DETAILED ACTION
Priority
Claims 1-3 and 5-8 receive a priority date of 5/24/16 when parent application 15/162,658 was filed.
35 USC § 112
For all the claims, the Examiner construes “about” to be “at least variations that may arise from ordinary methods of measuring and using such parameters” as specifically defined in applicant’s par. [0057].
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “an insert body joined to the body second portion” in addition to “a body second portion adhered to the body first portion across a lap joint” of claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, and 5-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. With regards to claim 1, the claim currently claims the following (emphasis added):
….a body first portion; and a body second portion adhered to the body first portion across a lap joint, wherein the lap joint includes a plurality of embossed spacing features disposed in a spaced arrangement across a surface of the lap joint; an insert portion joined to the body second portion and entirely covering the opening to at least partially define an interior club head volume, the insert portion comprising a polymeric material including a resin and a plurality of discontinuous fibers selected from the group consisting of discontinuous chopped fibers and chopped glass fibers…
With all due respect, the Examiner has no idea what applicant is trying to claim. As per pars. [0050] and [0055] of applicant’s spec, applicant’s Figs. 9 and 10 (reproduced below) show the “first body portion” and the “second body portion” as clearly stated in pars. [0050] and [0055] of applicant’s specification.
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Par. [0037] of the specification, which discusses a different embodiment, clearly discloses the use of a “body portion” and an “insert portion” as seen in applicant’s Fig. 1 reproduced below (emphasis added).
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The specification does not describe how these two different embodiment can be used together so that “a body second portion adhered to the body first portion across a lap joint…and an insert portion joined to the body second portion and entirely covering the opening to at least partially define an interior club head volume”. Restated, from the specification, it appears that either the second body portion can be attached to the forward body (i.e. first body portion) or the insert portion can be attached to the forward body (i.e. body), but the specification does not describe how the insert portion can be attached to the second body portion that can then be attached to the first body portion as is currently claimed.
As such, either applicant has created a typographical error by claiming both a “body section portion” and “an insert portion”, or they are attempting to create an entirely new species that is not depicted in the drawings and does not have specific support in the written description.
Claims 2, 3, and 5-8 are rejected because they are dependent from claim 1.
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 1-3, and 5-8 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. The claims are rejected consistent with claim 1 above and the rejection under 112(a). Restated, the claims are indefinite because the Examiner is unclear as to the exact structure required wherein the claim calls for both a “body second potion adhered to the body first portion across a lap joint…and an insert portion joined to the second body portion and entirely covering the opening”. The claims require a structure that appears to be mutually exclusive to two different disclosed embodiments and is not shown in a single embodiment. Claims 2, 3, and 5-8 are rejected because they are dependent from claim 1.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, and 5-8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The amendment to the claims have created new 112(a) and 112(b) rejections as noted above. The 103 rejection has been removed because the Examiner is unclear as to the exact structure applicant is attempting to claim.
Assuming arguendo that the Examiner has reached the above 112 rejections in error, applicant would need to submit new drawings showing “an insert body joined to the body second portion” in addition to “a body second portion adhered to the body first portion across a lap joint” (see drawing objection above) because the Examiner does not see any specific drawing that shows these two features in combination.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicolas Weiss can be reached on (571)270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
8/24/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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