DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/26/25 has been entered.
Claim Rejections - 35 USC § 103
3. 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.
4. Claim(s) 1-7 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Penley (US 5,924,936) in view of Horwood et a. (US 2004/0043825) and Hull (US 4,679,791).
5. Regarding to claim 1, Penley discloses a plurality of starting stocks for manufacturing a set of golf clubs, comprising: a plurality of first starting stocks (shafts 18 for producing No. 1, 2 , 3, 5 irons, as can be seen from Figure 1 and Table C in Penley) having a first average outer diameter (outer diameter of 62 inch and 68 inches, as can be seen from Table C in Penley), a first average inner diameter (an inner diameter corresponding to wall thickness, as can be seen from Table C in Penley), a first average cross-sectional area (cross-sectional areas of butt 62), and a first average weight-to-length ratio [as can be seen from Table C and described in column 2 lines 45-50, column 3 lines 1-5 and 50-55 in Penley]; a plurality of second starting stocks (shaft 18 for producing No. 4, 6, 7 irons, as can be seen from Figure 1 and Table C in Penley) having a second average outer diameter (outer diameter of 62 inch and 68 inches, as can be seen from Table C in Penley), a second average inner diameter (an inner diameter corresponding to wall thickness, as can be seen from Table C in Penley), a second average cross-sectional area (cross-sectional areas of butt 62), and a second average weight-to-length ratio [as can be seen from Table C and described in column 2 lines 45-50, column 3 lines 1-5 and 50-55 in Penley];
wherein one of the plurality of first starting stocks is configured to be cut to a first length [shaft 18 for producing No. 2 is cut to produce No. 2 with length of 39.5 inches, as can be seen from Table C and described in columns 3 lines 1-5 and column 8 lines 50-55 in Penley], resulting in a first shaft having a first weight (No. 2 iron with a weight, as described in column 3 lines 50-55 and can be seen from Figure 1 in Penley), the first shaft (18, as can be seen from Figure 1 in Penley) being assembled to a first club head (head 14, as can be seen from Figure 1 in Penley) with a first loft angle (Figure 1 in Penley) make a first golf club in a first stiffness class [as described in column 9 lines 5-10 and 45-50 and can be seen from Figure 1 in Penley];
wherein one of the plurality of second starting stocks is configured to be cut to a second length [shaft 18 for producing No. 6 is cut to produce No. 6 with length of 37.5 inches, as can be seen from Table C and described in columns 3 lines 1-5 and column 8 lines 50-55 in Penley], resulting in a second shaft having a second weight (No. 6 iron with a weight, as described in column 3 lines 50-55 and can be seen from Figure 1 in Penley), the second shaft being assembled to a second club head (head 14, as can be seen from Figure 1 in Penley) with a second loft angle (Figure 1 in Penley) to make a second golf club in the first stiffness class [as described in column 9 lines 5-10 and 45-50 and can be seen from Figure 1 in Penley. Note that the stiffness is designed for a specific player and therefore interpreted as having the same first stiffness class], the second length is less than the first length [second length 37.5 is less than first length 39.5, as can be seen from Table C in Penley], and the second loft angle is greater than the first loft angle (the second loft of No. 6 is greater than the first loft of No. 2, as described in column 5 lines 5-10);
wherein one of the plurality of first starting stocks is configured to be cut to a third length [shaft 18 for producing No. 3 is cut to produce No. 3 with length of 39 inches, as can be seen from Table C and described in columns 3 lines 1-5 and column 8 lines 50-55 in Penley], resulting in a third shaft having a third weight (No. 3 iron with a weight, as described in column 3 lines 50-55 and can be seen from Figure 1 in Penley), the third shaft being assembled to a third club head (head 14, as can be seen from Figure 1 in Penley) with a third loft angle (Figure 1 in Penley), the third length is less than the first length and the third loft angle is greater than the first loft angle [the third length of No. 3 of 39 inches is less than the first length of No. 2 of 39.5 inches, Table C; and the third loft of No. 3 iron head is greater than the first loft of No. 2 iron head, as described in column 5 lines 5-10 in Penley]; and
wherein one of the plurality of second starting stocks is configured to be cut to a fourth length [shaft 18 for producing No. 7 is cut to produce No. 7 with length of 37 inches, as can be seen from Table C and described in columns 3 lines 1-5 and column 8 lines 50-55 in Penley], resulting in a fourth shaft having a fourth weight (No. 7 iron with a weight, as described in column 3 lines 50-55 and can be seen from Figure 1 in Pendley), the fourth shaft being assembled to a fourth club head (head 14, as can be seen from Figure 1 in Penley) with a fourth loft angle (Figure 1 in Penley), the fourth length is less than the second length and the fourth loft angle is greater than the first loft angle [the fourth length of No. 7 of 37 inches is less than the second length of No. 6 of 37.5 inches, Table C; and the fourth loft of No. 7 iron head is greater than the first loft of No. 2 iron head, as described in column 5 lines 5-10 in Penley].
However, Penley does not explicitly disclose having a second average weight-to-length ratio being greater than the first average weight-to-length ratio, and a second weight being greater than the first weight. Horwood, however, discloses a second average weight-to length ratio (weight of shorter set of shafts) being greater than a first average weight-to length ratio (weight of longer set of shaft) and a second weight (weight of shorter shafts) being greater than a first weight (weight of longer shafts) [as described in paragraph 0005 and 0015 of Horwood]. Therefore, it would have been obvious to one of ordinary skill in the art to include a second average weight-to-length ratio being greater than a first average weigh-to length ratio and a second weight being greater than a first weight, to provide more torsional stability to shafts [as described in paragraph 0015 of Horwood].
However, the combination of Penley and Horwood does not explicitly disclose having a third weight being less than a first weight and a fourth weight being less than a second weight. However, it would have been obvious to one of ordinary skill in the art to include various weights, including the instance of having a third weight less than a first weight and a second weight greater than a first weight, as obvious to try weight distributions which would yield a predictable solution with a reasonable expectation of success.
However, the combination of Penley and Horwood does not explicitly disclose the set of golf clubs including the first and second golf club in the first stiffness class, the third golf club in a second stiffness class smaller than the first stiffness class, and the fourth golf club in a third stiffness class smaller than the second stiffness class. Hull, however, discloses a set of golf clubs where various shaft stiffnesses can be used to accommodate the general golfing public [as described in column 4 lines 5-9 in Hull]. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the set of golf clubs in the combination of Penley and Horwood to include various stiffness, as taught by Hull, such as a first and second golf club in a first stiffness class, a third golf club in a second stiffness class smaller than the first stiffness class, and a fourth golf club in a third stiffness class smaller than the second stiffness class, to accommodate various users in public golfing [as described in column 4 lines 5-9 in Hull].
Furthermore, it would have been obvious to try golf clubs of various stiffness classes, including the instance of having a first golf club in a first stiffness class, a second golf club in the first stiffness class, a third golf club in a second stiffness class smaller than the first stiffness class, and a forth golf club in a third stiffness class smaller than the second stiffness class, which can form a set of golf clubs, with a reasonable expectation of success. Also, a user can create a set of golf clubs by mixing and matching known golf clubs of various stiffnesses to make a set of golf club to their preference as a simple substitution of one known element for another to obtain predictable results.
6. Regarding to claim 2, the combination of Penley, Horwood and Hull discloses the plurality of starting stocks of claim 1, having a first and second average cross-sectional areas (first and second average cross-sectional area of butt 62). However, the combination of Penley, Horwood and Hull does not explicitly disclose the second average cross-sectional area being greater than or equal to the first average cross-sectional area. However, it would have been obvious to one of ordinary skill in the art to provide golf clubs having various cross-sectional areas, including the instance of having the second average cross-sectional area being greater than or equal to the first average cross-sectional area, as an obvious to try size/dimension which would yield a predictable solution with a reasonable expectation of success.
7. Regarding to claim 3, the combination of Penley, Horwood and Hull discloses the plurality of starting stocks of claim 1, having a plurality of second starting stocks having a density and a plurality of first starting stocks having a density. However, the combination of Penley, Horwood and Hull does not explicitly disclose the density of the plurality of second starting stocks being greater than the density of the plurality of first starting stocks. However, it would have been obvious to one of ordinary skill in the art to provide golf clubs having various properties, including the instance of having the density of the plurality of second starting stocks being greater than the density of the plurality of first starting stocks, as an obvious to try material property which would yield a predictable solution with a reasonable expectation of success.
8. Regarding to claim 4-5, the combination of Penley, Horwood and Hull discloses the plurality of starting stocks of claim 1, having a second average outer diameter of the plurality of second staring stocks, a first average outer diameter of the plurality of first starting stocks, a second average inner diameter of the plurality of second staring stocks, a first average inner diameter of the plurality of first starting stocks, a second average cross-sectional area and a first average cross sectional area.
However, the combination of Penley, Horwood and Hull does not explicitly disclose the second average outer diameter of the plurality of second starting stocks being less/greater than the first average outer diameter of the plurality of first starting stocks, the second average inner diameter of the plurality of second starting stocks being less/greater than the first average inner diameter of the plurality of first starting stocks, and the second average cross-sectional area being greater than or equal to the first average cross-sectional area.
However, it would have been obvious to one of ordinary skill in the art to provide golf clubs having various dimensions and cross-sectional areas, including the instance of having the second average outer diameter of the plurality of second starting stocks being less/greater than the first average outer diameter of the plurality of first starting stocks, the second average inner diameter of the plurality of second starting stocks being less/greater than the first average inner diameter of the plurality of first starting stocks, and the second average cross-sectional area being greater than or equal to the first average cross-sectional area, as an obvious to try size/dimension which would yield a predictable solution with a reasonable expectation of success.
9. Regarding to claim 6, the combination of Penley, Horwood and Hull discloses the plurality of starting stocks of claim 1, wherein the plurality of first starting stocks is used to manufacture the first golf club and at least one additional golf club [Figure 1 in Penley] and the at least one additional golf club having a shaft (18 in Penley). Hull further discloses the use of golf set having a variety of shaft stiffnesses [column 4 lines 5-9 in Hull]. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify combination of Penley, Horwood and Hull to include at least one additional golf club manufactured from a starting stock and having a different stiffness, as taught by Hull, to accommodate the general golfing public [as described in column 4 lines 5-9 in Hull].
10. Regarding to claim 7, the combination of Penley, Horwood and Hull discloses the plurality of starting stocks of claim 1, wherein the plurality of second starting stocks is used to manufacture the second golf club and at least one additional golf club [Figure 1 in Penley]. Hull further discloses the use of golf set having a variety of shaft stiffnesses [column 4 lines 5-9 in Hull]. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify combination of Penley, Horwood and Hull to include at least one additional golf club manufactured from a starting stock and having a different stiffness, as taught by Hull, to accommodate the general golfing public [as described in column 4 lines 5-9 in Hull].
11. Regarding to claims 18-19, the combination of Penley, Horwood and Hull discloses the plurality of starting stocks of claim 1 having stiffness classes. However, the combination of Penley, Horwood and Hull does not explicitly disclose the each of the stiffness classes comprising a stiffness profile ranging from 2.25-10 kgf*m² or following the relationship
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. However, it would have been obvious to one of ordinary skill in the art to try to manufacture a variety of golf clubs having a variety of stiffnesses, including the recited range of being from 2.25-10 kgf*m² or following the relationship
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, which would yield predictable results with a reasonable expectation of success.
Response to Arguments
12. Applicant’s arguments with respect to claim(s) 1-7 and 18-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues the expectation of success and one of ordinary skill in the art would not expect to arrive at the claimed invention based on the teachings of Penley and Horwood because altering the cited sets of golf clubs to arrive at the claimed invention would take away from the intended purpose of both Penley and Horwood. This is not found to be persuasive. One of ordinary skill in the art can create various sets of golf clubs, including mixing and matching golf clubs of various characteristics to create a desired set of golf clubs. The prior art of record still discloses the recited structure as claimed, as rejected above.
Conclusion
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/NIRVANA DEONAUTH/Primary Examiner, Art Unit 3726