DETAILED ACTION
This Office action is responsive to communication received 03/14/2024 – application papers received, including power of attorney (2 statements), and IDS; 06/10/2024 – preliminary amendment; 10/14/2024 – preliminary amendment and 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 16/352,537 03/13/2019 PAT 11964191 which is a CON of 16/046,106 07/26/2018 ABN which is a CON of 15/197,551 06/29/2016 PAT 10052530 which claims benefit of 62/185,882 06/29/2015.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the method of counteracting a lateral dispersion tendency of a golf club head arrangement (claims 36-41) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Status of Claims
Claims 1-20 have been canceled, as directed.
Claims 21-41 remain pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections – (Minor)
Claim 21-23, 36 and 37 are objected to because of the following informalities:
As to claim 21, line 11, “(SAPFA25H)” should read --(SAPFA25H)-- for consistency with the language used in the specification.
As to claim 21, line 13, “(SAPFA25T)” should read --(SAPFA25T)-- for consistency with the language used in the specification.
As to claim 22, line 3, “(SAPFA25H)” should read --(SAPFA25H)-- for consistency with the language used in the specification.
As to claim 22, line 5, “(SAPFA25T)” should read --(SAPFA25T)-- for consistency with the language used in the specification.
As to claim 23, line 3, “(SAPFA25H)” should read --(SAPFA25H)-- for consistency with the language used in the specification.
As to claim 23, line 5, “(SAPFA25T)” should read --(SAPFA25T)-- for consistency with the language used in the specification.
As to claim 36, line 14, “(SAPFA25H)” should read --(SAPFA25H)-- for consistency with the language used in the specification.
As to claim 36, line 16, “(SAPFA25T)” should read --(SAPFA25T)-- for consistency with the language used in the specification.
As to claim 36, line 32, “(SAPFA25H)” should read --(SAPFA25H)-- for consistency with the language used in the specification.
As to claim 36, line 34, “(SAPFA25T)” should read --(SAPFA25T)-- for consistency with the language used in the specification.
As to claim 37, line 14, “(SAPFA25H)” should read --(SAPFA25H)-- for consistency with the language used in the specification.
As to claim 37, line 16, “(SAPFA25T)” should read --(SAPFA25T)-- for consistency with the language used in the specification.
As to claim 37, line 35, “(SAPFA25H)” should read --(SAPFA25H)-- for consistency with the language used in the specification.
As to claim 37, line 37, “(SAPFA25T)” should read --(SAPFA25T)-- for consistency with the language used in the specification.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 36-41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 36-41, there is no description whatsoever as to a method of counteracting a lateral dispersion tendency of a golf club head arrangement, which includes all of the steps set forth in claims 36-41.
Specifically, there is no description whatsoever of the following claimed subject matter:
Claim 36: “measuring the lateral dispersion tendency of the golf club head arrangement, wherein the lateral dispersion tendency indicates an average dispersion from a center target line, wherein a positive lateral dispersion tendency is the average dispersion right of the center target line and a negative lateral dispersion tendency is the average dispersion left of the center target line; adjusting the primary alignment feature to provide an adjusted primary alignment feature to counteract the lateral dispersion tendency of the golf club head arrangement; and incorporating the adjusted primary alignment feature into the golf club head, the adjusted primary alignment feature having: a second Sight Adjusted Perceived Face Angle (SAPFA) of from about -2 to about 10 degrees; a second Sight Adjusted Perceived Face Angle 25 mm Heelward (SAPFA25H) of from about -5 to about 2 degrees; a second Sight Adjusted Perceived Face Angle 25 mm Toeward (SAPFA25T) of from 0 to about 9 degrees; and a second Radius of Curvature (circle fit) of from about 300 to about 1000 mm”
Claim 37: “measuring the lateral dispersion tendency of the golf club head, wherein the lateral dispersion tendency indicates an average dispersion from a center target line, wherein a positive lateral dispersion tendency is the average dispersion right of the center target line and a negative lateral dispersion tendency is the average dispersion left of the center target line; based on the measured lateral dispersion tendency of the golf club head, determining one or more adjustments to the primary alignment feature to counteract the measured lateral dispersion tendency; based on the determined one or more adjustments, providing a golf club head having a second golf club head arrangement incorporating the one or more adjustments to counteract the measured lateral dispersion tendency, the second golf club head arrangement having a primary alignment feature having: a second Sight Adjusted Perceived Face Angle (SAPFA) of from about -2 to about 10 degrees; a second Sight Adjusted Perceived Face Angle 25 mm Heelward (SAPFA25H) of from about -5 to about 2 degrees; a second Sight Adjusted Perceived Face Angle 25 mm Toeward (SAPFA25T) of from 0 to about 9 degrees; and a second Radius of Curvature (circle fit) of from about 300 to about 1000 mm”
Claims 38-41: none of the claimed subject matter is described in the specification, including all of the particulars of “the determined one or more adjustment comprises…” as set forth in claim 38, along with all of the particulars associated with the claimed arrangement of any “second golf club head component”, as set forth in claims 39-41.
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.
Applicant’s attention is directed to the following rejections based upon nonstatutory double patenting and referencing four (4) distinct prior patents, including: USPNs 10391369; 10052530; 10300351; and 12005322.
Claims 21-23, 29-31 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of USPN 10,391,369.
For double patenting to exist as between the rejected claims and patent claims 1-19, it must be determined that the rejected claims are not patentably distinct from patent claims 1-19. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims 1-19 and, if so, whether those differences render the claims patentably distinct.
Specific to claims 21-23, 29-31 and 34, it is clear that substantially all the elements of instant claims 21-23, 29-31 and 34 are to be found in patent claims 1-19. The difference between instant claims 21-23, 29-31 and 34 of the application and claims 1-19 of the patent lies in the fact that, on one hand, the patent claims include many more elements and are thus much more specific. For example, the claims of the ‘369 patent further require “a paint or masking line which delineates a transition between at least a first portion of the crown having an area of contrasting shade or color with a shade or color of the face; wherein the golf club head has a CGx of 0 to about −4 mm; wherein at least one of the sole and crown is at least in part a composite material”. Also, note the following remarks:
As to claims 21-23, see claim 3 (dependent from claim 1) of the ‘369 patent. Any further distinctions in the claimed contrasting color difference would have been attainable through routine experimentation to provide an effective contrast between the crown and the face. "[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). See MPEP 2144.05.
As to claim 29, see claim 18 of the ‘369 patent. Even though the limitation “a shade or color of at least a portion of the crown is white” is not part of claims 1 and 3 of the ‘369 patent, 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 ‘369 patent to include this feature along with the claimed features of claims 1 and 3 of the ‘369 patent in order to provide better contrast between the crown and the face for increasing the alignment capability of the golf club head at address.
As to claims 30 and 34, see claims 3 and 4, respectively, of the ‘369 patent.
As to claim 31, see claim 19 of the ‘369 patent. Even though the limitation “a shade or color of at least a portion of the face is black, metallic grey, or a silver color” is not part of claims 1 and 3 of the ‘369 patent, 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 ‘369 patent to include this feature along with the claimed features of claims 1 and 3 of the ‘369 patent in order to provide better contrast between the crown and the face for increasing the alignment capability of the golf club head at address.
Claims 24-28, 32-33 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of USPN 10,391,369 in view of US PUBS 2011/0152000 to Sargent et al (hereinafter referred to as “Sargent”).
The claimed invention of the ‘369 patent lacks the claimed features of claims 24-26, 28, 32-33 and 35. Sargent shows these features, as outlined below:
As to claims 24 and 32 and the limitation “the face is adhesively bonded”, see paragraph [0289] in Sargent, which teaches that a composite face may be adhesively bonded to a peripheral edge of the club head.
As to claims 25, 33 and 35 and the limitation “wherein at least a portion of the face comprises a composite material”, again see paragraph [0289] in Sargent.
As to claim 26 and the limitation “the golf club head has a volume between 420 cm3 and 500 cm3 and a total mass between 145 g and 245 g”, see paragraph [0248] in Sargent.
As to claim 28 and the limitation “wherein the golf club head comprises one or more weights and a variable thickness face”, see paragraphs [0266] – [0270] and [0289] in Sargent disclosing a variable face thickness as well as paragraphs [0242] – [0243] and at least FIG. 63A in Sargent disclosing weights within weight ports.
In view of the teachings in Sargent, 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 ‘369 patent by including the features now recited in claims 24-26, 28, 32-33 and 35 in order to enhance the ball striking capabilities of the club head using a face structure formed of composite, which is adhesively attached to the club head body, and further including a variable face thickness, and to further provide an overall volume that enlarges the sweet spot of the club head, while further providing a weighting arrangement that locates the center of gravity in a desired position while maximizing the moment of inertia for promoting straighter shots during impact with a golf ball.
As to claim 27, see claim 19 of the ‘369 patent. Even though the limitation “a shade or color of at least a portion of the face is black, metallic grey, or a silver color” is not part of claims 1 and 3 of the ‘369 patent, 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 ‘369 patent to include this feature along with the claimed features of claims 1 and 3 of the ‘369 patent in order to provide better contrast between the crown and the face for increasing the alignment capability of the golf club head at address.
Claims 21-23, 29-31 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of USPN 10,052,530.
For double patenting to exist as between the rejected claims and patent claims 1-11, it must be determined that the rejected claims are not patentably distinct from patent claims 1-11. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims 1-11 and, if so, whether those differences render the claims patentably distinct.
Specific to claims 21-23, 29-31 and 34, it is clear that substantially all the elements of instant claims 21-23, 29-31 and 34 are to be found in patent claims 1-11. The difference between instant claims 21-23, 29-31 and 34 of the application and claims 1-11 of the patent lies in the fact that, on one hand, the patent claims include many more elements and are thus much more specific. For example, the claims of the ‘530 patent further require “a paint or masking line which delineates a transition between at least a first portion of the crown having an area of contrasting shade or color with a shade or color of the face”. Moreover, note the following remarks:
As to claims 21-23, see claims 1-4 of the ‘530 patent. Any further distinctions in the claimed contrasting color difference would have been attainable through routine experimentation to provide an effective contrast between the crown and the face. "[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). See MPEP 2144.05.
As to claim 29, see claim 5 of the ‘530 patent.
As to claims 30 and 34, see claims 3 and 4, respectively, of the ‘530 patent.
As to claim 31, see claim 11 of the ‘530 patent. Even though the limitation “a shade or color of at least a portion of the face is black, metallic grey, or a silver color” is not part of claims 1-4 of the ‘530 patent, 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 ‘530 patent to include this feature along with the claimed features of claims 1-4 of the ‘530 patent in order to provide better contrast between the crown and the face for increasing the alignment capability of the golf club head at address. Also, note that claim 5 of the ‘530 patent recites “the shade or color of the face is black”.
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Claims 24-28, 32-33 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of USPN 10,052,530 in view of US PUBS 2011/0152000 to Sargent et al (hereinafter referred to as “Sargent”).
The claimed invention of the ‘530 patent lacks the claimed features of claims 24-26, 28, 32-33 and 35. Sargent shows these features, as outlined below:
As to claims 24 and 32 and the limitation “the face is adhesively bonded”, see paragraph [0289] in Sargent, which teaches that a composite face may be adhesively bonded to a peripheral edge of the club head.
As to claims 25, 33 and 35 and the limitation “wherein at least a portion of the face comprises a composite material”, again see paragraph [0289] in Sargent.
As to claim 26 and the limitation “the golf club head has a volume between 420 cm3 and 500 cm3 and a total mass between 145 g and 245 g”, see paragraph [0248] in Sargent.
As to claim 28 and the limitation “wherein the golf club head comprises one or more weights and a variable thickness face”, see paragraphs [0266] – [0270] and [0289] in Sargent disclosing a variable face thickness as well as paragraphs [0242] – [0243] and at least FIG. 63A in Sargent disclosing weights within weight ports.
In view of the teachings in Sargent, 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 ‘530 patent by including the features now recited in claims 24-26, 28, 32-33 and 35 in order to enhance the ball striking capabilities of the club head using a face structure formed of composite, which is adhesively attached to the club head body, and further including a variable face thickness, and to further provide an overall volume that enlarges the sweet spot of the club head, while further providing a weighting arrangement that locates the center of gravity in a desired position while maximizing the moment of inertia for promoting straighter shots during impact with a golf ball.
As to claim 27, see claim 11 of the ‘530 patent. Even though the limitation “a shade or color of at least a portion of the face is black, metallic grey, or a silver color” is not part of claims 1-4 of the ‘530 patent, 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 ‘530 patent to include this feature along with the claimed features of claims 1-4 of the ‘530 patent in order to provide better contrast between the crown and the face for increasing the alignment capability of the golf club head at address. Also, note that claim 5 of the ‘530 patent recites “the shade or color of the face is black”.
Claims 21-23, 29-31 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of USPN 12,005,322.
For double patenting to exist as between the rejected claims and patent claims 1-40, it must be determined that the rejected claims are not patentably distinct from patent claims 1-40. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims 1-40 and, if so, whether those differences render the claims patentably distinct.
Specific to claims 21-23, 29-31 and 34, it is clear that substantially all the elements of instant claims 21-23, 29-31 and 34 are to be found in patent claims 1-40. The difference between instant claims 21-23, 29-31 and 34 of the application and claims 1-40 of the patent lies in the fact that the patent claims, on one hand, include many more elements and are thus much more specific. For example, the claims of the ‘322 patent further require “an electronic display on at least a portion of the crown”. Moreover, note the following remarks:
As to claims 21-23, see claim 4 (dependent from claim 1) of the ‘322 patent. Any further distinctions in the claimed contrasting color difference would have been attainable through routine experimentation to provide an effective contrast between the crown and the face. "[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). See MPEP 2144.05.
As to claim 29, even though the limitation “a shade or color of at least a portion of the crown is white” is not part of the claims of the ‘322 patent, 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 ‘322 patent to include this feature along with the claimed features of claims 1 and 4 of the ‘322 patent in order to provide better contrast between the crown and the face for increasing the alignment capability of the golf club head at address.
As to claims 30 and 34, again see claim 4 of the ‘322 patent. Any further distinctions in the claimed contrasting color difference would have been attainable through routine experimentation to provide an effective contrast between the crown and the face. "[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). See MPEP 2144.05.
As to claim 31, even though the limitation “a shade or color of at least a portion of the face is black, metallic grey, or a silver color” is not part of the claims of the ‘322 patent, 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 ‘322 patent to include this feature along with the claimed features of claims 1 and 4 of the ‘322 patent in order to provide better contrast between the crown and the face for increasing the alignment capability of the golf club head at address.
Claims 24-28, 32-33 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of USPN 12,005,322 in view of US PUBS 2011/0152000 to Sargent et al (hereinafter referred to as “Sargent”).
The claimed invention of the ‘322 patent lacks the claimed features of claims 24-26, 28, 32-33 and 35. Sargent shows these features, as outlined below:
As to claims 24 and 32 and the limitation “the face is adhesively bonded”, see paragraph [0289] in Sargent, which teaches that a composite face may be adhesively bonded to a peripheral edge of the club head.
As to claims 25, 33 and 35 and the limitation “wherein at least a portion of the face comprises a composite material”, again see paragraph [0289] in Sargent.
As to claim 26 and the limitation “the golf club head has a volume between 420 cm3 and 500 cm3 and a total mass between 145 g and 245 g”, see paragraph [0248] in Sargent. It is also noted that claim 8 of the ‘322 patent also requires the now-claimed volume requirements.
As to claim 28 and the limitation “wherein the golf club head comprises one or more weights and a variable thickness face”, see paragraphs [0266] – [0270] and [0289] in Sargent disclosing a variable face thickness as well as paragraphs [0242] – [0243] and at least FIG. 63A in Sargent disclosing weights within weight ports.
In view of the teachings in Sargent, 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 ‘322 patent by including the features now recited in claims 24-26, 28, 32-33 and 35 in order to enhance the ball striking capabilities of the club head using a face structure formed of composite, which is adhesively attached to the club head body, and further including a variable face thickness, and to further provide an overall volume that enlarges the sweet spot of the club head, while further providing a weighting arrangement that locates the center of gravity in a desired position while maximizing the moment of inertia for promoting straighter shots during impact with a golf ball.
As to claim 27, even though the limitation “a shade or color of at least a portion of the face is black, metallic grey, or a silver color” is not part of the claims of the ‘322 patent, 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 ‘322 patent to include this feature along with the claimed features of claims 1 and 4 of the ‘322 patent in order to provide better contrast between the crown and the face for increasing the alignment capability of the golf club head at address.
Claims 36-41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 10,300,351.
On one hand, the method claims of the ‘351 patent are more specific than the instant claims in that the method claims of the ‘351 patent further require “the first golf club head having a first primary alignment feature comprising a paint or masking line delineating a transition between at least a first portion of the crown having an area of contrasting shade or color with a shade or color of the face”.
On the other hand, although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered to be minor phrasing differences or minor differences in the order in which the claim limitations are presented. Note the following remarks:
As to claim 36, see claims 1 and 7 of the ‘351 patent. Any further distinctions in the claimed contrasting color difference would have been attainable through routine experimentation to provide an effective contrast between the crown and the face. "[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). See MPEP 2144.05.
As to claims 37-41, see claims 9-14 of the ‘351 patent. Here, the various limitations related to the first golf club head and the second golf club head are merely presented in a slightly diverse order. Nonetheless, the claims of the ‘351 patent substantially encompass the limitations of instant claims 36-41, with any minor changes reflected in the instant claims presenting obvious variations over the method of comparing the features associated with measuring of the lateral dispersion tendency of the golf club head to determine one or more adjustments to the primary alignment feature and providing a second golf club head having a second golf club head arrangement incorporating the one or more adjustments to counteract the measured lateral dispersion tendency.
Observations on Obviousness-Type Double Patenting
Applicant is respectfully urged to maintain a clear line of demarcation between the instant claim set and the claims in the prior patents and copending applications listed herein below. While no double patenting rejections based on the prior patents and copending applications listed below are currently being made of record, maintaining a clear distinction between the instant claims and the claims of each of the prior patents and copending applications 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 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 the prior patents and copending applications listed below conflict, or do not conflict, with the claims of the instant application.
USPNs: 11179608; 11219803; 11701555; 11731014; 11964191; 12179070; 12239888; 12370418; 12350558 and 12496498
US Applications: 19/015234; 18/736758; 19/225942; and 19/013918
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Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711