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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 9-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The disclosure does not enable one of ordinary skill in the art to practice the invention as the specification does not mention a first material and second material, wherein the second material is more rigid than the first
Claims 11-14 are rejected due to their dependencies.
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 1-3, 5 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over US Patent 12109469. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the claims 1 and 15 in various combinations.
Claim 4 is rejected on the ground of nonstatutory double patenting as being obvious over US Patent 12109469 in view of US Publication 2013/0166405 by Mitzel. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 8 of the patent and Mitzel. The patent does not recite the limitations of claim 4 regarding the lattice structure formed of a flexible thermo plastic material. Mitzel teaches the lattice structure formed of a flexible thermo plastic material (Para 111 of Mitzel). It would have been obvious to a person having ordinary skill in the art having the teachings of US Patent 12109469 as modified and Mitzel before them, when the application was filed, to have modified the golf club head cover of US Patent 12109469 to have the golf club cover be made of thermos plastic material, as taught by Mitzel, to advantageously allow a golf club to fit easily within without breaking the headcover.
Claim 6 is rejected on the ground of nonstatutory double patenting as being obvious over US Patent 12109469 in view of US Patent 5437320 by Sung. Although the claims at issue are not identical, they are not patentably distinct from each other because of patent claim 8. The patent does not recite the limitations of claim 6 regarding a faceplate, wherein the faceplate is formed from a solid material, and wherein the faceplate is configured to be disposed adjacent to a ball-striking face of a golf club head when the golf club head is disposed in the headcover. Sung teaches faceplate is formed from a solid material, and wherein the faceplate is configured to be disposed adjacent to a ball-striking face of a golf club head when the golf club head is disposed in the headcover (Fig A-Examiner Annotated Fig 3 of Sung; the faceplates are the side walls that are located on the other surfaces of the golf head cover other than the lattice structures as they are flat and provide protection and have a degree of protective thickness). It would have been obvious to a person having ordinary skill in the art having the teachings of US Patent 12109469 as modified and Sung before them, when the application was filed, to have modified the golf club head cover faceplate be formed from a solid material, wherein the faceplate is configured to be disposed adjacent to a ball-striking face of a golf club head when the golf club head is disposed in the headcover, as taught by Sung, to advantageously provided durability to the headcover.
Claim 7 is rejected on the ground of nonstatutory double patenting as being obvious over US Patent 12109469 in view of US Publication 2013/0166405 by Mitzel. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the claims in various combinations. The patent does not recite the limitations of claim 7 regarding the continuous network of interconnected concave and convex surfaces is arranged between portions of the sleeve frame. Mitzel teaches the continuous network of interconnected concave and convex surfaces is arranged between portions of the sleeve frame (Para 11 of Mitzel, the continuous network of interconnected concave structures that form a lattice structure can be on certain portions of the head cover and therefore arranged between portions of the sleeve frame). It would have been obvious to a person having ordinary skill in the art having the teachings of US Patent 12109469 as modified and Mitzel before them, when the application was filed, to have modified the golf club head cover to include continuous network of interconnected concave and convex surfaces is arranged between portions of the sleeve frame, as taught by Mitzel, to advantageously provide a durable structure to the headcover so it is strong.
Claim 8 is rejected on the ground of nonstatutory double patenting as being obvious over US Patent 12109469 in view of US Patent 5437320 by Sung. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the claims in various combinations. The patent does not recite the limitations of claim 8 regarding wherein the chamber of the head portion of the body defines an internal geometry that conforms to an external geometry of a golf club head, and wherein the chamber of the head portion is at least partially defined by a wall. Sung teaches wherein the chamber of the head portion of the body defines an internal geometry that conforms to an external geometry of a golf club head, and wherein the chamber of the head portion is at least partially defined by a wall Fig 1 of Sung, the head portion of the body forms a geometric shape that conforms to that of the golf club head within). It would have been obvious to a person having ordinary skill in the art having the teachings of US Patent 12109469 as modified and Sung before them, when the application was filed, to have modified the golf club head cover to the head portion of the body defines an internal geometry that conforms to an external geometry of a golf club head, wherein the chamber of the head portion is at least partially defined by a wall, as taught by Sung, to advantageously fitting the shape of the club within so the club can be well protected.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 5437320 by Sung (Here forth “Sung”) in view of International Publication GB 2522576 by Gaffney (Here forth “Gaffney”) and US Publication 2013/0166405 by Mitzel (Here forth “Mitzel”).
Regarding claim 1, Sung discloses a headcover for a golf club (Fig A-Examiner Annotated Fig 3 of Sung shown below), comprising: a body (Fig A-Examiner Annotated Fig 3 of Sung shown below, body is the entire headcover), the body including: a head portion defining a chamber including a body aperture disposed at a heel end of the head portion, the body aperture being configured to provide access to the chamber (Fig A-Examiner Annotated Fig 3 of Sung shown below, a golf club fits in the chamber within the head portion that is at the heel end; an aperture provide access into chamber; the chamber of the head portion of the body defines an internal geometry that conforms to an external geometry of a golf club head, and wherein the chamber of the head portion is at least partially defined by a wall); and a sleeve portion extending outwardly from the head portion (Fig A-Examiner Annotated Fig 3 of Sung shown below, sleeve portion extends from head portion), [Not taught: wherein each of the head portion and the sleeve portion of the body includes a wall having a continuous network of interconnected concave and convex surfaces, wherein a sleeve cutout is defined by a sleeve frame of the sleeve portion, and wherein the body aperture and the sleeve cutout are in direct fluid communication with one another and are configured to receive a portion of the golf club].
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Fig A-Examiner Annotated Fig 3 of Sung
Limitation A: wherein a sleeve cutout is defined by a sleeve frame of the sleeve portion, and wherein the body aperture and the sleeve cutout are in direct fluid communication with one another and are configured to receive a portion of the golf club
Limitation B: continuous network of interconnected concave and convex surfaces
Gaffney discloses a similar golf headcover that teaches Limitation A, wherein a sleeve cutout is defined by a sleeve frame of the sleeve portion, and wherein the body aperture and the sleeve cutout are in direct fluid communication with one another and are configured to receive a portion of the golf club (Fig 3 of Gaffney, body aperture at heel end 14 and hosel sleeve 21).
It would have been obvious to a person having ordinary skill in the art having the teachings of Sung as modified and Gaffney before them, when the application was filed, to have modified the golf club head cover of Sung as modified to have the golf club cover include an opening though the body and hosel areas as taught by Gaffney, to advantageously be able to see within the headcover to determine what golf club is being used.
Mitzel discloses a similar golf club head cover teaching Limitation B, wherein each of the head portion and the sleeve portion of the body includes a wall having a continuous network of interconnected concave and convex surfaces (Para 11 of Mitzel, cover can include a portion made of a lattice structure; lattice structures have a continuous network of interconnected concave and convex surface and the continuous network of interconnected concave and convex surfaces forms a lattice structure; Para 11 of Mitzel, a plurality of apertures extending through the wall of the body, wherein the chamber of the head portion is configured to receive a golf club head, wherein the plurality of apertures provides a window into the headcover, and wherein the golf club head is visible through the window when disposed in the chamber; Para 111 of Mitzel, the lattice structure is formed of a flexible thermoplastic material; the continuous network of interconnected concave and convex surfaces is arranged between portions of the sleeve frame).
It would have been obvious to a person having ordinary skill in the art having the teachings of Sung and Mitzel before them, when the application was filed, to have modified the golf club head cover of Sung to have the golf club cover include lattice structure portions, as taught by Mitzel, to advantageously include pattern that increases the strength of the item.
Regarding claim 2, Sung as modified includes all of the limitations including wherein the continuous network of interconnected concave and convex surfaces forms a lattice structure (See the detailed description of the rejection of claim 1; Para 11 of Mitzel).
Regarding claim 3, Sung as modified includes all of the limitations including wherein the lattice structure defines a plurality of apertures extending through the wall of the body, wherein the chamber of the head portion is configured to receive a golf club head, wherein the plurality of apertures provides a window into the headcover, and wherein the golf club head is visible through the window when disposed in the chamber (See the detailed description of the rejection of claim 1; Para 11 of Mitzel, the lattice structure provides a view into the headcover so the golf club is visible).
Regarding claim 4, Sung as modified includes all of the limitations including wherein the lattice structure is formed of a flexible thermoplastic material (See the detailed description of the rejection of claim 1; Para 111 of Mitzel, the window that has a lattice structure can be made of thermoplastic).
Regarding claim 5, Sung further discloses wherein the sleeve portion is configured to receive a portion of a hosel or a portion of a shaft of the golf club (Fig 1 of Sung, the sleeve portion 25 receives shaft 15 of the golf club).
Regarding claim 6, Sung further comprising a faceplate, wherein the faceplate is formed from a solid material, and wherein the faceplate is configured to be disposed adjacent to a ball-striking face of a golf club head when the golf club head is disposed in the headcover (Fig A-Examiner Annotated Fig 3 of Sung; the faceplates are the side walls that are located on the other surfaces of the golf head cover other than the lattice structures as they are flat and provide protection and have a degree of protective thickness).
Regarding claim 7, Sung includes all of the limitations including wherein the continuous network of interconnected concave and convex surfaces is arranged between portions of the sleeve frame (See the detailed description of the rejection of claim 1; Para 11 of Mitzel, the continuous network of interconnected concave structures that form a lattice structure can be on certain portions of the head cover and therefore arranged between portions of the sleeve frame).
Regarding claim 8, Sung as modified includes all of the limitations including wherein the chamber of the head portion of the body defines an internal geometry that conforms to an external geometry of a golf club head, and wherein the chamber of the head portion is at least partially defined by a wall (See the detailed description of the rejection of claim 1; Fig 1 of Sung, the head portion of the body forms a geometric shape that conforms to that of the golf club head within) that includes the continuous network of interconnected concave and convex surfaces (See the detailed description of the rejection of claim 1; Para 11 of Mitzel, a portion of the head can includes a continuous network of interconnected concave and convex surface).
Claims 15-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sung in view of Mitzel.
Regarding claim 15, Sung discloses a headcover for a golf club, the headcover comprising: a body including a head portion, wherein the head portion includes an outer surface and defines a chamber adapted to receive a portion of a golf club head (Fig 1 of Sung, the body includes a hood 37 is the head portion and includes an outer surface that has a chamber where the head 19 of the golf club is within a chamber formed), [Not taught: wherein the body is made of a flexible thermoplastic material, and wherein a structure is composed of a plurality of interconnected curved struts that form a plurality of apertures and a plurality of slots, the structure extending over at least a portion of the outer surface].
Sung does not expressly disclose the following Limitations:
Limitation C: wherein the body is made of a flexible thermoplastic material, and wherein a structure is composed of a plurality of interconnected curved struts that form a plurality of apertures and a plurality of slots, the structure extending over at least a portion of the outer surface
Mitzel discloses a similar golf club head cover teaching Limitation C, wherein the body is made of a flexible thermoplastic material, and wherein a structure is composed of a plurality of interconnected curved struts that form a plurality of apertures and a plurality of slots, the structure extending over at least a portion of the outer surface (Para 11 of Mitzel, cover can include a portion made of a lattice structure; lattice structures have a continuous network of interconnected apertures and slots that form a lattice structure; Para 11 of Mitzel, a plurality of apertures extending through the wall of the body, wherein the chamber of the head portion is configured to receive a golf club head, wherein the plurality of apertures provides a window into the headcover, and wherein the golf club head is visible through the window when disposed in the chamber; Para 111 of Mitzel, the lattice structure is formed of a flexible thermoplastic material; the continuous network of apertures and slots are arranged between portions of the sleeve body; the structure extends over at least a portion of a sole surface of the head portion).
It would have been obvious to a person having ordinary skill in the art having the teachings of Sung and Mitzel before them, when the application was filed, to have modified the golf club head cover of Sung to have the golf club cover have a portion of the headcover be made of a thermoplastic material with continuous network of apertures and slots such as a lattice structure, as taught by Mitzel, to advantageously include pattern that increases the strength of the item.
Regarding claim 16, Sung as modified includes all of the limitations including wherein the structure forms a window into the chamber of the headcover through the plurality of apertures and the plurality of slots (See the detailed description of the rejection of claim 15, Para 11 of Mitzel, a plurality of apertures extending through the wall of the body, wherein the chamber of the head portion is configured to receive a golf club head, wherein the plurality of apertures provides a window into the headcover).
Regarding claim 19, Sung further discloses wherein the body includes a plurality of sidewalls, wherein the plurality of sidewalls includes a first wall, and wherein an internal geometry of the first wall is configured to conform to an external geometry of a ball-striking face of a golf club head (Fig 1 of Sung, the first wall is one of the sides of the headcover that inherently has an internal geometry and external geometry that has a face that can be struck by a ball).
Regarding claim 20, Sung as modified includes all of the limitations including wherein the structure extends over at least a portion of a sole surface of the head portion (See the detailed description of the rejection of claim 15; Para 11 of Mitzel).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Sung and Mitzel in view of International Publication GB2350304 by Nolan (Here forth “Nolan”).
Regarding claim 17, Sung as modified does not expressly disclose the following Limitations:
Limitation D: wherein the head portion includes a face plate, and wherein the face plate comprises a solid material and includes a center portion, a peripheral boundary, and a plurality of arms, wherein the plurality of arms extend outwardly from the center portion to the peripheral boundary.
Nolan discloses a similar golf head cover that teaches Limitation D, wherein the head portion includes a face plate, and wherein the faceplate comprises a solid material and includes a center portion, a peripheral boundary and a plurality of arms wherein the arms of the plurality of arms extend outwardly from the center portion to the peripheral boundary (Fig B- Examiner Annotated Fig 4 of Nolan below).
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Fig B- Examiner Annotated Fig 4 of Nolan
It would have been obvious to a person having ordinary skill in the art having the teachings of Sung as modified and Nolan before them, when the application was filed, to have modified the golf club head cover of the modified Sung include air gaps, as taught by Nolan, to advantageously allow the user to view the golf club.
Claims 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sung and Mitzel in view of US Publication 2004/0261924 by Bradshaw (Here forth “Bradshaw”).
Regarding claim 18, Sung as modified does not expressly disclose the following Limitations:
Limitation E: further comprising a fastening element, wherein a first end of the fastening element is configured to be selectively coupled to the body of the headcover by a user.
Bradshaw discloses a similar golf head cover that teaches Limitation E, further comprising a fastening element, wherein a first end of the fastening element is configured to be selectively coupled to the body of the headcover by a user (Para 23 of Bradshaw and Fig 6 of Bradshaw, there is a free end is a hook 47 that is coupled to body via loop 49 which forms a recess/groove in the center that end 47 attached through).
It would have been obvious to a person having ordinary skill in the art having the teachings of Sung as modified and Bradshaw before them, when the application was filed, to have modified the golf club head cover of the modified Sung to include the concept of having a fastener, as taught by Bradshaw, to advantageously be able to increase the tightness of the sleeve over the golf club neck, preventing the head from sliding out.
Allowable Subject Matter
Claims 9-14 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding claim 9, Sung discloses a headcover for a golf club (Fig A- Examiner Annotated Fig 3 of Sung shown below), comprising: a head portion defining a chamber adapted to receive a golf club head (Fig 1 of Sung, the chamber can be seen to receive a golf club head within); and a sleeve portion extending outwardly from the head portion (Fig 1 of Sung, the sleeve portion can be seen extending outwardly from the head portion), [Not taught: wherein at least one of the head portion or the sleeve portion includes a wall having a structure composed of triply periodic minimal surfaces], wherein the head portion comprises a first material and the sleeve portion comprises a second material, wherein the first material is different from the second material, and [Not taught: wherein the second material is more rigid than the first material] (Column 2 Para 2-3 of Sung, the hood portion that covers the majority of the golf club head can be made of a semi rigid material and the sleeve portion can include a rubber sheet so the materials are different).
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Fig A-Examiner Annotated Fig 3 of Sung
Sung does not expressly disclose the following Limitations:
Limitation F: wherein the second material is more rigid than the first material
Limitation G: wherein at least one of the head portion or the sleeve portion includes a wall having a structure composed of triply periodic minimal surfaces
US Publication 2008/0202656 by Tan discloses a similar golf head cover that teaches Limitation F, wherein the second material is more rigid than the first material (Para 18 or 19 of Tan, the first material can be a air-bubble film and the second can be metal).
It would have been obvious to a person having ordinary skill in the art having the teachings of Sung as modified and Tan before them, when the application was filed, to have modified the golf club head cover of the modified Sung to have the second material be more rigid than the first material, as taught by Sung, to advantageously provide rigidity to hold the cover into the golf club and provide more soft protection to the head of the club.
Sung does not expressly disclose Limitation G, wherein at least one of the head portion or the sleeve portion includes a wall having a structure composed of triply periodic minimal surfaces
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA KAVINI TAMIL whose telephone number is (571)272-6655. The examiner can normally be reached Mon-Fri 9:00am-5:00pm EST.
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/JESSICA KAVINI TAMIL/Examiner, Art Unit 3733
/DON M ANDERSON/Primary Examiner, Art Unit 3733