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 1-2 and 5 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. Claim 1, line 10, no antecedent basis for outer core (amend to mantle). Claim 2, no antecedent basis for the first radio-opaque filler and second first radio-opaque filler. Claim 5, no antecedent basis for the first radio-opaque filler.
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cavallaro et al (5,810,678) in view of Sullivan et al. (2012/0184396). Claims 1-2, Cavallaro discloses a golf ball comprising a core made from polybutadiene, a mantle, and a cover (col. 6, lines 14-21). The core includes barium sulfate (radio-opaque filler) in the amount of 20.5-25.8% by weight (table 1). The core has a density less than 1.2 (col. 14, lines 27-28). Cavallero discloses the core includes a polybutadiene, zinc diacrylate, zinc oxide, and peroxide but does not disclose zinc stearate and organic sulfur. Sullivan teaches a core composition comprising polybutadiene, zinc diacrylate, zinc oxide, peroxide, zinc stearate and organic sulfur [0031, 0032, 0039]. One of ordinary skill in the art would have included zinc stearate and organic sulfur to add in processing, since such ingredients are known in the golf ball art. The mantle is made from an ionomer (col. 12, lines 6-7) with a thickness from 0.025 to 0.125 inch (col. 14, lines 15-16) and a Shore D hardness of 60 (col. 16, lines 14-18). The cover includes barium sulfate (radio-opaque filler) in the amount of 30% by weight (col. 14, lines 38-41). Cavallero does not disclose different fillers in the layers. However, Sullivan teaches interchangeable fillers including barium sulfate, bismuth, and tungsten [0036]. One of ordinary skill in the art would modify the type of filler as an obvious design choice, Sullivan teaches the fillers as interchangeable [0036]. Claim 3, the cover layer is made from an ionomer (col. 12, lines 29-34). Claims 4-5, Cavallaro discloses a golf ball comprising a core made from polybutadiene, a mantle made from butadiene materials (col. 11, line 48), and a cover (col. 6, lines 14-21). The core includes barium sulfate (radio-opaque filler) in the amount of 20.5-25.8% by weight (table 1). The core has a density less than 1.2 (col. 14, lines 27-28). Cavallero discloses the core includes a polybutadiene, zinc diacrylate, zinc oxide, and peroxide but does not disclose zinc stearate and organic sulfur. Sullivan teaches dual core compositions comprising polybutadiene, zinc diacrylate, zinc oxide, peroxide, zinc stearate and organic sulfur [0030, 0031, 0032, 0039]. One of ordinary skill in the art would have included zinc stearate and organic sulfur to add in processing, since such ingredients are known in the golf ball art. The cover includes barium sulfate (radio-opaque filler) in the amount of 30% by weight (col. 14, lines 38-41). Cavallero does not discloses different fillers in the layers. However, Sullivan teaches interchangeable fillers including barium sulfate, bismuth, and tungsten [0036]. One of ordinary skill in the art would modify the type of filler as an obvious design choice, Sullivan teaches the fillers as interchangeable [0036]. Claim 6, the cover layer is made from an ionomer (col. 12, lines 29-34). One of ordinary skill in the art would modify the type of filler as an obvious design choice, Sullivan teaches the fillers as interchangeable [0036].
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,318,354. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘354 claims anticipate the instant claims.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,712,604. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘604 claims anticipate the instant claims.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,083,390. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘390 claims anticipate the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAEANN GORDEN whose telephone number is (571)272-4409. The examiner can normally be reached Monday-Friday 8am-5pm.
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/RAEANN GORDEN/Primary Examiner, Art Unit 3711
June 15, 2026
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