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 .
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 “cap”(claims 3 and 13) 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: such as head (300); ferrule (330), and hosel bore (316) in relation to the embodiment of Figs, 14A-14C, as discussed in original paragraphs [0075]- [0103] and [0112]. 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: indicia “347” (Fig. 14B), “318” (Fig. 14C); in addition, none of the indicia such “434”, “436”, “438”, “435”, “480” (Fig. 15A), “410”, and etc. (Fig. 15B) and “432”, etc. (Fig. 15C), are not mentioned within the original written description. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
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 1-20 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.
Independent claim 1 recites the limitation "an insertion section coupled to the transition section" in line . There is insufficient antecedent basis for this limitation in the claim.
Independent claims 11 (line 7) and 18 (line 8), each recite similar limitations.
With respect to claim 2-10, 12-17 and 19-20, they are rejected based on their dependency to respective independent claims 1, 11 and 18.
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 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/470,414 (“ ‘414”) in view of Holt et al US 2007/0078026 (“Holt”).
Claim 1 of ‘414 recites the above limitations of claim 1, namely “a golf club, comprising: a shaft having a shaft connection end and defining a shaft exterior surface; a club head comprising a body, a sole, a top opposite the sole, a toe, a heel opposite the toe, and a hosel, wherein the hosel comprises a hosel interior surface defining a hosel bore, a hosel exterior surface, and a hosel connection section; a ferrule for joining the hosel connection section to the shaft connection end, the ferrule comprising: a body section having a body exterior surface and a body interior surface sized to receive the shaft and defining a first shaft-bonding area facing the shaft exterior surface (equivalent to “a transition section” of ‘414; above application in at least [0076]”
… a body section (or the transition section)…; The body section 331 can provide a seamless transition between the ferrule 330, the shaft 320 and the hosel 310…”; and ‘414 in at least [0043]” The transition section 231 extends away from the ferrule insertion section 232 to provide a seamless and aesthetically pleasing transition between the shaft 220, ferrule 230, and the hosel 210.”) ; an insertion section coupled to the transition section and comprising: an inner wall sized for insertion into the hosel bore, the inner wall having an inner wall exterior surface defining a first hosel-bonding area facing the hosel interior surface, and an inner wall interior surface sized to receive the shaft connection end and defining a second shaft-bonding area facing the shaft exterior surface; and an outer wall spaced from and surrounding at least a portion of the inner wall, the outer wall having an outer wall interior surface defining a second hosel-bonding area facing the hosel exterior surface; wherein the outer wall interior surface and the inner wall exterior surface define a receptacle sized to receive the hosel connection section”, except “and an extension section projecting from the body section opposite the insertion section and having an extension section interior surface sized to receive the shaft and defining a third shaft-bonding area facing the shaft exterior surface; wherein a total shaft-bonding area comprises a sum of the first shaft-bonding area, the second shaft-bonding area, and the third shaft-bonding area is and the total shaft bonding area is between 2.40 in2 and 2.50 in2.”
With respect to the extension means, in a similar field of golf clubs devices, Holt discloses an extension section projecting from a body section opposite an insertion section and having an extension section interior surface sized to receive a shaft and defining a third shaft-bonding area facing the shaft exterior surface (sleeve 46, i.e., “an extension” projection from body section (of tube 44, equivalent to the “ferrule” of joining the hosel of the head (22) to the shaft (40)), to receive shaft 40 therewithin the extension (Figs. 2-3 in conjunction to [0046]-[0047]; note Fig. 4 ([0048]-[0049] regarding the tube 44 (i.e., “ferrule” connection means) and Fig. 5 ([0050], regarding sleeve 46 (i.e., “extension means”). Therefore, 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 to form ‘414 and an extension section projecting from the body section opposite the insertion section and having an extension section interior surface sized to receive the shaft and defining a third shaft-bonding area facing the shaft exterior surface for the reason that a skilled artisan would have been motivated by Holt’s suggestion that such extension enhance the connection between the head the shaft (e.g., [0013]” The frustoconical portion of the sleeve extends at least one eighth of the length of the lower section of the tube to provide an increased surface area for contact with the tapered portion of the tube”.) yet such extension means does not add additional weight to the golf club (e.g., [0057] “Because the tube 44 and the sleeve 46 are composed of lightweight materials, the connection 42 does not add unnecessary weight to the golf club 20”).
With respect to “wherein a total shaft-bonding area comprises a sum of the first shaft-bonding area, the second shaft-bonding area, and the third shaft-bonding area is and the total shaft bonding area is between 2.40 in2 and 2.50 in2”, it is noted that it has been held that claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions. Therefore, 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 to form the modified ‘414- Holt with such dimensions as claimed since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case the device of ‘414- Holt would have not operate differently with the dimension as claimed and would function appropriately with the claimed dimension.
Claims 2-10 recite the same limitations as claims 2-10 of the ‘414.
Claim 11 of ‘414, recites the same limitations of above claim 11, namely “a ferrule for joining a shaft, comprising a shaft connection end and defining a shaft exterior surface, to a golf club head, comprising a hosel having a hosel interior surface defining a hosel bore, a hosel exterior surface, and a hosel connection section, the ferrule comprising: a body section having a body exterior surface and a body interior surface sized to receive the shaft and defining a first shaft-bonding area facing the shaft exterior surface (equivalent to “a transition section” of ‘414; above application in at least [0076]”… a body section (or the transition section)…; The body section 331 can provide a seamless transition between the ferrule 330, the shaft 320 and the hosel 310…”; and ‘414 in at least [0043]” The transition section 231 extends away from the ferrule insertion section 232 to provide a seamless and aesthetically pleasing transition between the shaft 220, ferrule 230, and the hosel 210.”); an insertion section coupled to the transition section and comprising: an inner wall sized for insertion into a hosel bore of the golf club head, the inner wall having an inner wall exterior surface defining a first hosel-bonding area facing the hosel interior surface, and an inner wall interior surface sized to receive a connection end of the shaft and defining a second shaft-bonding area facing the shaft exterior surface; an outer wall spaced from and surrounding at least a portion of the inner wall, the outer wall having an outer wall interior surface defining a second hosel-bonding area facing the hosel exterior surface; wherein the outer wall interior surface and the inner wall exterior surface define a receptacle sized to receive a hosel connection section of the golf club head”, except “and an extension section projecting from the body section opposite the insertion section and having an extension section interior surface sized to receive the shaft and defining a third shaft-bonding area facing the shaft exterior surface; wherein a total shaft-bonding area comprises a sum of the first shaft-bonding area, the second shaft-bonding area, and the third shaft-bonding area is and the total shaft bonding area is between 2.40 in2 and 2.50 in2.”
With respect to the extension means, in a similar field of golf clubs devices, Holt discloses an extension section projecting from a body section opposite an insertion section and having an extension section interior surface sized to receive a shaft and defining a third shaft-bonding area facing the shaft exterior surface (sleeve 46, i.e., “an extension” projection from body section (of tube 44, equivalent to the “ferrule” of joining the hosel of the head (22) to the shaft (40)), to receive shaft 40 therewithin the extension (Figs. 2-3 in conjunction to [0046]-[0047]; note Fig. 4 ([0048]-[0049] regarding the tube 44 (i.e., “ferrule” connection means) and Fig. 5 ([0050], regarding sleeve 46 (i.e., “extension means”). Therefore, 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 to form ‘414 and an extension section projecting from the body section opposite the insertion section and having an extension section interior surface sized to receive the shaft and defining a third shaft-bonding area facing the shaft exterior surface for the same reason discussed above.
With respect to “wherein a total shaft-bonding area comprises a sum of the first shaft-bonding area, the second shaft-bonding area, and the third shaft-bonding area is and the total shaft bonding area is between 2.40 in2 and 2.50 in2”, the examiner maintains his position that such dimensioned claimed would have been obvious as relative dimensions that would not perform differently than the prior art device as set forth above.
Claims 12-17 are reciting the same limitations as claims 12-17, respectively, of the ‘414.
Claim 18, of ‘414, recites the same limitations of above claim 18, namely “a golf club connection assembly for joining a shaft, comprising a shaft connection end and defining a shaft exterior surface, to a golf club head, comprising a hosel having a hosel interior surface defining a hosel bore, a hosel bore bottom end, a hosel exterior surface, and a hosel connection end, the golf club connection assembly comprising: a ferrule, comprising; a body section having a body exterior surface and a body interior surface sized to receive the shaft and defining a first shaft-bonding area facing the shaft exterior surface (equivalent to “a transition section” of ‘414; above application in at least [0076]”… a body section (or the transition section)…; The body section 331 can provide a seamless transition between the ferrule 330, the shaft 320 and the hosel 310…”; and ‘414 in at least [0043]” The transition section 231 extends away from the ferrule insertion section 232 to provide a seamless and aesthetically pleasing transition between the shaft 220, ferrule 230, and the hosel 210.”); an insertion section coupled to the transition section and comprising: an inner wall sized for insertion into a hosel bore of the golf club head, the inner wall having an inner wall exterior surface defining a first hosel-bonding area facing the hosel interior surface, and an inner wall interior surface sized to receive a connection end of the shaft and defining a second shaft-bonding area facing the shaft exterior surface; and an outer wall spaced from and surrounding at least a portion of the inner wall, the outer wall having an outer wall interior surface defining a second hosel-bonding area facing the hosel exterior surface; wherein the outer wall interior surface and the inner wall exterior surface define a receptacle sized to receive a hosel connection section of the golf club head; and a tip weight disposed in the hosel bore and between the hosel bore bottom end and the ferrule”, except “ an extension section projecting from the body section opposite the insertion section and having an extension section interior surface sized to receive the shaft and defining a third shaft-bonding area facing the shaft exterior surface; wherein a total shaft-bonding area comprises a sum of the first shaft-bonding area, the second shaft-bonding area, and the third shaft-bonding area is and the total shaft bonding area is between 2.40 in2 and 2.50 in2”.
With respect to the extension means, in a similar field of golf clubs devices, Holt discloses an extension section projecting from a body section opposite an insertion section and having an extension section interior surface sized to receive a shaft and defining a third shaft-bonding area facing the shaft exterior surface (sleeve 46, i.e., “an extension” projection from body section (of tube 44, equivalent to the “ferrule” of joining the hosel of the head (22) to the shaft (40)), to receive shaft 40 therewithin the extension (Figs. 2-3 in conjunction to [0046]-[0047]; note Fig. 4 ([0048]-[0049] regarding the tube 44 (i.e., “ferrule” connection means) and Fig. 5 ([0050], regarding sleeve 46 (i.e., “extension means”). Therefore, 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 to form ‘414 and an extension section projecting from the body section opposite the insertion section and having an extension section interior surface sized to receive the shaft and defining a third shaft-bonding area facing the shaft exterior surface for the same reason discussed above.
With respect to “wherein a total shaft-bonding area comprises a sum of the first shaft-bonding area, the second shaft-bonding area, and the third shaft-bonding area is and the total shaft bonding area is between 2.40 in2 and 2.50 in2”, the examiner maintains his position that such dimensioned claimed would have been obvious as relative dimensions that would not perform differently than the prior art device as set forth above.
Claims 19-20 recite the same limitations as claims 19-20, respectively, of the ‘414.
This is a provisional nonstatutory double patenting rejection.
Examiner’s Comments
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art is not specific nor render it obvious to form a golf club device including a ferrule for joining a hosel connection section to a shaft connection, the ferrule among other things comprising “an outer wall spaced from and surrounding at least a portion of the inner wall, the outer wall having an outer wall interior surface defining a second hosel-bonding area facing the hosel exterior surface”, as require within independent claims 1, 11 and 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.K/Examiner, Art Unit 3711 6/22/2026
/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711
Prosecution Insights