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 first and second material of the face insert and gasket 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.
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, 9-17, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,969,630. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1-4 and 10-20 are broader by the elimination of the third material, pocket and ledge elements and fully encompass the scope of the claims in the previous patent. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
With respect to clam 5, no reciting the perimeter ledge, lacking still is the material selection in the modulus of elasticity and the thickness of the gasket. However, the selection of a material suitable for its intended purpose and changes in size have been found obvious. 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), the Federal Circuit 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. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Claims 6 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,969,630 in view of Mack 5,505,453
. Where adhesives are known to secure a face to a body of a glub, Mack further teaches that the use of fasteners through a recessed aperture in the face are known and obvious expedients for mounting faceplates on the body of a golf club.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7, 10-12, 14-16, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chen 5,467,983.
As to claims 1, 16 and 17, Chen shows a golf club head comprising a body portion 41 having a rear portion, a front portion opposite said rear portion, a heel portion including a hosel configured to connect to a shaft, a toe portion opposite said heel portion, a topline, and a sole opposite said topline. A face insert 45 is configured to be attached to said front portion of said body portion and a gasket 50, 43 and 44’ located between said body portion and said face insert, wherein said gasket includes a first portion 50 made of a first material and a second portion 43 made of a second material, wherein said first material is different than said second material.
Claim 2 is considered shown in the disclosed titanium at col. 3, on. 19. that is softer than the fiber cloth of the first material (col. 3, ln. 44).
Claims 3 and 12 are considered met where the base plate of 45 is made of a composite material of fiber-reinforced resin (col. 3, ln. 8) and where such generally is known to have a modulus of elasticity of 20-85GPa, the range recited in claim 4 of 2 MPa- 120 GPa.is considered met.
As to claim 5, the hollow portion 25 is considered a pocket on an interior of said body portion with 47 being a perimeter ledge in said pocket, wherein said perimeter ledge is located proximate said heel portion, said sole, said toe portion, said topline, and said front portion of said body portion, and wherein said gasket abuts said perimeter ledge.
The use of adhesives as recited in claim 6 is considered fairly suggested to bond together said face insert, said gasket, and said perimeter ledge where such are “adhered securely to the shoulder surface” (col. 3.n. 46).
Claims 10 and 11 is interpreted as claims 1 and 2 above with 44’ being considered a third material different than the first and second.
Where the center portion of the gasket of Chen can be described as a “bridge portion” that spans the pocket as called for in claims 14 and 15, first and second voids can be considered met by the holes 49. The lack of any clear structures or relationships recited in the claim fails to distinguish over Chen.
Claims 19 and 20 are considered met where the second material extends to and forms a topline region and heel region of said gasket and said third material extends to and forms a sole region and toe region of said gasket.
Claim Rejections - 35 USC § 103
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.
Claim(s) 7, 9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen view of Boyd et al. 9,579,548.
As to claim 7, while Chen does not appear to discuss the use of fasteners to mount his faceplate, from Boyd it is known that such are a well-known alternative to the use of adhesives as shown in his fig. 23 and at col. 11, lns. 1-5. To have used a fastener to secure the face plate of Chen would have been an obvious matter of design choice in selecting one known common expedient over another.
While Chen does not discuss any dimensions as called for in claims 9 and 13, it is clear that his gasket inherently has a thickness. To have selected a thickness between .2-4mm would have been obvious in order to select the desired amount of strength and weight for its intended purpose. 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), the Federal Circuit 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.
Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Boyd et al. 9,579,548 and further in view of Nakamura 9,975,016.
As to claims 8 and 18, while Chen does not appear to discuss the a protrusion which overhangs a heelward portion of said perimeter ledge in combination with a recessed tab on the face configured to fit beneath said protrusion, such joinery of a faceplate is considered taught by the Z1 and E1 of fig. 12 of Nakamura. As such, to have used a combination of fasteners as broadly recited in the claim and as taught by Boyd and joinery in in an overhang and ledge would have been an obvious matter of design choice in selecting known methods of mechanically mounting and fastening a face plate to a club body.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Melba Bumgarner at (571)272-4709.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711