DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 31-33, 37-41, 47, 53, and 54 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Evans. (PCT/US2003/019694) in view of Cackett et al. (USPN 6425832).
Regarding claim 31, Evans discloses a club head having a face 40, crown 24, sole 26, and rear mass element 50. The face inherently includes a geometric center as well have having origin x, y, and z axes. The club head has a depth of 3 to 4.5 inches (76mm to 114mm), a width of 4 to 5.5 inches (102mm to 140mm), and a height of 2 to 3.5 inches (51mm to 89mm) as evident by page 19, lines 2 through 12. The club head also has a volume of 200 to 600 cc and a mass of 165 to 300 grams as evident by page 18, lines 3 through 22. The rear mass element 50 has a weight of 30 to 90 grams as evident by page 18, lines 18 and 19, and engages with a rear mass port 52 as shown in Figure 9. Being that the rear mass element is at the rear of the club head, it would be located between 76 to 114mm from the golf club head origin. The moment of inertia about the center of gravity z-axis is 2800 to 5000 g-cm2 (280 to 500 kg-mm2). Evans notes that US Patent 6425832 also disclose inertia values. Cackett et al. discloses a club head having a center of gravity z-axis inertia of 2800 to 5000 g-cm2 (300 to 500 kg-mm2) as evident by Column 13, lines 1 through 11. Table 3 shows an example in which the inertias about the z-axis and x-axis are shown. Based on the inertia values, the difference between the z-axis and x-axis inertias is 80 kg-mm2. The inertia values of Table 3 also result in a x-axis to z-axis ratio of 0.77. It should also be noted that the inertia about the Y-axis is 1500-2500 g-cm2, in which Evans notes that inertia about the Y-axis being 1500 to 4000 g-cm2. In addition, Both Evans and Cackett et al. discloses the club head made of metal face and composite body. Based on the inertia values and construction of the club heads, the location of the center gravity would be inherently met. One having ordinary skill in the art would have found it obvious to have the z-axis inertia being at least 80 kg-mm2 greater than the inertia about the x-axis, as taught by Cackett et al., in order to reduce vertical and horizontal gear effect on the golf ball and improve straightness.
Regarding claim 32, see the above regarding claim 31.
Regarding claim 33, see the above regarding claim 31.
Regarding claim 37, see the above regarding claim 31.
Regarding claim 38, see the above regarding claim 31.
Regarding claim 39, see the above regarding claim 31.
Regarding claim 40, seethe above regarding claim 31.
Regarding claim 41, see the above regarding claim 31. In addition, the depth of the club head disclosed by Evans and that of the applicant differs by 1mm. One having ordinary skill in the art would have find that the 1mm different would not differ in performance (See Titanium Metals Corp. of America v. Banner 227 USPQ 773, 779).
Regarding claim 47, see the above regarding claim 31. In addition, the depth of the club head disclosed by Evans and that of the applicant differs by 1mm. One having ordinary skill in the art would have find that the 1mm different would not differ in performance (See Titanium Metals Corp. of America v. Banner 227 USPQ 773, 779).
Regarding claim 53, see the above regarding claim 31.
Regarding claim 54, see the above regarding claim 31.
Claim 34-36 and 48-50 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Evans. (PCT/US2003/019694) in view of Cackett et al. (USPN 6425832) further in view of Hoffman et al. (US 2005/0209021).
Regarding claim 34, Evans in view of Cackett et al. does not disclose a rib in contact with a weight port. Hoffman et al. discloses a club head having ribs within and a weight port wherein a rib is in contact with the weight port (See Paragraph 0070 through 0074). One having ordinary skill in the art would have found it obvious to have a ribs intersecting the weight port, as taught by Hoffman et al., in order to improve the strength of the weight port.
Regarding claim 35, see the above regarding claim 31.
Regarding claim 36, see the above regarding claim 31.
Regarding claim 48, see the above regarding claims 31 and 34.
Regarding claim 49, see the above regarding claim 31.
Regarding claim 50, see the above regarding claim 31.
Regarding claim 51, see the above regarding claim 31.
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 31-44 and 47-54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6, 8, 11-13, 15, 17, 18, 20, 23-29, and 33, 34, 40, 43, 45, 46, and 49 of U.S. Patent No. 12226678. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of US 12226678 does not claim the club head made of a combination of materials or the center of gravity z-axis being greater than the center of gravity x-axis by 75-215 kg-mm2. Claim 4 of US 12226678 claims the inertia of the center of gravity z-axis being greater by 75 kg-mm2 and claim 33 of US 12226678 claims the club head made of a combination of metal and composite materials. In light of the above, one having ordinary skill in the art would have found claim 31 of the instant application to be obvious over claims 1, 4, and 33 of US 12226678.
Claims 31-54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 15-19, 23, 25, and 26 of U.S. Patent No. 12208318. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of US 12208318 does not claim the club head made of a combination of materials. Claim 12 of US 12208318 claims the club head made of a combination of metal and composite materials. In light of the above, one having ordinary skill in the art would have found claim 31 of the instant application to be obvious over claims 1 and 12 of US 12208318.
Claims 31-41, 44, 47, 53, and 54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 15, 16, 20-22, 34, 36-38, 41, and 42 of U.S. Patent No. 11944878. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of US 11944878 does not claim the club head made of a combination of materials. Claim 22 of US 11944878 claims the face portion made of a composite material and claim 42 claims the rearward mass made of tungsten, which is a metal. In light of the above, one having ordinary skill in the art would have found claim 31 of the instant application to be obvious over claims 1, 21, and 42 of US 11944878.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN A HUNTER whose telephone number is (571)272-4411. The examiner can normally be reached on Monday through Friday from 7:30AM to 4:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached at telephone number 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/ALVIN A HUNTER/Primary Examiner, Art Unit 3711
Prosecution Insights