DETAILED ACTION
Claim Objections
1. Claims 5 and 14 are objected to because of the following informalities: “the microstructure of non-heat affected faceplate regions” should be amended to “a microstructure of non-heat affected faceplate regions”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
2. 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 3-7, 12-13 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. Claims 3 and 12 includes a Markush grouping of an open list of alternatives. Applicant should specify that the grouping is a closed list of alternatives. See MPEP 2173.05(h).
Claim 15 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 15 recites the limitation "the heat affected zones". There is insufficient antecedent basis for this limitation in the claim. Applicant should specify which zones are being referenced similar to the language used in claim 6.
Double Patenting
3. 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.
4. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,554,298.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims comprise a scope that substantially reads on the present claims.
The patented claims do not expressly teach the claimed reference shape as required by claim 3. However, per MPEP 2144.04 - In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), the Federal Courts have held where the configuration of the claimed shape was a matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In the instant case, applicant does not provide any significant criticality to the specific shape of the reference shape and expressly contemplates numerous different reference shapes. A person ordinary skill in the art would recognize that the reference shape merely reflects the desired CT profile at specific locations within the reference. The actual location of the applied spot weld is considered to be obvious based on the designer’s desire to lower CT at that location. Indeed, one ordinary skill in the art recognizes that the USGA sets CT limits. Wherever the CT value is beyond that permitted by the USGA, this location will obvious be the desired location for the local stiffening.
Regarding the limitations of claim 8, the patented claims do not expressly teach wherein a center-to-high toe quadrant region characteristic time is decreased on average approximately 4% after spot welding. However, as alluded to above, the reduction in CT caused by the spot weld would obviously be applied at any location that exceeds USGA CT thresholds. The center-to-toe quadrant is known to be a desirable region for CT at the threshold value and would predictably be a likely region of the spot weld to reduce CT. Regarding the average reduction value, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, the spot weld reduction in CT average is result effective for the trampoline effect of the face. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal reduction value, including within the claimed range, via routine experimentation. The motivation to optimize is keep CT near, but not above, the USGA limits.
5. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,109,462.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims comprise a scope that substantially reads on the present claims.
The patented claims do not expressly teach the claimed reference shape as required by claim 3. However, per MPEP 2144.04 - In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), the Federal Courts have held where the configuration of the claimed shape was a matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In the instant case, applicant does not provide any significant criticality to the specific shape of the reference shape and expressly contemplates numerous different reference shapes. A person ordinary skill in the art would recognize that the reference shape merely reflects the desired CT profile at specific locations within the reference. The actual location of the applied spot weld is considered to be obvious based on the designer’s desire to lower CT at that location. Indeed, one ordinary skill in the art recognizes that the USGA sets CT limits. Wherever the CT value is beyond that permitted by the USGA, this location will obvious be the desired location for the local stiffening.
Regarding the limitations of claim 8, the patented claims do not expressly teach wherein a center-to-high toe quadrant region characteristic time is decreased on average approximately 4% after spot welding. However, as alluded to above, the reduction in CT caused by the spot weld would obviously be applied at any location that exceeds USGA CT thresholds. The center-to-toe quadrant is known to be a desirable region for CT at the threshold value and would predictably be a likely region of the spot weld to reduce CT. Regarding the average reduction value, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, the spot weld reduction in CT average is result effective for the trampoline effect of the face. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal reduction value, including within the claimed range, via routine experimentation. The motivation to optimize is keep CT near, but not above, the USGA limits.
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Chiang et al. (US Pub. No. 2007/0173346).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
