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 .
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.
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Claims 21-41 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Nos. 11504588 11369848 in view of Nitto SPV-AM-500/FG-3500
Claims 21, 35 and 41 of the instant invention incorporates limitations of the dependent claims of the prior patent. The major distinction in scope is that the instant claims do not require any opening in the protective coating as recited in the parents. Nitto SPV-AM-500/FG-3500 teaches that protective films are known in the art and to have use one without the opening would have been obvious to protect the entire surface to which it is applied and eliminate the advantages of oxidation occurring through the opening prior to the film being removed.
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.
Claim 26 is 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.
In claim 26, the scope of, “an abrasive blasted texture” is unclear. Multiple interpretations are that the surface is to have similar qualities or that such could possibly be a process limitation. Since sand blasting can produce a wide variety of textures on that is described as an “abrasive blasted texture” is subjective. If such is a process limitation, the resulting texture is unclear as some abrasives can also be used to polish a metal.
Claim Rejections - 35 USC § 103
Claim(s) 21-25, 27, 28, 31, 34, 35, and 41 are rejected under 35 U.S.C. 103 as obvious over Hettinger et al. 9,821,202 in view of Breier et al. 8,827,832 and further in view of Nitto SPV-AM-500/FG-3500.
As to claims 21-25, 35, 36, and 41Hettinger shows a wedge with the commonly recited elements and discusses surface treatment attempts to increase backspin (col. 2, ln. 30) (col. 3, ln. 52). He shows a center of gravity, d19 of 18-22mm as shown in his fig. 19, meeting the range recited. His grooves in his face have a most-toeward end and a most-heelward end as shown in fig. 10. Fig. 10 further shows an imaginary par line and he his body inherently a total volume that can be measured to exclude the portion of the heel portion that is heelward of the imaginary par line and inherently has a total surface area that excludes the portion of the heel portion that is heelward of the imaginary par line.
Hettinger does not discuss the finish of his club head. Breier teaches plating the entire club (col. 13, ln 7) with such that a first oxidation-prevention coating permanently covers at least a portion of the body including at least a portion of the rear portion and the heel portion. He further teaches, “various surface finishes for the different surfaces” on his face, “can be combined to create different visual effects, as well as different performance characteristics due to the different surface roughnesses” (Col. 4, ln. 5) and that on such surface finish includes exposing the surface finish surfaces 108 of the striking face of a club so that it will rust (col. 3)ln. 56). As such, to have included an unplated portion of oxidizable metal substrate 110 including an unplated portion of the oxidizable metal substrate that is not plated on the face of Hettinger would have been obvious in order to create different visual effects as taught by Breier.
At col. 12, ln. 67, Breier teaches unplating surfaces of the sidewalls 104-108 such that the unplated portion includes (a) each of the primary grooves, (b) all portions of each primary groove. He further teaches that the finish for the grooves 12 and striking face 11 can be the same (col. 8, ln. 49) and that 11, 12 and 13 may be of one color (Col. 9, ln. 18) and that areas 11 may optionally be left unplated to rust (col. 130, ln. 45) and that such is a matter of design choice (col. 11, ln. 19). As such, to have included all area between adjacent primary grooves, thereby defining an oxidizable strike face surface area having an oxidizable heel-toe width and an oxidizable sole-top length on the face of Hettinger would have been obvious in order to obtain the desired appearance and design of the club.
Hettinger inherently has a total planar strike face surface area.
The art applied above does not discuss a temporary user-removable protective film over at least a portion of the oxidizable strike face surface area. However, films are known in the art such that metal products don't rust in storage and transit. Nitto teaches the use of a weather resistant polymeric sheet of surface protective materials such as their SPV-AM-500/FG-3500 that have an elongation of 170 as recited in the claims. To have used such in Hettinger would have been obvious in order to protect the surface from the elements until ready to use. PE Protective Film Manufacturer, NPL, by way of example. On skilled in the art looking at the problem of preventing exposure of the surface of the club of Hettinger to the elements would find the solution obvious in peelable protective coverings commonly used in metal products.
Lastly, Breier does not define the size of surface appearances in the context or a ratio of strike face surface area divided by total volume. However, one can see from fig. 1 of Breier in view of applicant’s own fig. 1 that his ration of oxidizable strike face area compared to the total volume, the total planar stricking face surface area and the total surface area are inherently taught.
Claims 27 and 28 does not define a bottom edge or top edge of the planar strike face. Where the prior art is considered to fairly teach the bottom edge and top edge of 1040 in Hettinger to be an unplated portion of oxidizable metal substrate, the limitation that such extends to the bottom edge and top edge is considered fairly taught meeting the limitations of the claims.
As to claim 31, Hettinger shows a face thickness of d16 of 5.8-6.5 (col. 14, on. 9) meeting the limitation of a thickness of at least 4.8 mm. His fig. 10 fairly suggests that his area of oxidizable strike face surface area modified by the art divided by the total planar strike face surface area is at least 0.75 meeting the limitations of the claim.
As to claim 34, Nitto teaches the adhesive on his protective film on pg. 21 that inherently functions to attach to the planar strike face and seal an underlying area of the planar strike face from environmental exposure and inhibit oxidation.
Claim(s) 26 are rejected under 35 U.S.C. 103 as obvious over Hettinger et al. 9,821,202 in view of Breier et al. 8,827,832 and further in view of Nitto SPV-AM-500/FG-3500 and further in view of Nakamura 2010/0304884.
As to claim 26, to cover the entire face area surface of Hettinger greater than the oxidizable strike face surface area would have been obvious to protect the entire club face. As to the second limitation in the claim, he does not discuss the appearance of his grooved area 1040.
Brier teaches that the groove 12 may be of a “rough or heavily textured appearance.” (col. 9, ln. 35) and that “the surface roughness of the surface finishes discussed above may vary depending on design choice.”. (col. , ln. 25)
Nakamura teachs at [0050] that abrasive blasting may be used on that areas of the face lines to increase the surface roughness and backspin.
To have blasted the face portion 1040 of Hettinger would have been obvious in order to change its appearance and make roughen the surface to impart backspin as taught by the art.
Claim(s) 29 and 30 are rejected under 35 U.S.C. 103 as obvious over Hettinger et al. 9,821,202 in view of Breier et al. 8,827,832 and further in view of Nitto SPV-AM-500/FG-3500 and further in view of Lin 2006/0025233 in view of Ban 10,894,192.
While Hettinger does not discuss auxiliary grooves located between the primary grooves, Ban teaches providing such at 3, 4 to impart back spin. To have added such to Hettinger would have been obvious for the same reason and the resulting combination would be arranged such that the temporary user-removable cover extends over at least a portion of the plurality of auxiliary grooves as recited in the claim.
Where fig. 1 of Ban shows auxiliary grooves higher than the highest primary groove 2, claim 30 is considered met where he teaches including auxiliary grooves a first vertical distance greater than a second vertical distance above the horizontal ground plane to a highest primary groove.
Claim(s) 32, 33, 37, 38, 39 and 40 are rejected under 35 U.S.C. 103 as obvious over Hettinger et al. 9,821,202 in view of Breier et al. 8,827,832 and further in view of Nitto SPV-AM-500/FG-3500 and further in view of Pennerath 2005/0126695.
As to claims 32, 33, 37, 38, the previously applied art fails to discuss the combination of a non-stick tab in combination with the cover. Such tabs are old and well known to make them easier to remove. Pennerath teaches it is considered old and well-known to combine tabs with removable protective coatings in order to be able to grip and remove them easier. Pennerath teaches the use of such tabs 14 in combination. To have combined a tab with the previously taught prior art tape would have been obvious in order to more easily remove the second protective coating.
Claim 39 is rejected for the reasons set forth above with respect to claim 28.
Claim 40 is rejected for the reasons set forth above with respect to claim 31.
Conclusion
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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