DETAILED ACTION
This Office action is responsive to the following communication received:
04/26/2024 – Application papers received;
05/08/2024 – IDS (3 statements);
01/29/2026 – Preliminary Amendment, including amendment to claims.
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 17/727,963 04/25/2022 PAT 11975247 which is a CON of 17/566,833 12/31/2021 PAT 11752404 which is a CON of 17/143,527 01/07/2021 PAT 11213728 which is a CON of 16/258,848 01/28/2019 PAT 10888746 which is a CON of 15/263,929 09/13/2016 PAT 10195497.
Drawings
The drawings were received on 04/26/2024. These drawings are acceptable.
Status of Claims
Claim 1 has been cancelled, as directed.
Claims 2-24 remain pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Based upon the Domestic Priority data as claimed by applicant and based upon the current limitations in claims 2-24, the effective filing date of the instant application is equal to the filing date of the earliest parent Application No. 15/263,929, filed 09/13/2016.
Specification - Objections
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 specification lacks proper antecedent basis for “a leading edge” and “a trailing edge”, as recited in at least claims 2, 23 and 24. See also MPEP 2173.03 and MPEP 2173.05(e).
Information Disclosure Statement
Throughout the IDS papers received 05/08/2024, a number of references have been cited by the applicant, wherein the relevance of these references, listed herein below, with respect to the claimed invention is not understood. These references have been “considered” to the extent that the Patent Number, Issue Date and Name of Patentee listed on the IDS for each reference match the PTO records. Applicant is invited to submit an appropriate explanation of the relevance of each reference, as needed.
Patent Number Issue Date Name of Patentee Title
1970409 08-14-1934 Weidemann Ratchet Tool
D107007 11-16-1937 Cashmore Pistol Grip Screw Driver
2681523 06-22-1954 Sellers Broadcasting Program Sel…
3672419 06/27/1972 Fischer Hand Tools
4262562 04-21-1981 MacNeill Golf Spike Wrench and…
D259698 06-30-1981 MacNeill Handle for Golf Spike…
D284346 06-24-1986 Masters Chuck Key Holder
4994515 02-19-1991 Washiyama Heat-Resistant Resin…
5039267 08-13-1991 Wollar Tee Tree Fastener
D343558 01-25-1994 Latraverse Bit for a Cleat Wrench
5320005 06-14-1994 Hsiao Bicycle Pedal Crank…
D392526 03-24-1998 Nicely Ratcheting Drive Device
D409463 05-11-1999 McMullin Golf Cleat Wrench
D412547 08-03-1999 Fong Golf Spike Wrench
6023891 02-15-2000 Robertson Lifting Apparatus for…
6032677 03-07-2000 Blechman Method and Apparatus for…
6296579 10-02-2001 Robinson Putting Improvement Dev…
6436142 08-20-2002 Paes System for Stabilizing the…
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 2-6, 8-11, 16-19 and 23-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,975,247 in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences and/or the differences present an obvious rearrangement of claim features among the claims and/or the differences present features that are obvious and well known in the art.
As to independent claims 2, 23 and 24, along with dependent claim 9, the claims of the ‘247 patent lack “an adjustable head-shaft connection assembly coupled to the body and operable to adjust at least one of a loft angle or a lie angle of a golf club formed when the golf club head is attached to a golf club shaft via the adjustable head-shaft connection assembly” (independent claims 2, 23 and 24) as well as “a variable face thickness” (claim 9). Beach shows it to be old in the art to provide an adjustable head-to-shaft connection assembly in order to facilitate altering the lie and/or loft of the club (i.e., paragraphs [0141] – [0182], notably paragraph [0148]). Beach further teaches a variable faceplate thickness for weight reduction at the front portion of the club head and to increase ball speed on off-center hits (i.e., paragraphs [0248] – [0250]). In view of the teachings in Beach, 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 claimed device of the ‘247 patent by incorporating an adjustable head-shaft connection assembly to enable a golfer to adjust the lie and/or loft of the club for personalized customization of the club set-up. Moreover, in view of the teachings in Beach, 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 claimed invention of the ‘247 patent by incorporating a variable face thickness for beneficial weight reduction. The remaining limitations of instant claim 2, 23 and 24 are encompassed by the combination of limitations in claim 11, which depends from claim 10, which depends from claim 4, which depends from claim 3, which depends from claim 2, which depends from claim 1 of the ‘247 patent.
As to the remaining limitations in the claims, note the following comments:
As to claims 3-6, see at least claim 4, which depends from claim 3, which depends from claim 2, which depends from claim 1 of the ‘247 patent. Any further distinctions over the claimed “depth-to-Zup ratio”, “the head origin z-axis (CGz) coordinate”, “the differential between the Zup value and ½ the head height”, “the Delta2 value”, the “Ixx moment of inertia”, the “depth-to-Zup ratio” and the “head origin y-axis (CGy) coordinate” of the ‘247 patent would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
As to claim 8, see claim 19 of the ‘247 patent.
As to claim 10, see claim 20 of the ‘247 patent.
As to claims 11 and 16, see at least claim 12, which depends from claim 4, which depends from claim 3, which depends from claim 2, which depends from claim 1 of the ‘247 patent. Any further distinctions over the claimed “head origin y-axis (CGy) coordinate”, the “Ih moment of inertia” and the “Izz moment of inertia” of the ‘247 patent would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
As to claim 17, see at least claims 1 and 2 of the ‘247 patent. Any further distinctions over the claimed “Delta2 value” and the “head weight” of the ‘247 patent would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
As to claim 18, see at least claim 16 of the ‘247 patent.
As to claim 19, see claim 17 of the ‘247 patent.
Claim 7, 12-15 and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,975,247 in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”) and also in view of US PUBS 2005/0239576 to Sites et al (hereinafter referred to as “Stites”).
As to claim 7, the claimed invention of the ‘247 patent lacks the now-claimed “wherein a hosel axis ratio of the hosel axis moment of inertia, Ih, to the Delta1 value is 40-65 kg-mm”. Here, Stites details a hosel moment of inertia of 700 to 800 kg-mm² as shown in TABLE 1 and a Delta1 value (, i.e., Delta Y; TABLE 1)) of 0.6 to 1.2 inches (15.24 to 30.48 mm). A hosel axis ratio of the hosel moment of inertia to the Delta1 value can be, for example, approximately 46 (700 divided by 15.24) or approximately 52 (800 divided by 15.24). In view of the teachings in Stites, 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 claimed invention of the ‘247 patent by providing a hosel axis ratio of the hosel axis moment of inertia, Ih, to the Delta1 value is 40-65 kg-mm in order to enhance the ability of the club head to resist twisting about the shaft axis.
As to claim 12, see at least claim 3, which depends from claim 2, which depends from claim 1 of the ‘247 patent. Here, the claimed invention of the ‘247 patent does not require “the face width is 97.5-110 mm”. Stites shows a club head, wherein the face length is at least 4.13 inches (104.9 mm), as detailed in TABLE 3. Stites notes that “the club head will have an increased head and/or face length dimension relative to the club's depth or breadth dimension, which results in a club head that is more torsionally stable (i.e., more resistant to twisting) during a swing, thereby producing a more consistent, reliable, and/or straight golf ball flight.” (i.e., see paragraphs [0015] – [0016] in Stites). In view of the teachings in Stites, 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 claimed invention of the ‘247 patent by including a face width between 97.5 mm and 110 mm in order to provide a more torsionally stable club head during a swing.
As to claim 13, see claim 19 of the ‘247 patent.
As to claim 14, see at least claims 10 and 17 of the ‘247 patent. Although the features of the differential between the Zup value and the head height is not combined with the features of the average face density within only one single claim of the ‘247 patent, to have modified the claims of the ‘247 patent, namely independent claim 1 of the ‘247 patent, to include this combination of features within the claimed invention of the ‘247 patent would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention in order to provide a more desired weight distribution at the face portion and to improve the overall performance of the club head by improving feel and improving the response of the club head during off-center impacts.
As to claim 15, see claim 20 of the ‘247 patent.
As to claims 20-21, the claimed invention of the ‘247 patent does not specifically require “wherein the front portion comprises aluminum alloy and the face insert comprises titanium alloy adhesively bonded to the front portion” (claim 20) and does not specifically require “wherein the front portion comprises aluminum alloy and at least 50% of the face area comprises non-metallic material adhesively bonded to the front portion” (claim 21). Stites teaches (i.e., paragraphs [0024] – [0026]) that the face portion may be separately formed from the club head body and may thus be considered an insert, with Stites further teaching that the face may be welded or adhesively bonded to the club head body, depending upon the material selected for the face. Stites contemplates using any one or more of a variety of materials for the front portion (i.e., for the club head body surrounding the face portion) as well as for the face portion (102b) itself, including but not limited to aluminum alloy, titanium alloy and/or non-metallic materials. In view of the teachings in Stites, 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 claimed device of the ‘247 patent by including that the front portion comprises aluminum alloy and the face insert comprises titanium alloy adhesively bonded to the front portion or that the front portion comprises aluminum alloy and at least 50% of the face area comprises non-metallic material adhesively bonded to the front portion, with there being a reasonable expectation of success that providing a specific material, or a combination of materials, for the face portion and the face insert would have changed the performance characteristics of the club head. Selection of specific materials for the face portion and for the face insert of the claimed invention of the ‘247 patent would have altered the weight of the front portion as well as the flexure characteristics of the face, which would have affected the flexure features of the club face during impact with a golf ball, which in turn would have affected golf ball flight parameters. Moreover, the selection of specific, known materials to take advantage of the properties of the known materials has been established as being obvious to one of ordinary skill in the art. “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 to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).” See MPEP 2144.07.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of USPN 11,975,247 in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”) and also in view of US PUBS 2010/0178996 to Chao.
As to claim 22, the claimed invention of the ‘247 patent does not specifically require “wherein the face insert is welded to the front portion, and the face comprises a non-metallic reinforcing material on an interior side of the face”. Note that Beach does disclose incorporating a face insert comprising a metallic cap constructed form titanium situated over a composite insert portion (i.e., paragraph [0270]). Chao extends the teaching of combining a metallic face material with a supportive non-metallic material situated on an interior side of the face (i.e., paragraph [0055] and FIG. 3), while further teaching that the face insert may be welded to the opening in the front portion to close the opening into the club head body (i.e., paragraph [0051] in Chao). As such, both Chao and Beach teach that the face portion may include a face insert having a non-metallic portion on an inside surface of the face insert, with Chao describing that a welding operation may be used to secure the face insert to the club head body. Here, the use of a combination of materials for the face insert provides desirable weight savings while maintaining the structural integrity of the striking face (i.e., see paragraph [0050] in Chao). In view of the teachings in Beach and Chao, 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 claimed invention of the ‘247 patent by including a face insert welded to the front portion, with the face comprising a non-metallic reinforcing material on an interior side of the face, the motivation being to reduce weight at the front portion of the club head, which would have provided for added discretionary mass to be distributed elsewhere on the club head, while still maintaining the structural integrity of the striking face.
Further Observations on Double Patenting
Applicant is respectfully urged to maintain a clear line of demarcation between the instant claim set and the claims in each of the further, prior patents and copending application listed hereinbelow. While no double patenting rejections based on the prior patents and copending application 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 and copending application 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 and copending application 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 any of the prior patents or copending application listed hereinbelow, conflict, or do not conflict, with the claims of the instant application.
USPNs: 10195497; 10888746; 11213728; 11752404; and 12629570
United States Patent Application Serial Number: 19/026838
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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