DETAILED ACTION
This Office action is responsive to communication received 03/28/2024 – application papers received, including power of attorney; 04/29/2024 – 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 17/407,944 08/20/2021 PAT 11969633 which is a CON of 16/832,570 03/27/2020 PAT 11130028 which is a CON of 16/112,192 08/24/2018 PAT 10632352 which is a CIP of 15/946,961 04/06/2018 PAT 10668340 which claims benefit of 62/491,654 04/28/2017.
Drawings
The drawings were received on 03/28/2024. 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 “plurality of projections” (claims 1 and 11) 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 are pending.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/407,944, filed 08/20/2021, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The prior-filed Application No. 17/407,944 does not provide support for “a first plurality of generally parallel grooves” (emphasis added) along with “a second plurality of generally parallel grooves” (emphasis added), and “a plurality of projections therebetween”, as set forth in each of independent claims 1 and 11.
Assuming, arguendo, that the applicant is able to substantiate that the disclosure of the instant application and the prior-filed Application No. 17/407,944 do provide support for the language identified hereinabove, note that there still exists an objection to both the specification and the drawings, as outlined hereinbelow, which the applicant must address and respond to.
Claim Objections - Minor
Claims 10, 11, 19 and 20 are objected to because of the following informalities:
As to claim 10, line 3, “10mm” should read --10 mm--; and in line 4, “0.18mm to 0.24mm” should read --0.18 mm to 0.24 mm--.
As to claim 11, lines 8 and 12, “10mm” should read --10 mm--.
As to claim 19, “1.87mm” should read --1.87 mm--.
As to claim 20, line 2, “0.18mm to 0.24mm” should read --0.18 mm to 0.24 mm--.
Appropriate correction is required.
Specification - Objection
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The following terms/phrases lack proper antecedent basis in the specification:
See claim 1, line 6, stating “a first plurality of generally parallel grooves” (emphasis added) along with claim 1, line 8 stating “a second plurality of generally parallel grooves” (emphasis added) and claim 1, lines 10-11 stating “a plurality of projections therebetween”. Although paragraph [0051] of the specification notes that the first plurality of grooves 114a may at least in part intersect the second plurality of grooves 114b, there is no mention whatsoever in the specification regarding projections being formed by the intersection between the first plurality of grooves and the second plurality of grooves. Also, paragraph [0051] of the specification only discloses that each of the first plurality of grooves may be substantially parallel to each other and that each of the second plurality of grooves may be substantially parallel to each other.
See claim 11, line 6, stating “a first plurality of generally parallel grooves” (emphasis added) along with claim 11, line 10 stating “a second plurality of generally parallel grooves” (emphasis added) and claim 11, line 14 stating “a plurality of projections therebetween”. Although paragraph [0051] of the specification notes that the first plurality of grooves 114a may at least in part intersect the second plurality of grooves 114b, there is no mention whatsoever in the specification regarding projections being formed by the intersection of the first plurality of grooves and the second plurality of grooves. Also, paragraph [0051] of the specification only discloses that each of the first plurality of grooves may be substantially parallel to each other and that each of the second plurality of grooves may be substantially parallel to each other.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(b)
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 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.
As to claim 1, line 6, the language “a first plurality of generally parallel grooves” (emphasis added) along with the language in claim 1, line 8 stating “a second plurality of generally parallel grooves” (emphasis added) is indefinite. Here, there is no guidance on how to interpret this language, even in light of the specification. The specification discloses that the first plurality of grooves and the second plurality of grooves each shows substantially parallel grooves (i.e., see specification – paragraph [0051]). Is the applicant attempting to express that substantially parallel grooves and generally parallel grooves are the same (i.e., same configuration and/or orientation)? Is there a distinction in how the term “generally” should be interpreted as compared to “substantially” when interpreting the claimed arrangement of the grooves? Also, in lines 10-11, from what plane or other club head structure are the projections extending? Note that “projections” must by definition protrude or jut outward away from something.
As to claims 2-3, these claims share the indefiniteness of claim 1.
As to claim 4, “wherein ap is greater than 0” represents an open-ended range and renders the claim language indefinite. There is no way to ascertain the scope of the claim, as a value “greater than 0” covers a value of infinity. See MPEP 2173.05(c).
As to claim 5, the claimed range for ap cannot be understood in light of the specification (with reference to TABLES 1 and 2). Did the applicant perhaps intend to provide values for ad? What exactly are the claimed values of ap referring to?
As to claims 6-10, these claims share the indefiniteness of claim 1.
As to claim 11, line 6, the language “a first plurality of generally parallel grooves” (emphasis added) along with the language in claim 11, line 10 stating “a second plurality of generally parallel grooves” (emphasis added) is indefinite. Here, there is no guidance on how to interpret this language, even in light of the specification. The specification discloses that the first plurality of grooves and the second plurality of grooves each shows substantially parallel grooves (i.e., see specification – paragraph [0051]). Is the applicant attempting to express that substantially parallel grooves and generally parallel grooves are the same (i.e., same configuration and/or orientation)? Is there a distinction in how the term “generally” should be interpreted as compared to “substantially” when interpreting the claimed arrangement of the grooves? Also, in line 14, from what plane or other club head structure are the projections extending? Note that “projections” must by definition protrude or jut outward away from something.
As to claims 12-13, these claims share the indefiniteness of claim 1.
As to claim 14, “wherein ap is greater than 0” represents an open-ended range and renders the claim language indefinite. There is no way to ascertain the scope of the claim, as a value “greater than 0” covers a value of infinity. See MPEP 2173.05(c).
As to claim 15, the claimed range for ap cannot be understood in light of the specification (with reference to TABLES 1 and 2). Did the applicant perhaps intend to provide values for ad? What exactly are the claimed values of ap referring to?
As to claims 16-20, these claims share the indefiniteness of claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that 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. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0361211 to Lambeth et al (hereinafter referred to as “Lambeth”) in view of US PUBS 2013/0157776 to Serrano et al (hereinafter referred to as “Serrano”) and also in view of US PUBS 2007/0093314 to Johnson.
At the outset, it is noted that the effective filing date of claims 1-20 has been determined to be the actual filing date of this application, namely 03/28/2024. Even though the instant application has been filed as a continuation application, the reason for this determination is due to the presence of the language “a first plurality of generally parallel grooves” (emphasis added) along with “a second plurality of generally parallel grooves” (emphasis added) and “a plurality of projections therebetween”, as recited in each of independent claims 1 and 11. See MPEP 2152.01.
As to independent claims 1 and 11, Lambeth discloses a head main body and a face coupled to the head main body, along with a face center (i.e., paragraph [0048], [0049] and [0052]). Note paragraph [0051] in Lambeth, which discloses a first plurality of grooves (114a) and a second plurality of grooves (114b), wherein each of the first plurality of grooves may be substantially parallel to each other and wherein each of the second plurality of grooves may be substantially parallel to each other.
Lambeth differs from the claimed invention in that Lambeth does not explicitly detail that the first plurality of grooves are “generally parallel” to each other nor that the second plurality of grooves are “generally parallel” to each other. Serrano teaches that it is old in the art to fashion a plurality of grooves on a striking face of a putter type club head such that the grooves are parallel to one another or generally parallel to one another (i.e., see paragraphs [0044] and [0083] and FIG. 52). The specific arrangement of the grooves on the striking face disclosed by Serrano serves to affect the ball speed, control and/or spin of a struck golf ball (i.e., paragraph [0075]). It is clear from the Serrano teaching that there is a direct correlation between the disposition of the grooves on the face of the putter (e.g., considering the length, depth, width, cross-sectional shape of the grooves, and/or the parallel arrangement or generally parallel arrangement between adjacent grooves) and the ball speed, control and/or spin. In view of the teaching in Serrano, 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 device in Lambeth by providing a generally parallel relationship among the grooves in each of the first plurality of grooves and the second plurality of grooves, with there being a reasonable expectation of success that arranging the grooves in a generally parallel fashion would have altered the consistency of the ball speed after striking the face of the putter head and would have made a difference in the amount of spin imparted to the golf ball as compared to grooves that are fashioned to be substantially parallel to each other.
While Lambeth does show intersecting grooves between a first plurality of grooves and a second plurality of grooves, and while Lambeth does mention projections (i.e., see claims 6 and 7 in Lambeth), Lambeth does not explicitly disclose that a plurality of projections themselves are defined by the second plurality of grooves intersecting the first plurality of grooves. Note that Serrano does show intersecting grooves in at least FIG. 52, and as discussed in paragraph [0083]. Here, Johnson goes one step further and teaches that it is old in the art to provide projections on a striking face, wherein the projections are formed by the intersection of grooves (i.e., paragraph [0173] – [0175] and FIG. 43 in Johnson). The projections disclosed by Johnson minimize slip of the golf ball against the striking face and improve the contact geometry between a golf ball and the striking face (i.e., paragraph [0145]). In view of the teachings in Serrano and Johnson, 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 device in Lambeth by providing that the intersection of a first plurality of grooves and a second plurality of grooves defines a plurality of projections in order to alter the contact area between the golf ball and the face to improve the ball striking characteristics of the club head.
More specific to independent claim 11, and with respect to the “location spaced outward of the face center by 10 mm” along with a “third pitch” and a “fourth pitch”, see TABLE 6 in Lambeth.
As to claims 2 and 12, see paragraph [0009] in Lambeth.
As to claim 3 and 13, see paragraphs [0062] – [0064] in Lambeth.
As to claims 4 and 14, see TABLE 2 in Lambeth.
As to claims 5 and 15, Lambeth discloses values of ap in TABLE 2 and notes that other values may also be recognized, but does not explicitly detail values in the range of 0.00053 to 0.00072. Noting that at least Serrano teaches that varying the characteristics of the grooves may affect ball speed, ball control and/or ball spin (i.e., paragraph [0075]), one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Lambeth by using a suitable value for ap in order to accommodate a pitch value that desirably alters the ball striking characteristics of the putter head. In any event, the claimed range for ap has not been disclosed as being critical. As such, the skilled artisan would have looked to routine experimentation to achieve an optimal range for the constant “ap”. See MPEP 2144.05, stating: "[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).
As to claims 6 and 16, see paragraph [0112] in Lambeth.
As to claims 7 and 17, see paragraph [0049] in Lambeth.
As to claims 8 and 18, see paragraphs [0071] and [0108] in Lambeth.
As to claims 9 and 19, see TABLE 6, and the “Pitch @ FC” values for example clubs #1 through #6 in Lambeth.
As to claims 10 and 20, see the values for “Pitch @ FC” and “Pitch @ 10 mm H and T” for example clubs #1 and #5 in Lambeth.
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 listed hereinbelow. While no double patenting rejections based on the prior patents 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 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 listed below conflict, or do not conflict, with the claims of the instant application.
USPNs: 11969633; 11130028; 10668340; and 10632352
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711