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 § 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) 1-4, 6, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Day et al. (USPN 10213665) in view of Cleghorn et al. (USPN 10035051).
Regarding claim 1, Day et al. discloses a club head having a body and weight assembly (See Figures 4-9). The body includes a striking face having a lower leading edge and a sole 118 extending from the lower leading edge. The sole also includes a recessed channel 601 having a first sidewall extending in a toe-heel direction with ribs formed in the sidewall. The weight assembly includes a weight 715, cover 401, and fastener 409. The weight is disposed within the recessed channel and configured to move therein. The cover releasably secures the weight within the recessed channel. The fastener couples to the cover to the body. When the cover is in the locked position, the cover is disposed in the recessed channel and secures the weight within the recessed channel wherein a gap between the sole and the exterior of the cover is no more than 5mm (See Column 4, lines 51 through 67). In the unlocked position, the cover is raised and the weight is moveable within the recessed channel. Day et al. discloses ribs in the sidewall for positioning the weight but does not disclose dimples in the sidewall. Cleghorn et al. discloses a club head having a recessed channel with dimpled sidewalls 1185 such that the weight can be adjusted within the recessed channel (See Column 16, lines 40 through 51). One having ordinary skill in the art would have found it obvious to have the sidewalls dimpled rather than ribbed, as taught by Cleghorn et al., in order to position the weight within the recessed channel.
Regarding claim 2, Day et al. discloses the club head being a wood golf club head having a crown, face, and sole.
Regarding claim 3, Day et al. discloses 0% of the outer surface of the weight is visible in the locked configuration.
Regarding claim 4, Day et al. discloses the fastener configured to retain the weight within the recessed channel only indirectly by the cover.
Regarding claim 6, see the above regarding claim 1.
Regarding claim 9, Day et al. discloses the portion of the exterior surface proximal to the first sidewall is an edge of the exterior surface proximal to the first sidewall (See Figures 4-9).
Regarding claim 10, Day et al. discloses the recessed channel has a second sidewall opposite to the first sidewall and extending along the toe-heel direction, wherein the first and second sidewalls are respectfully proximal and distal to the lower leading edge of a striking face plane tangential to an outermost surface of the striking face (See Figures 4-9).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12102895. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application does not claim a weight having a position indicator. Though not claimed in claim 1 of the instant application, the limitations of claim 1 of US Patent 12102895 encompasses the limitations of claim 1 of the instant application. In light of the above, claim 1 of the instant application is anticipated by claim 1 of US Patent 12102895. Claim 10 of US Patent 12102895 encompasses the limitations of claim 11 of the instant application, and claim 16 of US Patent 12102895 encompasses the limitations of claim 17 of the instant application.
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
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