DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Applicant is advised that should claim 6 be found allowable, claim 13 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).
Claim Rejections - 35 USC § 112
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.
Claims 1-16 are 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.
Claim 1 recites the limitation "the ball striking surface" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the adhesive" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the mechanical fasteners" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the polymeric material" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-8, 11, and 13-16 are also considered to be indefinite due to them depending from an indefinite claim.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 5-9, 11, 13, and 14 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Takechi (USPN 8876630) in view of Kumamoto et al. (USPN 8864603).
Regarding claim 1, Takechi discloses a club head 1 having a ball striking plate 11, a rear cavity 14, a frame 10, and a covering element 20. The ball striking plate has a front surface and a rear surface opposite the front surface. The rear cavity is partially bounded by the rear surface of the ball striking plate. The frame extends rearwardly from a perimeter of the ball striking plate and forms a cup-like configuration. The covering element extends from the frame and extends over the rear surface of the ball striking plate. The covering element also includes a center portion, heel-side portion, and toe-side portion wherein the surface features form a highly contoured topographical exterior surface (See Figures 1 and 4). The covering element is further affixed to the rear surface of the ball striking plate. The covering element shows a minimum and maximum height but does not explicitly disclose a maximum to minimum height ratio. Kumamoto et al. discloses a club head having a covering element attached to the rear surface of a ball striking plate. Figure 10 shows the covering element having a minimum height and a maximum height. The maximum height is equal to the sum of A1y and T1y wherein the minimum height is equal to T2y. A1y is .5mm to 5mm, T1y is .3mm to 1mm, and T2y is .5mm to 2mm. Based on the values, the maximum height is 0.8mm to 6mm and the minimum height is 0.5mm to 2mm. The applicant discloses the maximum height being greater than 5mm and the minimum height being 1mm (See Paragraph 96). Applicant does not disclose why the maximum to minimum height ratio is critical to attain the invention. Further, Kumamoto et al. discloses a range in which would overlap that of the applicant’s range as Kumamoto et al. discloses the maximum height capable of being 5mm and the minimum height being 1mm. In light of the above, one having ordinary skill in the art would have found the maximum to height ratio to be an obvious choice of design.
Regarding claim 3, Takechi discloses the toe side smaller than the heel side (See Figures 1 and 9).
Regarding claim 5, Takechi discloses the covering element within a cavity encompassed by the frame (See Figure 3).
Regarding claim 6, Takechi discloses majority of the covering element extending over the majority of the rear surface of the ball striking plate (See Figure 3).
Regarding claim 7, Takechi discloses the surface features being vertical slopes (See Figures 3).
Regarding claim 8, Takechi discloses the covering element affixed to the rear surface by adhesive implied by Takechi noting that it is adhered to the rear surface (See Column 4, lines 43 through 48).
Regarding claim 9, Takechi discloses the adhesive being a liquid-type noting the use of glue (See Column 8, lines 24 through 33).
Regarding claim 11, Takechi discloses the covering element formed of a silicone material (See Column 5, lines 24 though 30 and 52 through 56).
Regarding claim 13, see the above regarding claim 6.
Regarding claim 14, Takechi discloses the covering element visually forming Majority of the rear cavity (See Figures 1, 3, and 9).
Claim 2 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the prior art applied to claim 1 above in view of Imamoto et al. (USPN 7232381).
Regarding claim 2, the prior art applied to claim 1 above does not disclose the frame having a U-shaped cross-section. Imamoto et al. discloses club head having a covering element therein wherein the frame is U-shaped (See Figure 6). Imamoto et al. notes that the surfaces are curved to eliminate any gaps (See Column 3, lines 6 though 14). One having ordinary skill in the art would have found it obvious to have the frame cross-section of a U-shape, as taught by Imamoto et al., in order to eliminate gaps.
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, 6, 8, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 10, and 11 of U.S. Patent No. 9199141. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent 9199141 does not claim a frame, covering element having a topographical surface, and the cover element having a maximum-minimum height ratio. Though not in claim 1 of US Patent 9199141, claims 6, 10, and 11 claim these limitations. In light of the above, one having ordinary skill in the art would having found claim 1 of the instant application to be obvious over claims 1, 6, 10, and 11 of US Patent 9199141.
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