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 .
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1, 2, 4, 5, 7, 8, 10-12, 14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Westgate et al., U.S. Patent Application No. 2021/0379451, in view of Nesbitt, U.S. Patent Application No. 2005/0026725. As to Claims 1 and 2, Westgate teaches a golf ball comprising a core, paragraph 0196. The core (2) comprising a first spherical cap portion (8), a second spherical cap portion (6), and a central segment (10), formed at a great circle of the core and arranged between the first and second spherical cap portions, paragraph 0048 and see Figure 1. A cover (cover layer) may encase the core, paragraph 0172. Westgate does not specify that the central segment may be spherical and Westgate does not disclose color characteristics for the ball components. Nesbitt teaches a golf ball comprising a cover disposed on a core, paragraph 0058. The core may comprise a high density central spherical segment (38) between first and second spherical caps (36), paragraphs 0075, 0076, and see Figure 4, noting that the central spherical segment compliments the hemispheres to produce a spherical core. The high density central spherical segment may have a color characteristic differing from a color characteristic of the spherical caps, paragraph 0073. An at least partially transparent (transparent or clear) cover (12) may encase the core such that the central spherical segment may be visible from an exterior of the ball, paragraph 0078. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the central segment as a spherical feature and to provide an at least partially transparent (clear) cover to facilitate viewing of the central spherical segment from the exterior of the ball, as taught by Nesbitt, to provide Westgate with a central spherical segment visible from the exterior of the ball to yield the predictable result of a central spherical segment defining an alignment aid. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Westgate, as modified, with a central spherical segment having a first color characteristic (differentially colored) different from a second color of the first and second spherical portions, as taught by Nesbitt, to provide Westgate, as modified, with a color contrast between the central spherical segment and the spherical cap portions to yield the predictable result of an improved alignment aid. As to Claim 4, Nesbitt teaches that the central spherical segment may comprise a continuous band about the ball’s spin axis so as to provide a gyroscopic center plane, paragraph 0021, suggesting that central spherical segment defines a continuous strip across a great circle. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the central spherical segment as taught by Nesbitt, to provide Westgate, as modified, with the central spherical segment defining a great circle, to facilitate the use of the feature as an alignment aid. As to Claims 5, 10, 14, and 15, Nesbitt teaches that the central spherical segment may be formed from a second material (high density material) paragraph 0021. The first and second spherical caps may be formed of a first material that is different, paragraph 0063, noting that other ball components may be formed of a polymer matrix material that is the same or different from that of the high density material without the density increasing component. It follows that the same polymer material provided with added high density material would provide a central spherical segment composition having different specific gravity. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Westgate, as modified, with first and second materials employed as taught by Nesbitt, to provide Westgate, as modified, with central spherical segment formed from a material composition different from that of the spherical caps, to yield the predictable result of facilitating the process of customizing the spin performance of the ball. As to Claim 7, Westgate teaches that the central segment may have a thickness of 2.0 to 4.0 mm, paragraph 0016. As to Claim 8, Westgate teaches that the central segment may define a physical demarcation (barrier) between the first and second spherical cap portions, see Figure 1. As to Claim 11, Nesbitt teaches that the spherical cap portions and the central spherical segment may be cured simultaneously with each other, paragraph 0108. It follows that the components may fuse to form the core. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Westgate, as modified, with simultaneously cured spherical caps and central spherical segment, as taught by Nesbitt, to provide Westgate, as modified, with a known substitute core configuration. As to Claim 12, Westgate, as modified by Nesbitt, is applied as in Claims 1, 8, and 11, with the same obviousness rationales being found appliable.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Westgate, in view of Nesbitt, as applied to claim 1 above, and further in view of Kajikawa et al., U.S. Patent Application No. 2022/0193503. Westgate, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 3, Westgate, as modified, teaches that the central spherical segment may be differently colored from the spherical caps, as discussed above, but Westgate, as modified, does not specify particular colors. Kajikawa teaches that regions on a golf ball surface may have different colors selected to provide contrast, paragraph 0023, noting a range for an absolute difference in hue values. Color choices include black and white, paragraph 0031, suggesting that a region may be colored black and a region of contrasting color may be colored white. It would have been obvious to one of ordinary skill in the art before the effective filing date to select a black central spherical segment and white first and second spherical caps, as taught and suggested by Kajikawa, to provide Westgate, as modified, with a known substitute selection for contrasting colors.
Claim(s) 9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Westgate, in view of Nesbitt, as applied to claim 1 above, and further in view of Takubo et al., U.S. Patent Application No. 2022/0143471. Westgate, as modified, substantially shows the claimed limitations, as discussed above. As to Claims 9 and 13, Westgate, as modified, does not specify that first and second spherical caps may have second and third color characteristics respectively, which differ. Takubo teaches a golf ball (2) comprising first and second hemispheres having differing color characteristics, paragraphs 0045 and 0189. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Westgate, as modified, with differently colored first and second hemispheres, as taught by Takubo, to provide Westgate, as modified, with a highlighted contrast between hemispheres to yield the predictable result of facilitating observation of ball spin.
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, 2, 4-7, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8, and 9 of U.S. Patent No. 12,151,1142. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the patent discloses the limitations of Claims 1 and 5. Claim 2 of the patent discloses the limitations of Claim 2. Claim 3 of the patent discloses the limitations of Claim 4. Claim 9 of the patent discloses the limitations of Claim 6. Claim 4 of the patent discloses the limitations of Claim 7. Claim 8 of the patent discloses the limitations of Claim 11.
Claims 8 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,151,142, in view of Westgate et al., U.S. Patent Application No. 2021/0379451. Claims 1 and 8 of the patent disclose the limitations of Claims 8 and 12 except for providing that the central spherical segment may include an interior portion defining a physical demarcation between first and second spherical caps. Westgate teaches that the central segment may define a physical demarcation (barrier) between the first and second spherical cap portions, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the central spherical segment to define a physical demarcation/barrier, as taught by Westgate as a known substitute configuration of the ball core.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 18 September 2026
Prosecution Insights