DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
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.
Claim 26 is 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.
With respect to claim 26, claim 21 notes a portion of the shell made of a non-metallic composite material, whereas claim 26 notes a portion of the shell made of titanium alloy. It is not clear if the portion of the shell are the same or different portions. Because of this, claim 26 is considered to be indefinite. For examination purposes, claim 26 will be interpreted as a second portion of the shell being made of titanium alloy.
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 21-25, 27-39, and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11-25, and 29 of U.S. Patent No. 12005323. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the instant application does not claim the club moment arm. Though absent from claim 21 of the instant application, the limitations are encompassed by claim 1 of US Patent 12005323. In light of the above, claim 21 of the instant application is anticipated by claim 1 of US Patent 12005323. Claim 18 of US 12005323 claims the same subject matter except for the top edge height of the face, Zcg distance, the first moment of inertia, and the second moment of inertia, and the second moment of inertia to club length ratio. Though not in claim 18 of US 12005323, claims 19 and 20 of US 12005323 claim these limitations. Based on this assessment, one having ordinary skill in the art would have found claim 32 to be obvious over claims 18-20 of US Patent 12005323.
Claims 26 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12005323 in view of Burnett et al. (US 2005/0059508). US Patent 12005323 claims the same subject matter except for a portion of the shell being made of titanium alloy. Burnett et al. discloses a club head having majority of the skirt made of a non-metallic material but the remaining portion made of titanium alloy (See Paragraph 0034 and 0036). One having ordinary skill in the art would have found it obvious to have a portion of the shell made of titanium alloy, as taught by Burnett et al., in order to lower the center of gravity of the club head.
Claims 21-25, 27, 32, 34-36, 38, and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11491376. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 11491376 does not claim a portion of the shell made of a non-metallic material. Though absent from claim 1 of US 11491376, claim 7 of US Patent 11491376 includes this limitation. In light of the above, one having ordinary skill in the art would find claim 21 of the instant application to be obvious over claims 1 and 7 of US 11491376. Claim 11 of US 11491376 claims the same subject matter of claim 32 of the instant application except for the top edge height of the face, the first moment of inertia, and the second moment of inertia, and the second moment of inertia to club length ratio. Though not in claim 11 of US 11491376, claims 12, 13, and 14 of US 11491376 claim these limitations. Based on this assessment, one having ordinary skill in the art would have found claim 32 to be obvious over claims 11-14 of US Patent 11491376.
Claims 26 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11491376 in view of Burnett et al. (US 2005/0059508). US Patent 11491376 claims the same subject matter except for a portion of the shell being made of titanium alloy. Burnett et al. discloses a club head having majority of the skirt made of a non-metallic material but the remaining portion made of titanium alloy (See Paragraph 0034 and 0036). One having ordinary skill in the art would have found it obvious to have a portion of the shell made of titanium alloy, as taught by Burnett et al., in order to lower the center of gravity of the club head.
Claims 21-24, 29, 30, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10625125. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 10625125 does not claim a portion of the shell made of a non-metallic material. Though absent from claim 1 of US 10625125, claim 2 of US Patent 10625125 claims this limitation. In light of the above, one having ordinary skill in the art would have found claim 21 of the instant application to be obvious over claims 1 and 2 of US Patent 10625125. Claim 12 of US 10625125 claims the same subject matter except for the Zcg distance. Though not in claim 12 of US 10625125, claim 18 of US 10625125 claim this limitation. Based on this assessment, one having ordinary skill in the art would have found claim 32 to be obvious over claims 12 and 18 of US Patent 10625125.
Claims 26 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10625125 in view of Burnett et al. (US 2005/0059508). US Patent 10625125 claims the same subject matter except for a portion of the shell being made of titanium alloy. Burnett et al. discloses a club head having majority of the skirt made of a non-metallic material but the remaining portion made of titanium alloy (See Paragraph 0034 and 0036). One having ordinary skill in the art would have found it obvious to have a portion of the shell made of titanium alloy, as taught by Burnett et al., in order to lower the center of gravity of the club head.
Claims 21 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10335649 in view of Burnett et al. (US 2005/0059508). Although the claims at issue are not identical, they are not patentably distinct from each other because US 10335649 does not claim a skirt and portion of the shell made of a non-metallic material. Burnett et al. discloses a club head having a skirt portion making up a part of the outer shell and the outer shell being made of a non-metallic composite material (See Paragraph 34 and 35). One having ordinary skill in the art would have found it obvious to have a club head with a skirt portion making up a portion of the outer shell and made of a non-metallic composite material, as taught by Burnett et al., in order to lower the center of gravity of the club head.
Claims 21 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10058747 in view of Burnett et al. (US 2005/0059508). Although the claims at issue are not identical, they are not patentably distinct from each other because US 10058747 does not claim a skirt and portion of the shell made of a non-metallic material. Burnett et al. discloses a club head having the outer shell being made of a non-metallic composite material (See Paragraph 34 and 35). One having ordinary skill in the art would have found it obvious to have a club head with a skirt portion making up a portion of the outer shell and made of a non-metallic composite material, as taught by Burnett et al., in order to lower the center of gravity of the club head.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN A HUNTER whose telephone number is (571)272-4411. The examiner can normally be reached on Monday through Friday from 7:30AM to 4:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached at telephone number 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALVIN A HUNTER/ Primary Examiner, Art Unit 3711
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