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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 12/02/2025 is acknowledged.
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.
Claims 21-23, 33-37 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.
Claim 21 recites the limitation "the adhesive film" in line 10. There is insufficient antecedent basis for this limitation in the claim.
The term “about” in claim 26, 28-30, 34-36 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claims highlighted above recite the limitations of "about 10 parts of C5 resin.." and the same for polyisobutylene. It is not clear what about means in this scenario, whether it is more than or less than or the exact amount that is specified, and if it is more than or less than, then by what degree. There is no appreciable range provided with upper and lower bounds or with any bounds.
Claims 26, 28-30, 34-36 are 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. Claims 26, 28-30, 34-36 recite the limitations of “about 10 parts of C5 resin” and similarly for polyisobutylene, however, it is not clear out of how many parts the 10 parts are i.e. what is basis for the quantity of resin/polyisobutylene being claimed? Is it out of a total 100 parts or 1000 parts? It is not clear in this case, and this renders the claims indefinite. For examination purposes the weights are interpreted as in 100 parts i.e. 10 parts of 100.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 31 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 31 is dependent on claim 26, which already recites polyisobutylene. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 37 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 37 is dependent on claim 21, which already recites polyisobutylene. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 21-25, 32-33, 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fontanilla (U.S Patent 6060160), and Aberg (U.S Patent 5749991).
Regarding claims 21 & 24, Fontanilla, drawn also to the art of bonding a sports grip to a shaft, such as a golf club (Column 1, lines 58-61), discloses a grip that defines an interior surface configured to fit on an exterior surface of an end of the shaft (Figure 1 – the grip 14 necessarily defines an interior surface and interior volume as it fits onto the exterior surface of the shaft 12). Fontanilla also discloses an adhesive composition applied to the shaft which is activated by a solvent that is non-aqueous (Figures 2-3; Column 2, lines 47-59). Fontanilla has disclosed applying the adhesive to the shaft rather than the grip and then activating it with solvent (Claim 3) such as toluene (Column 2, line 58). Fontanilla has not explicitly disclosed the adhesive coating being on the grip interior surface and the composition comprising one of polyisobutylene, C5 resin, and alkylphenol resin. The above limitations are disclosed by Aberg.
Aberg, drawn also to the art of bonding a tubular object to an inwardly located second object such as a grip bonded to a golf club (Abstract), discloses the adhesive containing polyisobutylene (Column 6, line 16), and discloses that such an adhesive has a particularly good adhesive effect in the absence of water or with low water content (Column 6, lines 8-11). Aberg also discloses the adhesive composition being coated on an inner surface of the first object (grip) which is to be slidingly attached over the second object (golf club) (Abstract), and discloses that this allows the first object (grip) to be stored for years prior to use (Abstract).
It would have been obvious to an ordinarily skilled artisan to have modified the kit of Fontanilla, with the kit comprising an adhesive as claimed in the adhesive composition, as disclosed by Aberg, to arrive at the instant invention, in order to have an adhesive has a particularly good adhesive effect in the absence of water or with low water content.
Further, it would have been obvious to an ordinarily skilled artisan to have modified the kit of Fontanilla, with the application of adhesive on the interior surface of the grip, as disclosed by Aberg, to arrive at the instant invention, in order to allow the grip to be stored for years prior to use.
Regarding claims 22 & 32 (both recite the same language but are dependent on claim 21 & 24, respectively), Fontanilla has disclosed the solvent being toluene (Column 2, line 58).
Regarding claims 23, 25, & 37 (all have the same language and claim same subject matter, but have different dependencies), Fontanilla as modified by Aberg, discloses the adhesive composition containing polyisobutylene.
Regarding claim 33, Aberg also discloses the use of acetone as a solvent (Column 5, line 37).
It would have been obvious to an ordinarily skilled artisan to have modified the solvent of Fontanilla, with the solvent as disclosed by Aberg, since as such this would merely involve a simple substitution of two known elements, and the courts have held that the simple substitution of known elements to obtain predictable results is obvious (MPEP 2143 I(B)).
Claim(s) 26, 28-31, 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fontanilla (U.S Patent 6060160), Aberg (U.S Patent 5749991), Mueller (U.S Patent 6235134B1), and Mack (U.S Patent 2349508A).
Regarding claims 26, 28-30, & 34-36, Fontanilla and Aberg have not explicitly disclosed a polyisobutylene and C5 resin being present and being present in the weights as claimed.
Mueller, drawn also to the art of grips for golf clubs (Abstract), discloses a composition that is applied on the grip to attach to a club (Column 8, lines 64-67) to contain both dicyclopentadiene (Column 7, line 9) (suitable C5 resin as disclosed in instant specification [0040]) and polyisobutylene (Column 7, line 48).
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive composition of Fontanilla and Aberg, with the composition containing a C5 resin and polyisobutylene, to arrive at the instant invention, in order to increase the tackiness of the grip (Column 9, lines 5-8).
Regarding the weight ranges as claimed in claims26, 28-31 and 34-36, while Fontanilla, Aberg, and Mueller, have not explicitly disclosed the weight ranges, it is known to routinely optimize the proportions of the ingredients in an adhesive composition to appropriately alter or have characteristics such as tackiness and softness, as disclosed by Mack (Column 3, lines 38-40 & 55-59), who is also drawn to adhesive compositions containing isobutylene polymers (Column 1, lines 53-55).
Thus it would have been obvious to an ordinarily skilled artisan to have routinely optimized the weight ranges of the components of the adhesive composition, in order to appropriately have or alter characteristics such as tackiness and softness (MPEP 2144.05(II)), as is disclosed also by Mack.
Regarding claim 31, Fontanilla as modified by Aberg, discloses polyisobutylene as being part of the adhesive composition (see claim 21 & 24 rejections above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S Patent 5419797, U.S Patent 5712038, U.S Patent 5786403, U.S Patent 5281288.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746