in view of US PUBS 2013/0109494 to Henrikson et al (hereinafter referred to as “Henrikson”).
As to claim 12, Snyder, as modified by Solheim and Onoda, lacks an explicit teaching of positioning the identified turbulators “in a forward two-fifths of the length of the crown”. Here, Henrikson shows it to be old in the art to position a set of turbulators within a forwardmost portion of the crown (i.e., FIG. 30 in Henrikson shows turbulators 403 clearly located completely within a forward two-fifths of the length of the crown) in order to create a turbulent wake and reduce the speed of the club head during a swing (i.e. see paragraph [0057] in Henrikson). In view of the teaching in Henrikson, it would have been obvious to modify the club head in Burnett by arranging the identified turbulators to be situated completely within a forward two-fifths of the length of the crown, the motivation being to provide a particular boundary layer effect.
As to claim 13, Snyder shows that an apex of the ridge (i.e., see annotated FIG. 6 under claim 1, above) is positioned within a first 50% of a ridge length.
Further Notes on Double Patenting
Applicant is respectfully urged to maintain a clear line of demarcation between the instant claim set and the claims in each of the further, related applications and prior patents listed herein below. While no double patenting rejections based on the copending applications and 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 copending application and 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 related applications and 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 any of the applications and/or USPNs listed hereinbelow conflict, or do not conflict, with the claims of the instant application.
Application Serial Nos: 18/484248; and 18/972556
USPNs: 11141631; 11058930; 10300349; 10543408; 11779818 and 10695625
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711