DETAILED ACTION
35 USC § 112
The Examiner construes “substantially” in the claims to mean “within 10% of the identified value” as explicitly defined by par. [0080] of applicant’s specification and as specifically argued by applicant (see Remarks, received 7/23/26, page 2 of 11).
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 “each of a cylindrical axis of each of the plurality of the two or more voids is substantially perpendicular to a loft of the golf club face” of claims 1 and 14 must be shown or the feature(s) canceled from the claim(s). The Examiner notes that this is clearly not shown in Fig. 1 which applicant has specifically elected to prosecute. 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.
Claim Rejections - 35 USC § 112
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 1, 2, 4, 9-15, 17, and 18 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. Claims 1 and 14 now claim “comprises a plurality of two or more voids distributed in a pattern, wherein each of the plurality of the two or more voids are cylindrical, and wherein each of a cylindrical axis of each of the plurality of the two or more voids is substantially perpendicular to a loft of the golf club face”. The Examiner considers this new matter. Restated, the specification does not describe a “cylindrical axis” and/or that the “cylindrical axis is substantially perpendicular to a loft of the golf club face”. This is also not shown in the drawings (specifically Fig. 1 which applicant has specifically elected to prosecute on 3/24/26). So, support solely from the drawings does not appear present. If the Examiner has reached this rejection in error, then both the specification and the drawings are “objected to”. That is, the drawings are specifically objected to above because they do not show this feature. The specification would be alternatively be objected to because the language is not present in the specification for proper antecedent basis.
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.
Claim 1, 2, 4, 9-15, 17, and 18 is 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. Claims 1 and 14 claim now claim “comprises a plurality of two or more voids distributed in a pattern, wherein each of the plurality of the two or more voids are cylindrical, and wherein each of a cylindrical axis of each of the plurality of the two or more voids is substantially perpendicular to a loft of the golf club face”. The Examiner is entirely unclear of what this structure entails because this particular relationship is not shown in any of the drawings (specifically Fig. 1 which applicant has specifically elected). In addition, “loft” is the angle between the vertical plane and the face (see rejection of claim 1 below for an annotated figure of how these all interrelate). This also adds confusion to the claims. Is applicant attempting to claim the “loft plane” as opposed to the “loft” (the loft plane being the surface from vertical used to measure the loft)?
Claim 2 is 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. The term “about” in claim 2, line 2 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Examiner does see par. [0079] of applicant’s specification. However, this paragraph does not provide an ascertainable and definite limit to the term “about’. In the Remarks filed 7/23/26, applicant adds the term “substantially” and argues that par. [0080] defines the metes and bounds of “substantially”. This may be true, but applicant does not delete the term “about” and thus the 112(b) remains.
Claim 18 is 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. The term “about” in claim 18, line 2 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Examiner does see par. [0079] of applicant’s specification. However, this paragraph does not provide an ascertainable and definite limit to the term “about’. In the Remarks filed 7/23/26, applicant adds the term “substantially” and argues that par. [0080] defines the metes and bounds of “substantially”. This may be true, but applicant does not delete the term “about” and thus the 112(b) remains. In addition, applicant claims that “the plurality of two or more voids are offset from the front surface of the midplane between about 0.025 mm to about 2.00 mm” (emphasis added). In the Remarks filed 7/23/26, applicant tells the Examiner to “see at least Fig. 13” (see Remarks, page 2 of 11). With all due respect, the actual claim needs to recite how the “offset” is measured in order to make the claim definite. Furthermore, respectfully submitted, applicant’s response to this 112(b) is in no way compelling or responsive as the Examiner has already looked at Fig. 13 and the figure does not clarify how the offset is measured. The previous comments from the NFOA are repeated here for clarity of record –
It is unclear from both the claim and the specification how the offset is measured. For example, is the offset measured from the center of the void to the midplane (see annotated drawing below)? Is it measured from the edge closest of the void to the midplane? Or is it measured from the furthest edge of the void to the midplane? The Examiner can only assume that based on Fig. 13, applicant is attempting to claim that the center of the void is offset from the midplane since the edge closest to the midplane is actually on the midplane (see applicant’s Fig. 13, figure with midplane 1392).
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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.
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, 2, 4, 9, 10, 12-15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Morales et al. (herein “Morales”; US Pub. No. 2023/0381601 A1).
Regarding claim 1, Morales discloses a golf club face (Fig. 1 being exemplary and representative of Fig. 17 as well) comprising: a front surface to impact a golf ball (Figs. 1 and/or 17; noting this is functionally possible given the structure); a rear surface (Fig. 17 below; noting this is shown and opposite the front surface); and a plurality of two or more voids between the front surface and the rear surface distributed in a pattern (Fig. 17, below and par. [0079]; noting the pattern being positioned radially outward from the center), wherein each of the plurality of the two or more voids are cylindrical (noting as per Figs. 14, 17 below, 2, and par. [0077], the outer shape/profile of the void when looking at the face may be circular as clearly seen Fig. 14, the longitudinal axis may extend into the face as seen in Fig. 17 below and also Fig. 2, so that it is obvious that the void may be considered “cylindrical”; noting dictonary.com defines “cylinder” as “a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to the given planes”), and wherein each of a cylindrical axis of each of the plurality of the two or more voids is substantially perpendicular to a loft of the golf club face (Fig. 17 below, and see Examiner’s Annotated Loft). The Examiner gives the above using a 103 rejection because the use of cylindrical voids having a cylindrical/longitudinal axis perpendicular to the loft would be obvious to a POSA. To further elaborate, the “Examiner’s Annotated Loft” below is a figure created by the Examiner solely to show the well-known relationship between a wood club head and loft (i.e. this figures does not appear in Morales, but noting this generic side profile view is representative of the side view of golf club head shown in Morales: Fig. 1; noting this side profile view is taken from Oldknow et al., US Pub. No. 2011/0034269 A1, if applicant wants the source). This loft relationship is well-known to a POSA. The “loft” is actually the angle measured between a vertical plane and the club head face (emphasis added). As such, the Examiner assumes applicant is attempting to claim a “loft plane” and not “a loft”. The “loft plane” runs along the outside of the golf club as illustrated below to define the loft as compared to the vertical plane. Morales Fig. 17, much like Morales: Fig. 2, shows a flat outer face surface (see Fig. 2, item 120 and par. [0042]; noting item 120 is the “outer skin”, or outside surface impact surface). This outer face surface in Morales: Fig. 17 would be the “loft plane” as shown in the Examiner’s Annotated Loft drawing. As can be seen, when looking at the relationship between the loft plane and voids longitudinal axis present in the face, it can be seen that the voids longitudinal axis would be perpendicular to the loft plane, or in the alternative, at least “substantially perpendicular” to the loft plane. In summary, this relationship would have been obvious to a POSA given the structure in Morales even if it is not specifically shown.
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Regarding claim 2, it is noted that Morales does not specifically disclose that each of the plurality of two or more voids have a volume of between substantially about 0.05 mm³ to substantially about 8.5 mm³. However, Morales does make obvious that void may be cylindrical (as per Figs. 14, 17 above, 2, and par. [0077], the outer shape/profile of the void when looking at the face may be circular as clearly seen Fig. 14, the longitudinal axis may extend into the face as seen in Fig. 17 below and also Fig. 2, so that it is obvious that the void may be considered “cylindrical”; noting dictonary.com defines “cylinder” as “a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to the given planes”), that the cell width/diameter can specifically be 0.045 inches or 1.143 mm (par. [0065]), and that cell depth/length can specifically be 1.78 mm (par. [0054]). In addition, the Examiner notes that the volume of a cylinder is vol = pi*r2*h. As such, using the values of Morales, the volume can be (pi)*(1.143/2)^2*(1.78) = 1.82 mm³; the calculated value making obvious the claimed range. The Examiner also notes that in, Fig. 17 above, the two outer [larger] voids can be the calculated 1.82 mm3. The two inner voids appear half the size of the outer voids, so they may be 0.913 mm3. But both of these values are within the claimed range. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that a volume of 0.05 mm³ to about 8.5 mm³ could be used for the volume of the voids because doing so would be using shapes and specific values for the voids specifically taught by Morales to make an obvious calculation for volume based on geometry.
Regarding claim 4, Morales discloses that the plurality of two or more voids are distributed radially around a center of the golf club face (Fig. 17, above, and see par. [0079]).
Regarding claims 9 and 17, Morales discloses that at least some of the plurality of two or more voids have different volumes (Fig. 17 above; noting this is obvious based on the outer voids as compared to the inner voids; restated, all the void may be circular, and the outer voids showing a greater depth than the inner voids, which makes obvious a greater volume).
Regarding claim 10, Morales discloses that each of the plurality of two or more voids extend radially outward from a center of the golf club face (Fig. 17 above showing this).
Regarding claim 12, Morales discloses that each of the plurality of two or more voids are offset toward the front surface from a midplane (Fig. 17 above showing this, the portion facing item 17100 being the front).
Regarding claim 13, Morales discloses that the golf club face has a diameter-to-thickness ratio between about 0.5 to about 1.0, wherein the diameter-to-thickness ratio is defined as Diameter - To - Thickness Ratio = a diameter of one of the plurality of two or more voids/a thickness of the golf club face (par. [0043]; noting the thickness of the faceplate may be 0.08 mm + 1.78 mm + 0.13 mm = 1.99 mm, and the cell width/diameter of a circular aperture can be 0.045 inches or 1.143 mm from par. [0065], so 1.143/1.99 = 0.574; making obvious the claimed range; see also par. [0049] for face thicknesses).
Regarding claim 14, Morales discloses a golf club head (Fig. 1 being exemplary and representative of Fig. 17 as well) comprising: a face (Figs. 1 and/or Fig. 17 above; noting this is inherent) wherein the face comprises: a front surface to impact a golf ball (Fig. 1; noting this is functionally possible given the structure); a rear surface (Fig. 17 above; noting this is shown and opposite the front surface, item 17100 being proximate the front surface); a body extending between the front surface and the rear surface (Fig. 17, noting the “body” may simply be the area/section 230 as shown/referred to in Fig. 2, but inherently present in Fig. 17) wherein the body comprises a plurality of two or more voids distributed in a pattern (Fig. 17, above and par. [0079]; noting the pattern is extending radially out from the center of the face). wherein each of the plurality of the two or more voids are cylindrical (noting as per Figs. 14, 17 above, 2, and par. [0077], the outer shape/profile of the void when looking at the face may be circular as clearly seen Fig. 14, the longitudinal axis may extend into the face as seen in Fig. 17 above and also Fig. 2, so that it is obvious that the void may be considered “cylindrical”; noting dictonary.com defines “cylinder” as “a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to the given planes”), and wherein each of a cylindrical axis of each of the plurality of the two or more voids is substantially perpendicular to a loft of the golf club face (Fig. 17 above, and see Examiner’s Annotated Loft). The Examiner gives the above using a 103 rejection because the use of cylindrical voids having a cylindrical/longitudinal axis perpendicular to the loft would be obvious to a POSA. To further elaborate, the “Examiner’s Annotated Loft” below is a figure created by the Examiner solely to show the well-known relationship between a wood club head and loft (i.e. this figures does not appear in Morales, but noting this generic side profile view is representative of the side view of golf club head shown in Morales: Fig. 1; noting this side profile view is taken from Oldknow et al., US Pub. No. 2011/0034269 A1, if applicant wants the source). This loft relationship is well-known to a POSA. The “loft” is actually the angle measured between a vertical plane and the club head face (emphasis added). As such, the Examiner assumes applicant is attempting to claim a “loft plane” and not “a loft”. The “loft plane” runs along the outside of the golf club as illustrated below to define the loft as compared to the vertical plane. Morales Fig. 17, much like Morales: Fig. 2, shows a flat outer face surface (see Fig. 2, item 120 and par. [0042]; noting item 120 is the “outer skin”, or outside surface impact surface). This outer face surface in Morales: Fig. 17 would be the “loft plane” as shown in the Examiner’s Annotated Loft drawing. As can be seen, when looking at the relationship between the loft plane and voids longitudinal axis present in the face, it can be seen that the voids longitudinal axis would be perpendicular to the loft plane, or in the alternative, at least “substantially perpendicular” to the loft plane. In summary, this relationship would have been obvious to a POSA given the structure in Morales even if it is not specifically shown.
Regarding claim 15, it is noted that Morales does not specifically disclose that each of the plurality of two or more voids have a volume of between about 0.05 mm³ to about 25.0 mm³. However, Morales does make obvious that void may be cylindrical (as per Figs. 14, 17 above, 2, and par. [0077], the outer shape/profile of the void when looking at the face may be circular as clearly seen Fig. 14, the longitudinal axis may extend into the face as seen in Fig. 17 below and also Fig. 2, so that it is obvious that the void may be considered “cylindrical”; noting dictonary.com defines “cylinder” as “a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to the given planes”), that the cell width/diameter can specifically be 0.045 inches or 1.143 mm (par. [0065]), and that cell depth/length can specifically be 1.78 mm (par. [0054]). In addition, the Examiner notes that the volume of a cylinder is vol = pi*r2*h. As such, using the values of Morales, the volume can be (pi)*(1.143/2)^2*(1.78) = 1.82 mm³; the calculated value making obvious the claimed range. The Examiner also notes that in, Fig. 17 above, the two outer voids can be the calculated 1.82 mm3. The two inner voids appear half the size of the outer voids, so they may be 0.913 mm3. But both of these values are within the claimed range. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that a volume of 0.05 mm³ to about 25.0 mm³ could be used for the volume of the voids because doing so would be using shapes and specific values for the voids specifically taught by Morales to make an obvious calculation for volume based on geometry.
Regarding claim 18, it is noted that Morales does not specifically disclose that the plurality of two or more voids are offset toward the front surface from a midplane between substantially about 0.025 mm to substantially about 2.00 mm. However, Morales clearly discloses a plurality of voids that are present between the midplane and the end of the midportion, item 230 (see Fig. 17 above and Fig. 2 showing the limits of midportion, item 230). Morales, also goes on to state that the midportion, item 230, may be 1.78 mm thick (par. [0043]; noting half of that would be 0.89 mm at the midplane, and half of that would be the center of the void, so 0.445 mm). The Examiner also broadly construes the claimed “offset” to be the measurement from the center of the void as compared to the midplane, so that at least the two outside voids having a center offset 0.445 mm from the midplane (see Fig. 17 above, and par. [0043]; making this obvious). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the void offset would fall within the claimed range because doing so would be utilizing specific values and dimensions in combination with the drawings to arrive at an obvious void placement with regardless to a midplane. Finally, in the alternative, regarding the exact offset distance from the midplane, it has been held that where 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 applicant’s spec, par. [0065], giving no criticality for the exact offset). In addition, to support the Examiner’s assertion that void depth (or offset from midplane) is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Morales which states that void depth (and thus offset from the midplane) is a result-effective variable use to optimize durability of the face (par. [0079]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact void depth (and thus offset from the midplane) could be found through routine experimentation in order to optimize the durability of the face.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Morales et al. (herein “Morales”; US Pub. No. 2023/0381601 A1) in view of Soracco et al. (herein “Soracco”; US Pat. No. 9,330,406 B2).
Regarding claim 11, it is noted that Morales does not specifically disclose that the golf club face further comprises a fill material to fill each of the plurality of two or more voids. However, Soracco discloses a golf club wherein the head has a plurality of two or more voids (Fig. 4) and the voids can further comprise a fill material (col. 9, line 59 to col. 10, line 3). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Morales to make the golf club face further comprises a fill material to fill each of the plurality of two or more voids as taught and suggested by Soracco because doing so would be combing prior art elements (a golf club with a face that has voids, and a golf club head with voids that are filled with a filler) according to known methods (using the filler in the voids in the face) to yield predictable results (the continued ability to make a golf club with a face having voids in the face, the voids filled with a filler to “provide vibration dampening” – see Soracco: col. 10, lines 1-3).
Response to Arguments
Applicant's arguments filed 7/23/26 have been fully considered but they are not generally persuasive.
Objections
The previous claim objections are overcome.
112(b)
The previous 112(b) rejections are not overcome. For claims 2 and 18, applicant adds “substantially”, but leaves the term “about”. As such, the rejection is not overcome.
For claim 18, applicant states “See at least Fig. 13 and the corresponding description in the originally filed specification” (see Remarks, page 2 of 11). Respectfully submitted, the Examiner has looked at Fig. 13 and its corresponding disclosure (pars. [0063]-[0065]). It still does not make the measurement definite, and the claim language is clearly not definite in terms of how “offset” is measured. The Examiner considers this generic response by applicant as non-responsive.
102
The previous 102 rejection has been overcome by the amendment. With that said, applicant argues specific 103 arguments under this heading that the Examiner would like to address.
Applicant argues that “….the axis of the cylindrical structure of Morales appears to go along a back-to-front direction. In contrast, the currently presented claim requires that "each of the plurality of two or more voids are cylindrical" and "wherein a cylindrical axis is substantially perpendicular to a loft of the golf club face" (Remarks, page 8). As noted above, the Examiner agrees that Morales shows cylindrical axis that would go front to back along the face. The Examiner also notes that the front of the face defines the “loft plane”. As such, the axis would be perpendicular to the “loft plane”. If applicant is attempting to arguing some other structure, this exact structure is unclear because 1) the written specification and drawings do not discuss this (see 112(a) above), and 2) applicant does not argue the structure with any specificity.
With regards to claim 12 and “each” of the voids being “offset”, the Examiner respectfully disagrees. The “plurality of voids” are specifically annotated in Morales: Fig. 17 above. Applicant clearly reads in other voids into the “plurality of voids” other than those specifically referred to by the Examiner in the rejection. As such, this argument is not compelling.
Regarding claim 18, the Examiner uses “result effect variable” rejection as the alternative rejection. In addition, based on par. [0079] in conjunction with Fig. 17 that clearly has offset voids, it would be clear to a POSA that void depth and offset may be varied moving toward the center of the striking face which has “greater expected stresses”. This “greater stress” language is synonymous with “durability” of the face (see Remarks, page 10, applicant arguing that par. [0079] does not discuss durability). It should also be noted, that applicant only argues the alternative rejection using result effective variable. That is, applicant never argues the primary rejection. As such, this argument is not compelling.
Finally, applicant argues that the Examiner “appears to conflate void depth with offset from the midplane”. With all due respect, the void depth sets the distance from the offset (see the logic for the primary rejection of claim 18 above, especially as shown in Fig. 17 of Morales above for the identified “plurality of two or more voids). As such, they two are interrelated and a POSA would understand that from looking at Fig. 17 in conjunction with par. [0079].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (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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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
8/10/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
Prosecution Insights