DETAILED ACTION
This Office action is responsive to communication received 04/30/2024 – application papers received.
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 17/373,585 07/12/2021 PAT 11969632 which is a CIP of 17/249,680 03/09/2021 PAT 11660511 which is a CON of 16/723,065 12/20/2019 PAT 10940374 which is a CIP of 16/714,109 12/13/2019 PAT 10940373 which claims benefit of 62/779,335 12/13/2018 and is a CIP of 16/380,873 04/10/2019 PAT 10765922 which is a CON of 15/901,081 02/21/2018 PAT 10300354 which is a CON of 15/607,166 05/26/2017 PAT 9925432 which claims benefit of 62/342,741 05/27/2016 and said 17/373,585 07/12/2021 claims benefit of 63/050,701 07/10/2020.
Drawings
The drawings were received on 04/30/2024. These drawings are acceptable.
Status of Claims
Claims 1-20 are pending.
Claim Objections - Minor
Claim 11 is objected to because of the following informalities:
In line 2, “4mm” should read --4 mm--. In line 3, “10mm” should read --10 mm--.
Appropriate correction is required.
FOLLOWING IS AN ACTION ON THE MERITS:
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,969,632 in view of the combined teachings to US PUBS 2009/0286615 to De La Cruz et al (hereinafter “De La Cruz”) and USPN 6,368,234 to Galloway.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘632 patent are, on one hand, more specific than the instant claims. For example, independent claim 1 of the ‘632 patent recites the particulars of a golf club head in further combination with “turbulators” on a crown along with “wherein the filled thermoplastic material comprises filler material comprising discrete particulates having a maximum dimension in a range of 4 mm to 10 mm such that the filled thermoplastic material is freely flowable when in a melted state” and “the weight seating portion comprises a weight channel configured to receive the weight in one or more positions”.
On the other hand, independent claim 1 of the ‘632 patent lacks the now-claimed “variable thickness profile” for the strike face as well as “a front body mass not exceeding 140 grams”. Here, Galloway shows it to be old in the art to provide a hollow wood-type club head with a strike face having a variable thickness in order to fine tune the flexure of the strike face and thus control the compliance across the strike face. In addition, weight removed from the face as a result of the variable thickness of the strike face may be relocated to other portions of the club head to increase the moment of inertia so as to improve club head performance (i.e., see paragraphs (i.e., col. 2, lines 30-60 and col. 5, lines 61-67). In view of the teaching in Galloway, 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 prior ‘632 patent by providing the strike face with a variable thickness in order to more selectively control the compliance of the strike face and to increase the moment of inertia of the club head for improved club head performance.
In addition, De La Cruz teaches that a club head body for a hollow wood-type club head may comprise a front body with a front body mass not exceeding 140 grams so that more discretionary mass is available to both move the center of gravity on the golf club head and to maximize the moment of inertia of the club head (i.e., see paragraphs [0012], [0026], [0032], [0037] and [0042]; see FIGS. 10-11, with mass “A” in FIG. 10 being disclosed in at least one embodiment in TABLE 2 as being 133 grams). In view of the teaching in De La Cruz, 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 further modified the claimed device in the ‘632 patent to provide the front body with a body mass not exceeding 140 grams, the motivation being to enable the skilled artisan to adjust and redistribute the weight distribution of the club head, such that more weight is available to move the center of gravity on the golf club head, whereby a reduced weight at the front of the club head would have enabled the skilled artisan to similarly place mass in other portions of the club head to increase the moment of inertia of the club head for help in reducing club head twist during off-center shots.
As to the remaining limitations in the claims, note the following comments:
As to independent claim 1, note the remarks hereinabove regarding the modification of the ‘632 patent in view of De La Cruz and Galloway and also see claim 1 of the ‘632 patent.
As to claim 2, see claim 2 of the ’632 patent.
As to claim 3, see claim 3 of the ‘632 patent.
As to claim 4, see claim 4 of the ‘632 patent.
As to claim 5, see claim 5 of the ‘632 patent.
As to claim 6, see claim 6 of the ‘632 patent.
As to claim 7, see claim 7 of the ‘632 patent.
As to claim 8, see claim 8 of the ‘632 patent.
As to claim 9, see claim 9 of the ‘632 patent.
As to claim 10, see claim 10 of the ‘632 patent.
As to claim 11, see claim 1 of the ‘632 patent.
As to claim 12, see claim 11 of the ‘632 patent.
As to claim 13, see claim 12 of the ‘632 patent.
As to claim 14, see claim 1 of the ‘632 patent.
As to claim 15, see claim 13 of the ‘632 patent.
As to claim 16, see claim 14 of the ‘632 patent.
As to claim 17, see claim 15 of the ‘632 patent.
As to claim 18, see claim 16 of the ‘632 patent.
As to claim 19, see claim 17 of the ‘632 patent.
As to claim 20, see claim 18 of the ‘632 patent.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant’s related, prior patents have been supplied on the PTO-892, attached to this Office action. In addition, note the following references:
See Figs. 1 and 5 in Yang;
Fig. 3 in Takeda;
Fig. 2 in Nakahara;
Fig. 2(a) in NIshitani;
Fig. 2 in Chen;
Fig. 2 in Kubota;
Fig. 4(a) in Hirano;
Fig. 14 in Bennett;
Fig. 5 in Yamamoto; and
Fig. 17 in Galvan.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711