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 .
Examiner's Note
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of, “arranged to”, “intended to” or “operable to”. The examiner is aware of the functional language in the various claims.
Disclaimer
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.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of co-pending Application No. 18/915,794. Although the claims at issue are not identical, they are not patentably distinct from each other because for example, claim 1 claims the same golf ball having a core, casing layer and cover and recites the same compression, coefficient of restitution, initial velocity, core weight, core diameter, core coefficient of restitution, aerodynamic coefficient relationships, Reynolds numbers, spin rations, and integrated drag area relationship underlying the instant application claim 1 and therefore does not define a patentably distinct invention. In addition, claims 2-7 of the instant application correspond to the co-pending application’s claims 8-13, respectively, which expressly claim the same compression, ball COR, and core-weight limitations; claims 8-11 correspond to the core diameter and core-COR limitations of claims 17-20; claims 12-13 are encompassed by the core/casing/cover construction of claim 1; claims 14-17 correspond to the overlapping aerodynamic Cd/Reynolds number/spin-ration relationships of claims 21-24; and claim 18-20 correspond to the identical or overlapping integrated drag-area ranges of claims 25-28. Thus, the presently claimed subject matter merely broadens, selects, or recites overlapping structural, physical, and aerodynamic characteristics of the same claimed golf ball and would have been an obvious variation thereof. Therefore, claims 1-20 are not patentably distinct form the co-pending claims.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of co-pending Application No. 18/915,909.
Although the claims at issue are not identical, they are not patentably distinct. The co-pending application’s claim 1 claims the same golf ball having the same core and cover construction, compression, coefficient of restitution, initial velocity, core weight, core diameter, core coefficient of restitution, dimple pattern, aerodynamic coefficient relationships, Reynolds numbers, spin rations, and integrated drag-area relationship as presently claimed. The differences in the aerodynamic coefficient limitations constitute overlapping or closely related operating ranges for the same golf-ball structure and do not render the claimed subject matter to be patentably distinct. In addition, reference claims 2-20 substantially correspond claim for claim to present co-pending applications’ claims 2-20, including the same compression thresholds, ball COR thresholds, core-weight and core diameter limitations, core COR limitations, layer configurations, aerodynamic Cd/Reynolds-number/spin ration relationships, and integrated drag area ranges. Therefore, the instant application’s claims 1-20 merely claim the same golf ball invention using overlapping or corresponding physical, structural, and aerodynamic li8miations. The differences between the respective claims amount to obi8ous variation of the same slimed subject matter and do not establish patentable distinctness. Therefore, claims 1-20 are provisionally rejected for non-statutory obviousness-type double patenting over claims 1-20 of the co-pending application.
Conclusion
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Certificate of Mailing
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NINI F LEGESSE whose telephone number is (571)272-4412. The examiner can normally be reached Mon - Friday 9 AM - 5:30 PM.
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.
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/NINI F LEGESSE/Primary Examiner, Art Unit 3711
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