DETAILED ACTION
Note to Applicant
This office action is in response to a preliminary amendment received 5/7/25. In that preliminary amendment, applicant states that support for the amendment is present in “Figs. 5 and 6 of US Application No. 16/953,552”. As such, the Examiner looks to Figs. 5 and 6 for support with analyzing the claim language.
Priority
Claims 21, 27, and 33 are given a priority date of 11/2/21 based on the filing of parent application 17/516,824.
35 USC § 112
The Examiner construes “about” to mean that the “an acceptable degree of error or variation for the quantity measured given the nature or precision of the measurements” as defined by page 7, lines 18-19 of applicant’s specification.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the shared dimple located on each vertex; the eight substantially identical dimple sections of claims 21, 27, and 33 and the shared dimple on the edge of claims 32 and 34 and the three-way rotational symmetry of claim 39 must be shown or the feature(s) canceled from the claim(s)(emphasis added). Restated, the Examiner interprets “shared” to mean that the dimple is located both in a spherical triangle, and also in at least one adjacent spherical triangle. Looking at Figs. 5 and 6 of incorporated reference 16/953,552, only one spherical triangle is shown in the drawings and not eight. As such, the dimple being “shared” by another triangle is not actually shown.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 21-40 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 term “substantially” in claims 21, 27, and 33 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Restated, page 19, lines 11-16 of applicant’s specification states the following (emphasis added):
The dimple patterns arranged in each of the dimple sections, for example, in each of the
spherical triangles, are substantially identical to each other. For purposes of the present disclosure, dimple patterns are "substantially identical" if they have substantially the same dimple arrangement (i.e., the relative positions of each of the dimples' centroids are about the same) and substantially the same dimple characteristics (c.g., plan shape, cross-sectional shape, diameter, edge angle).
As can be seen, applicant uses the term “substantially” to define the term “substantially”. As such, the specification does not define the metes and bounds of what “substantially” entails and thus the claims are indefinite.
Claims 21, 27, and 33 also claim that “wherein each substantially identical section comprises a shared dimple centered on each vertex”. Respectfully submitted, “vertex” should have antecedent basis prior to this language (i.e. applicant should amend the claim to specifically state where the vertex are located on the spherical triangle). This also calls into question what it means to be “shared”. The Examiner assumes that applicant is claiming that the “shared” dimple means that the dimple is part of both one “dimple section created by the spherical triangle” and at least one other “dimple section created by the spherical triangle”. However, the independent claims never actually claim this language (i.e. the claims never define what it means to be “shared”). Restated, all eight dimple sections do not share a dimple at a single vertex. Rather, it would appear that the “shared dimples” at the vertices are shared between four adjacent dimple sections. In any event, applicant should clarify within the claim what it means to be “shared”. For example, the language “wherein each substantially identical dimple section comprises a shared dimple center on each vertex” could be interpreted to mean that all eight dimple sections share the same dimple at a single vertex. However, they do not…only four sections share one dimple at a given vertex.
Claims 21, 27, and 33 claim “the shared dimple having one of the additional dimple diameters” (emphasis added). This language is confusing because all of the independent claims previously claim “a shared dimple centered on each vertex” (emphasis added). As a spherical triangle would have three vertices, it would appear that applicant should be refer back to “the shared dimples” (i.e. plural) to clearly denote that more than one is present. If applicant is only referring back to one single “shared dimple” rather than all three, this should be clarified within the claim including its exact location on the dimple sections.
Claims 21, 27, and 33 also claim “the shared dimple having one of the additional dimple diameters”. This language should read “the shared dimple having one of the first or second additional dimple diameters” for proper antecedent basis.
Claims 21, 27, and 33 also claims “a first plurality of dimples having a minimum dimple diameter, a second plurality of dimples having a maximum diameter, a third plurality of dimples having a first additional dimple diameter, and a fourth plurality of dimples having a second additional dimple diameter”. The Examiner assumes that the first and second dimple diameters are “different than the minimum and maximum diameters” and that the “first and second diameters” are also different from each other. However, this is never actually claimed and should somehow be positively recited to make the claim definite. Restated, the use of the term “additional” makes it unclear if the diameters are actually different, or the same. The Examiner believes that it is applicant’s intent to claim that the diameters are all different from one another.
Claims 22-26, 28-32, and 34-40 are rejected because they are dependent on claims 21, 27, and 33.
Claim 32 and 34 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. Claims 32 and 34 also claim “shared dimples”. Consistent with the rejection of claims 21, 27, and 33 above, applicant needs to clarify what it means to be “shared”. In this particular case, the “shared dimple” is located in both a spherical triangular dimple section and an adjacent spherical triangular dimple section. For example, the language “each substantially identical dimple section further comprises a shared dimple having a centroid that intersects an edge of the dimple section” could be interpreted to mean that all eight dimple sections share the same dimple on an edge of the dimple section. They do not…only two adjacent dimple sections share the dimple on the edge.
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.
Claims 21, 27, and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-9 of U.S. Patent No. 11,167,174 B1 in view of Nesbitt (US Pat. No. 5,209,485). Claims 7-9 of the ‘174 patent claim the following:
7. A golf ball having a substantially spherical surface, comprising: a plurality of dimples disposed thereon, wherein the dimples are arranged in an octahedral pattern comprising eight substantially identical dimple sections, wherein each dimple section is defined by a spherical triangle having three vertices, wherein the dimples in each of the eight substantially identical dimple sections have a corresponding dimple diameter and a corresponding edge angle, wherein the dimples in each of the eight substantially identical dimple sections comprise: (i) at least three different dimple diameters including a minimum dimple diameter, a maximum dimple diameter, and at least one additional dimple diameter, wherein each of the at least three different dimple diameters range from about 0.030 inches to about 0.200 inches, and (ii) substantially identical edge angles, and wherein the dimples cover about 60 percent or less of the substantially spherical surface and the pattern results in at least four dimple free great circles on the golf ball.
8. The golf ball of claim 7, wherein each substantially identical dimple section comprises at least one shared dimple, the shared dimple having a centroid that intersects an edge of the dimple section.
9. The golf ball of claim 7, wherein a dimple is located at each of the three vertices of the dimple section such that a portion of the dimple is located within four dimple sections.
Claim 21 of the current applicant (claim 21 being exemplary to claims 27 and 33) claims the following:
21. (New) A golf ball comprising:
a core layer comprising a rubber formulation of polybutadiene rubber, butyl rubber, or a blend thereof, and a cover layer comprising a plurality of dimples disposed thereon, wherein the dimples are arranged in an octahedral pattern comprising eight substantially identical dimple sections, wherein each dimple section is defined by a spherical triangle, wherein the dimples in each of the eight substantially identical dimple sections comprise a first plurality of dimples having a minimum dimple diameter, a second plurality of dimples having a maximum dimple diameter, a third plurality of dimples having a first additional dimple diameter, and a fourth plurality of dimples having a second additional dimple diameter, wherein each of the dimple diameters range from about 0.030 inches to about 0.200 inches, wherein each substantially identical dimple section comprises a shared dimple centered on each vertex, the shared dimple having one of the additional dimple diameters, wherein each of the first, second, third, and fourth pluralities of dimples comprise a different number of dimples, and wherein the surface coverage is related to an amount of the rubber formulation according to the following equation: BR/(1-SC) < 2.0 where SC is the surface coverage in the decimal form of percentage and 0 < SC < 1, and BR is the weight percent of polybutadiene rubber, in decimal form, based on the total weight of rubber in the rubber formulation and 0 ≤ BR ≤ 1.
As such, what is not claimed by the ‘174 patent is the exact rubber formulation to meet the surface coverage (i.e. the italicized language above). However, Nesbitt makes this language obvious (see final rejection, posted 9/20/24, parent application 17/863,528, rejection of claim 1, the Examiner clearly laying out how Nesbitt makes this language obvious). As such, a terminal disclaimer is warranted in conjunction with the ‘174 patent.
Allowable Subject Matter
Claims 21, 27, and 33 (and their dependents) would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and with the filing of a terminal disclaimer.
Regarding the independent claims, they would be allowed assuming arguendo that applicant is attempting to claim the invention as outlined by the Examiner above/below and amends the claims consistent to overcome the 112(b) rejections above.
With regards to claims 21, 27, and 33, all of the claims claim “wherein each substantially identical dimple section comprises a shared dimple centered on each vertex, the shared dimple having one of the additional dimple diameters”.
Looking at Fig. 5 below from the 16/953,552 application incorporated by reference, the Examiner interprets this language to mean that each vertex of the three vertex of any spherical triangles has a dimple at any vertex that is “centered” and “shared” with three adjacent spherical triangles/dimple sections. The Examiner also construes this language to mean that each of the dimples at each vertex is the size of “one of the additional dimple diameters” and that these four diameters (first, second, maximum and minimum) are all different from each other. Restated, the claim language appears to require that the shared dimple at each vertex are all the same size and either the size of the first additional dimple diameter or the second additional diameter (emphasis added; noting they cannot be mixed). Furthermore, consistent with the above, it appears that using the term “additional” means that the first and second additional dimple diameters are not only different from each other, they are different from the maximum and minimum dimple diameters. This interpretation of the claim language is completely consistent with the preferred embodiment represented in applicant’s Fig. 5 below.
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Turning to the prior art of record, Nesbitt (US Pat. No. 5,209,485) is clearly the closest prior art of record. Nesbitt generally discloses the ability to use the rubber formation in an amount to meet the surface coverage limitation and the ability to use an octahedron pattern (see final rejection, posted 9/20/24, parent application 17/863,528, rejection of claim 1). Yamagishi et al. (herein “Yamagishi”; US Pat. No. 5,087,049) generally shows in Fig. 7 the ability to use three different dimple types with the smallest dimple at each of the vertices of the spherical triangle. Yamagishi is the closest prior art of record that shows a dimple at the vertices of an octahedron pattern, wherein the vertices are shared by three adjacent spherical triangles (noting the Examiner interprets “shared” to mean the dimple is present in multiple spherical triangle sections). What Yamagishi does not disclose in Fig. 7 is the ability to use four differently sized dimple diameters (see 112(b) above, noting this assumes that the maximum, minimum, first, and second additional diameters are all different from each other), and using either the first or second additional diameter dimple at the vertices (i.e. it shows dimple 3, the minimum dimple diameter).
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 on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
9/9/26
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