DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15, 17, and 18 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. In Claims 15, 17, and 18, the monopodal silane is understood to be mono reactive and the dipodal silane is understood to be dual reactive. The crosswise recitation is unclear as to what type of compound is intended. The scope of the claims 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.
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.
Claim(s) 1-4, 6-8, 10, 16, and 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Comeau et al., U.S. Patent Application No. 2019/0038940, in view of Lutz et al., U.S. Patent Application No. 2003/0004013. As to Claim 1, Comeau teaches a method of forming a golf ball comprising a core (dual core) and disposing a casing (first layer) on the core, paragraph 0055. Given that the casing layer disposed on a core is present, it is inherent that a method comprises the steps of providing the core and disposing the casing layer on the core. The casing layer may be formed from a casing composition comprising carboxyl groups, paragraph 0055, noting ionomer. It is inherent that the casing layer may have a moisture content. Comeau teaches forming a cover (second layer) on the casing layer, paragraph 0058. The cover may be formed from a base polymer (polyurethane) and an adhesion promoter, paragraph 0058. The cover may comprise functional groups, paragraph 0045. Comeau discloses the claimed invention except for applying moisture to the casing layer. Lutz teaches a method for promoting interlayer adhesion, paragraph 0002. An adhesion promoter (silane coupling agent) may be used to promote adhesion between an ionomer layer and a polyurethane layer, paragraph 0082. Crosslinking may be encouraged when reaction occurs in the presence of water, which may be applied to a casing layer (core with optional layers), paragraph 0086. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Comeau with the step of adding water to the casing layer, as taught by Lutz, to provide Comeau with a treated casing layer surface to yield the predictable result of improving crosslinking between the casing layer and cover. As to Claims 2 and 19, Lutz teaches that excess water on the core surface may be removed prior to the crosslinking step, paragraph 0086, indicating that the moisture content on the surface is a result effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date to remove excess water, as taught by Lutz, to provide Comeau, as modified, with a suitable moisture content for a crosslinking step. Comeau, as modified, discloses the claimed invention except for selecting a range for moisture content of about 0.1 to about 5 percent by weight. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide moisture content within the claimed range since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller, 105 USPQ 233. As to Claims 3 and 20, Lutz teaches that ambient moisture may provide a desirable range of moisture content, paragraph 0086. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Comeau, as modified, with a step of hydrolizing by ambient moisture, as taught by Lutz, as a known alternative method for increasing moisture content. Comeau, as modified, discloses the claimed invention except for storing the casing layer at a relative humidity of about 50 to about 100 percent. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide moisture content by storing the casing layer at relative humidity within the claimed range since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller, supra. As to Claims 4 and 21, Lutz teaches applying liquid water to the casing layer, paragraph 0086, noting aqueous bath. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Comeau, as modified, with application of liquid water to the casing layer, as taught by Lutz, to provide Comeau, as modified, with a known substitute step for increasing the moisture content. As to Claim 6, Comeau teaches that the adhesion promoter may comprise organic silane, paragraph 0008, noting organosilane. As to Claims 7 and 8, Comeau, as modified, discloses the claimed invention except for specifying dual reactive silane and mono reactive silane. It would have been obvious to one of ordinary skill in the art before the effective filing date to select dual and/or mono reactive silane, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416 (CCPA 1960). As to Claim 9, Comeau teaches that the base polymer may be polyurethane, paragraph and the casing composition may comprise ionomer, paragraph 0054. As to Claim 10, Comeau, as modified by Lutz, is applied as in Claims 1 and 9, with the same obviousness rationale being found applicable. Comeau teaches that the cover may comprise at least one adhesion promoter suggesting that first and second adhesion promoters may be present, paragraph 0058. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide first and second adhesion promoters, as suggested. The examiner finds that treating for a second moisture content may be considered a counterpart to applying moisture. As to Claim 16, Comeau, in view of Lutz, together with cited case law, is applied as in Claims 1 and 10, with the same obviousness rationale being found applicable.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 10, 12-16, and 18-21 of U.S. Patent No. 12,097,408. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the patent discloses the limitations of Claims 1 and 6, noting hydrolysable. Claims 2-5 of the patent disclose the limitations of Claims 2-5 respectively. Claims 10 and 15 of the patent disclose the limitations of Claims 7 and 8. Claims 10 of the patent discloses the limitations of Claims 9-11. Claims 12-15 of the patent disclose the limitations of Claims 12-15 respectively. Claim 16 of the patent discloses the limitations of Claims 16 and 17. Claims 18-21 of the patent disclose the limitations of Claims 18-21 respectively.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 13 August 2026
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