DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4, 5, 7, 11, 12, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakamoto (JP 2019-42192).
Regarding claim 1, Sakamoto disclose a club head having a striking face 1-2, topline 6, sole 5, heel, toe, hosel 7, back wall 1-1, weight member 10, and fastener 11. The back wall extends in a heel-toe direction and includes an elongated channel in the same direction as the back wall. The weight member is located in the elongated channel wherein, in an unlock configuration, the weight is permitted to move within the elongated channel, and, in a locked configuration, the fastener prevents movement of the weight member within the elongated channel (See Figures 1-4).
Regarding claim 4, Sakamoto discloses an opening 2-1 in communication with the elongated channel wherein the opening is configured to allow a tool to engage the fastener.
Regarding claim 5, Sakamoto discloses a plurality of the openings set forth above regarding claim 4.
Regarding claim 7, Sakamoto discloses the back wall having slots on the toe and heels ends wherein the weight member is removeable through (See Figure 1).
Regarding claim 11, see the above regarding claim 1. In addition, Sakamoto discloses the weight being positioned at various locations within the elongated channel (See Figure 1).
Regarding claim 12, see the above regarding claim 1.
Regarding claim 13, see the above regarding claim 4.
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) 2, 9, 10, 14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto (JP ) in view of Ye (CN 109126070).
Regarding claim 2, Sakamoto does not disclose the if the weight member has a threaded interior. Ye discloses a club head having a weight member in the back wall secured by a fastener. Figure 5 of Ye shows the fastener having a threaded exterior and the weight member having a threaded interior. One having ordinary skill in the art would have found it obvious to have the fastener and the interior of the weight member threaded, as taught by Ye, in order to secure the weight member to the club head.
Regarding claim 9, Sakamoto does not disclose the elongated channel in the rearmost portion of the back wall. Ye discloses a club head having an elongated channel within the rearmost portion of the back wall (See Figures 2 and 3). One having ordinary skill in the art would have found it obvious to have the elongated channel in the rearmost portion of the back wall, as taught by Ye, in order to lower the center of gravity of the club head.
Regarding claim 10, Sakamoto discloses a plurality of the discrete openings in an elongated channel, however, the elongated channel is not on the rearmost portion of the back wall. Ye discloses a club head having an elongated channel within the rearmost portion of the back wall (See Figures 2 and 3). One having ordinary skill in the art would have found it obvious to have the elongated channel in the rearmost portion of the back wall, as taught by Ye, in order to lower the center of gravity of the club head. Based on the combination, one having ordinary skill in the art would have found it obvious to have the openings in the elongated channel in order to secure the weight member to the elongated channel.
Regarding claim 14, see the above regarding claim 10.
Regarding claim 15, see the above regarding claim 10.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 4, 5, 7, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 8 of U.S. Patent No. 12527997 in view of Sakamoto (JP 2019-42192). US Patent 12527997 claims a striking face, elongate channel, weight member, and fastener but does not claim a topline, heel, toe, hosel and the elongate channel in a back wall. Sakamoto discloses an iron-type club head having a striking face, topline, toe, heel, hosel, and back wall wherein an elongate channel is within the back wall in which a weight member is inserted. One having ordinary skill in the art would have found it obvious to have the above configuration, as taught by Sakamoto, in order to make an adjustable weighted iron-type club head.
Claims 1, 4, 5, 7, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, and 18 of U.S. Application. 18/422621 in view of Sakamoto (JP 2019-42192). US Application 18/422621 claims a striking face, elongate channel, weight member, and fastener but does not claim a topline, heel, toe, hosel and the elongate channel in a back wall. Sakamoto discloses an iron-type club head having a striking face, topline, toe, heel, hosel, and back wall wherein an elongate channel is within the back wall in which a weight member is inserted. One having ordinary skill in the art would have found it obvious to have the above configuration, as taught by Sakamoto, in order to make an adjustable weighted iron-type club head.
This is a provisional non-statutory double patenting rejection.
Claims 1, 4, 5, 7, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 15 of U.S. Patent No. 11925841 in view of Sakamoto (JP 2019-42192). US Patent 11925841 claims a striking face, elongate channel, weight member, and fastener but does not claim a topline, heel, toe, hosel and the elongate channel in a back wall. Sakamoto discloses an iron-type club head having a striking face, topline, toe, heel, hosel, and back wall wherein an elongate channel is within the back wall in which a weight member is inserted. One having ordinary skill in the art would have found it obvious to have the above configuration, as taught by Sakamoto, in order to make an adjustable weighted iron-type club head.
Allowable Subject Matter
Claims 3, 6, 8, and 16-20 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/ALVIN A HUNTER/Primary Examiner, Art Unit 3711