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 .
Response to Amendment
The amendment filed 01/16/2026 has been entered. Claims 1-2, 4, and 11-21 are pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4, and 11-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The recitation in claim 1 of “the entire protruding feature is formed monolithically of a different elastomeric material” and the recitation in claim 21 of “providing a monolithically formed rib section on the golf club grip” are directed to new matter because the recited limitations are not supported by applicant’s originally filed disclosure (claims, specification, drawings filed 12/22/2021). Applicant’s originally filed specification (Para. 0023) discloses “the protruding feature 115 may be monolithic with the rest of the main body 110”. Applicant’s originally filed specification (Para. 0030) discloses “the protruding feature 115 may be monolithic with the rest of the main body 110. FIGs. 3A and 3B illustrate example implementations of a protruding feature monolithic with a main body of a grip”. Applicant’s originally filed disclosure does not provide support for the protruding feature is “formed monolithically; monolithically formed” and therefore claims 1-2, 4, and 11-21 are rejected as being directed to new matter.
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 1-2, 4, and 11-21 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 recitation in claim 1 of “the entire protruding feature is formed monolithically of a different elastomeric material” and the recitation in claim 21 of “providing a monolithically formed rib section on the golf club grip” are indefinite because it is unclear what is meant by the recited limitation. Applicant’s originally filed specification (Para. 0023) discloses “the protruding feature 115 may be monolithic with the rest of the main body 110”. Applicant’s originally filed specification (Para. 0030) discloses “the protruding feature 115 may be monolithic with the rest of the main body 110. FIGs. 3A and 3B illustrate example implementations of a protruding feature monolithic with a main body of a grip”. Applicant’s originally filed disclosure disclose that the protruding feature is “monolithic with the rest of the main body 110”. For purposes of examination, the examiner will interpret the recitation in claim 1 of “formed monolithically” and the recitation in claim 21 of “monolithically formed” to mean that the protruding feature is “monolithic with the rest of the main body 110”.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim 1-2, 4, 11-14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Davis (10293230) in view of Miller (7435186).
Regarding claim 1, Davis (Figure 5) teaches a golf club grip with reminder rib, comprising: a hollow main body (Fig. 5, Part No. 2) that defines an outermost surface of the golf club grip (Col. 1, Lines 38-46), the hollow main body defining an outer diameter and defining an inner diameter configured to fit to a shaft (Fig. 5, Part No. 5) (Col. 1, Lines 38-46), wherein the golf club grip comprises a protruding feature (Fig. 5, Part No. 3) that extends along a length of the hollow main body, wherein the protruding feature protrudes outwardly radially past the outer diameter defined by the hollow main body (See fig. 5) (Col. 1, Lines 38-46), which defines the outermost surface of the golf club grip, without requiring the shaft to be inserted in the hollow main body (See fig. 5).
Davis (Figure 5) does not teach wherein the entire protruding feature is formed of a different elastomeric material having a durometer hardness greater than that of the hollow main body, wherein the elastomeric material of the protruding feature extends to the inner diameter defined by the hollow main body, forming a rib section of the golf club grip that is distinct from the hollow main body, wherein the rib section defines a rib section length that extends along a majority of the length of the hollow body, wherein the rib section is flush with a surrounding inner diameter defined by the hollow main body along the entire length of the rib section which extends along a majority of the length of the hollow main body.
Davis (Figures 1-4) teaches the entire protruding feature (18) is formed (Col. 3, Lines 34-35) of a different elastomeric material having a durometer hardness greater than that of the hollow main body (14) (Col. 4, Lines 3-8), wherein the elastomeric material of the protruding feature extends to the inner diameter defined by the hollow main body (14) (See fig. 2), forming a rib section of the golf club grip that is distinct from the hollow main body, wherein the rib section defines a rib section length that extends along a majority of the length of the hollow body (See fig. 1-2).
It is noted that claim recitation of “formed monolithically” is directed to a product formed by a process (i.e. a product-by-process limitation/claim). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See: In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). In the instant case, the prior art of Davis teaches the final product of a protruding feature that is formed and extends along a length of a golf club grip and therefore meets the claim. As an alternative rejection, Davis (Col. 3, Lines 34-38) teaches “the protruding feature is monolithic with the rest of the main body”.
Miller (Figure 5) teaches the rib section (Fig. 4-5 and 6B, Part No. 29) is flush with a surrounding inner diameter defined by the hollow main body along the entire length of the rib section which extends along a majority of the length (See fig. 2-3) of the hollow main body (22) (Col. 6, Lines 43-63) (See fig. 5).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Davis (Figure 5) with the entire protruding feature is formed of a different elastomeric material having a durometer hardness greater than that of the hollow main body as taught by Davis (Figure 1-4) as a means of providing a golf club grip with a protruding feature formed of an elastomeric material having a stiffness at least ten percent (10%) greater than that of material of the tubular body (Davis: Col. 4, Lines 3-8), and to provide Davis (Figure 5) with the rib section is flush with a surrounding inner diameter defined by the hollow main body as taught by Miller as a means of providing a sports grip with a rib that does not extend to an interior of a hollow body (Miller: Col. 6, Lines 43-63).
Regarding claim 2, the modified Davis (Figure 5) teaches the protruding feature (3) protrudes above an outer diameter of the hollow main body (See fig. 5).
Davis (Figure 5) does not teach the protruding feature protrudes above an outer diameter of the hollow main body by about 0.040 inches.
Davis (Figures 1-4) teaches the protruding feature (18) protrudes above an outer diameter of the hollow main body by about 0.040 inches (Col. 2, Lines 55-65).
It is noted that the term “about” is being interpreted under a broadest reasonable interpretation (BRI) to mean “near; close to”.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Davis (Figure 5) with the protruding feature protrudes above an outer diameter of the hollow main body by about 0.040 inches as taught by Davis (Figures 1-4) as a means of providing a protruding feature of a gold club grip that extends an amount of about 1 mm (Davis: Col. 2, Lines 55-65), and also as a means of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), where the court held that where 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).
Regarding claim 4, the modified Davis (Figure 5) teaches the elastomeric material inherently having a durometer hardness (Col. 2, Lines 48-54).
The modified Davis (Figure 5) does not teach the elastomeric material of the protruding feature has a durometer hardness of between 60 Shore A and 90 Shore A.
Davis (Figures 1-4) teaches the elastomeric material of the protruding feature has a durometer hardness of between 60 Shore A and 90 Shore A (Col. 4, Lines 3-17).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Davis (Fig. 5) with the protruding feature has a durometer hardness of between 60 Shore A and 90 Shore A as taught by Davis (Fig. 1-4) as a means of providing an elastomeric rib with a durometer hardness in the range of 65 to 80 on the Shore “A” scale (Davis: Col. 4, Lines 13-17), and also as a means of finding optimum or workable ranges by routine experimentation (See: In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), where the court held that where 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).
Regarding claim 11, the modified Davis (Figure 5) teaches the golf club grip comprises a protruding feature (Fig. 5, Part No. 3) that extends along a length of the hollow main body.
The modified Davis (Fig. 5) does not teach a first groove in the outer surface of the hollow main body adjacent a first side of the protruding feature; and a second groove in the outer surface of the hollow main body adjacent a second side of the protruding feature.
Davis (Figures 1-4) teaches a first groove (Fig. 2 and 4, Part No. 56) in the outer surface of the hollow main body adjacent a first side of the protruding feature (18); and a second groove (58) in the outer surface of the hollow main body adjacent a second side of the protruding feature (18) (Col. 3, Lines 38-41).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Davis (Fig. 5) with a first groove in the outer surface of the hollow main body adjacent a first side of the protruding feature as taught by Davis (Fig. 1-4) to further identify the rib and provide isolation from the grip body, which further enhances the presence of the rib (Davis: Col. 2, Lines 13-16; Col. 3, Lines 38-41).
Regarding claim 12, the modified Davis (Figure 5) teaches the protruding feature (3) has a rounded cross-section (See fig. 5).
Regarding claims 13-14, the modified Davis (Figure 5) teaches the hollow main body comprises a protruding feature (3) that extends along a length of the hollow main body (See fig. 5) (Col. 1, Lines 38-46).
The modified Davis (Fig. 5) does not teach the protruding feature has a triangular cross-section, and the protruding feature has a trapezoidal cross-section.
It is noted that the claim recitation in claim 13 of “the protruding feature has a triangular cross-section” and the recitation in claim 14 of “the protruding feature has a trapezoidal cross-section” is directed to the shape/cross section of the protruding feature. Changing the shape of the protruding feature of Davis would have been obvious as a matter of mere design choice (See: In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Regarding claim 21, Davis (Figures 1-4) teaches a method of forming a reminder rib on a golf club grip, the method comprising: providing a hollow main body (14) that defines an outermost surface of the golf club grip, the hollow main body defining an outer diameter and defining an inner diameter configured to fit to a shaft (17) (Col. 2, Lines 48-54), wherein the hollow main body extends along a length defined by the hollow main body; providing a monolithically formed rib section (Fig. 1-4, Part No. 18) (Col. 3, Lines 34-38) on the golf club grip that is distinct from the hollow main body; the rib section defining a rib section length that extends along a majority of the length of the hollow main body (See fig. 1), the rib section (18) defining a protruding feature, wherein the entire rib section is formed of a different elastomeric material having a durometer hardness greater than that of the hollow main body (Col. 4, Lines 3-8).
Davis (Fig. 1-4) does not teach the rib section defining a protruding feature that protrudes outwardly relative to the hollow main body above the outer diameter of the hollow main body which defines the outermost surface of the golf club grip, wherein the rib section extends radially to the inner diameter defined by the hollow main body and is flush with a surrounding inner diameter defined by the hollow main body along an entire length of the rib section.
Davis (Figure 5) teaches the rib section defining a protruding feature (3) that protrudes outwardly relative to the hollow main body (2) above the outer diameter of the hollow main body which defines the outermost surface of the golf club grip (See fig. 5) (Col. 1, Lines 38-46).
Miller (Figure 5) teaches the rib section (Fig. 4-5 and 6B, Part No. 29) extends radially to the inner diameter defined by the hollow main body and is flush with a surrounding inner diameter defined by the hollow main body (22) along an entire length of the rib section (Col. 6, Lines 43-63) (See fig. 5) which extends along a majority of the length (See fig. 2-3) of the hollow main body.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Davis (Fig. 1-4) with a protruding feature that protrudes outwardly relative to the hollow main body as taught by Davis (Fig. 5) as a means of providing a golf grip with an exterior rib strip that extends above an outermost portion of a grip body (Davis: Col. 1, Lines 38-46), and to provide Davis with the rib section is flush with a surrounding inner diameter defined by the hollow main body as taught by Miller as a means of providing a sports grip with a rib that does not extend to an interior of a hollow body (Miller: Col. 6, Lines 43-63).
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Davis in view of Miller, further in view of Kobe (20030203155).
Regarding claim 15, the modified Davis (Figure 5) teaches the protruding feature (3) has a first tier with a rounded cross section.
The modified Davis does not teach the protruding feature has a two-tiered protrusion, wherein a second tier of the two-tiered protrusion protrudes from a first tier of the two-tiered protrusion, wherein both the first tier and the second tier protrude from the outer surface of the hollow main body without requiring the shaft to be inserted in the hollow main body.
Kobe (Figures 1-11) teaches the protruding feature has a two-tiered protrusion, wherein a second tier (Fig. 3, Part No. 56; Para. 0034) (Fig. 2, Part No. 46; Para. 0033) (Fig. 1, Part No. 26) of the two-tiered protrusion protrudes from a first tier (54; Para. 0034) (44; Para. 0033) (21; Para. 0027) of the two-tiered protrusion, wherein both the first tier and the second tier protrude from the outer surface of the hollow main body without requiring the shaft to be inserted in the hollow main body (Para. 0022, 0024).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Davis with the protruding feature has a two-tiered protrusion as taught by Kobe as a means of providing a sports grip having ribs that comprise two portions connected to each other (Kobe: Para. 0024, 0033-0034).
Regarding claim 16, the modified Davis (Figure 5) teaches the first tier has a rounded cross-section (See fig. 5).
Regarding claim 17-18, the modified Davis (Figure 5) teaches the protruding feature (3) has a first tier with a rounded cross section.
The modified Davis does not teach the first tier has a box cross-section, and the first tier has a trapezoidal cross-section.
It is noted that the claim recitation of “the first tier has a box cross-section, and the first tier has a trapezoidal cross-section” is directed to the shape/cross section of the protruding feature. Changing the shape of the protruding feature of Davis would have been obvious as a matter of mere design choice (See: In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Regarding claim 19, the modified Davis (Figure 5) teaches the protruding feature (3) has a first tier with a rounded cross section.
The modified Davis does not teach the second tier is a single bead along a length of the first tier.
Kobe (Figures 1-11) teaches the second tier is a single bead (Fig. 2, Part No. 46; Para. 0033 along a length of the first tier (44; Para. 0033) (Para. 0022, 0024).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Davis with the second tier is a single bead along a length of the first tier as taught by Kobe as a means of providing a sports grip having ribs that comprise two portions connected to each other (Kobe: Para. 0024, 0033-0034).
Regarding claim 20, the modified Davis (Figure 5) teaches the protruding feature (3) has a first tier with a rounded cross section.
The modified Davis does not teach the second tier comprises at least two beads along a length of the first tier.
Kobe (Figures 1-11) teaches the second tier comprises at least two beads (Fig. 1, Part No. 26) along a length of the first tier (21) (Para. 0022, 0024, 0027).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Davis with the second tier comprises at least two beads along a length of the first tier as taught by Kobe as a means of providing a sports grip having ribs that comprise two portions connected to each other (Kobe: Para. 0024, 0027).
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 4, and 11-20 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. The new rejection of claims 1-2, 4, and 11-21 (in view of applicant’s amendment to claims 1 and 21) does not use the Chu reference.
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 CHRISTOPHER GLENN whose telephone number is (571)272-1277. The examiner can normally be reached 9:00 a.m. - 5:00 p.m..
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/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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