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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 9-13 and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dai et al. (CN 110665198 A).
Regarding claim 9, Dai et al. discloses a club head having a striking face portion and a body portion attached to the striking face wherein the striking face portion and the body portion define an internal cavity wherein the internal cavity includes an additive manufactured fill.
Regarding claim 10, Dai et al. discloses the additive manufactured fill being metal.
Regarding claim 11, Dai et al. discloses the additive manufactured fill being a lattice structure.
Regarding claim 12, Dai et al. discloses the lattice structure having a first lattice structure portion having a first lattice structure density and a second lattice structure having a second lattice structure density wherein the second lattice structure density is less than the first lattice structure density.
Regarding claim 13, Dai et al. discloses the lattice structure making up more than 30% of the internal cavity volume.
Regarding claim 17, see the above regarding claims 9 and 11.
Regarding claim 18, Dai et al. discloses the lattice structure having a first lattice structure portion having a first lattice structure density and a second lattice structure having a second lattice structure density wherein the second lattice structure density is less than the first lattice structure density.
Regarding claim 19, see the above regarding claim 13.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cleghorn et al. (US 2017/0173420) in view of Dai et al. (CN 110665198 A).
Regarding claim 1, Cleghorn et al. discloses a club head having a striking face portion and a body portion attached to the rear of the striking face portion. The striking face portion and the body portion formed an internal cavity. The body portion further includes a weight adjustment portion having an elongated channel having a plurality of scalloped depressions along a lower wall of the elongate channel, a weight member having a fastener aperture, and a fastener having a fastener head and threaded shaft (See Figures 40 and 43). Cleghorn et al. notes that the club head design can be applied to utility type club heads (See Paragraph 0116). Cleghorn et al. does not disclose the internal cavity having an additive manufactured fill. Dai et al. discloses a utility club head having a striking face and a body attached to the striking face wherein the striking face and the body define an internal cavity wherein the internal cavity includes an additive manufactured fill. One having ordinary skill in the art would have found it obvious to have an additive manufactured fill in the internal cavity, as taught by Dai et al., in order to improve the hitting sound of the club head.
Regarding claim 2, Dai et al. discloses the additive manufactured fill being metal.
Regarding claim 3, Dai et al. discloses the additive manufactured fill being a lattice structure.
Regarding claim 4, Dai et al. discloses the lattice structure having a first lattice structure portion having a first lattice structure density and a second lattice structure having a second lattice structure density wherein the second lattice structure density is less than the first lattice structure density.
Regarding claim 5, Dai et al. discloses the lattice structure making up more than 30% of the internal cavity volume.
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 1-5, 9-13, and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 14 of Application No. 18736764 in view of Dai et al. (CN 110665198 A). Application No. 18/736764 claims the same subject matter except for having an additive manufactured fill. Dai et al. discloses a utility club head having a striking face and a body attached to the striking face wherein the striking face and the body define an internal cavity wherein the internal cavity includes an additive manufactured fill. One having ordinary skill in the art would have found it obvious to have an additive manufactured fill in the internal cavity, as taught by Dai et al., in order to improve the hitting sound of the club head.
This is a provisional obvious double patenting rejection.
Claims 1-5, 9-13, and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, and 16 of US Patent 11925841 in view of Dai et al. (CN 110665198 A). US Patent 11925841 claims the same subject matter except for having an additive manufactured fill. Dai et al. discloses a utility club head having a striking face and a body attached to the striking face wherein the striking face and the body define an internal cavity wherein the internal cavity includes an additive manufactured fill. One having ordinary skill in the art would have found it obvious to have an additive manufactured fill in the internal cavity, as taught by Dai et al., in order to improve the hitting sound of the club head.
Allowable Subject Matter
Claims 6-8, 14-16, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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
