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 .
Specification
The use of the term Vokey™ [0006], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 10493340, claims 1-10 of U.S. Patent No. 11007413, and 1-15 of U.S. Patent No. 12064674. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claim limitations claimed by claims 1-15 of instant application has been disclosed by claims 1-11 of U.S. Patent No. 10493340, claims 1-10 of U.S. Patent No. 11007413, and 1-15 of U.S. Patent No. 12064674 --- “wedge type iron head” as claimed is intended use, without causing structure/procedure change of the systems/method as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Thomas et al. [US20090326688] discloses a system (abstract) of selecting a proper bounce angle and sole construction of a wedge type iron head by measuring sole-ground impact forces, comprising: a wedge type iron body being attached to a shaft, said wedge type iron body comprising a sole, wherein said sole has a first configuration selected from a plurality of configurations (Fig. 12, “S1210 Recommend Lie Angle” --- Lie angle is a key component of sole configuration); and a sensor to measure data during a golf swing, said sensor being in communication with a computing device to provide said data to said computing device, wherein said data comprises a response of said wedge type iron head during a sole-to-ground impact (Fig. 17A, [0078], “During these hits, a launch monitor may collect launch data relating to these hits, and this launch monitor data may be plotted (S1708), for example, as follows: ball speed v. loft; back spin v. loft; launch angle v. loft; etc.” and [0079], “Given the launch monitor data, the club fitter may recommend a wedge set (S1710), including 2 or more wedges of varying loft, bounce angle, sole width, etc., such as a sand wedge (typically having a relatively high bounce angle), a pitching wedge (with perhaps a somewhat lower bounce angle), a gap wedge, and a lob wedge”). However, Thomas et al. does not disclose wherein said computing device is configured to determine an efficiency of said sole-to-ground impact with a ground surface.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YINGCHUAN ZHANG whose telephone number is (571)272-1375. The examiner can normally be reached 8:00 - 4:30 M-F.
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/YINGCHUAN ZHANG/Primary Examiner, Art Unit 3711
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