DETAILED ACTION
This Office action is responsive to communication received 08/22/2024 – application papers received, including Power of Attorney, IDS, and miscellaneous letter styled “Rescission of any Prior Disclaimers and Request to Revisit Art”.
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 .
Continuity
This application is a DIV of 17/737,858 05/05/2022 PAT 12083396 which is a CON of 17/200,116 03/12/2021 PAT 11351427.
Priority
The effective filing date of this application is equal to the filing date of the parent application 17/200,116, filed 03/12/2021.
Drawings
The drawings were received on 08/22/2024. These drawings are acceptable.
Claim Objections - Minor
Claims 7 and 12-16 are objected to because of the following informalities:
As to claim 7, line 4 contains underlining. It is not clear if the underlining was intended to highlight terms in the claims or if the underlining was simply an extraneous marking that was inadvertently added. Only amended claims may contain markings. No underlining should be present on originally-filed claims. Appropriate correction is required.
As to claim 12, line 5, “defined” should read --define--. In line 13, it appears “of” should read --to-- for proper syntax. In line 15, “hollow-bodies” should read --hollow-bodied-- to correct a misspelling. Note that claims 13-16 share the objections of claim 12 by virtue of their dependency, directly or indirectly, on claim 12.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 U.S.C. § 112(b)
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 7 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 line 4, “said heel-to-toe direction” lacks proper antecedent basis.
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.
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Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,083,396 in view of US PUBS 2019/0168087 to Martens et al (hereinafter referred to as “Martens”).
Here, the instant, claimed method steps set forth in claims 1-16 present an orderly and obvious collection of steps in order to manufacture the claimed product of claims 1-16 of the ‘396 patent. Using the instant, claimed method would have resulted in the product set forth in the ‘396 patent. Although the claimed product of the ‘396 patent does not elude to the “curing” step now being recited in instant claims 1 and 6, or to the “inserting”, “inflating” and “removing” of a bladder recited in claim 6, or to the “joining” operation of claims 1 and 12, the use of curing, which in some cases involves inserting, inflating and removing of a bladder, to join a composite material that forms an insert that is to subsequently be joined to a metallic frame portion of a club head is known in the art as taught by Martens (i.e., see paragraphs [0036], [0038] and [0043]). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘396 patent by taking advantage of a curing operation followed by a joining operation in order to unite the lightweight portion with the metallic portion of the club head in a manner that facilitates the manufacture of the club head.
Note the following comments:
As to claim 1, see claims 1 and 10 of the ‘396 patent.
As to claims 2-3, see claim 4 of the ‘396 patent.
As to claim 4, see claim 5 of the ‘396 patent.
As to claim 5, see claim 6 of the ‘396 patent.
As to claim 7, see claim 13 of the ‘396 patent.
As to claim 8, see claim 14 of the ‘396 patent.
As to claim 9, see claim 15 of the ‘396 patent.
As to claim 10, see claim 16 of the ‘396 patent.
As to claim 11, see claim 12 of the ‘396 patent.
As to claims 13-14, see claim 4 of the ‘396 patent.
As to claim 15, see claim 5 of the ‘396 patent.
As to claim 16, see claim 6 of the ‘396 patent.
Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,083,396.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences and/or an obvious arrangement of the claimed features among the claims and/or are differences that are obvious and well known in the art.
As to claims 17-20, the claims of the ‘396 patent are more limiting than the instant product claims and thus encompass all of the limitations of the current product claims. For example, the claims of the ‘396 patent further require “wherein said first metallic portion at least partially conceals said internal topline support, said internal sole support”, and “wherein said striking face portion has a thickness of between about 0.75 mm and about 1.8 mm, wherein said lightweight portion has a substantially constant thickness of between about 0.5 mm and about 2.0 mm, wherein a perimeter portion of said rear wall portion has a thickness of between about 1.0 mm and about 2.0 mm, and wherein a central portion of said rear wall portion has a thickness of between about 50% to about 90% of said thickness of said perimeter portion of said rear wall portion”.
Note the following comments:
As to claim 17, see claims 1 and 10 of the ‘396 patent.
As to claim 18, see claims 2 and 11 of the ‘396 patent.
As to claim 19, see claim 12 of the ‘396 patent.
As to claim 20, see claims 4 and 5 of the ‘396 patent.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,351,427 in view of US PUBS 2019/0168087 to Martens et al (hereinafter referred to as “Martens”).
Here, the instant, claimed method steps set forth in claims 1-16 present an orderly and obvious collection of steps in order to manufacture the claimed product of claims 1-17 of the ‘427 patent. Using the instant, claimed method would have resulted in the product set forth in the ‘427 patent. Although the claimed product of the ‘427 patent does not elude to the “curing” step now being recited in instant claims 1 and 6, or to the “inserting”, “inflating” and “removing” of a bladder recited in claim 6, or to the “joining” operation of claims 1 and 12, the use of curing, which in some cases involves inserting, inflating and removing of a bladder, to join a composite material that forms an insert that is to subsequently be joined to a metallic frame portion of a club head is known in the art as taught by Martens (i.e., see paragraphs [0036], [0038] and [0043]). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the claimed invention of the ‘427 patent by taking advantage of a curing operation followed by a joining operation in order to unite the lightweight portion with the metallic portion of the club head in a manner that facilitates the manufacture of the club head.
Note the following comments:
As to claims 1-3, see claim 18 of the ‘427 patent.
As to claim 4, see claim 5 of the ‘427 patent.
As to claim 5, see claim 6 of the ‘427 patent.
As to claim 6, see claim 19 of the ‘427 patent.
As to claim 7, see claim 20 of the ‘427 patent.
As to claim 8, see claim 7 of the ‘427 patent.
As to claim 9, see claim 8 of the ‘427 patent.
As to claim 10, see claim 9 of the ‘427 patent.
As to claim 11, see claims 1 and 10 of the ‘427 patent.
As to claims 12-14, see claim 18 of the ‘427 patent.
As to claim 15, see claim 5 of the ‘427 patent.
As to claim 16, see claim 6 of the ‘427 patent.
Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,351,427.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences and/or an obvious arrangement of the claimed features among the claims and/or are differences that are obvious and well known in the art. Here, the claims of the ‘427 patent are more limiting than the instant claims and thus encompass all of the limitations of the current claims. For example, claim 1 of the ‘427 patent further requires “said lightweight portion extends continuously for 360 degrees from said internal face support, to said internal sole support, to said internal rear wall support, to said internal topline support”.
Note the following comments:
As to claims 17-19, see claims 1 and 10 of the ‘427 patent.
As to claim 20, see claim 5 of the ‘427 patent.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIG. 1 in Clarke;
Note FIGS. 8 and 10 in Breier;
See FIG. 8A in Gilbert;
FIG. 5 in Soracco;
FIG. 5 in Hirano;
FIG. 5B in Nakahara; and
FIG. 1 in Spackman.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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