DETAILED ACTION
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 .
Claim Objections
Claim 1 is objected to because of the following informalities: Given that the first depth of the recess is not greater than 20 mm, the first depth cannot exceed the second depth by an amount greater than 20 mm. Appropriate correction is required.
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, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 12 of U.S. Patent No. 12,017,124 in view of Antonious, U.S. Patent No. 5,011,151. Claim 11 of the patent discloses the limitations of Claim 1, except for providing a perimeter weighting element. The examiner finds that a front surface of the club head defined by the striking face is inherent, given that the striking face is configured to strike a ball. The examiner finds that the rear face may be considered to be a rear surface and that a rear surface perimeter is inherent. Antonious teaches a golf club head including a perimeter weighting element comprising a thickened portion spanning about the periphery of the rear surface, Col. 5, ln. 9-12 and see Figure 5. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a perimeter weighting element, as taught by Antonious to provide a feature for tailoring the location of the club head center of gravity. Regarding Claim 2, Antonious teaches that the perimeter weighting element may include a widened portion located at an upper toe side of the rear surface, Col. 5, ln. 9-12 and see Figure 5. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a widened portion to yield the predictable result of facilitating the process of customizing the location of the center of gravity. Claim 12 of the patent discloses the limitations of Claim 6.
Claims 1-6 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, and 10 of U.S. Patent No. 11,148,018 in view of Antonious, U.S. Patent No. 5,011,151. Claim 1 of the patent discloses the limitations of Claim 1 except for disclosing a club head leading edge and a perimeter weighting element. The examiner finds that front surface of the club head defined by the striking face is inherent, given that the striking face is configured to strike a ball. The examiner finds that the rear face may be considered to be a rear surface and that a rear surface perimeter is inherent. Further, the examiner finds that the striking surface on a club head in reference position inherently defines a leading edge. Antonious teaches a golf club head including a perimeter weighting element comprising a thickened portion spanning about the periphery of the rear surface, Col. 5, ln. 9-12 and see Figure 5. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a perimeter weighting element, as taught by Antonious to provide a feature for tailoring the location of the club head center of gravity. Claim 10 of the patent discloses the limitations of Claim 2. Claim 2 of the patent discloses the limitations of Claim 3. Claim 6 of the patent discloses the limitations of Claim 4. Claim 1 of the patent discloses the limitations of Claims 5 and 6. Claim 1 of the patent discloses the limitations of Claim 8.
Claims 1, 2, and 6-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 10 of U.S. Patent No. 12,017,124 in view of Antonious, U.S. Patent No. 5,011,151. Claim 1 of the patent discloses the limitations of Claim 1, except for providing a perimeter weighting element. The examiner finds that a front surface of the club head defined by the striking face is inherent, given that the striking face is configured to strike a ball. Further, the examiner finds that a rear surface opposite the front surface is inherent and it follows that the rear surface may include a rear surface periphery. Antonious teaches a golf club head including a perimeter weighting element comprising a thickened portion spanning about the periphery of the rear surface, Col. 5, ln. 9-12 and see Figure 5. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a perimeter weighting element, as taught by Antonious to provide a feature for tailoring the location of the club head center of gravity. Regarding Claim 2, Antonious teaches that the perimeter weighting element may include a widened portion located at an upper toe side of the rear surface, Col. 5, ln. 9-12 and see Figure 5. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a widened portion to yield the predictable result of facilitating the process of customizing the location of the center of gravity. Claim 10 of the patent discloses the limitations of Claims 6 and 7. Claim 1 of the patent discloses the limitations of Claim 8. Claims 7 and 8 of the patent disclose the limitations of Claim 9.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 18 February 2026