CTNF 18/806,999 CTNF 88041 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-25 AIA Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 28 August 2023 . It is noted, however, that applicant has not filed a certified copy of the JP 2023-137956 application as required by 37 CFR 1.55. Claim Objections 07-29-01 AIA Claim 2 is objected to because of the following informalities: The inequality expression factor, “FC” must be identified. The examiner suggests that ball deflection is intended . Appropriate correction is required. 07-29-01 AIA Claim 4 is objected to because of the following informalities: The inequality expression factor, “FC” must be identified. The examiner suggests that ball deflection is intended . Appropriate correction is required. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim (s) 1 and 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe, U.S. Patent Application No. 2004/0142770, in view of Inoue et al., U.S. Patent Application No 2020/0206574. As to Claim 1 , Watanabe teaches a golf ball comprising a core (1), a cover (3) and an intermediate layer (2) formed therebetween, paragraph 0020. The core may have specific gravity of 1.11, the intermediate layer may have specific gravity of 1.11, and the cover may have specific gravity of 1.13, see Tables 1-4. It follows that the respective specific gravities have a standard deviation of 0.07 or less (0.01). Watanabe is silent as to the material hardness of the cover and Watanabe does not disclose ball deflection. Inoue teaches a similar golf ball comprising a core, an intermediate layer, and a cover, paragraph 0016. The cover may have material hardness of 52 Shore D or less, paragraph 0089, and the ball may exhibit deflection when compressed as claimed of 2.8 mm or less, paragraph 0143. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe with cover material hardness and ball deflection, as claimed and as taught by Inoue, to provide Watanabe with known substitute ball characteristics. As to Claim 5 , Watanabe teaches that specific gravities of the core, the intermediate layer and the cover may all be from 1.10 to 1.13, as discussed above. As to Claim 6 , Watanabe teaches that difference between the specific gravity of the intermediate layer and that of the cover, may be equal to or greater than -0.03 and equal to or less than 0.03, as discussed above. As to Claim 7 , Watanabe teaches that the intermediate layer may be formed of a layer including barium sulfate filler, paragraph 0073. It is inherent that barium sulfate may perform as a specific gravity modifier. As to Claim 8 , Inoue teaches that the intermediate layer material hardness may be 60 Shore D or more, paragraph 0087. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, as modified, with intermediate layer material hardness as claimed and as taught by Inoue, to provide Watanabe, as modified with a known substitute intermediate layer characteristic. As to Claim 9 , Inoue teaches that cover material hardness may be 40 Shore D or more, paragraph 0089. It would have been obvious to one or ordinary skill in the art before the effective filing date to provide Watanabe, as modified with a cover material hardness as claimed and as taught by Inoue, to provide Watanabe, as modified, with a known cover material characteristic . 07-22-aia AIA Claim (s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe, in view of Inoue , as applied to claim 1 above, and further in view of Yamagishi et al., U.S. Patent No. 5,876,294. Watanabe, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 3 , Watanabe, as modified, is silent as to a range for ball moment of inertia. Yamagishi teaches a similar golf ball, Col. 3, ln. 31-34. The ball may have a moment of inertia from 82.5 to 85.0 g/ square centimeter, Col. 5, ln. 26-30. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, as modified, with a moment of inertia within the claimed range, as taught by Yamagishi, to provide Watanabe, as modified, with a known substitute ball characteristic . Double Patenting 08-33 AIA 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. 08-35 Claim s 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 8-15 of copending Application No. 18/966,441 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1, 14, and 15 of the co-pending application disclose the limitations of Claim 1. Claims 8-13 of the co-pending application disclose the limitations of Claims 2-7 respectively . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 1 May 2026 Application/Control Number: 18/806,999 Page 2 Art Unit: 3711 Application/Control Number: 18/806,999 Page 3 Art Unit: 3711 Application/Control Number: 18/806,999 Page 4 Art Unit: 3711 Application/Control Number: 18/806,999 Page 5 Art Unit: 3711 Application/Control Number: 18/806,999 Page 6 Art Unit: 3711 Application/Control Number: 18/806,999 Page 7 Art Unit: 3711 Application/Control Number: 18/806,999 Page 8 Art Unit: 3711
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