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 § 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) 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US 2006/0148586) in view of De La Cruz et al. (US 2009/0105010).
Regarding claim 21, Williams et al. discloses a club head having front end, rear end, top side, toe side, heel side, hosel, a sole, a crown, and interior cavity. The club head has a volume of 200 to 600 cc (See Paragraph 0096). Williams et al. also includes a face positioned at the front end having a striking surface wherein the striking surface having a club head origin at a geometric center. The club head origin includes a head origin z-axis (equivalent to Williams et al.’s Y-axis) extending through the head origin in a vertical direction relative to the ground plane extending toward the crown, a head origin X-axis extending through the head origin in the heel-toe direction parallel to the striking surface, and a head origin y-axis (equivalent to Williams et al.’s Z-axis) extending through the head origin in a front-back direction (See Paragraph 0149). Williams et al. also discloses a center of gravity z-axis (equivalent to Williams et al.’s Y-axis) parallel to the head origin z-axis, a center of gravity x-axis parallel to the head origin x-axis, and a center of gravity y-axis (equivalent to Williams’ et al.’s Z-axis) parallel to the head origin y-axis. The inertias about the center of gravity x, y, and z axes are 2000-4000 g-cm2 (equivalent to applicant’s Ixx), 3500-6000 g-cm2 (equivalent to applicant’s Izz), and 2000-4000 g-cm2 (equivalent to applicant’s Iyy). Based on the volume range and the center of gravity inertia ranges, the ratios of the volume to inertias are met. William et al. further discloses the entire crown made of pre-preg materials, or fiber reinforced polymeric material (See Paragraph 0140 and 0141). Williams et al. does not disclose the inertia about the hosel axis. De La Cruz et al. discloses a club head having an inertia about the hosel axis of 600 to 725 kg-mm2 (See Paragraph 0013). It should also be noted that the inertia about the vertical axis (equivalent to applicant’s z-axis) is 470-600 kg-mm2 (See Paragraph 0013). One having ordinary skill in the art would have found it obvious to have the inertia about the hosel axis being at least 626 kg-mm2, as taught by De La Cruz et al., in order to minimize rotational footprint of the club head.
Regarding claim 22, see the above regarding claim 21.
Claim(s) 23, 24, 30-33, 37-42, and 44-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US 2006/0148586) in view of De La Cruz et al. (US 2009/0105010) further in view of Beach et al. (US 2012/0071264).
Regarding claim 23, Williams et al. discloses the rear portion retaining a weight (See Figure 3) but Williams et al. in view of De La Cruz et al. does not disclose an adjustable head-shaft connection. Beach et al. discloses a club head having an adjustable head-shaft connection. One having ordinary skill in the art would have found it obvious to have an adjustable head-shaft connection, as taught by Beach et al., in order to adjust the loft and lie of the club head.
Regarding claim 24, through incorporation of reference US 6575845, Williams et al. discloses a frame having a first opening that extends from at least a portion of the top side toward the rear end and from the top side of the toe portion to top side of the heel portion, a peripheral edge surrounding the first opening, and a crown insert covering majority of the surface area of the crown. US 6575845 also notes that the frame can optionally have a striking plate insert attached to an opening (See Paragraph 0138).
Regarding claim 30, Williams et al. discloses the rear portion retaining a weight (See Figure 3) in a weight port.
Regarding claim 31, Applicant does not disclose why the difference between the Zup and half of the head height is critical in attaining the invention. Williams et al. discloses inertia of the club head within the same ranges as that of the applicant. In order to attain those ranges the center of gravity would have to be located in similar positions. Because of such and a lack of showing of unexpected results, one having ordinary skill in the art would have found the difference of the Zup and half of the head height to be inherently met by Williams et al.
Regarding claim 32, see the above regarding claim 31.
Regarding clam 33, see the above regarding claim 31.
Regarding claim 37, see the above regarding claim 21 with respect to the ratio.
Regarding claim 38, see the above regarding claim 21 with respect to the ratio.
Regarding claim 39, see the above regarding claim 21 with respect to the ratio.
Regarding claim 40, Williams et al. shows in Figure 12 the highest portion of the club head being the crown portion rearward of the hosel. Also, based on incorporation of US 6575845, Figure 6 demonstrates the same. In addition, US 6575845 shows the crown portion made of fiber reinforced polymeric material making up the highest portion.
Regarding claim 41, see the above regarding claim 21 with respect to the ratios and the inertia values.
Regarding claim 42, see the above regarding claim 21 with respect to the inertia values.
Regarding claim 44, Williams et al. discloses a club head having front end, rear end, top side, toe side, heel side, hosel, a sole, a crown, a rear portion retaining a weight (See Figure 3), and interior cavity. The club head has a volume of 200 to 600 cc (See Paragraph 0096). Williams et al. also includes a face positioned at the front end having a striking surface wherein the striking surface having a club head origin at a geometric center. The club head origin includes a head origin z-axis (equivalent to Williams et al.’s Y-axis) extending through the head origin in a vertical direction relative to the ground plane extending toward the crown, a head origin X-axis extending through the head origin in the heel-toe direction parallel to the striking surface, and a head origin y-axis (equivalent to Williams et al.’s Z-axis) extending through the head origin in a front-back direction (See Paragraph 0149). Williams et al. also discloses a center of gravity z-axis (equivalent to Williams et al.’s Y-axis) parallel to the head origin z-axis, a center of gravity x-axis parallel to the head origin x-axis, and a center of gravity y-axis (equivalent to Williams’ et al.’s Z-axis) parallel to the head origin y-axis. The inertias about the center of gravity x, y, and z axes are 2000-4000 g-cm2 (equivalent to applicant’s Ixx), 3500-6000 g-cm2 (equivalent to applicant’s Izz), and 2000-4000 g-cm2 (equivalent to applicant’s Iyy). Based on the volume range and the center of gravity inertia ranges, the ratios of the volume to inertias are met. William et al. further discloses the entire crown made of pre-preg materials, or fiber reinforced polymeric material (See Paragraph 0140 and 0141). Williams et al. does not disclose the inertia about the hosel axis. De La Cruz et al. discloses a club head having an inertia about the hosel axis of 600 to 725 kg-mm2 (See Paragraph 0013). It should also be noted that the inertia about the vertical axis (equivalent to applicant’s z-axis) is 470-600 kg-mm2 (See Paragraph 0013). One having ordinary skill in the art would have found it obvious to have the inertia about the hosel axis being at least 626 kg-mm2, as taught by De La Cruz et al., in order to minimize rotational footprint of the club head.
Regarding claim 45, through incorporation of reference US 6575845, Williams et al. discloses a frame having a first opening that extends from at least a portion of the top side toward the rear end and from the top side of the toe portion to top side of the heel portion, a peripheral edge surrounding the first opening, and a crown insert covering majority of the surface area of the crown. US 6575845 also notes that the frame can optionally have a striking plate insert attached to an opening (See Paragraph 0138).
Regarding claim 46, Beach et al. discloses a club head having an adjustable head-shaft connection. One having ordinary skill in the art would have found it obvious to have an adjustable head-shaft connection, as taught by Beach et al., in order to adjust the loft and lie of the club head.
Regarding claim 47, Applicant does not disclose why the difference between the Zup and half of the head height is critical in attaining the invention. Williams et al. discloses inertia of the club head within the same ranges as that of the applicant. In order to attain those ranges the center of gravity would have to be located in similar positions. Because of such and a lack of showing of unexpected results, one having ordinary skill in the art would have found the difference of the Zup and half of the head height to be inherently met by Williams et al.
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 21-23, 33, 37-40, 42-44, 46, and 47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 and 21 of U.S. Patent No. 12083395. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 12083395 does not claim the ratio of the center of gravity z-axis inertia to the volume being at least 0.86 kg/m. Claim 1 of the instant application claims the ratio of the center of gravity z-axis to the volume being at least 0.93 kg/m. Based on the above, one having ordinary skill in the art would have found claim 1 of the instant application to be anticipated by claim 1 of US 12083395.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12023558 in view of De La Cruz et al. (US 2009/0105010). US Patent 12023558 claims the same subject matter except for the inertia about the hosel axis. De La Cruz et al. discloses a club head having an inertia about the hosel axis of 600 to 725 kg-mm2 (See Paragraph 0013). It should also be noted that the inertia about the vertical axis (equivalent to applicant’s z-axis) is 470-600 kg-mm2 (See Paragraph 0013). One having ordinary skill in the art would have found it obvious to have the inertia about the hosel axis being at least 626 kg-mm2, as taught by De La Cruz et al., in order to minimize rotational footprint of the club head.
Claims 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12023558 in view of De La Cruz et al. (US 2009/0105010). US Patent 12023558 claims the same subject matter except for the inertia about the hosel axis and the y-axis. De La Cruz et al. discloses a club head having an inertia about the hosel axis of 600 to 725 kg-mm2 (See Paragraph 0013). It should also be noted that the inertia about the vertical axis (equivalent to applicant’s z-axis) is 470-600 kg-mm2 (See Paragraph 0013). One having ordinary skill in the art would have found it obvious to have the inertia about the hosel axis being at least 626 kg-mm2, as taught by De La Cruz et al., in order to minimize rotational footprint of the club head.
Allowable Subject Matter
Claims 25-29 and 34-36 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.
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/ALVIN A HUNTER/ Primary Examiner, Art Unit 3711
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