DETAILED ACTION
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.
Claims 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marshall et al. (6,390,937) in view of Cavallaro et al. (5,810,678). Claim 4, Marshall discloses a method for using an x-ray machine to determine the thickness of golf ball layers. The golf ball includes a core, an intermediate layer, and a cover. The cover or the intermediate layer includes barium (radio-opaque filler) (abstract). Cavallaro teaches a golf ball comprising a core, an intermediate layer and cover wherein barium sulfate is included in different amounts in the core, intermediate layer and cover. The core includes barium sulfate in the amount of 20.5-25.8% by weight (table 1). The intermediate layer includes 20% barium sulfate (col. 14, lines 38-41). The cover includes barium sulfate in the amount of 30% by weight (col. 14, lines 38-41). One of ordinary skill in the art would use an x-ray machine for a golf ball. One of ordinary skill in the art would vary the concentration to obtain a more precise x-ray image. Claim 5, Marshall discloses an x-ray machine is capable of discerning different layers (col. 8, claim 1). Claim 6, the filler is barium or barium sulfate. One of ordinary skill in the art would vary the concentration to obtain a more precise x-ray image.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,351,423. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘423 claims anticipate the instant claims.
Conclusion
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/RAEANN GORDEN/Primary Examiner, Art Unit 3711
October 7, 2026
