DETAILED ACTION
This Office action is responsive to communication received 06/24/2024 – application papers received, including Power of Attorney, IDS (3 statements); 09/09/2024 – Response to Notice to File Missing Parts, including fee; and 02/10/2025 – Preliminary amendment to the claims.
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 .
Continuation Data
This application is a CON of 17/224,026 04/06/2021 PAT 12053677 which is a CON of 17/137,151 12/29/2020 ABN which is a CIP of 17/124,134 12/16/2020 PAT 12121780.
Drawings
The drawings were received on 06/24/2024. These drawings are acceptable.
Specification - Objections
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abs tracts.
The abstract of the disclosure is objected to because the abstract does not include any technical disclosure related to the claimed invention. The current abstract would not enable one to determine quickly from a cursory inspection of the abstract the nature and gist of the technical disclosure and that which is new in the art to which the claimed invention pertains. Correction is required. See MPEP § 608.01(b).
Information Disclosure Statement
The IDS received 06/24/2024, and containing 13 scanned pages, contains a citation, the relevance of which to the claimed invention is not understood. Specifically, Citation No. 23, identified with a Patent Number of RE41577, an Issue Date of 2010-08-24 and a Patentee named McLean et al, is directed towards "High Power Density Fuel Cell Stack Using Micro Structured Components". This citation has been 'considered' only to the extent that the Patent Number, Issue Date and Name of Patentee recorded on the IDS match the PTO records. Applicant is invited to provide comments as to why this item is cited or if the information was inadvertently cited on the IDS.
Status of Claims
Claims 1-20 have been cancelled, as directed.
Claims 21-41 remain pending.
FOLLOWING IS AN ACTION ON THE MERITS:
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 21-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,246,225.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘225 patent, on one hand, are more specific than the instant claims and thus encompass the limitations of the instant claims. For example, the claims of the ‘225 patent further require “a second front body portion formed of a second metallic material having a second front body portion mass and a second portion density greater than first portion density and the second portion density is at least 5.6 g/cc, wherein a portion of the second front body portion is adjacent the face lower edge and the second front body portion mass is at least 23.9 grams.”
On the other hand, the claims of the '780 patent differ only in the arrangement of the limitations and/or present minor phrasing differences and/or present limitations deemed obvious in the art. Note the following comments:
As to independent claim 21, see claim 1 of the ‘225 patent.
As to claims 22-23, see claim 5, which depends from claim 4, which depends from claim 3, which depends from claim 2, which depends from independent claim 1 of the ‘225 patent. Thus, claim 5 also includes all of the limitations of claims 1-4 of the ‘225 patent. Also, see claim 21 of the ‘225 patent.
As to claim 24, see at least claims 17-18 of the ‘225 patent.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,246,225 in view of US PUBS 2018/0185719 to Johnson et al (hereinafter referred to as “Johnson”).
As to claim 25, the claimed invention of the ‘225 patent lacks “wherein the crown comprises a crown insert and the crown insert is attached to the rear body portion and the metallic front body portion”. Johnson shows it to be old in the art to provide a hollow metal club head with a crown insert made of a less dense material relative to the material of the body portion to provide a desired mass savings (i.e., see paragraphs [0008] and [0073]). In view of the teaching in Johnson, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed invention of the ‘225 patent by introducing a crown insert within the club head body for the purpose of freeing up discretionary mass by replacing a portion of the crown portion of the club head body with an insert of reduced density, with the discretionary mass being left available to the club head designer for strategic placement at other locations on the club head to vary the weight distribution of the club head.
Claim 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending United States Application No. 19/025,343 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending ‘343 application are more specific than the instant claim and thus encompass all of the limitations of the instant claim 21. For example, the claims of the copending ‘343 application further require “a second front body portion formed of a second metallic material having a second front body portion mass and a second portion density greater than first portion density and the second portion density is at least 5.6 g/cc, wherein a portion of the second front body portion is adjacent the face lower edge and the second front body portion mass is at least 23.9 grams” along with “a majority of the second front body portion is located within the imaginary forward box”. As to instant claim 21, also see claim 1 of the copending ‘343 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112(b)
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 41 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.
As to claim 41, lines 11-12, the language “excluding any attached weights and any housings for the attached weights” is confusing. Are the attached weights and the housing a part of the club head in the first place? If structure that is a part of the club head is to be excluded from the percent calculation of weight of either or both of the middle and back sections, then a specific reference to the part(s) that are positively recited as being a part of the club head must be specifically referred to.
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Allowable Subject Matter
Claims 26-40 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.
Claim 41 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Milleman shows a front body portion formed of metallic material;
Greaney shows a hollow club head with a center of gravity location and peak crown height, of interest; and
Hoffman shows a crown insert as well as forward and rearward weights on the club head body.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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