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 .
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.
Claims1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,208,317 AND 12,623,122 AND 12,465,820. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader and fully encompass the claims of the previous patent.
Claim Rejections - 35 USC § 102
Claim(s) s 1-9 and 13-18 is/are rejected under 35 U.S.C. 102(A)(2) as being anticipated by Evans 7,066,835
As to claims 1-3, fig. 7 of Evans shows a golf club head with a body portion 72, a striking face including elements 55 and 74 representing the uppermost points of the striking face, a hosel 59, and a portion of a sole in fig. 3, wherein said striking face portion defines a forwardmost vertical plane at the end of “d”, and wherein said body portion further comprises a recess 80 around a perimeter of said body portion, a crown portion 60, wherein said crown portion overlaps said body portion at said recess of said body portion, and wherein a forwardmost point of said crown portion is located less than about 17.5 mm by dimension “d” of .2-1.5 inches (col. 7, ln. 37) away from said forwardmost vertical plane and forms a portion of the uppermost point of said striking face.
Claim 4 is considered met at col. 8, ln. 21.
Claim 5 is met in AZ-91-D (col. 8, ln. 25) having a density of 1.81 g/cm^3 5. The golf club head of claim 4, wherein said crown portion is made from a material having a density of such that it is less than about 2.0 g/cc.
Claim 6 is considered met in the disclosed titanium alloys for the body at col. 7, ln. 9 where Ti-6Al is known to be around 4.43 g/cm^3, 6. The golf club head of claim 5, wherein said body portion is made from a material having a density of about 4.5 g/cc.
Claims 7 and 13 are considered shown in by a frontal crown recess of fig. 4A that defines a crown transition overlap length Lo, a rear sole recess defines a rear overlap length in fig. 4B, and a hosel portion recess at6 59 wherein said hosel portion recess defines a hosel overlap length, wherein said crown transition overlap length is .1-1 inches (col. 8, ln. 57), or 2.54-25mm,which is a range greater than about 12 mm and less than about 25 mm as recited in the claim.
Claims 8, 9, 14-18 are considered met where the crown transition overlap is considered to be disclosed as Lo, the recited range of the length of the recess overlap length in the area of the hosel is considered to be within the range of about 13 mm- 24 mm.
Claim Rejections - 35 USC § 103
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.
Claim(s) 10-12, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans in view of JP2018-102607.
Evans does not appear to discuss in detail the relative widths of the recess between the front, back and hosel areas of the club head. In similar recessed bodied club with a crown closure, ‘607 teaches that such a variable is critical,
“ The width W of the attachment portion 13 may be constant at each position around the opening 12 or may be different. For example, when the ball is hit, the external force acting on the crown portion becomes smaller as it approaches the back side. Accordingly, in the attachment portion 13, the width of the back side attachment portion 17 can be formed smaller than the widths of the toe side attachment portion 15 and the heel side attachment portion 16. In this case, the crown portion 3 can provide a large opening 12, and the durability of the head 1 can be maintained while lowering the center of gravity of the head.
In a preferred embodiment, the attachment portion 13 includes a portion where the width W gradually decreases toward the back side. In a more preferred aspect, the width W of the attachment portion 13 can include a portion that gradually decreases toward the back side at least in the region on the back side of the head center of gravity G.”
To have selected the sizes of overlaps in the recess lengths between the crown, rear and hosel would have been an obvious matter of design choice in order to maintain the durability of the head while lowering the CG in Evans.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One looking to optimize the weight of the club head of Evans while maintaining its durability would be motivated to look to experiment with the lengths of the bonding areas in a recess as taught by ‘607
Conclusion
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 Melba Bumgarner at (571)272-4709.
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
