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 .
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, 5, 7-13 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No.10,463,928; 11,602,678; 11,020,637; 12,145,032. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader instant claims that eliminate the details of the channel portion cover the scope of the previously patented claims. The instant claims are devoid of any structures recited in the embodiments of the parent patents. The functional parameters intended to be satisfied by the selection of weights and its arrangement in an arbitrary channel on the body of a club head are broad and can be inherently met by the selection of weights in the previously recited and patented design embodiments. The broad open language of the instant claims calling for two weights is considered to encompass in scope the three weights recited in 10,463,928. The scope of the instant claims is considered to be semantically the same as in 11,020,637 where the first and second geometry is the repositionable language used in the instant claims. The keyed end embodiment recited in 11,602,678 is considered encompassed by the broader lack of any structural specificity of the instant claims.
No double patenting with respect to claims 3, 4, 6, and 14-16 is made where the instant claims at least recite structural embodiments directed to the tapered ends.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The instant claims recite weight ranges for the first and second weight in terms of a shift in the center of gravity and formula relating the first mass to an undefined center of gravity depth. Such amounts to functional recitations with no clear structures recited that are intended to perform to perform it.
Claims 1 and 12 recite broad structures in combination with functional limitations which are recited as capabilities and relationships recited as ratios with respect to the club head. Broadly recited are the structures of a body having a channel in which fits a member that in some way possesses a first and second weight. In some way the weights must be able to be repositioned to shift the CG a specified range, be spaced from one another a specified range and must satisfy a formula defined as a depth to mass of the relationship of the first weight to center of gravity depth. Here one cannot determine the structure contemplated by the scope of the claims that would be required to meet the recited functions. In line with MPEP 2173.05(g), functional claiming often involves the recitation of some structure followed by its function. In the instant claims the elements recited are devoid of any limiting structure and are recited only such that they must satisfy the functional relationship recited. Such does not precisely define the structural attributes of any interrelated component parts of the claimed assembly. In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976). Such fails, "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. (In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Such is the construction of the instant claims.
Further in these independent claims, the structures within the scope of a weight that, “can be removed from the club body and repositioned” is not clear. One cannot determine if such is directed to the structure of the body, relationship of the weights with respect to one another, an orientation of the weight or amounts to a total removal from the body and one or more of the weights. Such alternative speculative interpretations of the limitation demonstrate the lack of clarity in scope.
Further, it is not clear where, “a center of gravity depth” is not defined how such is measured or determined.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In line with the rejection of the functional claiming for indefiniteness above, the claims are further rejected here under written enablement. Without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph.
In consideration of In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), one first notes the breadth of the claims as discussed above and the lack of any clear structural specificity. While the ordinary level of skill in the art of golf with respect to managing the discretionary weight is generally known and predicable, the lack of any clear structures in the claim that must be manipulated to satisfy the desired design relationship would amount to an infinite number of guess as to structures, positions, designs, sizes and materials that could be used to meet the desired functional relationships. Such would amount to an infinite number of possible arrangements that must then be tested to determine if the relationships recited in the claims are satisfied. Such is considered unreasonable and as such a finding of a lack of enablement is reasonable.
During prosecution, applicant may resolve the ambiguities of a functional limitation in a number of ways. For example: (1) "the ambiguity might be resolved by using a quantitative metric (e.g., numeric limitation as to a physical property) rather than a qualitative functional feature" (see Halliburton Energy Servs., 514 F.3d at 1255-56, 85 USPQ2d at 1663); (2) applicant could demonstrate that the "specification provide[s] a formula for calculating a property along with examples that meet the claim limitation and examples that do not" (see id. at 1256, 85 USPQ2d at 1663 (citing Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1341, 65 USPQ2d 1321, 1326 (Fed. Cir. 2003))); (3) applicant could demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied (see Marosi, 710 F.2d at 803, 218 USPQ at 292); or (4) applicant could amend the claims to recite the particular structure that accomplishes the function.
Conclusion
To the extent that no clear structures can be determined and any rejection with respect to art must necessarily be based on speculative assumptions as to the scope of the claims, no reasonable comparison to the prior art can be made. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims because the rejection was based on speculative assumptions as to the meaning of the claims).
Where claims 3 and 13 call for structural tapers and depths, such embodiments do not appear to be fairly found in the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Nicholas Weiss at (571)270-1775.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
Prosecution Insights