DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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.
Internet/E-mail Communication
In order to permit communication regarding the instant application via email, Applicant is invited to file form PTO/SB/439 (Authorization for Internet Communications) or include the following statement in a separately filed document (see MPEP 502.03 II):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
If such authorization is provided, please include an email address in the remarks of a filed response. The examiner’s e-mail address is Christopher.Legendre@uspto.gov.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 25 June 2026 was filed before the mailing date of the first action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is hereby considered.
Specification
The disclosure is objected to because of the following informalities:
In the Abstract, “is disclosed herein that” (line 1) and “disclosed herein” (line 2) should be deleted (note: the language of the Abstract should avoid using phrases which can be implied, such as, "This disclosure concerns," "The disclosure defined by this invention," "This disclosure describes," etc - see MPEP 608.01(b)).
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action.
There are no limitations deemed to invoke 35 U.S.C. 112(f).
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.
Claims 15, 18, and 19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 15, the limitation recited as “an average dimple diameter” renders the claim indefinite since its meaning is unclear/ambiguous - i.e., it is unclear if it means an average diameter of all of the dimples or an average diameter of a single and/or typical dimple or an average diameter of different types of dimples.
In claim 18, the limitation recited as “a minimum dimple diameter” renders the claim indefinite since its meaning is unclear/ambiguous - i.e., it is unclear if it means a minimum diameter of all of the dimples or a minimum diameter of a typical dimple (i.e., the case in which a typical dimple has multiple diameters).
In claim 19, the limitation recited as “a maximum dimple diameter” renders the claim indefinite since its meaning is unclear/ambiguous - i.e., it is unclear if it means a maximum diameter of all of the dimples or a maximum diameter of a typical dimple (i.e., the case in which a typical dimple has multiple diameters).
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 obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-17 and 20 are provisionally rejected on the grounds of non-statutory double patenting of claims (see entries in the table below) of co-pending applications 18/915,976, 18/915,794, 18/916,006, and 18/916,174 (note: all of these applications correspond with US PG-PUBs that are cited in the IDS filed 25 June 2026). This is a provisional non-statutory double patenting rejection because the conflicting claims have not in fact been patented.
Instant Claim
Claims of 18/915,976
Claims of 18/915,794
Claims of 18/916,092
Claims of 18/916,006
1
1
1
1
1 or 30 or 31
2
1 or 2
1 or 8 or 9
1 or 2
1 or 2 or 3
3
1 or 3
1 or 10 or 11
1 or 2 or 3 or 4
1 or 4
4
1 or 4
1 or 5 or 6 or 7
1 or 5 or 6 or 7
5
1 or 5
1 or 8 or 9 or 10
1 or 8 or 9 or 10
6
1 or 6
1 or 12 or 13
1 or 11
1 or 11 or 12
7
1 or 7
1 or 14
1 or 12
1 or 13 or 14
8
1 or 8
1 or 15 or 16 or 17
1 or 13
1 or 15 or 16
9
1 or 14
1 or 18
10
15
19
11
2
20
12
2
21
13
2 or 4 or 5 or 6 or 7
22
14
13
19
23
15
24
16
15
21
25
17
16
22
26
20
19
25
29
It is noted that all corresponding claims of the co-pending applications include ranges for the various claimed parameters that at least overlap with the instant claimed ranges.
Claims 18 and 19 are provisionally rejected on the grounds of non-statutory double patenting of claim 1 of co-pending applications 18/915,976, 18/915,794, 18/916,006, and 18/916,174 (note: all of these applications correspond with US PG-PUBs that are cited in the IDS filed 25 June 2026) in view of Sajima (US 7,094,162). This is a provisional non-statutory double patenting rejection because the conflicting claims have not in fact been patented.
In reference to claims 18 and 19 (as best understood)
The aforementioned claim 1 of the references / reference applications do not address:
a minimum dimple diameter is 0.165 inches – 0.185 inches. (claim 18)
a maximum dimple diameter is 0.240 inches – 0.260 inches. (claim 19)
Sajima discloses:
a golf ball comprising dimples that can have a diameter range (i.e., 2.0 mm to 6.0 mm - see col.4:ll.49-50) that includes 0.165 inches and 0.240 inches.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the ball of claim 1 of each aforementioned reference / reference application to include a dimple diameter of 0.165 inch or 0.240 inch, as disclosed by Sajima, for the purpose of achieving desired aerodynamic properties.
Citations of Pertinent Art
The following art is considered pertinent to Applicant’s disclosure.
The cited references are US versions of foreign references cited in an IDS.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER RYAN LEGENDRE whose telephone number is (571)270-3364. The examiner can normally be reached on M-F: 9-5 PM ET.
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 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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/CHRISTOPHER R LEGENDRE/Primary Examiner, Art Unit 3711
