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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Clams 2-5 have been canceled.
Claims 1 and 6-7 have been examined.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Response to Arguments
No remarks were presented by Applicant in the response of 8/28/2025. Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
Claim Rejections - 35 USC § 103
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Oldenburg et al (US Patent Application Publication 2022/0008796) in view of Korn (US Patent Application Publication 2018/0133569).
1. Oldenburg et al disclose a shaft (10) for a putter, the shaft comprising:
a body composed of a composite material (Par. 0045), the composite material consisting of a plurality of plies of pre-preg (Par. 0032);
wherein the body has a length less than 35 inches (Par. 0049);
wherein the body has a mass of 100 grams (Par. 0050);
wherein the body has a torque less than 1.5 degrees (Par. 0027); and
wherein the body has a frequency greater than 360 cpm (Par. 0027);
wherein an outer diameter of a butt end of the shaft ranges from about 0.550 to about 0.625 inch (Par. 0040: “The shaft can comprise a butt end OD 30 that is inclusively between 0.5 inch and 0.7 inch”);
wherein an inner diameter of a tapered tip of the shaft ranges from about 0.350 to about 0.36 inch (Par. 0039: “The parallel tip OD can be between…0.35 inch and 0.40 inch”).
Oldenburg et al do not explicitly disclose wherein the body has a mass of less than 100 grams.
However, Oldenburg et al also disclose the following:
Par. 0027: The ultra-high stiffness putter shaft comprises a higher stiffness than existing shafts, as evidenced by a higher frequency, a smaller tip deflection, and a lower torque.
Par 0034: High or ultra-high modulus materials can be used to increase stiffness without adding additional plies.
Par. 0048: The material used to form the longitudinal plies can be selected to control the desired bending stiffness. The material used to form the bias plies can be selected to control the desired torsional stiffness.
Par. 0050: the mass of the putter shaft can range from 100 grams to 160 grams
Par. 0053: the relationships between size, mass, and stiffness are important to the overall shaft performance
Therefore, Oldenberg teaches that in order to achieve the properties of a higher frequency and lower torque, the length, mass, and material used can be manipulated based on the desired feel and performance of the user (e.g. frequency and torque are recognized as a result effective variable). One of ordinary skill in the art would have been motivated to ensure that the putter shaft has properties optimized to a specific golfer (as this is common practice in the golf industry in the golf club fitting process) as it is the normal desire of scientists or artisans to improve upon what is already generally known.
Applicants are also reminded that:
MPEP 2144.05(II)(B): The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.
KSR, 550 U.S. at ___, 82 USPQ2d at 1397: a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.
The optimization of proportions in a prior art device is a design consideration within the skill of the art. In re Reese, 290 F.2d 839, 129 USPQ 402 (CCPA 1961)
“[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).
MPEP 2144.05(I): a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Accordingly, through routine experimentation and optimization, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to manipulate the material properties, such as mass (specifically decreasing the mass by a fraction of a gram to be less than 100 grams), while maintaining a high frequency and low torque to prevent unwanted face twisting during the impact of a golf ball during a putting stroke, allowing for greater putt accuracy. This is merely the application of the expected level of skill on the part of one of ordinary skill producing expected and predictable results.
Furthermore, Oldenburg et al disclose the shaft significantly as claimed, but do not disclose wherein the body has a first straight portion which extends from a butt end of the shaft to a bend portion and a second straight portion, wherein the bend portion and second straight portion are near a tip end of the shaft and the first straight portion is more than double the length of the length of the combined bend portion and the second straight portion and wherein the club head is composed of a steel material.
Korn teach a similar golf putter having a composite shaft (e.g. graphite: Par. 0067) which can have neck hosel shafts, crank-neck, short slant-neck, slant-neck, double-bend (e.g. “a first straight portion, a bend portion and a second straight portion, wherein the bend portion and second straight portion”: Figs 1 and 7) or center shaft and the first straight portion is more than double the length of the length of the combined bend portion and the second straight portion (Fig 1 shows the second straight portion extending from the club head to a bend portion and the first straight portion extends from the bend to the grip end but is partially removed for illustration purposes) and in which the putter head can be made from metal, specifically steel (Par. 0067 and 0096) depending on the preferences of the user. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the shaft to have a first straight portion, a bend portion and a second straight portion and wherein the club head is composed of a steel material as taught by Korn as these configurations are recognized as standard within the golf art to provide desired feel and performance and such a modification would produce expected and predictable results.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Oldenburg et al (US Patent Application Publication 2022/0008796) in view of Korn (US Patent Application Publication 2018/0133569) and Rollinson (US Patent 10,486,036).
6-7. Oldenburg et al disclose a putter comprising:
a club head (26); and
a shaft (10) connected to the club head, the shaft comprising a body composed of a composite material (Par. 0045) , the composite material consisting of a plurality of plies of pre-preg (Par. 0032);
wherein the body has a length less than 35 inches (Par. 0049);
wherein the body has a mass of 100 grams (Par. 0050);
wherein the body has a torque less than 1.5 degrees (Par. 0027); and
wherein the body has a frequency greater than 360 cpm (Par. 0027);
wherein an outer diameter of a butt end of the shaft ranges from about 0.550 to about 0.625 inch (Par. 0040);
wherein an inner diameter of a tapered tip of the shaft ranges from about 0.350 to about 0.36 inch (Par. 0039).
Oldenburg et al do not explicitly disclose wherein the body has a mass of less than 100 grams.
However, Oldenburg et al also disclose the following:
Par. 0027: The ultra-high stiffness putter shaft comprises a higher stiffness than existing shafts, as evidenced by a higher frequency, a smaller tip deflection, and a lower torque.
Par 0034: High or ultra-high modulus materials can be used to increase stiffness without adding additional plies.
Par. 0048: The material used to form the longitudinal plies can be selected to control the desired bending stiffness. The material used to form the bias plies can be selected to control the desired torsional stiffness.
Par. 0050: the mass of the putter shaft can range from 100 grams to 160 grams
Par. 0053: the relationships between size, mass, and stiffness are important to the overall shaft performance
Therefore, Oldenberg teaches that in order to achieve the properties of a higher frequency and lower torque, the length, mass, and material used can be manipulated based on the desired feel and performance of the user (e.g. frequency and torque are recognized as a result effective variable). One of ordinary skill in the art would have been motivated to ensure that the putter shaft has properties optimized to a specific golfer (as this is common practice in the golf industry in the golf club fitting process) as it is the normal desire of scientists or artisans to improve upon what is already generally known.
Applicants are also reminded that:
MPEP 2144.05(II)(B): The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.
KSR, 550 U.S. at ___, 82 USPQ2d at 1397: a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.
The optimization of proportions in a prior art device is a design consideration within the skill of the art. In re Reese, 290 F.2d 839, 129 USPQ 402 (CCPA 1961)
“[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).
MPEP 2144.05(I): a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Accordingly, through routine experimentation and optimization, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to manipulate the material properties, such as mass (specifically decreasing the mass by a fraction of a gram to be less than 100 grams), while maintaining a high frequency and low torque to prevent unwanted face twisting during the impact of a golf ball during a putting stroke, allowing for greater putt accuracy. This is merely the application of the expected level of skill on the part of one of ordinary skill producing expected and predictable results.
Furthermore, Oldenburg et al disclose the shaft significantly as claimed, but do not disclose wherein the body has a first straight portion which extends from a butt end of the shaft to a bend portion and a second straight portion, wherein the bend portion and second straight portion are near a tip end of the shaft and the first straight portion is more than double the length of the length of the combined bend portion and the second straight portion and wherein the club head is composed of a steel material.
Korn teach a similar golf putter having a composite shaft (e.g. graphite: Par. 0067) which can have neck hosel shafts, crank-neck, short slant-neck, slant-neck, double-bend (e.g. “a first straight portion, a bend portion and a second straight portion, wherein the bend portion and second straight portion”: Figs 1 and 7) or center shaft and the first straight portion is more than double the length of the length of the combined bend portion and the second straight portion (Fig 1 shows the second straight portion extending from the club head to a bend portion and the first straight portion extends from the bend to the grip end but is partially removed for illustration purposes) and in which the putter head can be made from metal, specifically steel (Par. 0067 and 0096) depending on the preferences of the user. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the shaft to have a first straight portion, a bend portion and a second straight portion and wherein the club head is composed of a steel material as taught by Korn as these configurations are recognized as standard within the golf art to provide desired feel and performance and such a modification would produce expected and predictable results.
Rollinson teaches a similar putter head having a bent shaft and wherein the mass of the putter head “prefereably has a mass ranging from 300-400 grams” (Col 3, Lines 12-13) to achieve a desired swing weight of the putter. Examiner also notes that it is not inventive to state the optimum values of a mass of a club head. Through routine experimentation and optimization, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify club head of Oldenberg and Korn to have mass ranging between 300-400 grams as taught by Rollinson to create a desired swing weight and feel and because this is merely the application of the of the expected level of skill on the part of one of ordinary skill producing expected and predictable results.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSHUA T KENNEDY whose telephone number is (571)272-8297. The examiner can normally be reached M-F 7a-4:30p MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LoAn Jimenez can be reached on (571) 272-4966. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA T KENNEDY/Primary Examiner, Art Unit 3784 9/8/2025