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, 7, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cackett et al. (US 2011/0077102).
Regarding claim 1, Cackett et al. discloses a club head having a face portion having a striking face and an aft body wherein the aft body includes a crown, sole, and skirt portion (See Figure 1). The aft body is made of polycarbonate, PPS, PEKK, PEEK, and similar materials (See Paragraph 0054). The face portion would inherently include an x-axis, y-axis, and z-axis and is further confirmed by the club head having inertias about x, y, and z axes (See 0050 and 0051).
Regarding claim 7, see the above regarding claims 1 and 4.
Regarding claim 8, see the above regarding claim 1.
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) 2-4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cackett et al. (2011/0077102) in view of Nelson et al. (USPN 10035049).
Regarding claim 2, Cackett et al. does not disclose the material being polyethersulfone. Nelson et al. discloses a club head having an aft body made of a polyethersulfone (See Paragraph bridging columns 39 and 40). One having ordinary skill in the art would have found it obvious to have the aft body made of polyethersulfone, as taught by Nelson et al., in order to improve the stiffness of the club head while improving the club head sound.
Regarding claim 3, Cackett et al. inherently discloses a skirt portion in the form of a ribbon 90 being that it’s created by the perimeters of the sole and crown portions and due to incorporation of US 7320646.
Regarding claim 4, Cackett et al. discloses the crown and sole portions having a thickness of 0.020 to 0.08 inch, or 0.5 to 2mm (See Paragraph 0054) considering the aft body includes the crown and sole.
Regarding claim 9, see the above regarding claim 2.
Claim(s) 5, 6, and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cackett et al. (2011/0077102) in view of Nelson et al. (USPN 10035049) further in view of Myrhum et al. (US 2003/0148818).
Regarding claim 5, Cackett et al. discloses the aft wall having a variable thickness but does not disclose the sole being thicker than the crown. Myrhum et al. discloses a club head having a crown and sole of variable thickness. One embodiment discloses the sole having a thickness greater than the crown in which the center of gravity is lowered (See Figure 2 and Paragraph 0026). One having ordinary skill in the art would have found it obvious to have the sole thicker than the crown, as taught by Myrhum et al., in order to lower the center of gravity of the club head.
Regarding claim 6, Cackett et al. discloses the crown and sole portions having a thickness of 0.020 to 0.08 inch, or 0.5 to 2mm (See Paragraph 0054) considering the aft body includes the crown and sole.
Regarding claim 10, see the above regarding claim 5.
Regarding claim 11, see the above regarding claim 6.
Regarding claim 12, Cackett et al. inherently discloses a skirt portion in the form of a ribbon 90 being that it’s created by the perimeters of the sole and crown portions and due to incorporation of US 7320646.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12714918 in view of Cackett et al. (US 2011/0077102). US Patent 12714918 claims the same subject matter except for having a face portion. Cackett et al. discloses a club head having a face portion having a striking face and an aft body wherein the aft body includes a crown, sole, and skirt portion (See Figure 1). The face portion would inherently include an x-axis, y-axis, and z-axis and is further confirmed by the club head having inertias about x, y, and z axes (See 0050 and 0051). One having ordinary skill in the art would have found it obvious to have a face portion, as taught by Cackett et al., in order to facilitate the club head hitting a golf ball.
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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