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.
Claims 1-10, 12-15, 17-19, 21-23, and 25 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over JP 3568421 B2 in view of Bissonnette et al. (US 2003/0199335) and Jackson (The Modern Guide to Golf Clubmaking).
Regarding claim 1, JP 3568421 B2 discloses an iron-type club head having a heel portion, toe portion, sole portion, top-line portion, striking face, and rear portion opposite the striking face. The striking face has a flat forward facing ball striking surface having a loft angle, a face center, and a rearward facing surface. The striking face also has a support region and an unsupported region. JP 3568421 B2 notes that the thickness of the unsupported region can vary in order to obtain the desired stiffness (See Paragraph 0017, 0019, and Figure 6). JP 3568421 B2 does not disclose the face stiffness ratio of the toe region to the heel region or the loft angle. Bissonette et al. discloses a club head having a striking face with a stiffness ratio. Figure 21 shows a heel and toe region having different stiffnesses. Paragraph 0147 and 0148 discloses that the stiffness of the toe is twice the stiffness of the heel, which implies that the stiffness ratio of the toe region to the heel region being 2. One having ordinary skill in the art would have found it obvious to have the above stiffness ratio, as taught by Bissonette et al. With respect to the relative coefficient of restitution, the value would be met by Bissonette et al. being that the stiffness ratio is met. Jackson discloses that a loft range of 16 to 62 degrees is typical for an iron-type club head (See Page 237). One having ordinary skill in the art would have found it obvious to have a loft range of 18-64 degrees, as taught by Jackson, because it is common within the art.
Regarding claim 2, see the above regarding claim 1 with respect to the stiffness ratio. JP 3568421 B2 discloses the face thickness being 3mm or less (See Paragraph 0004).
Regarding claim 3, see the above regarding claim 1 with respect to the stiffness ratio.
Regarding claim 4, see the above regarding claim 1, with respect to the stiffness ratio.
Regarding claim 5, Figure 23 of Bissonette et al. shows a circular hitting region in an unsupported region of the striking face (See Paragraph 0151). As noted above, Bissonette et al. notes that the stiffness is calculated E*t3 in which inherently would require the heel region and the toe region to be calculated using the formula (See Paragraph 0148). The applicant’s Dvw is merely an arbitrary number added to the inequality. Based on the above and claim 1, the inequality claimed by the applicant is met since Dvw is merely the ratio.
Regarding claim 6, Figure 23 of Bissonette et al. shows a circular hitting region in an unsupported region of the striking face (See Paragraph 0151). As noted above, Bissonette et al. notes that the stiffness is calculated E*t3 in which inherently would require the heel region and the toe region to be calculated using the formula (See Paragraph 0148). Based on the above and claim 1, the inequality claimed by the applicant is met since Dcw is merely the ratio.
Regarding claim 7, see the above regarding claims 5 and 6.
Regarding claim 8, see the above regarding claims 5 and 6.
Regarding claim 9, see the above regarding claim 1.
Regarding claim 10, see the above regarding claim 1.
Regarding claim 12, see the above regarding claims 1 and 5.
Regarding claim 13, see the above regarding claim 1.
Regarding claim 14, see the above regarding claim 1.
Regarding claim 15, see the above regarding claims 1 and 2.
Regarding claim 17, see the above regarding claim 1.
Regarding claim 18, see the above regarding claims 1 and 2.
Regarding claim 19, see the above regarding claims 1 and 2.
Regarding claim 21, limitation is directed to a product by process. Being that JP 3568421 discloses the same structure, the process is met.
Regarding claim 22, see the above regarding claim 2.
Regarding claim 23, limitation is directed to a product by process. Being that JP 3568421 discloses the same structure, the process is met.
Regarding claim 25, see the above regarding claim 2.
Claims 11 and 16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the prior art applied to claims 6 and 15 above in view of Jenson et al. (USPN 5584770).
Regarding claim 16, the prior art applied to claims 6 and 15 above does not disclose a tungsten weighting element. Jenson et al. discloses a cavity back iron-type club head having a tungsten weighted element within the frame (See Abstract). One having ordinary skill in the art would have found it obvious to have a tungsten weighting element, as taught by Jenson et al., in order to move the weight of the club head to the perimeter.
Claims 20, 24, 26, and 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the prior art applied to claim 14 above in view of Wahl et al. (US 2011/0028240).
Regarding claim 20, the prior art applied to claim 14 above does not disclose the topline thickness. Wahl et al. discloses an iron-type club had having a topline with a thickness of 9mm or less (See Paragraph 0050). One having ordinary skill in the art would have found it obvious to have a topline with a thickness of less than 9mm, as taught by Wahl et al., in order to improve durability of the club head.
Regarding claim 24, the prior art applied to claim 1 above does not disclose the sole thickness. Wahl et al. discloses an iron-type club had having a sole with a thickness of 2mm or less (See Paragraph 0043). One having ordain skill in the art would have found it obvious to have a sole with a thickness of less than 2mm, as taught by Wahl et al., in order to improve durability of the club head.
Regarding claim 26, Wahl et al. discloses a cavity back iron having a badge coupled to the rear of the club head. One having ordinary skill in the art would have found it obvious to have a badge, as taught by Wahl et al., in order to close the cavity of the club head.
Regarding claim 27, see the above regarding claims 1, 5, 20, and 24.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-12, 14, 17, and 18-24 of U.S. Patent No. 12102894 in view of Jackson (The Modern Guide to Golf Clubmaking). US 12012894 claims the same subject matter except for the loft angle. Jackson discloses that a loft range of 16 to 62 degrees is typical for an iron-type club head (See Page 237). One having ordinary skill in the art would have found it obvious to have a loft range of 18-64 degrees, as taught by Jackson, because it is common within the art.
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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