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
Claims 2-5 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.
Claim 2 is indefinite where it fails to define the x, y or z axis with respect to the elements of the claim. As such, one cannot clearly determine the scope of the claim. The recitation of “a first thickness and the first depth” lack and recitation of how such structurally relates to any elements and is lacking proper antecedents.
Claims 2-6 are directed to the product made by the casting process and welding process steps of claim 1 and render the scope of the claim unclear as to whether the claims cover the steps or structure of the product attempting to be recited. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
Applicant’s claim construction is viewed as a process claim with product limitations.
As to claim 1, ln. 10, it appears that “the final rear wax” should recite -the final rear wax portion-.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 is directed to steps of a process for making a club. Subsequent dependent claims fail to further limit any physical step of that process. Instead, they recite only apparatus limitations directed to the product intended to be made. Since the product limitations are not directed to, required by, or imply any physical step with respect to the process attempting to be recited, they are considered improperly dependent. Here the claims switch statutory classes.
The distinction here is that it is recognized that there is no legal prohibition in reciting structure in a method per se. However, that structure must have a clear and necessary connection to further limiting a previously recited physical step as oppose to reciting the intended structure to be made by the process as is the case now before us. Note this is different than reciting structural limitations to an arc welding machine that would be necessary to further limit and define the previously recited welding process or structures of the mold used in the casting step. Such apparatus and structural recitations clearly limit and clarify a recited physical step. That is not the case before us now where the claims recite only the structures of the apparatus intended to be made by the recited method step and none of those structures or used to execute or involve specific structural components to carry out the method. This distinction renders the claims improper.
. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Allen 5,888,148.
As to claim 1, Allen shows a method of forming a golf club head with a body and striking on a forward portion 11 with a crown and sole return portions that is comprised of titanium (col. 5, ln. 65) and forming a rear portion 112 and a plurality of rigidifying (col. 3, ln. 59) support members 32, 33, and 113. The step of forming a wax rear portion or a crown, sole and plurality of wax support members is suggested in the “investment casting” (col. 1, ln. 18). Elements 32, 33, and 113 are considered to extends in a direction from the crown to the wax sole and from a back edge toward a front edge near a central portion of the rear portion. In making a wax core to investment cast the features shown by Allen in his internal rigidifying feature would inherently result in the forming of a such a wax core or “wax rear portion” with “wax support members” as recited in the claim that is used to then cast the rear portion that is then welded to the frontal portion at 173. It is noticed on record that investment casting is well-known for the production golf clubs and of complex parts in general using expendable wax patterns that can be machined, 3D printed or from assembled structures. The welding step is shown in the abstract.
Currently claims 2-5 are directed to product limitations that fail to further limit any physical steps of the process. "Claim language without any bearing on the claimed methods should be deemed non-limiting when it does not result in à manipulative difference in the steps of the claim.” Teva Pharm. (Fed. Cir. 10/12/18). The dependent claims are directed only to the structure of the clubhead intended to be made by the claimed process and fail to further limit any of the physical steps being previously recited which can be relied upon to distinguish over the applied art.
As to claim 3 wax support member forming internal rigidifying structure of Allen 113 is considered to be such that it has a first maximum height parallel to a y-axis in a crown to sole direction so that when coupled to the wax rear portion, such that it abuts, or is most broadly “near to” the wax crown and the wax sole. 113 is considered to have a first maximum depth parallel to a z- axis in a direction from the face to the rear and a first thickness and the first depth in a crown to sole direction and a wall thickness of .8mm (col. 18, ln. 18) meeting the claimed range of a first thickness is between 0.5 mm and 1.5 mm.
Conclusion
Rigal et al. 5,547,427 teaches a body that is injection molded (col. 2, ln. 54). As such it is not directed to a titanium body that is cast and welded to a frontal portion.
Cook 5,941,782 in view of Hirano 2007/0270236..
Cooks appears to show a single piece where the ribs are “integrally cast with the shell” (abstract). He does not appear to discuss the steps of a frontal portion that is welded to a cast rear portion. Ribs 30 are disclosed as “integrally cast” as one piece (col. 4, ln. 1). In Cook, the shell body 11 has a peripheral edge to which a striking plate is jointed (col. 3, ln. 33). He does not discuss a “cup-shaped” face or return at the crown or sole.
With respect to claims 3-6, the structural limitations call for rigidifying structure in a club head that is designed to have angled struts or a plurality of a second and third support members as called for by claims 4-6. Such are not the design of the 32, 33 or 113 structures in Allen.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Melba Bumgarner at (571)272-4709.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
Prosecution Insights