DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Allowable Subject Matter
Claims 2, 8-9, 12, 18-19 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 includes limitations directed towards 2. The golf club head of claim 1, wherein the first cavity comprises a first depth ranging from 0.115 inch to 0.135 inch, the second cavity comprises a second depth ranging from 0.460 inch to 0.580 inch, the third cavity comprises a third depth ranging from 0.215 inch to 0.245 inch, the fourth cavity comprises a fourth depth ranging from 0.140 inch to 0.165 inch, and the fifth cavity comprises a fifth depth ranging from 0.080 inch to 0.110 inch. The closest art of record Kosmatka teaches the different cavities, however Kosmatka is silent with regards to the specific dimensions for the cavities. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 2 is therefore allowed.
Claim 8 includes limitations directed towards 8. The golf club head of claim 7, wherein the first tier comprises a greater thickness than a thickness of the second tier, and the second tier comprises a greater thickness than a thickness of the third tier. The closest art of record Stokke teaches the cascading sole but is silent with regards to the thickness changes between the different tiers. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 8 is therefore allowed.
Claim 9 includes limitations directed towards 9. The golf club head of claim 1, wherein the one or more reinforcement ribs do not contact the center region of the variable thickness profile. The closest art of record Kosmatka teaches the reinforcement ribs however it is silent with regards to the ribs not contacting the center region. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 9 is therefore allowed.
Claim 12 includes limitations directed towards 12. The golf club head of claim 11, wherein the first cavity comprises a first depth ranging from 0.115 inch to 0.135 inch, the second cavity comprises a second depth ranging from 0.460 inch to 0.580 inch, the third cavity comprises a third depth ranging from 0.215 inch to 0.245 inch, the fourth cavity comprises a fourth depth ranging from 0.140 inch to 0.165 inch, and the fifth cavity comprises a fifth depth ranging from 0.080 inch to 0.110 inch. The closest art of record Kosmatka teaches the different cavities, however Kosmatka is silent with regards to the specific dimensions for the cavities. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 12 is therefore allowed.
Claim 18 includes limitations directed towards 18. The golf club head of claim 17, wherein the first tier comprises a greater thickness than a thickness of the second tier, and the second tier comprises a greater thickness than a thickness of the third tier. The closest art of record Stokke teaches the cascading sole but is silent with regards to the thickness changes between the different tiers. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 18 is therefore allowed.
Claim 19 includes limitations directed towards 19. The golf club head of claim 11, wherein the one or more ribs do not contact the center region of the variable thickness profile. The closest art of record Kosmatka teaches the reinforcement ribs however it is silent with regards to the ribs not contacting the center region. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 19 is therefore allowed.
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.
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).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,102,892 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain substantially similar subject matter.
Claim 1 of the ‘892 patent includes limitations directed towards a golf club head, thicknesses in the face region, cavities and a reinforcement rib similar to claim 1 of the instant invention. The claims are deemed substantially similar in scope to warrant the obvious type double patenting rejection.
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.
Claim 3 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.
Claim 3 includes limitations directed towards “the center thickness is constant and ranges from 0.09 inch to 0.15 inch.” The examiner cannot ascertain what the meet and bounds a constant thickness that ranges from 0.09 inch to 0.15 inch is. As such, the claim is held indefinite.
Claim Rejections - 35 USC § 102
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 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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-6, 11, 14-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kosmatka (US 5971868 A).
Regarding claim 1, Kosmatka teaches 1. A golf club head comprising: a front end, a rear end, a top end, a bottom end, a toe end, and a heel end; See Fig. 1B, a face element comprising a face surface located at the front end and a rear surface located at the rear end; See Fig. 1A and 1B, the face element comprises a face center, a face perimeter, and a variable thickness profile measured between the face surface and the rear surface; See Fig. 1A-2D, the variable thickness profile includes a perimeter region comprising a perimeter thickness that is constant, a transition region comprising a varying transition thickness, and a center region encompassing the face center, the center region comprising a center thickness that is constant; See Fig. 1A-2D, wherein the perimeter thickness comprising a minimum thickness of the face element; See Fig. 1B, wherein the center thickness comprises a maximum thickness of the face element; See Fig. 1B, the top end having a top rail extending in an arcuate fashion toward the bottom end to form a top rail wall; See Fig. 1B, the bottom end having a sole and a rear portion integrally formed with the sole, wherein the rear portion extends upward toward the top end; See Fig. 1B, the toe end is divided into a first toe end portion, a second toe end portion, and a third toe end portion; the first toe end portion is adjacent to and integral with the top end; See Fig. 1B, the third toe end portion is adjacent to and integral with the bottom end; the second toe end portion is positioned between the first toe end portion and third toe end portion; See Fig. 1B, wherein the toe end comprising a toe ledge extending between the top rail and the rear portion, the toe ledge is integral with the top rail wall and the rear portion; and See Fig. 1B, wherein the heel end comprises a heel ledge extending in a curved manner toward the top rail, the sole, and the toe end, the heel ledge is integral with the top rail wall and the rear portion; See Fig. 1B, an undercut comprising a first cavity, a second cavity, a third cavity, a fourth cavity, and a fifth cavity; the first cavity is formed between the rear surface and the top rail wall; the second cavity is formed between the rear surface and the rear portion; the third cavity is formed between the rear surface and the toe ledge at the first toe end portion; the fourth cavity is formed between the rear surface and the toe ledge at the third toe end portion; the fifth cavity is formed between the rear surface and the heel ledge at the heel end; and See Fig. 1B, one or more reinforcement ribs are integrally formed with the rear surface of the face element, the one or more reinforcement ribs extending linearly from the top rail towards the second toe end portion. See Fig. 4A.
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Exhibit A – Annotated Fig. 1B of Kosmatka
Regarding claim 4, Kosmatka teaches 4. The golf club head of claim 1, wherein the one or more reinforcement ribs extend into the fourth cavity. See Fig. 4A.
Regarding claim 5, Kosmatka teaches 5. The golf club head of claim 1, wherein: each reinforcement rib of the one or more reinforcement ribs comprises a first end, a second end, and a rib axis intersecting the first and second end, and with respect to a rear view of the golf club head, the rib axis of each reinforcement rib intersects the center region of the variable thickness profile. See Fig. 4A.
Regarding claim 6, Kosmatka teaches 6. The golf club head of claim 5, wherein: the rib axis of each reinforcement rib are parallel to one another. See Fig. 4A.
Regarding claim 11, Kosmatka teaches 11. A golf club head comprising: a front end, a rear end, a top end, a bottom end, a toe end, and a heel end; See Fig. 1B, a face element comprising a face surface located at the front end and a rear surface located at the rear end; See Fig. 1A and 1B, the face element comprises a face center, a face perimeter, and a variable thickness profile measured between the face surface and the rear surface; See Fig. 1A-2D, the variable thickness profile includes a perimeter region comprising a perimeter thickness that is constant, a transition region comprising a varying transition thickness, and a center region encompassing the face center, the center region comprising a center thickness that is constant; See Fig. 1A-2D, wherein the perimeter thickness comprising a minimum thickness of the face element; . See Fig. 1B, wherein the center thickness comprises a maximum thickness of the face element; See Fig. 1B, the top end having a top rail extending in an arcuate fashion toward the bottom end to form a top rail wall; See Fig. 1B, the bottom end having a sole and a rear portion integrally formed with the sole, wherein the rear portion extends upward toward the top end; See Fig. 1B, the toe end is divided into a first toe end portion, a second toe end portion, and a third toe end portion; the first toe end portion is adjacent to and integral with the top end; See Fig. 1B, the third toe end portion is adjacent to and integral with the bottom end; the second toe end portion is positioned between the first toe end portion and third toe end portion; See Fig. 1B, wherein the toe end comprising a toe ledge extends between the top rail and the rear portion, the toe ledge is integral with the top rail wall and the rear portion; and See Fig. 1B, wherein the heel end comprises a heel ledge extending in a curved manner toward the top rail, the sole, and the toe end, the heel ledge is integral with the top rail wall and the rear portion; See Fig. 1B, an undercut comprising a first cavity, a second cavity, a third cavity, a fourth cavity, and a fifth cavity; the first cavity is formed between the rear surface and the top rail wall; the second cavity is formed between the rear surface and the rear portion; the third cavity is formed between rear surface and the toe ledge at the first toe end portion; the fourth cavity is formed between the rear surface and the toe ledge at the third toe end portion; the fifth cavity is formed between the rear surface and the heel ledge at the heel end; See Fig. 1B, one or more reinforcement ribs integrally formed with the rear surface of the face element, the one or more reinforcement ribs extending linearly from the top rail towards the second toe end portion. See Fig. 4A.
Regarding claim 14, Kosmatka teaches 14. The golf club head of claim 11, wherein the first cavity, the second cavity, the third cavity, the fourth cavity, and the fifth cavity are all integrally connected and continuous. See Fig. 1B.
Regarding claim 15, Kosmatka teaches 15. The golf club head of claim 11, wherein: each reinforcement rib of the one or more reinforcement ribs comprises a first end, a second end, and a rib axis intersecting the first and second end, and with respect to a rear view of the golf club head, the rib axis of each reinforcement rib intersects the center region of the variable thickness profile. See Fig. 4A.
Regarding claim 16, Kosmatka teaches 16. The golf club head of claim 15, wherein the rib axis of each reinforcement rib are parallel. See Fig. 4A.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 International Co. v. Teleflex Inc., 550 U.S. 398, 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. 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.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka (US 5971868 A) in view of Slaughter (US 20130344990 A1).
Regarding claim 3, Slaughter teaches 3. The golf club head of claim 1, wherein: the perimeter thickness ranges from 0.06 inch to 0.10 inch; and See [0051+], the center thickness is constant and ranges from 0.09 inch to 0.15 inch. See [0050+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kosmatka with Slaughter to provide a thickness suitable for golf clubs with metallic striking plates (See [0050+]).
Regarding claim 13, Slaughter teaches 13. The golf club head of claim 11, wherein: the perimeter thickness ranges from 0.06 inch to 0.10 inch; and See [0051+], the center thickness ranges from 0.09 inch to 0.15 inch. See [0050+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kosmatka with Slaughter to provide a thickness suitable for golf clubs with metallic striking plates (See [0050+]).
Claims 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka (US 5971868 A) in view of Stokke (US 20180256946 A1).
Regarding claim 7, Stokke teaches 7. The golf club head of claim 1, further comprising a cascading sole at the bottom end of the second cavity, wherein the cascading sole comprises a first tier, a second tier, and a third tier. See Fig. 33 which shows the cascading sole.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kosmatka with Stokke as the simple substitution of one known element for another to obtain predictable results such as the cascading sole of Stokke in place of the sole of Kosmatka is an indication of obviousness.
Regarding claim 17, Stokke teaches 17. The golf club head of claim 11, further comprising a cascading sole at the bottom end of the second cavity, wherein the cascading sole comprises a first tier, a second tier, and a third tier. See Fig. 33 which shows the cascading sole.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kosmatka with Stokke as the simple substitution of one known element for another to obtain predictable results such as the cascading sole of Stokke in place of the sole of Kosmatka is an indication of obviousness.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka (US 5971868 A) in view of Willet (US 7771291 B1).
Regarding claim 10, Willet teaches 10. The golf club head of claim 1, further comprising a first aperture positioned at the toe end of the club head and a second aperture positioned in a hosel of the club head, wherein the first aperture is configured to receive a first weight and the second aperture is configured to receive a second weight. See Fig. 2; (102) which teaches the multiple apertures to receive weights.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kosmatka with Willet to allow the golfer to adjust the club head center of gravity (See 6:54+).
Regarding claim 20, Willet teaches 20. The golf club head of claim 11, further comprising a first aperture positioned at the toe end of the club head and a second aperture positioned in a hosel of the club head, wherein the first aperture is configured to receive a first weight and the second aperture is configured to receive a second weight. See Fig. 2; (102) which teaches the multiple apertures to receive weights.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kosmatka with Willet to allow the golfer to adjust the club head center of gravity (See 6:54+).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bissonnette US 2002/0189356 A1 - which teaches a golf club head with a face center thickness.
Wada US 20120322577 A1 - which teaches a golf club face with ribs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
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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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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
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