DETAILED ACTION
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 1-7 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 19 now claims:
…
It is completely unclear if the lined thru language is supposed to be included, or the entire limitation is supposed to be lined thru. Restated, the limitation does not make sense if just the partial language is lined thru as currently claimed. For purposes of examination, the Examiner would construe that the language is not supposed to be lined thru (i.e. the entire limitation is supposed to be present).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert (US Pat. No. 6,592,469 B2) in view of Morales et al. (herein “Morales ‘094”; US Pub. No. 2018/0178094 A1) and in view of Morales et al. (herein “Morales”; US Pub. No. 2013/0072321 A1).
Regarding claim 1, Gilbert discloses an iron-type golf club head (Fig. 4) comprising: a body (Fig. 4, item 70 being the insert) comprising: a strikeface (Fig. 4; noting this is inherent) comprising a strikeface perimeter and a rear surface (Fig. 4; noting this is inherent); and a rear body coupled to the strikeface and comprising: a toe portion, a heel portion, a top rail, and a sole (Figs. 4 and 1; noting the features are inherent; noting the Examiner does not import any meaning into the word “coupled” other than “as in combined” as defined by merriam-webster.com); wherein the rear body and the rear surface of the strikeface define a cavity (Fig. 4; noting the cavity in which item 70 rests, also see col. 3, lines 15-20); wherein the rear body extends from the strikeface perimeter (Fig. 4 and col. 3, lines 15-20; noting the “perimeter weighting”); wherein the rear surface of the strikeface and the rear body form an undercut (Fig. 4, proximate items 36 on the top and bottom); wherein the undercut comprises a top rail undercut (Fig. 4, proximate item 36 at the top); an insert disposed in the cavity and comprising an insert front face surface adjacent the rear surface of the strikeface and an insert rear surface opposite the insert front surface (Fig. 4, item 70), the insert further comprising interconnecting walls forming voids (Fig. 4; item 70; see col. 3, lines 29-48, noting “widows” or “apertures” with inherent side walls located within the insert that extend completely through the insert to view graphics behind the insert of Fig. 4, i.e. on the rear striking face, are obvious); wherein the insert is made from material selected from the group consisting of foam, polymer, and rubber (col. 4, lines 42-53; disclosing “polymer”); wherein the insert comprises a geometry that is complementary to a geometry of the cavity, such that a top rail portion of the insert extends into the top cut undercut such that the top rail portion of the insert extending into the top rail undercut does not comprise voids (Fig. 4, noting no voids within the region proximate item 36; also see, col. 3, lines 45-48; noting graphics “located behind the insert”, i.e. on the rear surface of the face”, could be seen thru the windows, and it would be obvious not to use voids in the undercut section where graphics would be covered up by the topline structure of the iron); wherein the cavity defines a cavity volume (Fig. 4; noting some volume is inherent); wherein the insert is bounded by a surface that is defined by a plurality of perimeter-most points of the insert, and the surface defines an insert total volume that is between 20% to 100% of the cavity volume (col. 4, lines 2-6 and Figs. 3 and 4; noting the outer limits of the entire insert volume are obvious given that the insert “spans the entire cavity from upper portion to lower portion”, so between 50 to 100% is obvious and readily apparent based on the combined drawings and specification); wherein the insert defines a filled volume corresponding to a portion of the insert total volume that is occupied by the interconnecting walls (Fig. 4; item 70; noting some filled volume is inherent). It is noted that Gilbert does not specifically disclose that the voids are arranged in a staggered, repeating pattern; wherein the voids take the shape of a three-dimensional hexagonal cell; wherein the voids extend through the insert in a front-to-rear direction and are open to both the insert front surface and the insert rear surface; and the filled volume is between 5% to 90% of the total volume. However, Morales ‘094 discloses a similar insert used behind the face wherein the voids are arranged in a staggered, repeating pattern (Fig. 12, items 460; clearly showing staggered voids in a repeating pattern for at least the first five rows) wherein the voids take the shape of a three-dimensional hexagonal cell (Fig. 12, items 460, and par. [0093]; specifically calling them “hexagonal”); wherein the voids extend through the insert in a front-to-rear direction (pars. [0083] and Fig. 9; noting a different embodiment, but Morales ‘094 specifically envisions that the voids can run from the “front surface to the back surface” with the void angle perpendicular to the insert face; noting use of another embodiment within a single disclosure is obvious under Boston Scientific Scimed Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009), and Fig. 12 making obvious extension through the entire insert) and are open to both the insert front surface and the insert rear surface (noting this is obvious in view of Figs. 9 and 12 and par. [0083] as noted above), the filled volume is between 5 and 90% of the total volume (par. [0073]; noting a 0.5 ratio would be roughly 67% filled or wall volume; see also par. [0079]; and also revisit par. [0073] evidencing that the filled volume is a result effect variable that can be found through routine experimentation in order to optimize “the spring constant and the effective elastic modulus”). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Gilbert to make the voids arranged in a staggered, repeating pattern; wherein the voids take the shape of a three-dimensional hexagonal cell; wherein the voids extend through the insert in a front-to-back direction and are open to both the insert front surface and the insert rear surface; and the filled volume is between 5% to 90% of the total volume, and the filled volume between 5 to 90% of the total volume as taught and suggested by Morales ‘094 because doing so would be use of a known technique (using hexagonal voids that are staggered and run from the front surface to the rear with a filled volume within a prescribed range as taught by the prior art) to improve a similar product (a golf club that can have a rear insert with voids/apertures that would inherently have some filled volume) in the same way (using hexagonal voids that are staggered and run from the front to the rear surface with a filled volume within a prescribed range as taught by the prior art, the voids and prescribed range known to provide an insert with a satisfactory spring constant and effective elastic modulus – see Morales ‘094: par. [0073]). Finally, it is noted that the combined Gilbert and Morales ‘094 do not specifically disclose wherein the voids comprise a greater volume at a heel end than at both a toe end of the insert and a center of the insert. However, Morales ‘094 clearly teaches the ability to use higher volume voids at the face center in order to change the spring constant and effective elastic modulus to allow for more face deflection at that position (pars. [0073] and [0080]). In addition, Morales discloses cells or voids in a rear face plate positioned behind a striking face wherein the voids comprise a greater volume at a heel end than at both a toe end of the insert and a center of the insert (par. [0063]; specifically stating “size of the voids can…decrease from heel end to toe end” making obvious that the size and thus volume of the voids at the heel end are greater at the heel than at the center and toe end). Thus, it would have been obvious to one of ordinary skill in the art to modify the combined Gilbert and Morales ‘094 to make the voids comprise a greater volume at the heel end than at both a the toe end of the insert and a center of the insert as taught and suggested by Morales because doing so would applying a known technique (use larger sized voids on the heel end of a golf club which decrease in size to smaller voids on the toe end of a golf club) to a known product (a golf club that can have voids in its rear insert, the concentration of voids use to change the spring constant and effective elastic modulus and reduce overall weight of the insert) ready for improvement to yield predictable results (use larger sized voids on the heel end of a golf club rear insert which decrease in size to smaller voids at both the center and toe end of a golf club insert; the voids volume influencing the spring constant and effective elastic modulus of the insert while also providing a weight savings to the overall weight of the golf club – see Morales: par. [0039]).
Regarding claim 2, the combined Gilbert, Morales ‘094, and Morales disclose that the insert abuts the rear surface of the strike face and abuts the rear body (Gilbert: Fig. 4, item 70).
Regarding claim 3, the combined Gilbert and Morales disclose that the insert can be made of multiple pieces (Gilbert: Fig. 2A, items 51 and 53 being two different pieces that are combined to form one insert).
Regarding claim 4, the combined Gilbert, Morales ‘094, and Morales disclose that the insert comprises an upper piece, a central piece, and a lower piece (Gilbert: Fig. 2A, item 51 being the upper piece and part of the upper central piece and item 53 being the lower piece and part of the lower central piece; again also noting this is merely a product by process; also noting applicant does not claim that pieces are all three “separate” pieces). In the alternative, Gilbert discloses the use of two pieces for the insert (Fig. 2A). In addition, regarding making the insert from three separate and distinct pieces, it has been held that the duplication of parts is not given patentable weight unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)(see also Song: Fig 5, evidencing that three distinct pieces may be used in the rear cavity to influence club weighting). Thus, it would have been obvious to one of ordinary skill in the art that making the insert from three pieces would not produce new and unexpected results: that is, the insert would be made from more than one piece to make a single, integral rear insert, regardless of how many pieces are used.
Regarding claim 5, the combined Gilbert, Morales ‘094, and Morales disclose that the upper piece and lower piece are integrally formed and fill the undercut and the central piece is exposed in the cavity (Gilbert: Fig. 2A or 4).
Regarding claim 6, the combined Gilbert, Morales ‘094, and Morales disclose that the insert can be compressed to fit within the cavity and undercut (Gilbert: 4; noting this is a product by process limitation under MPEP 2113; see Gilbert: col 3, lines 30-31; noting the insert can be “press fitted” into the cavity).
Regarding claim 7, the combined Gilbert, Morales ‘094, and Morales disclose that the insert does not extend or protrude beyond the rear body (Gilbert: Fig. 4 and col. 3, lines 26-29).
Response to Arguments
Applicant's arguments filed 9/29/25 have been fully considered but they are not generally persuasive.
2. Patentabilty Remarks
a. 35 U.S.C. § 103 – Obviousness
Claims 1-7
On page 6 of the Remarks, applicant argues that “Specifically, the proposed combination of Gilbert, Morales ‘094, and Morales ‘321 would result in a golf club head comprising a face with internal voids”. Respectfully submitted, applicant’s argument is the epitome of a bodily incorporation argument (emphasis added). However, regarding bodily incorporation, it has been held that "the question in a rejection for obviousness on a combination of references is what the secondary reference would teach one skilled in the art and not whether its structure could be bodily substituted in the basic reference structure.” In re Richman, 165 USPQ 509 (CCPA 1970). A POSA, looking at Morales ‘321, would understand that void sizes (and thus volumes) used specifically behind a striking face could be altered to “reduce the weight” at desired locations along the heel-to-toe direction of the face (par. [0039]). Morales ‘321, pars. [0039] and [0063], make this obvious. Applicant’s arguments on page 6 clearly try to bodily incorporate the structure of Morales ‘321 into the primary and secondary references. However, this is not the standard for obviousness.
Again, on pages 6-7 of the Remarks, applicant argues the specific structure of Morales ‘321. Once again, this argument is not compelling. Morales ‘321 is brought in to show the arrangement of the voids and their corresponding sizes across a heel-to-toe direction. Restated, Morales ’094 already makes obvious the use of voids behind the striking face that can extend in a heel-to-toe direction. As such, based on Morales ‘321, a POSA would understand that the placement of the voids and their corresponding sizes would affect weight distribution within the club head (see Morales ‘321, par. [0039]). Applicant goes on to argue, on page 7, that “Applicant respectfully notes that the cells of Morales ‘321 are not analogous to the voids disclosed in Gilbert and Morales ‘094”. Once again, it appears that applicant is arguing that the voids must be “analogous” for a bodily incorporation, or at least for a obviousness to combine. Again, this is contrary to the holding in In re Richman.
Applicant goes on to argue that the combination of Gilbert with Morales ‘321 would “frustrate the intended purpose” of Gilbert (see page 8, applicant arguing the sandwich construction of Morales ‘321). Again, this argument is based bodily incorporation of the sandwich construction shown in Morales ‘321. That is, applicant continues to try and bodily incorporate the teachings of Morales ‘321 instead of looking at what it would teach a POSA. Once again, the modification to the combined Gilbert and Morales ‘094 by Morales ‘321 is to use varying size voids behind heel-to-toe length of the face, not the exact sandwich construction as argued by applicant. Furthermore, using open cells would not contradict the Morales ‘321 disclosure that the voids “reduce” the overall weight of the head (see par. [0039]; see Remarks, page 8, applicant arguing “Alternatively, if the rear insert cells were to be open at either side, this construction would contradict the intended purpose of the cells (i.e. even stress distribution) disclosed by Morales '321”; but par. [0039] also specifically stating that the “cell lattice [aka the voids]…reduces weight”).
No other arguments are advanced.
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.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
2/4/26 /MICHAEL D DENNIS/Primary Examiner, Art Unit 3711