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 office action is supplemental to the previous non-final office action that in error failed to treat new claim 21.
Claim Rejections - 35 USC § 112
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.
As set forth in the previous office action;
“One cannot determine the scope of the structure required and how an undercut is “created”. One cannot determine if it is the crown sub-shell, the pinch point or a combination of those elements that create and undercut. Further one cannot determine which structures of the crown or pinch point cooperate and what structures result. Here, the scope of the claim is unclear.
In the specification, [00122] vaguely refers to “multiple undercuts” that are created with no specific discussion or reference number that would lend any clarity to what structures are intended by the claim. There is no other discussion or definition of the term in light of the specification.”
Applicant did not appear to address this ground for rejection in his response or remarks. As such, it remains.
Claim(s) Claim(s) 1, 5-13, 15 and 18-21 is/are rejected under 35 U.S.C. 103 as obvious over Erickson in view of Science Direct, “Bonded joints with composite adherends. Part II. Finite element analysis of joggle lap joints”
As set forth in the previous office action;
“As to claim 1, Erickson shows a golf club head with a frontal striking face portion 72, an aft body portion 200, a lightweight crown sub-shell 62, and a lightweight sole sub-shell 202, wherein a said lightweight crown sub-shell and said lightweight sole sub- shell are joined together via a lap joint 252, wherein said lap joint is located away from a skirt portion 200 of said golf club head as shown in fig. 4.
Claims 2 and 3 are considered met were 200 can be described as a geometric pinch point and the joint 205 is located below it. A “pinch point” is neither defined by the specification or the claims.
Claims 6 and 19 are most broadly considered show in fig. 25 where 6 said lightweight crown sub-shell has a first thickness at 122 and said lightweight sole sub-shell has a second thickness at about 90 and wherein a portion of said lightweight shell having a greater thickness forms an external wall of said lap joint at 90.
Claims 7 and 20 are considered met were the interior of the crown above 122b is considered to be described as a portion of said lightweight shell having a lesser thickness that forms an internal wall of said lap joint.
As to claims 8 and 18, said lightweight crown is considered to have what can be called a recessed skirt in the area of 122b of fig. 25 and said lightweight sole can have what is described as a sole recessed skirt at 90 such that they form what can be described to combined to create a recessed skirt, wherein said golf club head further comprises a weighting system 122b sandwiching both an internal surface and an external surface of said recessed skirt.
As to claims 9-12, the high-density weight 122b has an internal weight housing, an external weight housing in the crown portion and an internal weight housing in the sole directly engages and mates with said internal surface of said recessed skirt, wherein said internal surface of said external weight housing mates with said external surface of said recessed skirt to form the joint as shown in fig. 25.
The use of adhesives as called for in claim 13 is considered shown at col. 9, ln. 59.
Claims 15-17 are considered shown for the reasons set forth above with respect to their previously recited corresponding claims.
As to new claim 21, the annotated drawing below of Erickson is considered to show what can be described as an undercut in the crown;
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Claims 1, 10 and 18 have been amended to recite, “a lightweight crown sub-shell forming a skirt of said golf club head, including a geometric pinch point, having a crown recessed skirt, and a lightweight sole sub-shell having a sole recessed skirt wherein a said lightweight crown sub-shell and said lightweight sole sub-shell are joined together via a second lap joint, wherein said second lap joint is located away from a geometric pinch point.
The claims fail to recite any structure or relationship of the crown with respect to the crown and its “recessed skirt”. Similarly, one cannot determine any structure of relationship to what is “geometric pinch point” is considered to be.
Turning to the specification, there is no explicit definition. At [00120] it only broadly discusses a geometric pinch point as element 2633 referring to figs. 28 and 29. Looking at the drawing 28, such appears to be at best any point on the upper edge of the crown. Fig. 29 shows such a point may alternately be right on the widest part of the club head between the crown and the sole. No other discussion is set forth in the specification.
To that extent one is not constrained by any limitations in the claim as to what point is being defined as a “geometric pinch point” or how the crown is to be, “forming a skirt of said golf club head” when evaluating Erickson. Arguably every crown helps to “form” the skirt.
Turning to applicant’s remarks he argues that Erickson does exactly what the present invention is trying to avoid by placing the joint on the skirt portion of said golf club head. This argument is not commensurate with what is disclosed as applicant too appears to place his joint on the “skirt” such as at 2636b in fig. 29. Where the skirt is generally taken to be the area below the crown and above the sole that wraps around the rear of the club. It is not clear what definition applicant is relying upon to define the “skirt”. In his fig. 29 such appears to be on the side of the club as oppose to the rear. In many clubs where the transition from the crown and the sole to the outermost sides of the club are smooth, the “skirt” becomes a more generalized area with no clear delineation or transition from the crown or sole to the skirt.
Similarly in Erickson, where the crown 200 transitions to the sides of the club at references number 61 shown in his fig. 2, this area can be considered a “skirt” that is formed by the crown as required by the limitations of the claims.
Applicant argues that Erickson’s ribbon 90 is synonymous with the term “skirt”, yet provides no such basis for this assertion. While some patents in the art can use the terms interchangeably, in other patents the ribbon is more of a flattened side wall between the sole and crown to increase the head volume. Hence a skirt appears to be a more general term to a more specific type when referred to as a ribbon. A skirt is commonly taken to be the area towards the rear edge of the club and a ribbon appears to be a type of club that is flatter at the edge between the crown and sole to increase the volume of a club head. Turning to Erickson, he does not use the term skirt and there is no limitations in the claim that requires the interpretation of his element 90 to represent such. Here the claim limitation is taken more broadly to be any area between some portion of the crown and the sole. To that extent 61 of Erickson would be a point on his skirt and applicant’s remarks are not persuasive to show how the limitation distinguishes over the applied art.
Applicant points to FIG. 25 stating that 90 is where the junction of the top portion 200 and the bottom portion 202 occurs. True to fact is that Erickson does not discuss reference 90 in the context of his fig. 25. So, we don’t know if the reference number is pointing to a particular point, element or just a general area of the club. Further, this argument is not pertinent to the grounds of rejection since it does not rely on Erickson’s element 90 to meet the limitations of the claim. Lastly, such the indication of 90 in figs. 3 and 16 that shows it to generally be a side portion of the club between the crown and the sole. As such, applicant’s remarks fail to show how the limitations of the claim clearly distinguish over the art.
As to the term geometric pinch point, applicant opines that the rejection is flawed for mischaracterizing the teachings of Erickson by randomly assigning elements. Instead, Erickson is relevant to the claims for all that he shows and no limitation in the claims evades the interpretation set forth in the grounds for rejection. Considering Erickson in its entirety, he shows all the limitation of the claimed invention and applicant’s remarks fail to show how an such limitation distinguishes over him. Applicant further asserts the terms of the claims are being given an unreasonably broad interpretation. Clearly it is not as applicant has not shown any limitation in the claim that is afforded any narrower interpretation. Here it appears that applicant is arguing that that the “skirt” and “pinch point” are being too broadly interpreted. They are not as both the claims and specification are devoid of any specifics with respect to structures or relationships that are required to distinguish over Erickson. In light of the specification, it does not define a “pinch point” and how such is to be determined on a club head no does it define the exact extents of how on is to interpret what would be a “skirt” portion. To that extent, it is the lack of any particulars with respect to the claimed invention that is both disclosed and recited in the claims that renders the grounds for rejection totally “reasonable”. As such, applicant’s remarks fail.
Applicant argues that the rejection mischaracterizes element 200 in Erickson as merely being defined as upper section 200. Applicant ignore that broad and limitation being met. Clearly 200 of Erickson is “a lightweight crown sub-shell” and it further curves at 61 in what can be considered to, “forming a skirt of said golf club head, including a geometric pinch point”. How the skirt is “formed” and what would constitute a ”pinch point” is neither disclosed or limited by the claim itself. Since applicant’s remarks fail to show any part of the claim and how it defines over the design of Erickson’s toe element 200, they fail to overcome the grounds for rejection.
Applicant’s subsequent remarks with respect to element 205 only attempt to obscure the grounds for rejection by literally reading it as a “gap” as oppose to the area that defines the lap joint as shown in figs. 15 and elements 64a. Applicant’s remarks totally ignore the existence of this lap joint and in doing so fail to show how the grounds for rejection is in error.
Applicant appears to admit the obvious deficiencies of the disclosure by having to refer to the Oxford Dictionary in an attempt to define a “Pinch point”. In doing so he asserts that such is, “to a place or a point where congestion occurs or is likely to occur, especially on a road.” Since a club head would not in any context have “congestion” this definition is reaching and misapplied. Applicant attempts to extrapolate the definition to a golf club head by pointing to his Paragraph [00120] to [00121], combined with FIG. 29, and element 2633. But he fails to show how such meets the definition recited above or amounts to a location of some type of “congestion”. Applicant concludes with his opinion that, ”interpreting a smooth area of Erickson that Erickson itself labeled to be the upper section 200 in FIG. 4 of Erickson (shown below) to meet the current definition of "pinch point" is inconsistent with the spirit of patent law examination and is unreasonable and also inconsistent and completely ignores the specification completely.” Clearly it is not. As pointed out by the court, we must first determine the scope of the claim. “The name of the game is the claim.'' In re Hiniker Co., 150 F.3d 1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). As set forth above, there is NO definition of a “pinch point” in the disclosure as here now wrongly asserted by the applicant. Instead, we have a reference number pointing to a general area on the side of the club with no further details. Since applicant’s remarks fail to show how any limitation in the claim bound by any explicit definition in the specification for any of its term therein would distinguish over Erickson, he fails to show where the rejection is in error.”
“Under the most broad interpretation of the claims where the boundaries of the lap joint begin and end are not defined, the internal area on the crown near the joint can be considered an internal wall of said lap joint and the external wall near the joint can be defined as an external wall of the lap joint to meet the limitations of claims 4 and 5. Alternatively, where what is customarily described as the internal cheek and shoulder elements of the lap joint, such appears on Erickson to be on the sole as best shown in fig. 32, the reversal of parts or elements have been found to be obvious. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). To have formed the internal cheek and shoulder portion of the lap joint on the crown would have been an obvious alternative. The reversing of such a joint would be merely combining the elements according to known methods to yield predictable results which was found obvious in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).”
Applicant in response now argues that claims 1, 10, and 18 now includes the language wherein said lightweight crown sub- shell forms an internal wall of said second lap joint. Such is best shown in applicant’s fig. 29. In contrast Erickson shows the internal wall of his lap joint being formed by sole sub-shell as best shown in his fig. 32. Applicant argues that the reversal of parts rational applied in the ground for rejection is not applicable contending that that there is a difference in performance that results between the two designs due to the thinner thickness of the crown sub-shell as shown in his fig. 29. His argument appears to be that it is critical to have the thicker sole sub-shell outside due to it being thicker and stiffer, “can help to stiffen up the joint”. The examiner finds this argument more speculative than any non-obvious discovery. Here the lap joint has as a total thickness combined of both the thicknesses of the crown or sole sub-shells regardless of their order of arrangement of one within the other. Regardless of which arrangement one chooses, the total thickness and stiffness of the “joint” would be expected to be substantially the same. Even so, there is no evidence submitted or on record that an unexpected performance difference results when striking a golf ball or any particular problem was solved over the opposite arrangement. As such, applicant’s argument is not convincing to overcome the findings of obviousness.
In addition, while the claims are not limited to known joggle type lap joints as disclosed in applicant’s fig. 29. Science Direct is applied to show that applicant is not the inventor of such and that working with the relative thicknesses of such joints between parts using finite element analysis would have been obvious. Here to have designed such a joint and optimized its arrangement for the intended structural and appearances purposes desired would have been obvious where the adherend thickness t2 between is a recognized variable in the stiffness and deformation of the joint. The use of computers and finite element analysis to optimize such a joint for a particular purpose would not require any undue experimentation. Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 91 USPQ2d 1225 (Fed. Cir. 2009), an "apparent reason to combine" in conjunction with the technical ability to optimize led to the conclusion that the claimed invention would have been obvious. Such a combining of prior art elements according to known methods to yield predictable results were found obvious under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Further claim 1 as now amended still only broadly refers to some “internal wall” of said lap joint” on the lightweight crown without any further particularity to any designs of the lap joint. To that extent, the grounds for rejection and applied art now showing how one skilled in the art would design a joggle lap joint is considered to render that issue moot.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as obvious over Erickson in view of Science Direct, “Bonded joints with composite adherends. Part II. Finite element analysis of joggle lap joints” and further in view of Johnson 10,751,585.
As set forth in the previous office action,
“As to claim 14, while Erickson’s weight does not comprise threaded members, the use of such types of interchangeable weights in golf club’s is old and well-known as taught by Johnson by way of example. To have included a threaded male and female weight in the club of Erickson would have been obvious to have allowed one to adjust the weight as desired.”
Applicant does not separately argue claim 14 and considers it allowable for the reasons set forth with respect to claim 1.
Conclusion
Applicant's arguments filed 1/26/26 have been fully considered but they are not persuasive as set forth above.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711