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 Objections
Applicant is advised that should claims 39 and 43 be found allowable, claims 41 and 45 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 26-29 and 36-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8-20 of U.S. Patent No. 11951365. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent 11951365 does not claim the thickness of the striking face. Though not in claim 1 of US Patent 11951365, claim 3 of US Patent 11951365 claims the central region having a variable thickness where the maximum thickness is no more than 3.4mm. Claim 1 of US Patent 11951365 claims the striking face having a central region, which implies, based on claim 3 of US Patent 11951365, the striking face has a maximum thickness of no more than 3.4mm. In light of the above, one having ordinary skill in the art would have found claim 26 of the instant application obvious over claims 1 and 3 of US Patent 11951365. Claim 17 of US Patent 11951365 does not claim the thickness of the striking face. Though not in claim 17 of US Patent 11951365, claim 18 of US Patent 11951365 claims the central region having a variable thickness where the maximum thickness is no more than 3.4mm. Claim 17 of US Patent 11951365 claims the striking face having a central region, which implies, based on claim 18 of US Patent 11951365, the striking face has a maximum thickness of no more than 3.4mm and a minimum thickness of no less than 1.4mm. In light of the above, one having ordinary skill in the art would have found claim 46 of the instant application obvious over claims 17 and 18 of US Patent 11951365. Claims 1, 3, and 4 also apply to claim 46 of the instant application.
Claim 26-29 and 36-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7, 9, 12, 13, 16, 17, and 19-22 of U.S. Patent No. 11458374. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent 11458374 does not claim the striking face being welded, the face area of the unsupported portion, and the thickness of the striking face. Though not in claim 1 of US Patent 11458374, claims 4, 7, and 20 all claim these limitations. In light of the above, claim 26 of the instant application is considered obvious over claims 1, 4, 7, and 20 of US Patent 11458374. Claims 1, 4, 7, and 19 applies to claim 46 of the instant application as claim 19 of US Patent 11458374 claims a unitary casted body.
Claims 30-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8-20 of U.S. Patent No. 11951365 in view of Demkowski et al. (US 2018/0185717). US Patent 11951365 claims the same subject matter except for the striking face having a sole wrap. Demkowski et al. disclose a club head having a striking face having a sole wrap (See Figure 8). In addition, Figure 10 shows the sole wrap having a thickness less than the maximum thickness of the striking face. One having ordinary skill in the art would have found it obvious to have sole wrap on the striking face, as taught by Demkowski et al., in order to improve the COR of the club head.
Claims 30-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7, 9, 12, 13, 16, 17, and 19-22 of U.S. Patent No. 11458374 in view of Demkowski et al. (US 2018/0185717). US Patent 11458374 claims the same subject matter except for the striking face having a sole wrap. Demkowski et al. disclose a club head having a striking face having a sole wrap (See Figure 8). In addition, Figure 10 shows the sole wrap having a thickness less than the maximum thickness of the striking face. One having ordinary skill in the art would have found it obvious to have sole wrap on the striking face, as taught by Demkowski et al., in order to improve the COR of the club head.
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