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 .
This action is in response to applicant’s remarks and amendments dated 06/24/2026. Claims 1, 4-7, 11-16, and 20 have been amended. Claims 3 and 17-19 have been cancelled. Claims 1-2, 4-16, and 20 are currently pending.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 4-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wetty (US Patent No. 2,880,002) in view of Ishihara et al. (US Patent No. 9,597,566 B2) and further in view of O’Shea (US Patent No. 8,801,536 B2).
In Reference to Claims 1-2 and 7-9
Wetty teaches (Claim 1) A golf club, comprising: a shaft (item 22, fig’s 1-3), comprising: a shaft butt end [] (upper end of item 22, not separately shown / labeled); a shaft tip end opposite the shaft butt end (at 23, fig. 3); a longitudinal axis extending from a geometric center of the shaft butt end to a geometric center of the shaft tip end (central axis of item 22); and a shaft outer surface defining a shaft bonding area near the shaft tip end (area of item 22 located in item 17/21), the shaft bonding area including an effective bonding area having a plurality of microgrooves (area / items 23, fig. 3), comprising: a first plurality of microgrooves extending circumferentially around the shaft in a first direction; and a second plurality of microgrooves interconnected with the first plurality of microgrooves and extending circumferentially around the shaft in a second direction (column 4 lines 28-36, fig. 2, knurling / serrations are shown in a crosshatched pattern extending around the shaft); wherein: each microgroove of the first and second plurality of microgrooves comprises a plurality of side walls recessed a microgroove depth (column 4 lines 28 – 36, knurling / serrations cut into shaft inherently have sidewalls and a depth) of less than [x] inch into the shaft away from the shaft outer surface, the plurality of side walls increasing the effective bonding area by more than [x] in² (increase in bonding area is inherent as adding grooves increases the surface area); and a club head having: a body (item 10, fig. 1); and a hosel coupled to the body (item 17, fig’s 1-3) comprising: a hosel bore receiving the shaft tip end and the shaft bonding area to form a head-shaft connection, the hosel bore having an inner surface defining a hosel bonding area that directly couples with the effective bonding area of the shaft outer surface (item 21, column 4 lines 24-44);
(Claim 2) wherein the first plurality of microgrooves and the second plurality of microgrooves are formed integrally with the shaft (fig. 3 and column 4 lines 28-36, knurling / serrations are formed into the shaft).;
(Claim 7) wherein each microgroove of the first plurality of microgrooves extends in the first direction and is parallel to adjacent microgrooves of the first plurality of microgrooves, and each microgroove of the second plurality of microgrooves extends in the second direction and is parallel to adjacent microgrooves of the second plurality of microgrooves (fig. 3, sets of knurling / serrations are parallel to each other);
(Claim 8) wherein the first direction and the second direction are diagonal relative to the longitudinal axis (fig. 3, knurling / serrations are diagonal);
(Claim 9) wherein the first plurality of microgrooves and the second plurality of microgrooves provide resistance to a normal force and a torsional force (this is inherent, additional friction and surface area will provide resistance).
Wetty is silent as to a grip and a specific groove depth / bonding area increase.
Ishihara teaches (Claim 1) a grip; and the grip is coupled to the shaft butt end (item 50, fig. 1).
O’Shea (Claim 1) wherein [a bonding] depth is less than 0.0038 inch (column 7 lines 50 - 56).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club device of Wetty with the feature of a grip as taught by the golf club device of Ishihara for the purpose of allowing user to more easily and securely use the club as well as for the purpose of dampening vibrations as taught by Ishihara (summary), making the device easier to use, and more attractive to the users. The examiner further notes that although Wetty is silent as to a grip, conventional golf clubs include a grip for use, therefore, merely claiming a well-known, normally included, component of a golf club is not a patentable advance.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the microgrooves of Wetty with the feature of a depth of less than .0038 inch as taught by the bonding thickness of O’Shea for the purpose of creating a strong bond without losing strength as taught by O’Shea, making the device stronger, more durable, and more reliable.
The examiner notes that it has also been 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of very small grooves for bonding are taught in Wetty (fig. 3 and column 4 lines 28-36) and ideal depths for bonding material are taught in O’Shea (column 7 lines 50-56), merely claiming the depth of the grooves being below a known threshold for poor bonding (below .003 as taught by O’Shea) and/or the specific resultant increase in bonding area, is an obvious matter of routine optimization based on known parameters, and is not a patentable advance. Since bonding depth is a result effective variable, i.e. a variable that achieves a recognized result (in this case the result of stronger or weaker bonding), merely claiming a specific value that optimizes the bonding strength is simply a matter of discovering the optimum or workable range by routine experimentation, and is not a patentable advance.
In Reference to Claim 4
Wetty teaches all of claim 1 as discussed above.
Wetty further teaches (Claim 4) wherein the first plurality of microgrooves and the second plurality of microgrooves define a total microgroove depth, measured along the longitudinal axis from a microgroove nearest the shaft tip to a microgroove nearest the shaft butt end (length of item 22 containing item 23, fig’s 1-3), [].
Wetty is silent as to the dimensions of this depth.
O’Shea teaches (Claim 4) [a] total microgroove depth is between 1.00 inch to 3.00 inches (fig’s 1-3 column 4 line 6, 35 mm is between 1 and 3 inches).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the microgroove connection of Wetty with the feature of the specific depth claimed as taught by the microgroove connection of O’Shea for the purpose of providing a sufficient length for epoxy to bond the club head to the shaft as taught by O’Shea (column 4 lines 55-59), making the club more secure, more durable, more reliable, and more attractive to the users.
The examiner further notes that it has been 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Wetty teaches the general conditions of bonding a microgrooved shaft with the hosel of a golf club head along a distance (fig’s 1-3), merely claiming a depth that is suitable for such a connection is merely a matter of discovering the optimum or workable depth by routine experimentation, and is not a patentable advance.
In Reference to Claim 5
Wetty teaches all of claim 1 as discussed above.
Wetty further teaches (Claim 5) wherein the first plurality of microgrooves and the second plurality of microgrooves cover between [x]% and [x]% of the shaft bonding area (fig. 3).
Wetty is silent as to the percent coverage of the microgrooves.
O’Shea teaches (Claim 5) between 50% and 90% of the shaft bonding area (fig’s 7 and 8, grooves take up more than 50%, fig. 9, grooves are everything between items 34 which is also greater than 50%).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club construction of Wetty with the feature of the microgroove coverage claimed as taught by the golf club construction of O’Shea for the purpose of providing a larger surface area for bonding as taught by O’Shea (column 6 line 51 – column 7 line 20), making the construction more durable, more reliable, and more attractive to the users.
The examiner further notes that it has been 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Wetty teaches the general conditions of bonding a microgrooved shaft with the hosel of a golf club head in order to improve bonding, and, since O’Shea teaches a variety of microgroove patterns and coverages (fig’s 9-6), merely claiming a particular coverage percentage for the microgrooves that would provide an optimum bonding strength is merely a matter of discovering the optimum or workable ranges by routine experimentation, and is not a patentable advance.
In Reference to Claim 6
Wetty teaches all of claim 1 as discussed above.
Wetty further teaches (Claim 6) wherein each microgroove of the plurality of microgrooves comprises a floor, [], each microgroove of the plurality of microgrooves is U-shaped in a cross-sectional view (fig. 3, knurling / serrations inherently create a generally U-shaped cross section along each serration).
Wetty fails to teach the specific shape of the microgroove of claim 6.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the microgrooved shaft connection of Wetty with the feature of the particular shape claimed simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Wetty and O’Shea both teach a variety of microgrooves in various shapes that would work well for the purpose of increasing bonding strength (Wetty, fig. 3, O’Shea fig’s 6-9), and, O’Shea further explicitly teaches that the microgrooves may be formed in other shapes (column 6 line 52-53) therefore, merely claiming any one of a variety of additional shapes / cross sections is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claim 10
Wetty teaches all of claims 1 and 7 as discussed above.
Wetty fails to teach the direction of microgrooves of claim 10.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the microgrooved shaft connection of Wetty with the feature of the particular shape / orientation claimed simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Wetty and O’Shea both teach a variety of microgrooves in various shapes that would work well for the purpose of increasing bonding strength (Wetty, fig. 3, O’Shea fig’s 6-9), and, O’Shea further explicitly teaches that the microgrooves may be formed in other shapes (column 6 line 52-53) therefore, merely claiming any one of a variety of additional shapes / cross sections / orientations is an obvious matter of engineering design choice, and is not a patentable advance.
In Reference to Claims 11-12 and 20
Wetty teaches (Claim 11) A golf club, comprising: a shaft (item 22, fig’s 1-3), comprising: a shaft butt end [] (upper end of item 22, not separately shown / labeled); a shaft tip end opposite the shaft butt end (at 23, fig. 3); a longitudinal axis extending from a geometric center of the shaft butt end to a geometric center of the shaft tip end (central axis of item 22); and a shaft outer surface defining a shaft bonding area near the shaft tip end (area of item 22 located in item 17), the shaft bonding area including an effective bonding area having a plurality of microgrooves (area / items 23, fig. 3), wherein: the plurality of microgrooves [] extend circumferentially around the shaft (column 4 lines 28-36, fig. 2, knurling / serrations are shown in a crosshatched pattern extending around the shaft); and each microgroove of the plurality of microgrooves comprises a [] shape and a plurality of sidewalls recessed into the shaft away from the shaft outer surface (column 4 lines 28 – 36, knurling / serrations cut into shaft inherently have sidewalls and a depth), the plurality of sidewalls increasing the effective bonding area by more than [x] in² (increase in bonding area is inherent as adding grooves increases the surface area); and a club head, having: a body (item 10, fig. 1); and a hosel coupled to the body (item 17, fig’s 1-3), comprising: (items 10/17, fig. 1), , [],(item 10, fig. 1) (items 16/17, fig’s 1-3), a hosel bore receiving the shaft tip end and the shaft bonding area to form a head-shaft connection, the hosel bore having an inner surface defining a hosel bonding area that directly couples with the effective bonding area of the shaft outer surface (item 21, column 4 lines 24-44)
(Claim 12) wherein the plurality of microgrooves are formed integrally with the shaft (fig. 3 and column 4 lines 28-36, knurling / serrations are formed into the shaft);
(Claim 20) wherein the plurality of microgrooves provides resistance to a normal force and a torsional force (this is inherent, additional friction and surface area will provide resistance).
Wetty fails to teach a grip and non-interconnected triangular shaped microgrooves, and bonding area increase.
Ishihara teaches (Claim 11) a grip; and the grip is coupled to the shaft butt end (item 50, fig. 1).
O’Shea teaches (Claim 11) the plurality of microgrooves are not interconnected / are separated shapes (fig. 6, items 30).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club device of Wetty with the feature of a grip as taught by the golf club device of Ishihara for the purpose of allowing user to more easily and securely use the club as well as for the purpose of dampening vibrations as taught by Ishihara (summary), making the device easier to use, and more attractive to the users. The examiner further notes that although Wetty is silent as to a grip, conventional golf clubs include a grip for use, therefore, merely claiming a well-known, normally included, component of a golf club is not a patentable advance.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club device of Wetty with the feature of non-interconnected shaped microgrooves as taught by the golf club device of O’Shea for the purpose of optimizing the amount of bonding material and bonding surface area as taught by O’Shea (column 6 lines 49-59), facilitating better bonding between the club and the shaft, making the device more reliable, and more attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the microgrooves in triangular shapes simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since O’Shea specifically teaches a wide variety of shapes for microgrooves that would all work well for the purpose of creating additional spaces for epoxy to facilitate better bonding (fig’s 6-9, column 6 lines 49 – column 7 line 20), including other shapes not explicitly disclosed in O’Shea (column 6 lines 52-53) merely claiming any one of a variety of additional shapes, triangles, and / or other patterns that would work equally well for this purpose does not appear it would have any mechanical or functional significance beyond what is already taught and is, therefore, a matter of engineering design choice and not a patentable distinction.
Finally, the examiner notes that it has also been 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of very small grooves for bonding are taught in Wetty (fig. 3 and column 4 lines 28-36) and ideal depths for bonding material are taught in O’Shea (column 7 lines 50-56), merely claiming the depth of the grooves being below a known threshold for poor bonding (below .003 as taught by O’Shea) and/or the specific resultant increase in bonding area, is an obvious matter of routine optimization based on known parameters, and is not a patentable advance. Since bonding depth is a result effective variable, i.e. a variable that achieves a recognized result (in this case the result of stronger or weaker bonding), merely claiming a specific value that optimizes the bonding strength is simply a matter of discovering the optimum or workable range by routine experimentation, and is not a patentable advance.
In Reference to Claim 13
The modified device of Wetty teaches all of claim 11 as discussed above.
Wetty further teaches (Claim 13) wherein the plurality of microgrooves is recessed away from the shaft (fig. 2, grooves are recessed); [].
Wetty fails to teach the specific groove depth.
O’Shea teaches (Claim 13) wherein [a bonding] depth is less than 0.0038 inch (column 7 lines 50 - 56).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the microgrooves of Wetty with the feature of a depth of less than .0038 inch as taught by the bonding thickness of O’Shea for the purpose of creating a strong bond without losing strength as taught by O’Shea, making the device stronger, more durable, and more reliable.
The examiner notes that it has also been 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of very small grooves for bonding are taught in Wetty (fig. 2) and ideal depths of bonding material are taught in O’Shea (column 7 lines 50-56), merely claiming the depth of the grooves being below a known threshold for poor bonding (below .003 as taught by O’Shea), is an obvious matter of routine optimization based on known parameters, and is not a patentable advance.
In Reference to Claim 14
The modified device of Wetty teaches all of claim 11 as discussed above.
Wetty further teaches (Claim 14) wherein the plurality of microgrooves defines a total microgroove depth, measured along the longitudinal axis from a microgroove nearest the shaft tip end to a microgroove nearest the shaft butt end (length of item 22 containing item 23, fig’s 1-3), [].
Wetty is silent as to the dimensions of this depth.
O’Shea teaches (Claim 14) [a] total microgroove depth is between 1.00 inch to 3.00 inches (fig’s 1-3 column 4 line 6, 35 mm is between 1 and 3 inches).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the microgroove connection of Wetty with the feature of the specific depth claimed as taught by the microgroove connection of O’Shea for the purpose of providing a sufficient length for epoxy to bond the club head to the shaft as taught by O’Shea (column 4 lines 55-59), making the club more secure, more durable, more reliable, and more attractive to the users.
The examiner further notes that it has been 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Wetty teaches the general conditions of bonding a microgrooved shaft with the hosel of a golf club head along a distance (fig’s 1-3), merely claiming a depth that is suitable for such a connection is merely a matter of discovering the optimum or workable depth by routine experimentation, and is not a patentable advance.
In Reference to Claim 15
Wetty teaches all of claim 11 as discussed above.
Wetty does not specifically teach the coverage of claim 15.
O’Shea teaches (Claim 15) [a] plurality of microgrooves covers between 50% and 90% of the shaft bonding area (fig’s 7 and 8, grooves take up more than 50%, fig. 9, grooves are everything between items 34 which is also greater than 50%).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club construction of Wetty with the feature of the microgroove coverage claimed as taught by the embodiments of O’Shea for the purpose of providing a larger surface area for bonding as taught by O’Shea (column 6 line 51 – column 7 line 20), making the construction more durable, more reliable, and more attractive to the users.
The examiner further notes that it has been 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since O’Shea teaches the general conditions of bonding a microgrooved shaft with the hosel of a golf club head in order to improve bonding, and, since O’Shea teaches a variety of microgroove patterns and coverages (fig’s 9-6), merely claiming a particular coverage percentage for the microgrooves that would provide an optimum bonding strength is merely a matter of discovering the optimum or workable ranges by routine experimentation, and is not a patentable advance.
In Reference to Claim 16
Wetty teaches all of claim 11 as discussed above.
Wetty further teaches (Claim 16) wherein each microgroove of the plurality of microgrooves comprises a floor, [], and each microgroove of the plurality of microgrooves is U-shaped in a cross-sectional view (fig. 2, knurling / serrations inherently produce a groove that would be generally U-shaped).
Wetty fails to teach the specific shape of the microgroove of claim 16.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the microgrooved shaft connection of Wetty with the feature of the particular shape claimed simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). O’Shea teaches a variety of microgrooves in various shapes that would work well for the purpose of increasing bonding strength (fig’s 6-9), and, O’Shea further explicitly teaches that the microgrooves may be formed in other shapes (column 6 line 52-53) therefore, merely claiming any one of a variety of additional shapes / cross sections is an obvious matter of engineering design choice, and is not a patentable advance.
Response to Arguments
Applicant's arguments filed 06/24/2026 have been fully considered but they are not persuasive.
Applicant’s argument that the shaft of Wetty is not directly in contact with the hosel bore inner surface is not persuasive.
Applicant argues that item 17 of Wetty is a “sleeve” and not a “hosel,” which is not persuasive. This semantical distinction does not provide any structural distinction. Item 17 is interpreted as a hosel and has a bore 21, which is interpreted as a hosel bore. The grooved end of shaft 22 is directly bonded with this hosel bore. This meets all of applicant’s claimed elements.
Applicant further argues that O’Shea does not teach a groove depth of less than .0038 inch. This is noted but is not persuasive. Microgrooves having a very small groove depth were already taught in Wetty, which are located in a bonding area. The secondary reference of O’Shea was used to teach an ideal bonding depth, which is disclosed to be .001-.003 inch. When applying this teaching to the microgrooves of Wetty, it would be obvious to make the grooves of Wetty this depth in order to optimize the bonding strength. Applicant appears to be pointing to features of the secondary reference not used in the rejection.
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 JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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