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 § 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.
Claims 5 and 8 are 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.
Claims 5 and 8 contain the trademark/trade name Kevlar. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe material and, accordingly, the identification/description is indefinite.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 16, 18, and 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Johnson et al. (USPN 12239890)
Regarding claim 16, Johnson et al. discloses a club head having a body with a recessed ledge and a crown insert wherein the crown body is made of metals such as titanium and steel and the crown insert made of a composite or polymeric material such as FRP, PPS, etc. (See Column 15, line 42, to Column 16, line 45, and Column 17, lines 25 through 51). Based on the material of the crown insert, the elastic modulus of the material is considered to be inherent. Johnson et al. also discloses the club head having a striking face wherein the striking face is attached to the front of the body which includes the sole.
Regarding claim 18, see the above regarding claim 16.
Regarding claim 19, Johnson et al. discloses the crown insert formed of PPS material and composite material.
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 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (USPN 12239890).
Regarding claim 1, Johnson et al. discloses a club head having a body with a recessed ledge and a crown insert wherein the crown body is made of metals such as titanium and steel and the crown insert made of a composite or polymeric material such as FRP, PPS, etc. (See Column 15, line 42, to Column 16, line 45, and Column 17, lines 25 through 51). Based on the material of the crown insert, the elastic modulus of the material is considered to be inherent. The summary of the invention notes that the crown insert has a density of 1 to 2 g/cc (See Paragraph bridging columns 2 and 3). Steel inherently has a density of 7.8 g/cc and titanium inherently has a density of 4.5 g/cc. Considering the above, the crown insert has a density less than the density of the body. One having ordinary skill in the art would have found it obvious to have the second material of a density less than the first material, as taught by Johnson et al., in order to lower the center of gravity of the club head. Johnson et al. also discloses the club head having a striking face wherein the striking face is attached to the front of the body which includes the sole. Applicant does not disclose why having a crown insert coverage of 85% is critical in order to attain the invention. According to paragraph 0065 of applicant specification the coverage can be 50% to 100% in which Johnson et al. shows the crown insert coverage of greater than 50% (See Figure 2). Johnson et al. uses the crown insert construction to lower the center of gravity, in which more coverage would appear to further reduce the center of gravity. Absent any showing of unexpected result, one having ordinary skill in the art would have found the amount of coverage from the crown insert to be mere routine optimization.
Regarding claim 3, see the above regarding claim 1.
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 1-20 of U.S. Patent No. 12102890 in view of Johnson et al. (USPN 12239890). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 12102890 does not claim the density of the second material being less than the first material. Johnson et al. discloses a club head having a body with a recessed ledge and a crown insert wherein the crown body is made of metals such as titanium and steel and the crown insert made of a composite or polymeric material such as FRP, PPS, etc. (See Column 15, line 42, to Column 16, line 45, and Column 17, lines 25 through 51). The summary of the invention notes that the crown insert has a density of 1 to 2 g/cc (See Paragraph bridging columns 2 and 3). Steel inherently has a density of 7.8 g/cc and titanium inherently has a density of 4.5 g/cc. Considering the above, the crown insert has a density less than the density of the body. One having ordinary skill in the art would have found it obvious to have the second material of a density less tan the first material, as taught by Johnson et al., in order to lower the center of gravity of the club head.
Claims 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11497971. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application does not claim a cover. Though a cover is not claimed in the instant application, claim 1 of US Patent 11497971 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 11497971.
Claims 1, 3, 4, 6, 7, 9, 10, 12, 14-16, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, and 9-13 of U.S. Patent No. 11077340 in view of Johnson et al. (USPN 12239890). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 11077340 does not claim the density of the second material being less than the first material. Johnson et al. discloses a club head having a body with a recessed ledge and a crown insert wherein the crown body is made of metals such as titanium and steel and the crown insert made of a composite or polymeric material such as FRP, PPS, etc. (See Column 15, line 42, to Column 16, line 45, and Column 17, lines 25 through 51). The summary of the invention notes that the crown insert has a density of 1 to 2 g/cc (See Paragraph bridging columns 2 and 3). Steel inherently has a density of 7.8 g/cc and titanium inherently has a density of 4.5 g/cc. Considering the above, the crown insert has a density less than the density of the body. One having ordinary skill in the art would have found it obvious to have the second material of a density less than the first material, as taught by Johnson et al., in order to lower the center of gravity of the club head.
Claims 1, 6, 16, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7- 9 of U.S. Patent No. 10583334 in view of Johnson et al. (USPN 12239890). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 10583334 does not claim the density of the second material being less than the first material. Johnson et al. discloses a club head having a body with a recessed ledge and a crown insert wherein the crown body is made of metals such as titanium and steel and the crown insert made of a composite or polymeric material such as FRP, PPS, etc. (See Column 15, line 42, to Column 16, line 45, and Column 17, lines 25 through 51). The summary of the invention notes that the crown insert has a density of 1 to 2 g/cc (See Paragraph bridging columns 2 and 3). Steel inherently has a density of 7.8 g/cc and titanium inherently has a density of 4.5 g/cc. Considering the above, the crown insert has a density less than the density of the body. One having ordinary skill in the art would have found it obvious to have the second material of a density less than the first material, as taught by Johnson et al., in order to lower the center of gravity of the club head.
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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