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 .
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,998,816. Although the claims at issue are not identical, they are not patentably distinct from each other because the broad relationship that the insert extends above the insert cavity does not substantially amount to any positive structure that would distinguish the scope of the claims.
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 1-20 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.
In claim 1, the damping system coverage area between 60% and 85% does not appear to be disclosed and supported by the specification. Paragraphs [0032] discusses greater than 85% and greater than 60%, but no range in between. [0124] only discusses a range of 75%-95% with respect to the dampening system coverage area, “that overlaps the projections”. Further with respect to claims 1 and 13, the insert extending above the cavity does not appear to be shown.
Claims 2, 5, 12, and 14 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.
Claim 2 is considered indefinite as “a height” and how such is to be measured is not defined and open to multiple interpretations. Here the height maybe from the back of the striking face to the rear, the distance from the sole, or some other dimension of the element.
The dependency of claim 5 appears to be in error rendering a lack of antecedent basis with respect to, “the offset distance.”
In claim 12, “the available surface area” lacks a proper antecedent and is undefined rendering the claim indefinite.
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 damping system coverage area between 60% and 85% of an available surface area of the back face as called for in claim 1 and greater than 85% as called for in claim 13 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.
Claim Rejections - 35 USC § 102
(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.
Claim(s) 1 2 4 5 6 3 8-11 13-16 18-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sorroco 8,819,787.
As to claims 1, 3, 8, 10, and 13, Soracco shows in fig. 19Gilbert shows an iron type golf club clearly showing the common elements of a golf club and their relationship with a dampening system having a badge 82 and insert 90 within and insert cavity through a top opening. The insert is considered to extend above the cavity from the sole upwards. Inherently there exists a damping system coverage area that can be measured as a combined surface area of the back face contacted by the insert and the badge that is shown to have what appears to be the entire coverage area of the contact area covered which includes the areas of coverage in the claim of between 60% to 85% and in between meeting the limitations of the claim.
Claims 2 and 14 appear fairly suggested in fig. 10 where the height of the insert portion at the center of the club is at its greatest.
The relationships of claim 3 are considered shown in fig. 19.
As to claims 4, 5, 13, and 15 no structure or relationship of the offset distance or how such is defined recited. Hence where the sole rear edge of Soracco is considered to be at the furthest rear point of the club as shown in fig. 19, a point on the rear wall above it can be broadly selected and defined such that it is offset a distance from the rear edge of the soled within .010-.060 inches to meet the limitations of the claims.
The scope of claims 6, 11, 16, 19, and 20 is considered shown in fig. 19.
In Soracco a volume of his rear cavity containing badge 82 is inherent and is considered to only fills between 75-99% when one defined the cavity as shown by the gap at 141 in fig. 19 and as called for in claims 8, 9 and 18.
Claim Rejections - 35 USC § 103
Claim(s) 7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soracco in view of Stokke et al. 10,112,084
The insert of Soracco appears to fit snug in the cavity of fig. 6. Stokke teaches that the insert in such designed clubs as Soracco need not be complementary such that is provides a gap such as 144 to increase deflection in the fact of the club. To have provided a gap and non-complementary insert as taught by Stokke in Soracco would have been obvious in order to increase the deflection of the face as desired.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Soracco
in view of Peterson et al. 10,695,629.
As to claim 12, Soracco does not discuss sizes of his face. From Peterson it is know that club strike faces are over 4-6 in2 (col. 34, ln. 24) and about 15-35% that represents the contact area of his insert with the back of the face plate up to 3.0 in2. As such, a back surface area of the face in the art of golf is considered clearly taught.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Nicholas Weiss at (571)270-1775.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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