DETAILED ACTION
35 USC § 112
For the claims, the Examiner construes “approximately” to be “10% of the stated value” according to applicant’s par. [0034].
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 1-5, 7, and 8 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. Claim 1, line 16 uses the term “substantially”. The term “substantially” in claim 1 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.
Claims 9-18 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. Claim 9, line 13 uses the term “substantially”. The term “substantially” in claim 9 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.
Claims 26-30 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. Claim 26, line 15 uses the term “about”. The term “about” in claim 26 is a relative term which renders the claim indefinite. The term “about” 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.
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, 9, 19, and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 18, 39 of copending Application No. 18/170,659. The Examiner notes that a notice of allowance on the application 18/170,659 has just been posted (as of 6/4/25) and that applicant has been informed of this allowance via an email to Mr. Irah Donner on 6/3/26 (Mr. Donner actually authorized an Examiner’s amendment in the ‘659 application).
Below is claim 1 from the parent application 18/170,659.
1. A golf club comprising: a straight shaft having a shaft center axis; a grip at one end of said shaft, said grip having a grip center axis, and a front edge of the grip having a reference line extending down the side of the grip, the grip further comprising a channel configured to receive said shaft therein and having a channel center axis; a club head at another end of said shaft having a forward lean, said club head comprising a club face configured to make contact with a golf ball and the reference line at the front edge of the grip aligned with the club face, and wherein said grip center axis and said channel center axis are not parallel to one another; wherein said channel is angled such that an angle between the grip center axis and the shaft center axis is offset so that the front edge of the grip is aligned with the club face to compensate for the forward lean of said shaft, and wherein the golf club is configured to resist twisting when the club face contacts the golf ball by correcting the club face.
Below is 19 from the current application. The claim is exemplary of the other independent claims and the Examiner would argue that all of the dependent claims are made obvious by claim 1 of the ‘659 application.
19. (Currently Amended) A golf club comprising:
a straight shaft having a shaft center axis;
a grip at one end of said shaft, said grip having a grip center axis, the grip further
comprising a channel that is non-parallel to the grip center axis and adapted to receive said shaft
therein and having a channel center axis, said channel of the grip is adapted to be formed within
the grip at an angle with respect to an exterior surface of the grip; and
a club head at another end of said shaft having a forward lean and directly connected to
said shaft, said club head comprising a club face configured to make contact with a golf ball;
wherein said grip center axis and said channel center axis are not parallel to one another;
and wherein said channel is angled within said grip so as to provide a lean of said shaft in a
direction forward of said club face, and the channel center axis is angled such that a lie angle of
the golf club is constant regardless of a location that the golf club is grippable
along the grip.
As it can be seen based on the claim language above, the claims involve overlapping subject matter and a terminal disclaimer is appropriate.
This is a provisional nonstatutory double patenting rejection. To be clear, this double patenting rejection was previously presented in the non-final rejection (although the Examiner now adds more specificity in this final rejection).
Allowable Subject Matter
The following indication of allowance is completely conditional on applicant filing a terminal disclaimer (based on the above double patenting rejection) in conjunction with application 18/170,659 for which a notice of allowance has just been posted.
Claims 19-25 are allowed.
Claims 1 (and its dependents), claim 9 (and its dependents) and claim 26 (and its 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.
The allowance of this child application is completely consistent with the allowance of parent application 18/170,659.
Specifically, the Examiner does not find any of the 132 declarations compelling enough to overcome the previous rejection (including via secondary considerations of non-obviousness by way of commercial success). In the declaration filed 5/22/26 by Kevin Martin (the one with 22 enumerated items), enumerated items 13 and 15 discuss “market share” and sales data. Concerning the “market share”, it is entirely unclear what market share the invention has as compared to all putters sold (emphasis added). Item 13 only gives market share as compared to what Mr. Martin deems to be “zero-torque putters” (the Examiner entirely unsure how this is categorized, i.e. what structure creates what applicant considers “zero-torque” in applicant’s opnion). With regards to item 15, it is completely unclear if the increase in sales is attributable solely to the structure as claimed (i.e. what is required to show commercial success) or if the increase in sales is attributable to increased marketing (i.e. increased commercials, print advertisements, and social media), and/or professional endorsements.
The declaration by Liam Hunt adds nothing to evidence of commercial success. In addition, the declaration is merely opinion and carries little to no weight.
The second declaration by Kevin Martin (the one with 28 enumerated items) also does little to show commercial success or overcome nonobviousness. The declaration is a summary of the prior art which a POSA would readily understand. In item 26, specifically, Mr. Martin states “one skilled in the art, such as myself, would not modify Sussich with Kronogard as contemplated by the current Office Action” (emphasis added). With all due respect, this is the ultimate legal conclusion at issue (see MPEP 716.01(c)(III) stating “Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue”; emphasis added). As such, the second declaration by Mr. Martin is in no way compelling and is also given little to no weight.
Rather, the Examiner generally finds applicant’s arguments against combining the Sussich reference with the Kronogard reference as the ultimate reason for allowability (see Remarks, received 5/22/26, generally pages 12-17). In addition, Sussich continues to be the closest prior art or record.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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, 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
6/4/26
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711
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