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 § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reed et al. (USPN 7632196) in view of Stites et al. (US 2012/0196701).
Regarding claim 1, Reed et al. discloses a golf club having a shaft 200, a grip 300, and a golf club head 100. As evident by Figure 29, the shaft includes a proximal end and a distal end wherein a grip is attached to the shaft proximal end. The club head is attached to the shaft distal end and includes a face, sole, crown, skirt, and bore. Evident by Figure 10, the face is positioned at a front portion of the club head includes a top edge height, and lower edge height, and a face height that is the difference between the maximum top edge height and the minimum lower edge height (See paragraph bridging columns 4 and 5). The sole is positioned at a bottom portion of the club head. The crown is positioned at a top portion of the club head. The skirt is positioned around a portion of a periphery of the club head between the sole and crown. The collective of the face, crown, sole, and skirt define an outer shell that further defines a volume. The club head also includes a rear portion opposite the face. Figure 10 also discloses a bore having a center shaft axis that intersects the horizontal ground plane to define and origin point. The bore is located on the heel side of the club head having receives the shaft distal end for attachment to the club head. The toe side is located opposite the heel side. As evident by Figures 13 and 14, The club head having a blade length measured from the origin point toward the toe side to the most distant point on the club head. The blade length also includes a heel blade length section measured in the same direction as the blade length from the origin point to an engineering impact point and a toe blade length. As evident by Figures 15, 16, and 17, a center of gravity of the club head is located vertically toward the crown from the origin point a distance Ycg, horizontally from the origin point toward the toe side a distance Xcg that is parallel to the face and ground plane, and a distance Zcg from the origin toward the rear portion in a direction orthogonal to the vertical direction Ycg and orthogonal to the horizontal direction Xcg. Reed et al. does not disclose a stress reducing feature along the sole. Stites et al. discloses, in Figures 3 and 4, a club head having a stress reducing feature 140, referred to as SRF, along the sole, referred to as SSRF, having a stress reducing feature length between the toe-most point and the heel-most point that is greater than a heel blade length section, a SSRF leading edge, SSRF trailing edge, SSRF volume, SSRF width, and SSRF depth. A portion of the SRF contains a secondary elastic material 160 (See Figure 4 and Paragraph 0077). Stites et al. notes that the secondary elastic material is polyurethane rubber, which inherently has a density of about 1.3 g/cm3 (See Paragraph 0077). The SSRF includes a SSRF aperture recessed from the sole and extending through the outer shell. Stites notes that the secondary elastic material can extend over at least a portion of the length which implies that the insert can extend the entire length if desired (See Paragraph 0076). One having ordinary skill in the art would have found it obvious to have an SSRF feature, as taught by Stites et al., in order to increase the flexure of the face of the club head. In addition, one having ordinary skill in the art would have found it obvious to have a secondary elastic material, as taught by Stites et al., in order to prevent overdeformation of the channel. With respect to the characteristic time, the combination would meet the requirement due to the structural limitations of the instant invention being met.
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10245485. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 10245485 does not claim the club head having a blade length. Though not in claim 1 of US 10245485, claim 2 claims this limitation. In light of the above, one having ordinary skill in the art would have found claim 1 of the instant application to be obvious over claims 1 and 2 of US 10245485.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10792542. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 10792542 does not claim the club head having a secondary elastomer material, SSRF width, and SSRF volume. Though not in claim 1 of US 10792542, claim 2 claims the secondary elastic material having a density of less than 3 g/cm3. Claim 6 of US 10792542 claims the SSRF having a width. Claim 7 of US 10792542 claims the SSRF having a volume. In light of the above, one having ordinary skill in the art would have found claim 1 of the instant application to be obvious over claims 1, 2, 6, and 7 of US 10792542.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- 6 and 11-13 of U.S. Patent No. 10556160. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 10556160 does not claim the blade length and SSRF aperture length at least 50% of the Xcg distance. Though not in claim 1 of US 10245485, claim 13 claims the SSRF aperture length being at least 50% of the Xcg distance and claim 2 claims the blade length. In light of the above, one having ordinary skill in the art would have found claim 1 of the instant application to be obvious over claims 1, 2, and 13 of US 10556160.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 9950223 in view of Stites et al. (US 2012/0196701). US 9950223 claims the same subject matter except for a secondary elastic material having a density less than 3 g/cm3. A portion of the SRF contains a secondary elastic material 160 (See Figure 4 and Paragraph 0077). Stites et al. discloses a club head having a channel wherein a secondary elastic material is located within it. Stites et al. notes that the secondary elastic material is polyurethane rubber, which inherently has a density of about 1.3 g/cm3 (See Paragraph 0077). One having ordinary skill in the art would have found it obvious to have a secondary elastic material, as taught by Stites et al., in order to prevent overdeformation of the channel.
Allowable Subject Matter
Claims 4-22 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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