DETAILED ACTION
This Office action is responsive to communication received 10/21/2024 – application papers received, including Power of Attorney and IDS; 01/21/2026 – preliminary amendment, including amendments to the claims and to the specification.
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 .
Continuation Data
This application is a CON of 17/566,263 12/30/2021 PAT 12151147 which claims benefit of 63/261,457 09/21/2021.
Drawings
The drawings were received on 10/21/2024. These drawings are acceptable.
Specification
The amendment to the specification, received 01/21/2026, has been entered.
Status of Claims
Claims 1-20 have been cancelled, as directed.
Claims 21-44 remain pending.
FOLLOWING IS AN ACTION ON THE MERITS:
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 21-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of USPN 12,151,147 in view of US PUBS 2019/0192924 to Hope et al (hereinafter referred to as “Hope”).
The claims of the prior ‘147 patent differ from the instant, claimed device in that the prior ‘147 patent claims lack the features “wherein the first adjustment sleeve and the second adjustment sleeve each comprises a plurality of notches along the outer surface configured to engage two or more outwardly extending tabs disposed along the hosel of the golf club head”. Here, Hope shows it to be old in the art to provide an adaptor with notches along an outer surface, which are designed to mate with tabs extending along a hosel to prevent the adaptor from rotating (i.e., see FIGS. 17B, 17C and paragraph [0025] in Hope, wherein tabs are formed on the hosel between the notches 131; and see the recesses on the sleeve 110, which are formed between the tabs 111). In view of the teaching in Hope, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed device of the prior ‘147 patent by providing each of the first adjustment sleeve and the second adjustment sleeve with a plurality of notches along the outer surface configured to engage two or more outwardly extending tabs disposed along the hosel of the golf club head, with there being a reasonable expectation of success that the combination of mating tabs and notches would have served to prevent unwanted rotation between the adjustment sleeve(s) and the hosel.
As to the remaining limitations in the claims, note the following comments:
As to independent claim 21, see claim 1 of the ‘147 patent.
As to claim 22, see claim 2 of the ‘147 patent.
As to claim 23, see claim 3 of the ‘147 patent.
As to claim 24, see claim 4 of the ‘147 patent.
As to claim 25, see claim 5 of the ‘147 patent.
As to claim 26, see claim 6 of the ‘147 patent.
As to claim 27, see claim 7 of the ‘147 patent.
As to claim 28, see claim 8 of the ‘147 patent.
As to claim 29, see claim 10 of the ‘147 patent.
As to claim 30, see claim 11 of the ‘147 patent.
As to claim 31, see claim 12 of the ‘147 patent.
As to claim 32, see claim 13 of the ‘147 patent.
As to claim 33, see claim 14 of the ‘147 patent.
As to claim 34, the teaching reference to Hope shows it to be obvious to make use of four notches and four tabs (i.e., see FIGS. 17B, 17C and paragraph [0025] in Hope, wherein tabs are formed on the hosel between the notches 131; and see the recesses on the sleeve 110, which are formed between the tabs 111).
As to claim 35, see claim 16 of the ‘147 patent.
As to claim 36, see claim 17 of the ‘147 patent.
As to claim 37, see claim 18 of the ‘147 patent.
As to claim 38, the teaching reference to Hope shows it to be obvious to make use of four notches and four tabs (i.e., see FIGS. 17B, 17C and paragraph [0025] in Hope, wherein tabs are formed on the hosel between the notches 131; and see the recesses on the sleeve 110, which are formed between the tabs 111).
As to independent claim 39, see claim 19 of the ‘147 patent.
As to claim 40, see claim 20 of the ‘147 patent.
As to claim 41, see claim 21 of the ‘147 patent.
As to claim 42, see claim 22 of the ‘147 patent.
As to claim 43, see claim 23 of the ‘147 patent.
As to claim 44, see claim 27 (as dependent upon claim 26).
Claim Objections - Minor
Claim 33 is objected to because of the following informalities: In line 2, “adjusts” should read --adjust-- for proper grammar. Appropriate correction is required.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIGS. 2A-2B in Rice;
Note FIG. 2 in Burch;
See tab (527) and notch (529) in Soracco;
See FIG. 1 in Roark;
See FIG. 2 in Clausen; and
Note FIG. 2 along with tab (25) and notch (27) in Murphy.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571)-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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