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 .
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim Objections
Claim 9 is objected to because of the following informalities: The features ED5 and ED6 lack an antecedent basis. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Given that as little as 10% of the dimples may satisfy condition (1), the limitation of Claim 12 suggests that the ball may have a total of 2,500 dimples. Appropriate correction is required.
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 1-13 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. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “edge angles” in claim 1 is used by the claim to mean “angle of a tangent line at a particular point in the depth of a dimple,” while the accepted meaning is “the angle where the edge of the dimple meets the land of the ball surface.” The term is indefinite because the specification does not clearly redefine the term.
Claim 11 is 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. It is not clear what parameters or characteristics may be considered to determine the type of a dimple. The scope of the claim is indefinite.
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.
Claim(s) 1, 2, and 5-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al., U.S. Patent Application No. 2005/0187038. As to Claim 1, Sasaki teaches a golf ball (2) on which a large number of dimples (12) may be formed on the surface, paragraph 0023. The dimples may have a dimple profile comprising a curved wall (curved faces), paragraphs 0042-0044. It is inherent that points where depths are 10 %, 20%, and 30 % exist. Sasaki teaches that at a point where the dimple depth is 10%, the dimple profile is turning downward toward the bottom, see Figure 3. At a point where the dimple depth is 20% the curve of the dimple profile has a point of inflection to begin a curved path toward the bottom, marking an area of steepest decline; therefore, an edge angle greater than the edge angle at the 10% depth, see Figure 3. It follows that ED2 is greater than ED1. The curved profile below the inflection point continues to curve toward the dimple bottom. It is inherent that the 30% point of depth occurs between 20% and 50%, suggesting that the edge angle at 30% may be less than the edge angle at 20%, see Figure 3, from which it follows that ED3 may be less than ED2. Sasaki teaches that the dimple profile design, with curvature radii providing the edge angles as disclosed, reduces the tendency of the ball surface to deteriorate and maintains flight performance, paragraph 0046, indicating that the curvature radii at noted points in the dimple profile represents a result effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date to set ED2 greater than ED1, as taught by Sasaki, to provide improved durability and to maintain flight performance. Sasaki, discloses the claimed invention except for specifically indicating that ED2 may be greater than ED3. It would have been obvious to one of ordinary skill in the art before the effective filing date to set ED2 greater than ED3, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980). Sasaki teaches that at least 10% of the number of dimples reflect the inequality relationship as claimed, paragraphs 0015, 0053, and 0054, noting that the dimple profile of Figure 3 is given as formula (1). Claim 1 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 2, Sasaki teaches that dimples satisfying the inequality expression of Claim 1 may account for at least 50% of the total number of dimples, paragraphs 0015, 0053, and 0054. As to Claim 5, Sasaki teaches that the 20% depth point occurs at the point of inflection where the curve having radius RW begins. The point of 50% depth lies at point further along the same curve suggesting that ED2 may be greater than ED5, for a ratio greater than 1. Sasaki, as modified, discloses the claimed invention except for specifying a ratio equal to or greater than 1.2. The examiner finds that the claimed inequality may have been discovered by routine optimization, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, supra. As to Claim 6, given that the 30% depth point lies further along the curve of radius RW, beyond the 20% depth point, Sasaki, together with cited case law is applied as in Claim 5 as to the ratio ED3 to ED5 being equal to or greater than 1.2. As to Claim 7, given that the 60% depth point lies further along the curve of radius RW, beyond the 20% depth point, Sasaki, together with cited case law is applied as in Claim 5 as to the ratio ED2 to ED6 being equal to or greater than 2.0. As to Claims 8 and 9, Sasaki teaches that points at 10%, 20%, 30%, 50%, and 60% are not more than 90 degrees, see Figure 3, noting that the curves of the dimple profile do not become vertical at any point along the path. As to Claim 10, Sasaki teaches that the total volume of dimples satisfying the condition given in Claim 1 may be 300 to 500 cubic millimeters, paragraph 0060. As to Claim 11, Sasaki teaches that at least 50% of the dimples satisfying formula (1) are dimples of a larger diameter, see Abstract and paragraph 0056, and noting that dimples having a larger diameter and satisfying formula (1) may be a percentage of all dimples satisfying formula (1), suggesting that at least two types of dimples may satisfy the condition of Claim 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the population of dimples with at least two types of dimples satisfying the condition of Claim 1, as suggested. Further, Sasaki teaches that dimples satisfying formula (1) may be of multiple types, paragraph 0063, suggesting that at least three type of dimples may satisfy the condition of Claim 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide at least three types of dimple satisfying the condition of Claim 1, as suggested. Claim 11 is treated as best understood in view of the rejection under 35 USC §112 (b). As to Claim 12, Sasaki teaches that the number of dimples satisfying the condition of Claim 1 may be from 250 to 500, paragraphs 0037 and 0057, noting that 90% of the dimples may satisfy formula (1) and that the ball may have 410 dimples. As to Claim 13,Sasaki teaches that an occupancy ratio of dimples satisfying the condition of Claim 1 may be 60 to 90 %, paragraph 0038.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki, in view of Moriyama, U.S. Patent Application No. 2008/0227570. Sasaki, as modified, substantially shows the claimed limitations, as disclosed above. As to Claim 3, Sasaki teaches a continuing curve of the dimple profile between the 20% depth and 50% depth, suggesting that the edge angle at 40% may be less than the edge angle at 30%, suggesting that ED4 may be equal to or less than ED3. Sasaki, as modified, does not specify the relationship between the 30% point and the 10% point or between the 40% point and the 10% point. Moriyama teaches a dimple profile defined by a smaller radius curve (R1) at the edge and extending downward to continuously join a larger radius curve (R2) which continues to the dimple bottom, paragraphs 0048 and 0049 and see Figure 4, suggesting that ED3 may be equal to or greater than ED1, which in turn may be equal to or greater than ED4. Moriyama teaches that the dimple profile shape including first and second curved surfaces (14, 16) suppresses drag and provides excellent flight performance, indicating that the dimple profile shape is a result effective variable. It would have been obvious to provide Sasaki, as modified, with a dimple profile including a first smaller radius curve continuing to a second larger radius curve, as taught by Moriyama, to provide Sasaki, as modified, with 10% depth point suggested to be equal to or greater than a 40% depth point and equal to or less than a 30% depth point, to yield the predictable result of improving flight performance. Sasaki, as modified, discloses the claimed invention except for specifically indicating the claimed inequality relationship. The examiner finds that the claimed inequality may have been discovered by routine optimization, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, supra. As to Claim 4, Moriyama teaches that a tangent line at the 50% depth point would produce and angle appearing to be less than the angle of a tangent line at the 10% depth point, see Figure 3, suggesting that ED1 may be greater than ED5, providing a ration of ED1 to ED5 greater than 1. The examiner finds that the claimed inequality may have been discovered by routine optimization, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, supra.
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 1-9 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-8 and 11-13 of copending Application No. 18/952,336 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-7 of the copending application disclose the limitations of Claims 1-7 respectively. Claim 8 of the copending application discloses the limitations of Claims 8 and 9. Claims 11-13 of the copending application disclose the limitations of Claims 11-13 respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/952,336, in view of Sasaki et al., U.S. Patent Application No. 2005/0187038,. Claim 1 of the copending application discloses the limitations of Claim 10, except for providing that the total volume of dimples satisfying the condition of Claim 1 may be from 300 to 500 cubic millimeters. Sasaki teaches that the total volume of dimples satisfying the condition given in Claim 1 may be 300 to 500 cubic millimeters, paragraph 0060. It would have been obvious to one of ordinary skill in the art to set the total dimple volume of dimples satisfying the condition of Claim 1, within the claimed range, as a known substitute dimple population.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 21 July 2026
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