DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 6/2/25. Claims 1-23 are amended; claims 1-23 are pending.
Claim Objections
2. Claim 2 is objected to because of the following informalities: “the diameter of the dominant hand portion” should be amended to “the outer diameter of the dominant hand portion”. Appropriate correction is required.
Claim 21 is objected to because of the following informalities: “the index, middle and ring fingers” should be amended to “an index, middle and ring finger”; “the little finer” should be amended to “a little finger”. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: “the little finer” should be amended to “a little finger”; “the index, middle and ring fingers” should be amended to “an index, middle and ring finger”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
Claim 12 is 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 12 recites the limitation "the dominant hand portion". There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend to “the upper portion”. For examining purposes, the scope will be treated commensurate with the suggested amendment.
Claims 14-15 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. Claims 14-15 each recite the limitation "the axial length of the non-dominant hand portion". There is insufficient antecedent basis for this limitation in the claims. It is suggested to amend to “an axial length of the upper portion”. For examining purposes, the scope will be treated commensurate with the suggested amendment.
Claims 18-19 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. Claims 18-19 each recite the limitation "the axial length of the non-dominant hand portion". There is insufficient antecedent basis for this limitation in the claims. It is suggested to amend to “an axial length of the non-dominant hand portion”. For examining purposes, the scope will be treated commensurate with the suggested amendment.
Claim 21 is 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 therein of “the butt section is dimensioned to receive only the little finger of the non-dominant hand” is unclear and indefinite. One ordinary skill in the art cannot properly ascertain the metes and bounds of this limitation. As applicant’s specification admits, “golfers have different sized hands/fingers”. Thus, it is unclear how to determine what “dimension” is able to receive only a little finger of a non-dominant hand since hands/fingers come in considerably different sizes. For examining purposes, where the butt section is 1.25 inches, the indefinite language will be considered to be met.
Claim 22 is 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 therein of “wherein the butt end section and transition section are configured to promote sequential finger closure and stable grip pressure distribution during a golf swing” is unclear and indefinite. One ordinary skill in the art cannot properly ascertain the metes and bounds of this limitation. For examining purposes, when a prior art references produces a structure similar to the claimed grip, the indefinite limitation will be considered to be met.
Claim Rejections - 35 USC § 112
4. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2-4 fail to further limit the subject matter of the claim upon which it depends since claim 1, which claims 2-4 depend from, positively recites the specific values for the outer diameter of the butt end and outer diameter of the dominant hand portion. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 8-10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 8-10 fail to further limit the subject matter of the claim upon which it depends since claim 7, which claims 8-10 depend from, positively recites the specific values for the outer diameter of the butt end and outer diameter of the dominant hand portion. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 fails to further limit the subject matter of the claim upon which it depends since claim 11, which claim 13 depends from, positively recites the specific values for the axial length of the butt end section and the axial length of the transition section. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 16-17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 16-17 fail to further limit the subject matter of the claim upon which it depends since claim 1, which claims 16-17 depends from, positively recites the specific values for the axial length of the butt end section and the axial length of the transition section. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 20 fails to further limit the subject matter of the claim upon which it depends since claim 7, which claim 20 depends from, positively recites the specific values for the axial length of the butt end section and the axial length of the transition section. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 23 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 23 fails to further limit the subject matter of the claim upon which it depends since claim 11, which claim 23 depends from, positively recites the specific values for the axial length of the butt end section and the axial length of the transition section. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
5. 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 of this title, 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.
6. Claims 1-23 rejected under 35 U.S.C. 103 as being unpatentable over Ferris (US Pat. No. 7,658,684).
With respect to claims 1-11 and 13-23, Ferris teaches a grip 10 for a golf club 30 having an axial length and that is sized and shaped to be griped by a dominant and a non-dominant hand of a golfer, the grip comprising: a dominant hand portion 20 having a constant outer diameter of 1 inch (column 4, lines 42-60) and being sized and shaped to be gripped by the dominant hand of the golfer; a non-dominant hand portion 22/18 that is coaxially aligned and integral with the dominant hand portion 20, and the non-dominant hand portion 22/18 being sized and shaped to be gripped by the non-dominant hand of the golfer (See discussion below pertaining to MPEP 2114, In re Schreiber); the non-dominant hand portion 22/18 further comprising: a butt end section 18 having a constant outer diameter of .75 inch that is spaced from the dominant hand portion 20 (Fig. 1; column 4, lines 42-44); a transition section 22 having a first transition section outer diameter of 1 inch (at the dominant hand portion 20 – See column 4, lines 42-47 teaching a dominant hand portion 20 having a constant diameter of 1 inch) and a second transition section outer diameter of .75 inches (at the butt end section 18 – See column 4, lines 42-47 teaching a butt end section 18 having a constant diameter of .75 inch), the transition section extending between the dominant hand portion 20 and the butt end section 18 and tapering linearly from the first transition section outer diameter to the second transition section outer diameter over an axial length of 3.0 inches (column 4, lines 38-40; examiner notes Ferris teaches wherein the tapering occurs “constant” and “linear” - column 4, lines 42-62); wherein axial length of the dominant had portion 20 is 5 inches (column 4, lines 40-41 “approximately 4-5 inches in length” – examiner emphasizes that the use of “approximately” by Ferris permits a range of lengths of 5.0 inches, which meets the claim element of “at least 5 inches”), which is greater than the axial lengths of both the transition section 22 and the butt end section 18 (i.e. 5 inches is greater than 3 inch axial length of transition section 22 and 2 inch axial length of butt end section 18 - column 4, lines 65-67).
Ferris further teaches wherein the butt end section 18 has an axial length of 2 inches (column 4, lines 65-67), which is longer than the claimed value of 1.25 inch. However, 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05. The patented club would operate as intended with the claimed value for the butt end section length. Ferris expressly establishes the lengths of the butt end section 18 is result effective variable for finger placement. For example, Ferris discloses that the upper section of the grip is “sized to accommodate” the pinky and ring finger” (column 4, lines 25-28). See also Column 5, lines 1-4: “It will be appreciated that the above dimensions are typical for golfers that have normal sized hands. These dimensions may be made smaller or larger to accommodate golfers with different size hands as long as the relative sizes between the various sections are maintained”. Given this recognition of the axial length of the butt end section 18 as result effective variables affecting finger placement, one ordinary skilled in the art at time of applicant’s effective filing date, would have found it obvious to select an optimal length, including within the claimed range, via routine experimentation. Notably, the Patent Trial and Appeal Board agreed with this reasoning in Appeal 2016-008755 (hereinafter “Appeal Decision) for parent application 14/285701 on pages 7-8 (“we determine that the claimed ratios are obtainable by routine experimentation and that one skilled in the art would appreciate that shortening the length of the upper section ... would predictably result in the pinky finger of certain golfer’s hands to be the only finger to rest on the upper section of the grip”). Lastly, the Appeal Decision further held that the dimensions of the claimed lengths “relate to an art-recognized result-effective variable, and that the values of the ratio are obtainable by routine experimentation” at page 9. This renders the limitations pertaining to ratios of the butt end section length and transitional length, set forth in claims 16-19, obvious in view of MPEP 2144.05 - In re Aller. Further, the applicant does not place unexpected results or criticality to the claimed range/value, expressly indicating that grip size may be “made smaller or larger to accommodate different hand sizes of various golfers” (paragraph [0035]). See also paragraph [0018] – “It will be appreciated that the length measurements of each of the three sections of the golf grip, in inches, will vary either larger or smaller”. See also Response to Arguments below regarding unexpected results. The proposed modification has a reasonable expectation of success as it involves only adjusting a dimension of a component that is very conveniently adjusted and the primary purpose of Ferris is not frustrated by the modification.
In view of the application of In re Aller rendering it obvious to provide a butt end section axial length of 1.25 inches, this modified golf club grip teaches a butt end section 18 axial length of 1.25 inches, a transition section 22 axial length of 3 inches, and a dominant hand portion 20 axial length of 5 inches. Thus, the following limitations are met: wherein the axial length of the butt end section is no greater than 42 percent of the axial length of the transition section, wherein the axial length of the butt end section is no more than 30 percent of the axial length of the non-dominant hand portion, wherein the axial length of the transition section is no more than 70 percent of the axial length of the non-dominant hand portion, wherein the axial length of the butt end section is no greater than 42 percent of the axial length of the transition section, wherein the axial lengths of the butt end section and the transition section have a ratio of 5:12.
Per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, since the structure of the grip resulting from the above modification is the same as applicant’s, the grip is considered to be of a nature that, the griping of the dominant and non-dominant hand portions by respective dominant and non-dominant hands are therefore met. Specifically, the dominant hand portion is sized and shaped to be gripped by the dominant hand of the golfer; the non-dominant hand portion is sized and shaped to be gripped by the non-dominant hand of the golfer; the butt end section is adapted to receive only the little finger of the non-dominant hand, wherein the transition section is dimensioned to receive the index, middle and ring fingers of the non-dominant hand, and the butt section is dimensioned to receive only the little finger of the non-dominant hand; wherein the butt end section and transition section are configured to promote sequential finger closure and stable grip pressure distribution during a golf swing. See MPEP 2114, In re Schreiber.
With respect to claim 12, Ferris teaches wherein the transitional section 22 is 3 inches in length, and further teaches wherein the butt end section is .75 in. in diameter, and the dominant hand section 20 is 1 inch in diameter, and wherein the tapering of the transition section 22 occurs “constant” and “linear” (column 4, lines 42-62). As such, the limitation that the outer diameter of the transition section tapers at a rate of 0.083 inches per inch of axial length from the dominant hand portion to the butt end section is considered met.
Response to Arguments
7. Applicant's arguments filed 6/2/25 have been fully considered but they are not persuasive.
In response to the prior office action rejection under 35 USC 103, applicant argues that Engfer does not teach or suggest the claimed configuration. See Section III of the Remarks dated 6/2/25. Applicant also argues that Engfer teaches away from the claimed invention. Examiner makes no comment regarding these statements, as Engfer is not being applied. The 35 USC 103 rejection applies Ferris.
Applicant argues a secondary consideration to establish unexpected results to overcome an obviousness rejection. Applicant alleges “unexpected” results based on test results conducted by Ian Mellor in March 2022. The test results, according to the Remarks, provides an improvement in accuracy and distance when comparing the present application golf grip to the golf club grip of the Ferris reference. From MPEP 716.01(a) – “The weight attached to evidence of secondary considerations by the examiner will depend upon its relevance to the issue of obviousness and the amount and nature of the evidence”. In reviewing the presented evidence as a whole, examiner does not consider the arguments presented sufficient to overcome the 103 rejections above. Here, applicant fails to establish the necessary nexus between the objective evidence and the claimed invention because there is no evidence establishing that the grips used by the golfer are coextensive with the claimed invention and the applied art. It is unclear what the structure and dimensions of the Ferris patent grip PS1. It is unclear what the dimensions of the present application grip was. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 109. MPEP 716.02. Applicant has not met this burden. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Here, purported scientific evidence provided by the Ferrid Declaration (dated 6/2/25) test has a sample size of merely two golfers that swing only 25 times, one of the two golfers – i.e. the amateur, demonstrated only nominal improvements in accuracy and distance. See “Test Results”. In fact, the alleged improvement of the amateur is likely within the margin of error for the Flightscope recording device. This falls well short of strong probative object evidence, which at the very least would provide a substantially larger sample size.
Lastly, evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) MPEP 716.02(c). Evidence pertaining to secondary considerations must be taken into account whenever present; however, it does not necessarily control the obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372, 82 USPQ2d 1321, 1339 (Fed. Cir. 2007). MPEP 2145. Office personnel should not evaluate rebuttal evidence for its “knockdown” value against the prima facie case, Piasecki, 745 F.2d at 1473, 223 USPQ at 788, or summarily dismiss it as not compelling or insufficient. If the evidence is deemed insufficient to rebut the prima facie case of obviousness, Office personnel should specifically set forth the facts and reasoning that justify this conclusion. Here, the case for supporting prima facie obviousness is stronger than applicant’s arguments of unexpected results. Examiner emphasizes the finding of the Board of Appeals: “we determine that the claimed ratios are obtainable by routine experimentation and that one skilled in the art would appreciate that shortening the length of the upper section ... would predictably result in the pinky finger of certain golfer’s hands to be the only finger to rest on the upper section of the grip”. The Appeal Decision further held that the dimensions of the claimed lengths “relate to an art-recognized result-effective variable, and that the values of the ratio are obtainable by routine experimentation” at page 9.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Garrity (US Pat. No. 3,295,850).
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 MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711