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 .
Election/Restriction
This application contains claims directed to the following patentably distinct species: Species I, represented by Claims 1-8, comprising a golf club head comprising a front body and a rear body, wherein the front body defines portions of the heel end, the toe end, the top rail, and the sole, with the rear body defining portions of the heel end, the toe end, and the sole; and Species II, represented by Claims 9-16, comprising a golf club head comprising a front body and a rear body, wherein the front body and the rear body cooperate to define the top rail and the sole. The species are independent or distinct because Species I comprises a rear body which extends to the full height of the front body to define a portion of the top rail, whereas Species II comprises a rear body which may occupy a lower portion of the rear surface of the front body. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claim is generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: Even though the species are classified together, each invention can be shown to have formed a separate subject for inventive effort. Species II represents an effort to modify club head performance by altering construction of the lower part of the club head, where the rear body of Species II may reside, as evidenced by a separate classification symbol covering special sole configurations.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Paul A. Jenny on 27 February 2026 a provisional election was made without traverse to prosecute the invention of Species II, claims 9-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-8 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 10 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. It is not clear whether the limitation modifying first and second densities refers to the first and second densities of the front and rear bodies respectively or the first and second densities of weight members, all introduced in Claim 9, from which Claim 10 depends. If the limitation of Claim 10 refers to densities of the front and rear bodies, the limitation contradicts a limitation of Claim 9 requiring the opposite relationship of densities. The scope of the claim is indefinite. The examiner suggests that if density of the weight members is intended, clarification may be provided.
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 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 and 14-16 of U.S. Patent No. 12,011,642 in view of Vatsvog, U.S. Patent Application No. 2002/0032075. Claims 9 and 15 of the patent disclose the limitations of Claim 9, except for providing that the receptacle bank may be in both first and second mating surfaces. The examiner finds that the plurality of receptacles, including heel, toe, and central receptacles may be considered to be a receptacle bank and that a connection is disclosed between the first and second mating surfaces, noting coupling of the mating surfaces. Vatsvog teaches a golf club head comprising a front body (60) and a rear body (20) joined by first and second mating surfaces (rear surface of front body and front surface of rear body), paragraphs 0007,0008, and see Figures 2 and 3. Weight receptacles (34, 35, 66), may be provided in both first and second mating surfaces, paragraphs 0033, 0038 and see Figure 3. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide weight receptacles in both first and second mating surfaces, as taught by Vatsvog, to provide receptacle banks with space for weights in both mating surfaces to facilitate the process of positioning discretionary mass in an advantageous location. Claims 15 and 16 of the patent disclose the limitations of Claims 10 and 11 respectively. Claim 14 of the patent discloses the limitations of Claim 12, noting heel, toe, and central receptacles. Claims 10-12 disclose the limitations of Claims 13-15 respectively. Claim 9 of the patent discloses the limitations of Claim 16 except for providing a height measured in a top rail to sole direction ranging from 0.1 and 1.0 inch. It would have been an obvious matter of design choice to provide a lower first mating surface height within the claimed range, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art, In re Rose, 105 USPQ 237 (CCPA 1955).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 5 March 2026