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 .
Drawings
The drawings are objected to because they contain deficient line quality. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. Refer to 37 CFR 1.84(l). See Figures 3A-4B and 21. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application Nos. 18/915,976, 18/916,174, 18/916,238, 19/195,778, 18/915,794, 18/916,124, 18/915,813, 18/915,909, 18/916,006, 18/916,092, 18/915,943, 19/203,647, and 19/203,635 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending applications anticipate or render obvious the claims of the present application as outlined below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 of application 18/915,976 anticipates claim 1 of the present application. The claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application and the claimed value for CL in the reference application anticipate the claimed value for CL in the present application. Claims 1 and 19 of application 18/915,976 anticipate claim 24 of the present application. The claimed values for the coefficient of restitutions and the compression in the reference application anticipate the claimed values for the coefficient of restitutions and compression in the present application, the claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application, the claimed values for CL in the reference application anticipate the claimed values for CL in the present application, and the claimed range for CD/CL in the reference application anticipate the claimed range for CD/CL in the present application. Similar reasoning applies to dependent claims. In other words, the entire scope of the reference claim(s) falls within the scope of the present application claim(s).
Claim 1 of application 18/916,174 anticipates claim 1 of the present application. The claimed value for the coefficient of restitution in the reference application anticipates the claimed value for the coefficient of restitution in the present application, the claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application, and the claimed value for CL in the reference application anticipates the claimed value for CL in the present application. Claims 1 and 29 of application 18/916,174 anticipate claim 24 of the present application. The claimed values for the coefficient of restitutions and the compression in the reference application anticipate the claimed values for the coefficient of restitutions and compression in the present application, the claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application, the claimed values for CL in the reference application anticipate the claimed values for CL in the present application, and the claimed range for CD/CL in the reference application anticipate the claimed range for CD/CL in the present application. Similar reasoning applies to dependent claims. In other words, the entire scope of the reference claim(s) falls within the scope of the present application claim(s).
Claims 1 and 3 of application 18/916,238 anticipate claim 1 of the present application. The claimed value for the coefficient of restitution in the reference application anticipates the claimed value for the coefficient of restitution in the present application. In other words, the entire scope of the reference claim(s) falls within the scope of the present application claim(s).
Claims 1 and 20 of application 19/195,778 render obvious claim 1 of the present application. Although the claims of the reference application do not recite the golf ball weight or diameter, it is notoriously well known in the art that a standard golf ball has a weight and size within the claimed ranges.
Claim 1 of application 18/915,794 anticipates claim 1 of the present application. The claimed value for the coefficient of restitution in the reference application anticipates the claimed value for the coefficient of restitution in the present application. Claims 1 and 18 of application 18/915,794 anticipate claim 24 of the present application. The claimed value for the core coefficient of restitution in the reference application anticipates the claimed value for the core coefficient of restitution in the present application. Similar reasoning applies to dependent claims. Similar reasoning applies to dependent claims. In other words, the entire scope of the reference claim(s) falls within the scope of the present application claim(s).
Claim 1 of application 18/916,124 anticipates claim 1 of the present application. The claimed values for the coefficient of restitution and core weight in the reference application anticipate the claimed values for the coefficient of restitution and core weight in the present application, the claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application, and the claimed value for CL in the reference application anticipates the claimed value for CL in the present application. Claims 1 and 20 of application 18/916,124 anticipate claim 24 of the present application. The claimed values for the coefficient of restitutions, the compression, and the core weight and diameter in the reference application anticipate the claimed values for the coefficient of restitutions, compression, and core weight and diameter in the present application, the claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application, the claimed values for CL in the reference application anticipate the claimed values for CL in the present application, and the claimed range for CD/CL in the reference application anticipate the claimed range for CD/CL in the present application. Similar reasoning applies to dependent claims. In other words, the entire scope of the reference claim(s) falls within the scope of the present application claim(s).
Claim 1 of application 18/915,813 render obvious claim 1 of the present application. The claimed value for the coefficient of restitution anticipates the claimed value for the coefficient of restitution in the present application. Although Claim 1 of the reference application do not recite the golf ball weight or diameter, it is notoriously well known in the art that a standard golf ball has a weight and size within the claimed ranges. Similar reasoning applies to dependent claims.
Claim 1 of application 18/915,909 render obvious claim 1 of the present application. The claimed value for the coefficient of restitution anticipates the claimed value for the coefficient of restitution in the present application. Although Claim 1 of the reference application do not recite the golf ball weight or diameter, it is notoriously well known in the art that a standard golf ball has a weight and size within the claimed ranges. Similar reasoning applies to dependent claims.
Claim 1 of application 18/916,006 anticipates claim 1 of the present application. The claimed values for the coefficient of restitution and core weight in the reference application anticipate the claimed values for the coefficient of restitution and core weight in the present application, the claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application, and the claimed value for CL in the reference application anticipates the claimed value for CL in the present application. Claims 1 and 25 of application 18/916,006 anticipate claim 24 of the present application. The claimed values for the coefficient of restitution, the compression, and the core weight and diameter in the reference application anticipate the claimed values for the coefficient of restitutions, compression, and core weight and diameter in the present application, the claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application, the claimed values for CL in the reference application anticipate the claimed values for CL in the present application, and the claimed range for CD/CL in the reference application anticipate the claimed range for CD/CL in the present application. Similar reasoning applies to dependent claims. In other words, the entire scope of the reference claim(s) falls within the scope of the present application claim(s).
Claim 1 of application 18/916,092 anticipates claim 1 of the present application. The claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application. Claims 1 and 23 of application 18/916,092 anticipate claim 24 of the present application. The claimed values for the coefficient of restitutions and the compression in the reference application anticipate the claimed values for the coefficient of restitutions and compression in the present application, the claimed ranges for CD in the reference application anticipate the claimed ranges for CD in the present application, the claimed values for CL in the reference application anticipate the claimed values for CL in the present application, and the claimed range for CD/CL in the reference application anticipate the claimed range for CD/CL in the present application. Similar reasoning applies to dependent claims. In other words, the entire scope of the reference claim(s) falls within the scope of the present application claim(s).
Claim 1 of application 18/915,943 render obvious claim 1 of the present application. Although Claim 1 of the reference application do not recite the golf ball weight or diameter, it is notoriously well known in the art that a standard golf ball has a weight and size within the claimed ranges. Similar reasoning applies to dependent claims.
Claim 1 of application 19/203,647 renders obvous claim 1 of the present application. The claimed range for the coefficient of restitution in the reference application anticipates the claimed value for the coefficient of restitution in the present application, the claimed ranges for CD in the reference application overlap and/or share an endpoint with the claimed ranges for CD in the present application, and the claimed value for CL in the reference application anticipates the claimed value for CL in the present application. Similar reasoning applies to dependent claims. The overlapping range of the reference claim(s) renders obvious the range of the present application claim(s).
Claim 1 of application 19/203,635 renders obvious claim 1 of the present application. The claimed range for the coefficient of restitution in the reference application anticipates the claimed value for the coefficient of restitution in the present application, the claimed ranges for CD in the reference application overlap with the claimed ranges for CD in the present application, and the claimed value for CL in the reference application anticipates the claimed value for CL in the present application. Similar reasoning applies to dependent claims. The overlapping range of the reference claim(s) renders obvious the range of the present application claim(s).
Additional Subject Matter
Claims 1-24 are not rejected under art; however, they are rejected under double patenting as outlined above and are therefore not allowable. If timely filed terminal disclaimers are received, the claims would be allowable for the following reasons: Regarding claims 1 and 24, the combinations including a golf ball with the claimed properties in the inventions as claimed are neither disclosed nor rendered obvious by the prior art. The closest prior art is Felker et al. (US 2013/0090189 A1) and Alam et al. “A study of golf ball aerodynamic drag.” Felker discloses golf balls having similar lift coefficients (see Figures 14 and 44) and drag coefficients (see Figure 16). Felker discloses drag coefficients between 0.230 and 0.250 for several types of golf balls (see results within range CD=0.230 and CD=0.250 in Figure 16), however, none of the golf balls have a drag coefficient (CD) which stays within 0.230 ≤ CD ≤ 0.250 for Reynolds numbers of 220,000, 160,000 and 120,000. Alam discloses a Maxfli golf ball that maintains a drag coefficient (CD) of approximately 0.250 above a Reynolds number of 100,000 (page 229-230 and Figure 3). However, Alam neither discloses nor renders obvious the core having the claimed characteristics or (a) lift coefficient(s) with the claimed value.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711
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