DETAILED ACTION
This Office action is responsive to communication received 09/10/2024 – application papers received, Power of Attorney, IDS and miscellaneous letter styled “Recission of any Prior Disclaimers and Request to Revisit Art”.
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 .
Continuation Data
The application filing receipt, mailed 09/26/2024, identifies that this application is a CON of 18/540,738 12/14/2023 PAT 12109460 which is a CIP of 18/055,204 11/14/2022 PAT 12377321 which is a CON of 17/678,779 02/23/2022 PAT 11504585 which is a CON of 17/525,231 11/12/2021 PAT 11779816 which is a CON of 16/901,876 06/15/2020 PAT 11202944.
Priority
This application repeats a substantial portion of prior Application No. 18/540,738, filed 12/14/2023, and adds disclosure not presented in the prior application. In this case, the language “wherein each of the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves”, which is found in each of independent claims 1, 12 and 19, is not supported by the parent application 18/540,738. Thus, the effective filing date of instant claims 1-20 has been established as the actual filing date of this application, namely 09/10/2024. See MPEP 2152.01.
Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Status of Claims
Claims 1-20 are pending.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the feature “wherein each of the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves” (claims 1, 12 and 19) must be shown or the feature(s) canceled from the claim(s). Although paragraph [0069] of the specification details that the embodiment in Fig. 2a shows that the micro-grooves 225 may generally exhibit a geometry that is substantially circular, there is no clear indication that the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The language “wherein each of the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves” (claims 1, 12 and 19) lacks proper antecedent basis in the specification.
FOLLOWING IS AN ACTION ON THE MERITS:
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 USPN 12,109,460 in view of US PUBS 2015/0367197 to Ripp et al (hereinafter referred to as “Ripp”).
The claims of the prior ‘460 patent differ from the instant claims in that the prior ‘460 patent claims do not require “wherein each of the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves”, as now recited in each of independent claims 1, 12 and 19. Ripp teaches that the micro-grooves (e.g., arcuate grooves 310) may be formed as concentric circles and, with further examination of FIG. 8, it is clear that the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves. See annotated FIG. 8 of Ripp, hereinbelow. Note that Ripp shows that the micro-grooves that are substantially symmetrical about a centerline are of substantially circular shape, wherein the circular shape provides “a visual cue to a user of the club head 300 for more readily identifying the face center 352” (i.e., see FIG. 8 and paragraph [0044]). In addition, the groove pattern in Ripp optimizes overall spin of a struck golf ball (i.e., see paragraphs [0002], [0005], [0031], [0041] and [0042]). In view of the teaching in Ripp, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed invention of the prior ‘460 patent so that each of the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves, as there would have been a reasonable expectation of success that the specific configuration and arrangement of the micro-grooves on the face portion would have provided a beneficial, specific spin and flight characteristic to a struck golf ball.
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As to the remaining limitations in the claims, note the following comments:
As to claim 1, see claim 1 of the ‘460 patent.
As to claim 2, see claim 8 of the ‘460 patent.
As to claim 3, see claim 9 of the ‘460 patent.
As to claim 4, see claim 5 of the ‘460 patent.
As to claim 5, see claim 6 of the ‘460 patent.
As to claim 6, see claim 7 of the ‘460 patent.
As to claim 7, see claim 1 of the ‘460 patent.
As to claim 8, see claim 2 of the ‘460 patent.
As to claim 9, see claim 3 of the ‘460 patent.
As to claim 10, see claim 10 of the ‘460 patent.
As to claim 11, see claim 11 of the ‘460 patent.
As to claim 12, see claim 5 (as dependent upon claim 1) of the ‘460 patent.
As to claim 13, see claim 6 of the ‘460 patent.
As to claim 14, see claim 7 of the ‘460 patent.
As to claim 15, see claim 19 of the ‘460 patent.
As to claim 16, see claim 1 of the ‘460 patent.
As to claim 17, see claim 8 of the ‘460 patent.
As to claim 18, see claim 9 of the ‘460 patent.
As to claim 19, see claim 19 of the ‘460 patent.
As to claim 20, see claim 19 of the ‘460 patent.
Further Observations on Obviousness-Type Double Patenting
Applicant is respectfully urged to maintain a clear line of demarcation between the instant claim set and the claims in each of the further, copending applications listed hereinbelow. While no double patenting rejections based on the copending applications listed below are currently being made of record, maintaining a clear distinction between the instant claims and the claims of each of the copending applications listed here will help to reduce the likelihood of obviousness-type double patenting concerns arising during later prosecution in the instant case. It is clear that the applicant, who in this case is most familiar with the language, content and prosecution history of the copending applications identified here, is best equipped to recognize any potential double patenting concerns and should therefore make an effort to amend the instant claims or file appropriate terminal disclaimers. The applicant is respectfully requested to provide further comment as to whether the applicant believes that the claims of any of the copending application listed hereinbelow, conflict, or do not conflict, with the claims of the instant application.
United States Patent Application Serial Number(s): 18/971,900; 18/971,865; and 19/180,437
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12-15 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 11,202,944 to Luttrell et al (hereinafter referred to as “Luttrell”) in view of US PUBS 2015/0367197 to Ripp et al (hereinafter referred to as “Ripp”) and also in view of US PUBS 2015/0328508 to Parsons et al (hereinafter referred to as “Parsons”) and also in view of US PUBS 2005/0020376 to Huang et al (hereinafter referred to as “Huang”).
As to independent claims 12 and 19, Luttrell shows a golf club head (100) comprising: a club face (102) located at a frontal portion of the golf club head (FIG. 1), the club head (100) further comprising; an external surface, and wherein the external surface further comprises; a central region (128) occupying a central third of the club face (102), measured horizontally, a toe region (132) occupying a region toeward of the central region, and a heel region (130) occupying a region heelward of the central region an internal surface, and a body portion (i.e., combined parts 104, 106) located rearward of the club face (102). While Luttrell shows laser-generated features across the club face,
Luttrell lacks an explicit disclosure of the features “having an external surface roughness formed by a plurality of micro-grooves”. Ripp shows it to be old in the art of golf club heads, for both iron-type and wood-type club heads, to provide the external surface with an external surface roughness that conforms to USGA requirements for roughness, and wherein the surface roughness enhances the friction between the club head striking face and a golf ball upon contact, and thus enhancing the overall spin of a struck golf ball (i.e., see texture pattern 200 including grooves 210 and paragraph [0002], [0003], [0022] and [0024]). In view of the teaching to Ripp, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the device in Luttrell by providing the central region of the external surface of the club face (102) with a surface roughness that not only conforms to USGA Rules, but also provides distinct spin characteristics to a struck golf ball and thus enhances the performance of the club head.
Lutrell further lacks an explicit disclosure of “wherein each of the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves”. Ripp teaches that the micro-grooves (e.g., arcuate grooves 310) may be formed as concentric circles and, with further examination of FIG. 8, it is clear that the plurality of micro-grooves are substantially symmetrical about a centerline of each of the plurality of micro-grooves. See annotated FIG. 8 of Rip, hereinbelow. Note that Ripp shows that the micro-grooves that are substantially symmetrical about a centerline are also of substantially circular shape, wherein the circular shape provides “a visual cue to a user of the club head 300 for more readily identifying the face center 352” (i.e., see FIG. 8 and paragraph [0044]). In addition, the groove pattern in Ripp optimizes overall spin of a struck golf ball (i.e., see paragraphs [0002], [0005], [0031], [0041] and [0042]). In view of the teaching in Ripp, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Luttrell by incorporating micro-grooves arranged in a substantially symmetrical configuration about a centerline of each of the plurality of micro-grooves to modify and to enhance the overall spin characteristics of the striking face.
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Lutrell lacks the specific “average groove depth” for the plurality of micro-grooves, as required by each of claims 12-14 and 20. Ripp also teaches that micro-grooves (i.e., arcuate grooves 210) may include a depth no greater than 0.05 mm (i.e., 50 μm) so as to optimize overall spin of a struck golf ball and also comply with USGA regulations for surface roughness. Ripp further notes that the surface roughness provided by the disclosed depth of the grooves (210) provides enhanced benefits of more acceptable spin following contact of a golf ball with a wet exterior surface (i.e., see paragraphs [0005], [0024] and [0042]). In view of the teachings in Ripp, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the club head in Luttrell by providing the club face with micro-grooves having a groove depth between about 45 μm and about 60 μm (claims 12 and 20), between about 45 μm and about 57 μm (claim 13), or between about 45 μm and about 55 μm (claim 14), in order to enhance the performance of the club face with respect to golf ball spin imparted, notably where moisture or water is present on the club face. The specific depth of the micro-grooves would have been realized through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Luttrell also lacks an explicit disclosure of the feature “having an internal surface roughness” for the internal surface of the club face. Parsons is cited to show that it is old in the art to provide an internal surface roughness to the club face. Although Parsons is motivated to provide the internal surface of the club face with a roughness to help secure a filler material to the interior walls of the club head, Huang proffers another motivation for providing a surface roughness to the internal surface of the club face to increase fatigue strength and the coefficient of restitution (COR) of the striking plate (i.e., see paragraph [0025] in Huang). In view of the combined teachings of Parsons and Huang, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the club head in Luttrell by including a suitable surface roughness on an internal surface of the club face in order to enhance the performance of the club face.
More specific to claims 15 and 19, Lutrell lacks an explicit disclosure of “where the plurality of micro-grooves are circular in shape”. Note that Ripp shows micro-grooves of substantially circular shape, wherein the circular shape provides “a visual cue to a user of the club head 300 for more readily identifying the face center 352” (i.e., see FIG. 8 and paragraph [0044]). In view of the teaching in Ripp, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Luttrell by incorporating micro-grooves of substantially circular shape to provide the golfer with a visual aid in locating the face center. In addition, and based on the remaining teachings in Ripp, it is clear that the micro-grooves of circular shape further serve to modify and to enhance the overall spin characteristics of the striking face (i.e., see paragraphs [0002], [0005], [0031], [0041] and [0042]).
Claim Objections - Minor
Claims 9, 12 and 15 are objected to because of the following informalities:
As to claim 9, line 2, the term “value” near the end of this line appears to perhaps have been inadvertently presented with underlining. Original claims presented in an application should not contain underlining. An explanation and correction is requested.
As to claim 12, line 14, a comma should follow “micro-grooves” at the end of this line.
As to claim 15, line 1, “where” should read --wherein-- for completeness.
Appropriate correction is required.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIGS. 21-22 in Nicolette, which shows a plurality of micro-grooves on the club face.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571)-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights