DETAILED ACTION
Priority
Claims 1 and 7 receive a priority date of 5/8/19 based on parent application 16/406,382. This is the first time that Fig. 43 is shown in a parent application. The Examiner notes that the priority is based solely on Fig. 43 as the language “wherein the wall has an opening extending entirely through the wall in a heel-to-toe direction, the opening connecting the heel side cavity portion to the toe side cavity portion” and “the heel side cavity portion is void of material” is never actually used in the specification of parent application 16/406,382.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required for proper antecedent basis for the claims (i.e. this language needs to be added to the specification in order to have proper antecedent basis):
“wherein the wall has an opening extending entirely through the wall in a heel-to-toe direction, the opening connecting the heel side cavity portion to the toe side cavity portion” of claims 1 and 9;
“wherein the opening in the wall is U-shaped” of claims 2 and 13;
“the heel side cavity portion is void of material” of claims 3 and 7;
“wherein the weight adjustment portion comprises a notch” of claims 5 and 11;
“wherein the notch is adjacent the opening in the wall” of claims 6 and 12;
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-4, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Harrington et al. (herein “Harrington”; US Pub. No. 2016/0101330 A1; as cited in applicant’s IDS) in view of Wagner (DE Pat. No. 29612456 U1).
Regarding claim 1, Harrington discloses a golf club head (Fig. 3) comprising: a striking face portion located at a frontal portion of the golf club head defining a loft of the golf club head (Fig. 4 and noting a loft is inherent and/or obvious for a “wedge-type golf club” as per par. [0008] and also well-known in the art; see par. [0010] for a “striking face”); a back portion located aft of the striking face portion (Fig. 3 and par. [0010]); a topline located at an upper portion of the golf club head between the striking face portion and the back portion (Figs. 3 and 4 and par. [0026]); a sole portion located at a lower portion of the golf club head between the striking face portion and the back portion (Fig. 4 and par. [0026]; noting the lower portion of the club when held at address), and a hosel located near a heel portion of the golf club head adapted to engage a shaft (Fig. 4, proximate item 403 and noting it is also well-known in the art that the hosel is connected to a shaft to create a “golf club”, see pars. [0033], [0037], and [0038] specifically discussing a “shaft axis” which would make obvious the use of a shaft), wherein the sole portion further comprises a hollow sole cavity (Fig. 2, item 212 and par. [0009]), wherein the hollow sole cavity further comprises a heel side cavity portion and a toe side cavity portion (Fig. 2; noting this is inherent and/or obvious as the cavity runs from heel-to-toe, the heel side being proximate the hosel, see also par. [0026]), wherein a weight adjustment portion is located within the toe side cavity portion of the hollow sole cavity (Fig. 3, item 314 and pars. [0028] and [0030]), wherein the heel side cavity portion and the toe side cavity portion are separated by a wall (see annotated Figs. 3, 5, and 6 below, noting a “wall” per se is not specifically discussed in the written specification, but it is obvious from the figures that a wall is used to separate portions of the cavity, see specifically par. [0025] disclosing features of drawings may be used “in combination”, so it is obvious that the ”walls” of Figs. 5 and 6 can be used in Fig. 3), that the wall has an opening extending entirely through the wall in a heel-to-toe direction, the opening connecting the heel side cavity portion to the toe side cavity portion (Fig. 6 below; noting based on the presence of solid lines within the Fig. 6 wall, it seems like the wall is open within the middle). In the alternative, assuming arguendo that Harrington does not specifically disclose that the wall has an opening extending entirely through the wall in a heel-to-toe direction, the opening connecting the heel side cavity portion to the toe side cavity portion, it has been held that, absent a convincing argument otherwise, one of ordinary skill in the art could use numerous configurations in shape or form to accomplish the same purpose. See In re Dailey, 149 USPQ 47 (CCPA 1976)(see applicant’s entire specification, noting there is no criticality to having an opening extending through the wall because “the opening” is not even discussed in the written specification). In a second alternative, Wagner discloses a golf club wherein a removable face can be removed by including a notch or opening located adjacent to the face (Fig. 1 and par. [0013] of the machine translation). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the wall between the two cavity portions would not be significant: that is, the wall would restrict the weight from moving within the larger cavity regardless of its exact shape. In a second alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Harrington to use an opening extending entirely through the wall in a heel-to-toe direction, the opening connecting the heel side cavity portion to the toe side cavity portion as taught and suggested by Wagner because doing so would be use of a known technique (using an opening in a wall adjacent to a component to allow the removal of the component from the head) to improve a similar product (a golf club with a removable weight and a dividing wall adjacent to it) in the same way (using an opening in a dividing wall adjacent to a weight used in the sole, the opening allowing for the removal of the weight if desired).
PNG
media_image1.png
504
518
media_image1.png
Greyscale
PNG
media_image2.png
502
576
media_image2.png
Greyscale
PNG
media_image3.png
482
607
media_image3.png
Greyscale
Regarding claim 2, the combined Harrington and Wagner disclose that the opening in the wall is U-shaped (Wagner: Fig. 1; noting the Examiner interprets the shape to be the same as applicant’s in Fig. 43; noting the shape in applicant’s Fig. 43 is not really “U shaped”, it is more “└┘shaped” without a curved bottom portion). In the alterative, regarding the exact shape of the opening, it has been held that, absent a convincing argument otherwise, one of ordinary skill in the art could use numerous configurations in shape or form to accomplish the same purpose. See In re Dailey, 149 USPQ 47 (CCPA 1976)(see applicant’s entire specification, noting there is no criticality to using a “U-shaped” opening because “the opening” or its exact shape are not even discussed in the written specification). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the opening would not be significant: that is, the opening would help with the removal of the weight and/or reduce the weight of the wall regardless of its exact shape.
Regarding claim 3, the combined Harrington and Wagner disclose that the heel side cavity portion is void of material (Harrington: Fig. 3 and pars. [0028] and [0031]).
Regarding claims 4 and 10, the combined Harrington and Wagner disclose a cap on the sole portion enclosing the hollow sole cavity (Harrington: Fig. 2, item 206 and par. [0030]).
Regarding claim 9, Harrington discloses that that the wall has an opening extending entirely through the wall in a heel-to-toe direction, the opening connecting the heel side cavity portion to the toe side cavity portion (Fig. 6 above; noting based on the presence of solid lines within the Fig. 6 wall, it seems like the wall is open within the middle). In the alternative, assuming arguendo that Harrington does not specifically disclose that the wall has an opening extending entirely through the wall in a heel-to-toe direction, the opening connecting the heel side cavity portion to the toe side cavity portion, it has been held that, absent a convincing argument otherwise, one of ordinary skill in the art could use numerous configurations in shape or form to accomplish the same purpose. See In re Dailey, 149 USPQ 47 (CCPA 1976)(see applicant’s entire specification, noting there is no criticality to having an opening extending through the wall because “the opening” is not even discussed in the written specification). In a second alternative, Wagner discloses a golf club wherein a removable face can be removed by including a notch or opening located adjacent to the face (Fig. 1 and par. [0013] of the machine translation). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the wall between the two cavity portions would not be significant: that is, the wall would restrict the weight from moving within the larger cavity regardless of its exact shape. In a second alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Harrington to use an opening extending entirely through the wall in a heel-to-toe direction, the opening connecting the heel side cavity portion to the toe side cavity portion as taught and suggested by Wagner because doing so would be use of a known technique (using an opening in a wall adjacent to a component to allow the removal of the component from the head) to improve a similar product (a golf club with a removable weight and a dividing wall adjacent to it) in the same way (using an opening in a dividing wall adjacent to a weight used in the sole, the opening allowing for the removal of the weight if desired).
Claims 5, 6, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Harrington et al. (herein “Harrington”; US Pub. No. 2016/0101330 A1; as cited in applicant’s IDS) in view of Wagner (DE Pat. No. 29612456 U1) and in further view of Yamamoto (US Pat. No. 6,062,988).
Regarding claims 5 and 11, the combined Harrington and Wagner disclose that the weight adjustment portion comprises a notch (Harrington: Fig. 8, item 814-1; noting the recessed area in the middle of the weight can be considered a “notch”, again see par. [0025] making obvious the combination of different embodiments). In the alternative, regarding the exact shape of the weight, it has been held that, absent a convincing argument otherwise, one of ordinary skill in the art could use numerous configurations in shape or form to accomplish the same purpose. See In re Dailey, 149 USPQ 47 (CCPA 1976)(see applicant’s entire specification, noting there is no criticality to having a notch in the weight because the term “the notch” is not even used in the written specification). In a second alternative, Yamamoto discloses using a notch in the weight adjustment portion (Fig. 4 and col. 3, lines 58-62). Thus, in the alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the weight adjustment portion would not be significant: that is, the weight would adjust the center of gravity regardless of its exact shape. In a second alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Harrington and Wagner to use a notch in the weight adjustment portion as taught by Yamamoto because doing so would be use of a known technique (using a notch in a weight adjustment portion) to improve a similar product (a golf club with a sole weight) in the same way (using a notch in the weight adjustment portion, the notch used to increase adherence in combination with an adhesive layer – see Yamamoto: col. 3, lines 58-62).
Regarding claims 6 and 12, the combined Harrington, Wagner, and Yamamoto disclose that the notch is adjacent the opening in the wall (Harrington: Fig. 6 above, noting the Examiner believes that an opening is present in the wall based on annotated Fig. 6 above, and Yamamoto: Fig. 4 and col. 3, lines 58-62; noting Yamamoto discloses a notch that extends around the entire weight, so it is obvious that the notch would be “adjacent the opening”). In the alternative, regarding the notch being adjacent the opening, it has been held that the rearrangement of parts is not patentable unless it modifies the operation of the device. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)(see applicant’s entire specification, noting there is no criticality to having notch in the weight being adjacent the notch in the wall because neither “the notch” nor “the opening” is discussed in the written specification). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that exact position of the notch in the weight as compared to the exact position of the opening in the wall would not modify the operation of the device: that is, the notch would still be used to help adhesion regardless of its exact position as compared to the opening in the wall.
Regarding claim 13, the combined Harrington, Wagner, and Yamamoto disclose that the opening in the wall is U-shaped (Wagner: Fig. 1; noting the Examiner interprets the shape to be the same as applicant’s in Fig. 43; noting the shape in applicant’s Fig. 43 is not really “U shaped”, it is more “└┘shaped” without a curved bottom portion). In the alterative, regarding the exact shape of the opening, it has been held that, absent a convincing argument otherwise, one of ordinary skill in the art could use numerous configurations in shape or form to accomplish the same purpose. See In re Dailey, 149 USPQ 47 (CCPA 1976)(see applicant’s entire specification, noting there is no criticality to using a “U-shaped” opening because neither “the opening” or its exact shape is discussed in the written specification). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the opening would not be significant: that is, the opening would help with the removal of the weight and/or reduce the weight of the wall regardless of its exact shape.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Harrington et al. (herein “Harrington”; US Pub. No. 2016/0101330 A1; as cited in applicant’s IDS).
Regarding claim 7, Harrington discloses a golf club head (Fig. 3) comprising: a striking face portion located at a frontal portion of the golf club head defining a loft of the golf club head (Fig. 4 and noting a loft is inherent and/or obvious for a “wedge-type golf club” as per par. [0008] and also well-known in the art; see par. [0010] for a “striking face”); a back portion located aft of the striking face portion (Fig. 3 and par. [0010]); a topline located at an upper portion of the golf club head between the striking face portion and the back portion (Figs. 3 and 4 and par. [0026]); a sole portion located at a lower portion of the golf club head between the striking face portion and the back portion (Fig. 4 and par. [0026]; noting the lower portion of the club when held at address), and a hosel located near a heel portion of the golf club head adapted to engage a shaft (Fig. 4, proximate item 403 and noting it is also well-known in the art that the hosel is connected to a shaft, see par. [0033] specifically discussing a “shaft” axis), wherein the sole portion further comprises a hollow sole cavity (Fig. 2, item 212 and par. [0009]), wherein the hollow sole cavity further comprises a heel side cavity portion and a toe side cavity portion (Fig. 2; noting this is inherent and/or obvious as the cavity runs from heel-to-toe, the heel side being proximate the hosel, see also par. [0026]), the heel side cavity portion is void of material (Fig. 3 and pars. [0028] and [0031]). The above rejection is given under a 103 because while Harrington does not specifically disclose a “shaft” in the drawings, use of one would have been obvious to a person of ordinary skill in the art based on the disclosure in pars. [0033], [0037], and [0038] and the use of a “shaft axis” and the fact that a POSA would readily understand that a “golf club” as described in par. [0006] customarily includes a head, shaft, and grip. The Examiner also asserts that it would be obvious to a person of ordinary skill in the art that when Harrington refers to a “wedge-type golf club”, a person of ordinary skill in the art would understand (i.e. be obvious) that this means the face has or creates a “loft”, normally around the range of 44 to 62 degrees.
Regarding claim 8, Harrington discloses that the heel side cavity portion and the toe side cavity portion are separated by a wall (see annotated Figs. 3, 5, and 6 above, noting a “wall” per se is not specifically discussed in the written specification, but it is obvious from the figures that a wall is used to separate portions of the cavity, see specifically par. [0025] disclosing features of drawings may be used “in combination”, so it is obvious that the ”walls” of Figs. 5 and 6 can be used in Fig. 3).
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 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,121,783 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the ‘783 patent is below (italicized language showing overlapping subject matter):
1. A golf club head comprising: a striking face portion located at a frontal portion of said golf club head defining a loft of said golf club head; a back portion located aft of said striking face portion; a topline located at an upper portion of said golf club head between said striking face portion and said back portion; a sole portion located at a lower portion of said golf club head between said striking face portion and said back portion, and a hosel located near a heel portion of said golf club head adapted to engage a shaft, wherein said sole portion further comprises a hollow sole cavity and a cap, wherein when said loft of said golf club head is greater than 52 degrees, said golf club head has a CG-C-SA relationship with said loft that satisfies the equation below: CG-C-SA<0.1907*Loft+11.17, said CG-C-SA defined as a distance measured in millimeters of a center of gravity of said golf club head rearward of a hosel bore axis of said golf club head along a Z-axis, wherein said hollow sole cavity further comprises a heel side cavity portion and a toe side cavity portion, wherein a weight adjustment portion is located within said toe side cavity portion of said hollow sole cavity, wherein said heel side cavity portion is void of material, wherein said heel side cavity portion and said toe side cavity portion are separated by a wall, and wherein said wall has a U-shaped opening extending entirely through said wall in a heel-to-toe direction, said U-shaped opening connecting said heel side cavity portion to said toe side cavity portion.
Claims 1 and 7 of the current application are below:
A golf club head comprising: a striking face portion located at a frontal portion of said golf club head defining a loft of said golf club head; a back portion located aft of said striking face portion; a topline located at an upper portion of said golf club head between said striking face portion and said back portion; a sole portion located at a lower portion of said golf club head between said striking face portion and said back portion, and a hosel located near a heel portion of said golf club head adapted to engage a shaft, wherein said sole portion further comprises a hollow sole cavity, wherein said hollow sole cavity further comprises a heel side cavity portion and a toe side cavity portion, wherein a weight adjustment portion is located within said toe side cavity portion of said hollow sole cavity, wherein said heel side cavity portion and said toe side cavity portion are separated by a wall, and wherein said wall has an opening extending entirely through said wall in a heel-to-toe direction, said opening connecting said heel side cavity portion to said toe side cavity portion.
7. A golf club head comprising: a striking face portion located at a frontal portion of said golf club head defining a loft of said golf club head; a back portion located aft of said striking face portion; a topline located at an upper portion of said golf club head between said striking face portion and said back portion; a sole portion located at a lower portion of said golf club head between said striking face portion and said back portion, and a hosel located near a heel portion of said golf club head adapted to engage a shaft, wherein said sole portion further comprises a hollow sole cavity, wherein said hollow sole cavity further comprises a heel side cavity portion and a toe side cavity portion, wherein a weight adjustment portion is located within said toe side cavity portion of said hollow sole cavity, and wherein said heel side cavity portion is void of material.
As can be seen above, the claims of this later filed application are significantly broader and claim 1 of the ‘783 application anticipates claims 1 and 7. As such, a terminal disclaimer is warranted.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached 8:30 am to 5:30 pm M-F EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (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 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). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
9/8/26
Prosecution Insights