DETAILED ACTION
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) 1-7 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishii et al. (2013/0172105). Claim 1, Ishii discloses a golf ball comprising a thermoplastic core with a positive hardness gradient [0058]. The core is made from highly neutralized acid polymer neutralized up to 100% with a cation source and a plasticizer. Examples include HPF AD1035 (ethylene and alpha beta unsaturated carboxylic acid) (table II: [0062-0063, 0065]). The golf ball includes a cover and the ball may have a nonconforming initial velocity [0029]. Claim 2, HPF AD1035 is ethylene acid acrylate terpolymer. Claims 3-4, the golf ball diameter is at least 1.68 inches or nonconforming [0029]. Claims 5-6, the golf ball weight is between 45 to 45.8 g (1.59 to 1.62 ounce) or nonconforming [0029]. Claim 7, the initial velocity may be conforming [0029]. Claim 12, the core is made from highly neutralized acid polymer neutralized up to 100% with a cation source [0062].
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 9,604,106 in view of Tomita et al. (2013/0260916). The ‘106 claims include all the limitations of the instant claims except the nonconforming initial velocity. One of ordinary skill in the art would have modified the USGA conforming requirements to nonconforming features for casual play, see Tomita [0101].
Claims 1, 2, 8, 10, 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 of U.S. Patent No. 9,675,846 in view of Tomita et al. (2013/0260916). The ‘846 claims include all the limitations of the instant claims except the nonconforming initial velocity. One of ordinary skill in the art would have modified the USGA conforming requirements to nonconforming features for casual play, see Tomita [0101].
Claims 1, 2, 9, 10, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 9,764,195 in view of Tomita et al. (2013/0260916). The ‘195 claims include all the limitations of the instant claims except the nonconforming initial velocity. One of ordinary skill in the art would have modified the USGA conforming requirements to nonconforming features for casual play, see Tomita [0101].
Claims 1, 2, 10, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of U.S. Patent No. 10,080,926 in view of Tomita et al. (2013/0260916). The ‘926 claims include all the limitations of the instant claims except the nonconforming initial velocity. One of ordinary skill in the art would have modified the USGA conforming requirements to nonconforming features for casual play, see Tomita [0101].
Claims 1, 2, 10, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 of U.S. Patent No. 10,150,010 in view of Tomita et al. (2013/0260916). The ‘010 claims include all the limitations of the instant claims except the nonconforming initial velocity. One of ordinary skill in the art would have modified the USGA conforming requirements to nonconforming features for casual play, see Tomita [0101].
Claims 1-2 and 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 of U.S. Patent No. 11,679,304 in view of Tomita et al. (2013/0260916). The ‘304 claims include all the limitations of the instant claims except the nonconforming initial velocity. One of ordinary skill in the art would have modified the USGA conforming requirements to nonconforming features for casual play, see Tomita [0101].
Conclusion
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/RAEANN GORDEN/Primary Examiner, Art Unit 3711
June 16, 2026
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