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 Rejections - 35 USC § 102
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Day et al. (USPN 10213665).
Regarding claim 1, Day et al. discloses a club head having a striking face portion and body portion. The striking face portion is located at a frontal portion and the body is attached to the rear of the striking face portion. The body portion also includes an elongated channel 732, weight member 715, and cover 401. The elongate channel extends in a back-to-front direction and has a plurality of discrete locations to receive the weight member evident by element 705 in Figure 7. The cover covers the elongate channel and the weight member in a locked configuration as shown in Figures 4 and 5. The cover is secured to the body portion using a cover fastener 409.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Northcutt et al. (USPN 10918917).
Regarding claim 1, Northcutt et al. discloses a club head having a striking face portion and body portion. The striking face portion is located at a frontal portion and the body is attached to the rear of the striking face portion. The body portion also includes an elongated channel 202, weight member 204, and cover 206. The elongate channel extends in a back-to-front direction and has a plurality of discrete locations to receive the weight member. The cover covers the elongate channel and the weight member in a locked configuration as shown in Figure 6. The cover is secured to the body portion using a cover fastener 208.
Regarding claim 2, Northcutt et al. notes that the weight of Figure 6 can have a notch/seat to engage the cover (See Paragraph bridging columns 10 and 11). It should be noted that Figure 3 shows the weight having a protrusion and groove and the cover having a protrusion and groove.
Claim Rejections - 35 USC § 103
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Northcutt et al. (USPN 10918917).
Regarding claim 5, Northcutt et al. shows in Figure 6 the weight recess on a toeward portion and the cover recess on a heelward portion of the elongate channel wherein the weight fits in the weight recess. The specification does not identify why the cover recess and weight recess has to be toeward and heel ward oriented respectively. The arrangement set forth by Figure 6 of Northcutt et al. facilitates adjusted of the weight location and securement of the weight within the channel in the same manner as that of the application and would be mere rearrangement of parts (See MPEP 2144.04 and In re Kuhle, 526 F.2d 553, 188 USPQ 7). In light of this, one having ordinary skill in the art would have found the locations of the cover recess and weight recess to be of any arrangement so long as the weight is adjustable within the channel and the cover secures the weight within the channel.
Claim(s) 1, 5, 10, 11, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Myers et al. (US 2016/0129323) in view of Smith (USPN 6277032).
Regarding claim 1, Myers et al. discloses a club head having a striking face portion and body portion. The striking face portion is located at a frontal portion and the body is attached to the rear of the striking face portion. The body portion also includes an elongated channel 20, weight member 30, and cover 40. The elongate channel extends in a back-to-front direction through incorporation of US application 13/656271 wherein Figure 26C of US Application 13/656271 is evident of the configuration (See Paragraph 0027) and has a plurality of discrete locations to receive the weight member. The weight member includes a fastener receiving aperture. A weight fastener 50 secures the weight member via the fastener receiving aperture to the body portion evident by Figures 3, 5, and 6. The cover covers the elongate channel and the weight member in a locked configuration as shown in Figures 3, 5, and 6. Myers et al. does not disclose a cover fastener securing the cover. Smith discloses a club head having an elongated channel, weight, and cover wherein the cover is secured to the body portion using a cover fastener 16. One having ordinary skill in the art would have found it obvious to have a cover fastener, as taught by Smith in order to secure the cover to the club head.
Regarding claim 5, Myers et al. discloses the elongate channel having recesses along the edges and center of the elongate channel (See Figure 5). Figure 5 shows the cover fitting into edge recesses and also shows the weight fitting into a center recess. Based on incorporation of US Application 13/656271, the center recess would have a toe side and a heel side. Considering this to be the case, the center recess would be considered to be the weight recess and the weight member fits into the weight recess in one of a plurality of discrete locations.
Regarding claim 10, Myers et al. discloses a club head having a striking face portion and body portion. The striking face portion is located at a frontal portion and the body is attached to the rear of the striking face portion. The body portion also includes an elongated channel 20, weight member 30, and cover 40. The elongate channel extends in a back-to-front direction through incorporation of US application 13/656271 wherein Figure 26C of US Application 13/656271 is evident of the configuration (See Paragraph 0027) and has a plurality of discrete locations to receive the weight member. The weight member includes a fastener receiving aperture. A weight fastener 50 secures the weight member via the fastener receiving aperture to the body portion evident by Figures 3, 5, and 6. The cover covers the elongate channel and the weight member in a locked configuration as shown in Figures 3, 5, and 6. Myers et al. does not disclose a cover fastener securing the cover. Smith discloses a club head having an elongated channel, weight, and cover wherein the cover is secured to the body portion using a cover fastener 16. One having ordinary skill in the art would have found it obvious to have a cover fastener, as taught by Smith in order to secure the cover to the club head.
Regarding claim 11, Myers et al. discloses the elongate channel having recesses along the edges and center of the elongate channel (See Figure 5). Figure 5 shows the cover fitting into edge recesses and also shows the weight fitting into a center recess. Based on incorporation of US Application 13/656271, the center recess would have a toe side and a heel side. Considering this to be the case, the center recess would be considered to be the weight recess and the weight member fits into the weight recess in one of a plurality of discrete locations.
Regarding claim 16, Myers et al. discloses a club head having a striking face portion and body portion. The striking face portion is located at a frontal portion and the body is attached to the rear of the striking face portion. The body portion also includes an elongated channel 20, weight member 30, and cover 40. The elongate channel extends in a back-to-front direction through incorporation of US application 13/656271 wherein Figure 26C of US Application 13/656271 is evident of the configuration (See Paragraph 0027) and has a plurality of discrete locations to receive the weight member. The weight member includes a fastener receiving aperture. A weight fastener 50 secures the weight member via the fastener receiving aperture to the body portion evident by Figures 3, 5, and 6. The cover covers the elongate channel and the weight member in a locked configuration as shown in Figures 3, 5, and 6. Myers et al. does not disclose a cover fastener securing the cover. Smith discloses a club head having an elongated channel, weight, and cover wherein the cover is secured to the body portion using a cover fastener 16. One having ordinary skill in the art would have found it obvious to have a cover fastener, as taught by Smith in order to secure the cover to the club head. Applicant does not disclose why the sliding angle of the cover is critical in order to attain the invention. Myer et al. shows a cover being attached to the elongate channel in what would appear to be a 0-degree angle. The purpose of the cover is to cover the elongate channel and secure the weight member. One having ordinary skill in the art would have found the sliding angle of the cover to be an obvious choice of design as the angle is not shown to provide any unexpected result from that of Myers et al.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12478843 in view of Day et al. (USPN 10213665. Claim 1 of US Patent 12478843 claims the same subject matter except for the elongate channel extending in the back-to-front direction. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6). One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12102895 in view of Day et al. (USPN 10213665. Claim 1 of US Patent 12102895 claims the same subject matter except for the elongate channel extending in the back-to-front direction. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6). One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11691057 in view of Day et al. (USPN 10213665. Claim 1 of US Patent 11691057 claims the same subject matter except for the elongate channel extending in the back-to-front direction. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6). One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11439877 in view of Day et al. (USPN 10213665. Claims 1 and 8 of US Patent 11439877 claims the same subject matter except for the elongate channel extending in the back-to-front direction. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6). One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11439878 in view of Day et al. (USPN 10213665. Claim 1 of US Patent 11439878 claims the same subject matter except for the elongate channel extending in the back-to-front direction. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6). One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 8, and 15 of U.S. Patent No. 11439879 in view of Day et al. (USPN 10213665. Claims 1, 8, and 15 of US Patent 11439879 claims the same subject matter except for the elongate channel extending in the back-to-front direction and a striking face portion. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6) and a striking face portion. One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head. One having ordinary skill in the art would have also found it obvious to have a striking face portion, as taught by Day et al., in order to facilitate hitting a golf ball.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 7 of U.S. Patent No. 11228827 in view of Day et al. (USPN 10213665. Claim 1 of US Patent 11228827 claims the same subject matter except for the elongate channel extending in the back-to-front direction. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6) and a striking face portion. One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of U.S. Patent No. 11090536 in view of Day et al. (USPN 10213665. Claims 1 and 13 of US Patent 11090536 claims the same subject matter except for the elongate channel extending in the back-to-front direction. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6) and a striking face portion. One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 10926143 in view of Day et al. (USPN 10213665. Claims 1 and 10 of US Patent 10926143 claims the same subject matter except for the elongate channel extending in the back-to-front direction. Day et al. discloses a clubhead having an elongate channel extending the back-to-front direction (See Figures 4 and 6) and a striking face portion. One having ordinary skill in the art would have found it obvious to have the elongate channel extending in the front-to-back direction, as taught by Day et al, in order to deepen and make shallower the center of gravity of the club head.
Allowable Subject Matter
Claims 3, 4, 6-9, 12-15, 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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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