DETAILED ACTION
This Office action is responsive to communication received 05/14/2024 – application papers received, including power of attorney and 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 .
Drawings
The drawings were received on 05/14/2024.
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 method steps recited in claims 11-20 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.
Information Disclosure Statement
The IDS received 05/14/2024 contains a number of discrepancies.
Initially, the IDS contains duplicate listings of the following U.S. Patent Documents: 5,316,298; 5,403,007; 5,766,092; 6,364,789; 7,160,204; and 2008/0004131. To avoid duplicate entries, a second listing of each of these documents has been lined-through.
Next, it is noted that U.S. Patent Document, listed as Cite No. 416, is identified as 2023/017338. This document number does not return any valid U.S. Patent Document and has thus been lined-through.
The following U.S. Patent Documents do not match the PTO records insofar as the inventor name that is listed on the IDS. Specifically, Cite No. 4 has been listed as Document Number 2,077,377, with a patentee named “Link”. However, PTO records show this document as having a patentee named “Drake”. Thus, this citation has been lined-through. In addition, Cite No. 34 has been listed as Document Number 5,326,047, with a patentee named “Shaw et al”. However, PTO records show this document as having a patentee named “Takahashi et al”. Thus, this citation has been lined-through. Despite the inconsistencies in the recording of the patentee for each of these citations, the relevance of these documents to the claimed invention is not readily understood.
Last, the pertinence to the claimed invention of the following citations is not readily understood.
Cite No. Document Number Title
27 5,238,529 “Anisotropic Metal Oxide Etch”
112 6,617,013 “Ceramic Matrix Composite Having…”
212 8,247,062 “Methodology and Tooling Arrangements…”
215 8,293,356 “Subsurface Inclusions of Objects…”
266 9,844,230 “Molecularly Imprinted Polymers Selective…”
Since the information related to the document number, publication date and name of patentee listed on the IDS matches PTO records, these citations have been ‘considered’ only to the extent that the identifying information listed on the IDS matches the information found in the PTO records.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 1-5, 11-14 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 7,303,485 to Tseng.
See annotated version of FIG. 1 of Tseng, below
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As to claim 1, Tseng shows a golf club head (10) comprising: a striking face (17) having a front surface (FIG. 1) configured to strike a golf ball and a rear surface opposite said front surface. Note that annotated FIG. 1 hereinabove shows that Tseng includes a periphery portion extending rearward from said striking face and including the usual and customary elements of a sole, a topline opposite said sole, a heel side, a toe side opposite said heel side, and a back portion extending from said sole to said topline and from said heel side to said toe side, along with a hosel configured to receive a shaft, said hosel located on said heel side; a cavity (11) formed between said periphery portion and said striking face; an aperture (14) extending through said toe side and into said cavity; a support pad (i.e., the pad is formed and situated within the boundary of the shoulder 111) within said cavity attached to said back portion; and a damping element (15) positioned between said support pad and said rear surface of said striking face.
As to claim 2, a cap (i.e., plug 18; FIG. 1) covers said aperture.
As to claim 3, the support pad (annotated FIG. 1) is parallel with said striking face (17).
As to claim 4, note the raised lip highlighted in annotated FIG. 1, above.
As to claim 5, the raised lip is arcuate both adjacent portions of the support pad near the heel side and the toe side, as shown in FIG. 1, as well as in a direction extending rearwardly towards the back portion, as shown in FIG. 2 (i.e., the raised lip includes an arcuate portion when viewed in cross-section).
As to claim 11, see annotated FIG. 1, hereinabove. Tseng includes the steps of providing a striking face (17) having a front surface configured to strike a golf ball and a rear surface opposite said front surface; providing a periphery portion extending rearward from said striking face and including a sole, a topline opposite said sole, a heel side, a toe side opposite said heel side, and a back portion extending from said sole to said topline and from said heel side to said toe side, wherein a cavity (11) is formed between said periphery portion and said striking face (17). A hosel is provided and configured to receive a shaft, said hosel located on said heel side. Further, an aperture (14) is provided and extends through said toe side and into said cavity. A damping element (15) is inserted through said aperture into said cavity (i.e., col. 16, lines 16-23).
As to claim 12, a support pad (annotated FIG. 1, hereinabove) is provided within said cavity and attached to said back portion.
As to claim 13, said damping element (15) is positioned between said support pad and said rear surface of said striking face (17). Also, see annotated FIG. 1, hereinabove.
As to claim 14, said aperture (14) is covered with a cap (18).
As to claim 17, the support pad (annotated FIG. 1) is parallel with said striking face (17).
As to claim 18, note the raised lip highlighted in annotated FIG. 1, above.
As to claim 19, the raised lip is arcuate both adjacent portions of the support pad near the heel side and the toe side, as shown in FIG. 1, as well as in a direction extending rearwardly towards the back portion, as shown in FIG. 2 (i.e., the raised lip includes an arcuate portion when viewed in cross-section).
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.
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.
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.
Claims 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0028883 to Morin et al (hereinafter referred to as “Morin”) in view of USPN 4,523,759 to Igarashi.
As to claim 1, Morin discloses a golf club head (100) comprising: a striking face (118) having a front surface (FIGS. 1A, 1B) configured to strike a golf ball and a rear surface (FIGS. 1A, 1B) opposite said front surface. Note FIG. 4A, which depicts a periphery portion extending rearward from said striking face and including a sole, a topline opposite said sole, a heel side, a toe side opposite said heel side, a back portion (112; FIG. 1A, 1B) extending from said sole to said topline and from said heel side to said toe side and a hosel configured to receive a shaft, with said hosel located on said heel side. Morin shows a cavity (120; FIGS. 1A, 1B) formed between said periphery portion and said striking face; a support pad (i.e., cradle 108) within said cavity (120) attached to said back portion (112); and a damping element (102) positioned between said support pad (108) and said rear surface of said striking face (118).
Morin differs from the claimed invention in that Morin does not explicitly disclose “an aperture extending through said toe side and into said cavity”. Igarashi shows it to be old in the art to provide an opening in a toe side of an iron-type club head. Access to the interior cavity of the club head is clearly facilitated through the use of an opening (i.e., see col. 4, line 57 through col. 5, line 11 in Igarashi). In view of the teaching in Igarashi, 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 club head in Morin by providing an aperture in the toe section to provide access to the interior of the club head.
As to claim 2, Igarashi shows it to be obvious to cover the aperture in the toe with a cap (i.e., plate 56; FIGS. 2 and 9). Further, the small opening in the cap itself is covered or sealed with any suitable closure, such as a plug (i.e., col. 5, lines 23-50). In view of the teaching in Igarashi, 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 club head in Morin by including a cap to seal the aperture provided in the toe side in order to provide a more finished, smooth and outward appearance of the golf club head.
As to claim 3, the support pad (i.e., cradle 108) is parallel with said striking face. Here, a surface of the cradle (108) supporting the damping element (102) in Morin is parallel to the striking face (118).
As to claim 4, the support pad (i.e., cradle 108) in Morin includes a raised lip projecting towards said striking face (i.e., see paragraph [0019]).
As to claim 5, said raised lip has an arcuate shape. Morin notes that the cradle includes structure that substantially matches the shape of the rear portion of the elastomer element. With the elastomer element being cylindrical and with the support pad being shaped to contain the elastomer material, the lip of the support pad includes an arcuate shape. Also, see paragraph [0019].
As to claims 6 and 7, see paragraph [0039] in Morin, noting that the elastic modulus of the damping element (102) may be from about 1 GPa to about 50 GPa.
As to claims 9 and 10, Igarashi shows that the aperture or opening in the toe section includes a maximum height in a sole-to-topline direction that is approximately equal to a maximum height of said damping element in said sole-to-topline direction along with a maximum width in a front-to-rear direction that is approximately equal to a maximum width of said damping element in said front-to-rear direction. See FIGS. 2-4 in Igarashi. To have specified that the aperture or opening in the toe section of the modified Morin club head be sized in accordance with the size of the damping element would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention, the motivation being to provide easier access to the damping element and to the remainder of the internal cavity.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0028883 to Morin et al (hereinafter referred to as “Morin”) in view of USPN 4,523,759 to Igarashi and also in view of USPN 5,184,823 to Desboilles et al (hereinafter referred to as “Desboilles”).
As to claim 8, Morin, as modified by Igarashi, does not explicitly disclose “a first weight member and a second weight member, wherein said first weight member is positioned proximate said toe side, wherein said first weight member has an angled upper surface and a maximum height in a sole-to-topline direction at a toewardmost point and a minimum height in said sole-to-topline direction at a heelwardmost point, wherein said second weight member is positioned proximate said heel side, and wherein said second weight member has an angled upper surface and a maximum height in said sole-to-topline direction at a heelwardmost point and a minimum height in said sole-to-topline direction at a toewardmost point”.
Here, Desboilles shows it to be old in the art to provide a hollow iron-type golf club head with heel and toe weights, wherein the weights include an angled upper surface and wherein a first weight member is located proximate the toe side of the club head and a second weight member is located proximate the heel side of the club head, with portions of each of the first and second weight members having a minimum height proximate the center of the length of the club head in a heel-to-toe direction (i.e., see FIG. 7 and weight 25, along with col. 8, lines 4-14). With the arrangement in Desboilles, a ballast weight is provided to relocate the center of gravity (i.e., col. 1, lines 59-65). In view of the teachings in Desboilles, 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 club head in Morin by introducing a first weight member and a second weight member, wherein said first weight member is positioned proximate said toe side, wherein said first weight member has an angled upper surface and a maximum height in a sole-to-topline direction at a toewardmost point and a minimum height in said sole-to-topline direction at a heelwardmost point, wherein said second weight member is positioned proximate said heel side, and wherein said second weight member has an angled upper surface and a maximum height in said sole-to-topline direction at a heelwardmost point and a minimum height in said sole-to-topline direction at a toewardmost point, with there being a reasonable expectation of success that arranging a first weight member and a second weight member as claimed would have enabled the skilled artisan to concentrate more mass lower on the club head as well as towards the heel and toe ends in order to locate the center of gravity lower on the club head for improved club head performance.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,303,485 to Tseng in view of US PUBS 2018/0028883 to Morin et al (hereinafter referred to as “Morin”).
As to claims 6-7, Tseng does not explicitly detail the “elastic modulus” of the damping element (15). See paragraph [0039] in Morin, noting that the elastic modulus of the damping element (102) may be from about 1 GPa to about 50 GPa. Morin selects the material for the damping element based upon desired ball speed retention across the striking face. In view of the teaching in Morin, 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 club head in Tseng by providing a damping element with an elastic modulus “between 4 MPa and 15 GPa”, as required by claim 6, or between “15 GPa and 40 GPa”, as required by claim 7, the motivation being to alter and/or enhance the ball speed retention more uniformly across the striking face. Moreover, the selection of a specific material, in this case an elastomer for the damping element in Tseng, based upon the specific material characteristics (e.g., elastic modulus) would have been obvious to one of ordinary skill in the art. See MPEP 2144.07 stating: “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.).”
Claims 9-10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,303,485 to Tseng in view of USPN 4,523,759 to Igarashi.
As to claims 9-10 and 20, Tseng does not explicitly disclose “wherein said aperture has a maximum height in a sole-to-topline direction that is approximately equal to a maximum height of said damping element in said sole-to-topline direction” (claim 9) along with “wherein said aperture has a maximum width in a front-to-rear direction that is approximately equal to a maximum width of said damping element in said front-to-rear direction” (claim 10), and the method step of “wherein said aperture has a maximum height in a sole-to-topline direction that is approximately equal to a maximum height of said damping element in said sole-to-topline direction, and wherein said aperture has a maximum width in a front-to-rear direction that is approximately equal to a maximum width of said damping element in said front-to-rear direction” (claim 20). Igarashi shows that the aperture or opening in the toe section includes a maximum height in a sole-to-topline direction that is approximately equal to a maximum height of said damping element in said sole-to-topline direction along with a maximum width in a front-to-rear direction that is approximately equal to a maximum width of said damping element in said front-to-rear direction. See FIGS. 2-4 in Igarashi. To have specified that the aperture or opening in the toe section of the Tseng club head be sized in accordance with the size of the damping element would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention, the motivation being to provide easier access to the damping element and to the remainder of the internal cavity.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,303,485 to Tseng in view of USPN 5,178,392 to Santioni and also in view of US PUBS 2006/0138199 to Chen.
As to claim 15, Tseng does not explicitly disclose a step comprising “pulse welding” insofar as the action taken between the cap and the aperture. Santioni shows it to be old in the art to use welding to secure an end cap to a club head shell to cover an aperture (i.e., col. 4, lines 16-19 and 30-32). The further teaching reference to Chen shows it to be obvious to take advantage of pulse welding in the golf club head art for improving weldability between different metals and for improving the weld strength at the joints (i.e., see paragraph [0002] and [0014] – [0017] in Chen). In view of the combined teachings in Santioni and Chen, 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 club head in Tseng by taking advantage of pulse welding for securing the plug (18) to the club head to prevent the plug from becoming dislodged during use.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,303,485 to Tseng in view of USPN 7,125,343 to Imamoto.
As to claim 16, Tseng does not explicitly disclose an “adhering” step insofar as the action taken between the cap and the aperture. Imamoto shows it to be old in the art to attach an end cap to a club head to fixedly place the end cap in position in order to seal an aperture using glue or adhesive (i.e., FIG. 1 and col. 4, lines 6-8). In view of the teaching in Imamoto, 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 club head in Tseng by employing adhesive to adhere the plug (18) to the club head body to prevent the plug from becoming dislodged during use.
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 1-2, 4-5 and 6-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/676,398 (reference application) in view of US PUBS 2018/0028883 to Morin et al (hereinafter referred to as “Morin”). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending ‘398 application lack “a support pad within said cavity attached to said back portion”… “wherein said support pad includes a raised lip projecting towards said striking face”… “wherein said raised lip has an arcuate shape” … “wherein said damping element has an elastic modulus between 4 MPa and 15 GPa” … and “wherein said damping element has an elastic modulus between 15 GPa and 40 GPa”. Here, Morin shows a cavity (120; FIGS. 1A, 1B) formed between said periphery portion and said striking face; a support pad (i.e., cradle 108) within said cavity (120) attached to said back portion (112); and a damping element (102) positioned between said support pad (108) and said rear surface of said striking face (118). Morin notes that the cradle includes structure that substantially matches the shape of the rear portion of the elastomer element. With the elastomer element being cylindrical and with the support pad being shaped to contain the elastomer material, the lip of the support pad includes an arcuate shape. Also, see paragraph [0019] in Morin. See paragraph [0039] in Morin, noting that the elastic modulus of the damping element (102) may be from about 1 GPa to about 50 GPa. In view of the teachings in Morin, 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 ‘398 application by including a support pad to which an arcuately-shaped raised lip is incorporated, as an alternative to the raised lip projecting from the back portion, for the purpose of securely holding the damping element in place. Moreover, the selection of a damping element of a predetermined elastic modulus to alter the ball striking characteristics of the claimed strike face of the ‘398 application would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention.
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 copending applications listed herein below. While no double patenting rejections based on the copending applications listed below are currently being made of record, maintaining a clear distinction between the instant claims and the claims of each of the copending applications 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 copending applications 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 copending applications listed below conflict, or do not conflict, with the claims of the instant application.
US Applications: 19/384967; 19/419568; 18/787017; and 18/679007
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 11-20 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 11, the steps of “providing a striking face…” as well as “providing a periphery portion”…”providing a hosel…” and “providing an aperture…” do little to establish specific steps in a manufacturing process. Here, the specification includes various explanations throughout involving operations such as machining, welding, pulse welding, and adhesive bonding. However, with the specification (i.e., see paragraphs [0003] and [0020]) providing only a very brief mention of any “manufacturing”, per se, it is not exactly clear what the scope of the claim is intended to be and how exactly the “providing” steps contribute to the manufacturing. How are the ”providing” steps related to the manufacturing method? Is the cavity perhaps formed by attaching the striking face to the periphery portion? Is the hosel perhaps provided and subsequently attached to the heel side of the periphery portion? How is the aperture provided? In addition, the method steps in claim 11 are not enumerated or labeled to be executed in a specific order. Thus, the randomness of how the steps are currently recited does not accurately depict any type of logical manufacturing method.
As to claims 12-20, these method steps share the indefiniteness of claim 11.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fig. 5C and end cap (371) in Degerness;
Figs. 4, 8 and 17 in Spackman;
Figs. 42, 43 and 56 in Jertson;
Figs. 14 and 18 in Clarke (‘339);
Figs. 28, 29, 32, 42, 51 and 52 in Wang;
Fig. 8 in Parsons;
Figs. 1, 2A, 3, 8, 9 and 20 in Woodward;
Figs. 74, 75 and 78 in Johnson;
Fig. 1 in Clarke (‘212);
Fig. 24 in Demkowski; and
Figs. 3 and 4 in Dunn.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711