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 –
Claim(s) 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harrington et al. (US 2018/0272198).
Regarding claim 15, Harrington et al. discloses a club head having a striking face 312, back portion, topline 104, heel portion 108, toe portion 106, hosel 110 for receiving a shaft, center portion, sole 102, leading edge 220, and trailing edge. 222 The striking face is located at a frontal portion of the club head and has a plurality of scorelines 314. The back portion is located opposite the striking face. The topline is located at an upper portion of the club head. The heel portion is located at a proximal end of the club head. The hosel is located adjacent the heel portion and the topline and defines a longitudinal axis. The toe portion is located at a distal end of the club head opposite the heel portion. The center portion is located in between the heel portion and toe portion. The sole is located at a lower portion of the club head opposite the topline. The leading edge is adjacent the striking face and the sole and the trailing edge is adjacent the back portion and the sole. The sole includes a camber radius that is measured from the leading edge to the trailing edge and changes from the toe portion to the heel portion. Harrington et al. also discloses the sole radius changing from the toe portion to the heel portion (See Paragraph 0037). In the instant case, the camber radius is also the radius of curvature of the sole.
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, 5-15, 19, 20-23, 27, and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11931629. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent 11931629 does not claim the bounce angle changing from the toe portion to the heel portion. Though not in claim 1 of US Patent 11931629, claim 2 of US 11931629 meets this limitation. In light of the above, one having ordinary skill in the art would have found claim 1 of the instant application to be obvious over claims 1 and 2 of US 11931629. Claim 15 of instant application does not claim the camber radius progressively decreasing from the toe portion to the heel portion. Though not in claim 15 of the instant application, the limitations of claim 15 of the instant application are encompassed by claim 12 of US Patent 11931629. Based on the above, claim 15 of the instant application is anticipated by claim 12 of US Patent 11931629. Claim 23 of the instant application does not claim the bounce angle progressively decreasing from the toe portion to the heel portion. Though not in claim 23 of US Patent 11931629, the limitations are encompassed by claim 17 of US Patent 11931629. In light of the above, claim 23 is anticipated by claim 17 of US Patent 11931629.
Allowable Subject Matter
Claims 2-4, 16-18, 24-26, 29, and 30 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN A HUNTER whose telephone number is (571)272-4411. The examiner can normally be reached on Monday through Friday from 7:30AM to 4:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached at telephone number 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALVIN A HUNTER/Primary Examiner, Art Unit 3711