DETAILED ACTION
This Office action is responsive to communication received 09/15/2025 – Terminal Disclaimer; 09/24/2025 – Amendment.
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 .
Status of Claims
Claims 1-19 remain pending.
Terminal Disclaimer
The terminal disclaimer filed on 09/15/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Numbers 17863351 and 17713464, and which would extend beyond the expiration date of the full statutory term of prior patent number 11331546 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
In the arguments received 09/24/2025, the applicant contends that the prior art reference to US PUBS 2009/0286611 to Beach et al does not anticipate the now-claimed invention, as Beach et al fails to show a location of the center of gravity along the z-axis such that “said center of gravity distance, away from a shaft axis, measured along the Z-axis, (CG-C) is between 10 mm and about 25 mm”. The applicant argues the alleged criticality of the CG-C distance, as measured from the shaft axis, and illustrates examples of club heads having different CG-C values based upon the location of the shaft axis and elaborates on the differences between the CG-C and CG-Z values.
The applicant continues by arguing the combination of references applied in the rejections under 35 U.S.C. §103, noting that none of the applied teaching references, including US PUBS 2015/0231453 to Harbert et al, USPN 7137905 to Kohno and US PUBS 2013/0102414 to De la Cruz et al, teaches the now-claimed limitation “said center of gravity distance, away from a shaft axis, measured along the Z-axis, (CG-C) is between 10 mm and about 25 mm”.
IN RESPONSE:
In arguing the alleged criticality of the center of gravity distance CG-C, the applicant expounds on the differences between identifying the location of the center of gravity of the club head using a dimension that measures a distance from the shaft axis to the location of the center of gravity versus a dimension that measures a distance from the face plane to the location of the center of gravity. The example used by the applicant exemplifies the difference in the CG-C distance wherein a shaft axis is located forward of the face plane versus wherein a shaft axis is located rearward of the face plane (i.e., annotated figures on scanned page 4 of the 09/24/2025 Remarks). First, the instant claims do not require a shaft nor a hosel configured to receive a shaft having a shaft axis. Thus, the location of “said center of gravity distance, away from a shaft axis”, cannot be clearly ascertained nor understood. There are many reference planes, points and/or axes located on a golf club head from which a location of the center of gravity of the club head may be measured. In fact, the applicant explicitly discloses that the measurements CG-C 214 and CG-Z 212 present alternative approaches for measuring how far back the CG 210 is located within the club head (i.e., see paragraph [0042] of the specification). While it is agreed that the CG-Z distance (212) and the CG-C distance (214) disclosed by the applicant are different (i.e., see FIG. 2 of applicant’s disclosure; also included on scanned page 3 of 09/24/2025 Remarks), each of distances CG-Z and CG-C identifies that the center of gravity (210) is located on the rear portion (206) of the golf club head (200). While the applicant argues that it is the strategic location of the CG 210 that is critical to the proper functionality of the golf club head, the disclosure further elaborates that the location of the CG is critical irrespective of whether the CG 210 location is measured from the face center or the shaft axis (i.e., see paragraph [0043] of the specification). Thus, the question remains as to whether the location of the center of gravity (210) would be altered should the location of the shaft axis itself change. The current claims provide no way of determining where exactly the shaft, and its associated shaft axis, is located. Thus, there is no persuasive argument against the teachings of the prior art when determining a location of the center of gravity. With Beach, the center of gravity (CGy) along the Y-axis, which the applicant has correctly pointed out corresponds to the Z-axis disclosed by the applicant, has been disclosed as being about 25 mm and about 40 mm aft of the center-face (i.e., see paragraph [0236] in Beach). Moreover, Beach shows that the shaft axis falls slightly behind the face plane (i.e., FIGS. 67A and 67F in Beach). Thus, any measured distance along the Y-axis in Beach from the shaft axis rearward to the center of gravity would be slightly less than a distance of the center of gravity as measured aft of the center-face. A distance from the shaft axis rearward to the center of gravity along the Y-axis in Beach corresponds to the CG-C distance now claimed by the applicant. As for any specific, claimed dimensions associated with CG-C, applicant’s attention is directed to the newly-cited prior art reference to US PUBS 2005/0239576 to Stites et al, which teaches identifying a location of the center of gravity using a dimension Delta Y measured from a plane containing a shaft axis rearward to a plane containing the center of gravity (i.e., see paragraph [0013], Fig. 1B and TABLE 1, TABLE 2, and TABEL 3 in Stites). In Stites, the Delta Y dimension falls within the now-claimed range of about 10 mm to about 25 mm for CG-C and is identified as a way of obtaining better club head performance.
While the applicant provides a brief summary of the teachings of each of the teaching references applied in the outstanding rejections under 35 U.S.C. §103, the applicant focuses on the fact that none of these additional references add the details absent from Beach regarding the CG-C distance. Since the Beach reference and a discussion of the CG-C has been provided hereinabove, no further, separate response with respect to the outstanding rejections under 35 U.S.C. §103 is deemed necessary at this time.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections
Claims 1, 5, 6, 9, 13, 14 and 15 are objected to because of the following informalities:
As to claim 1, line 13, it appears that “passing a” should read --passing through a-- for clarity.
As to claim 5, the manner of identifying the CG-y distance is not grammatically coherent. It is suggested that the phrase “wherein said center of gravity of a vertical distance up from a ground plane, CG-y, that is at less about 0.4 times a face height from said ground plane-- be drafted to read --wherein a vertical distance up from a ground plane, CG-y, of said center of gravity, is at least about 0.4 times a face height from said ground plane--.
As to claim 6, the manner of identifying the CG-y distance is not grammatically coherent. It is suggested that the phrase “wherein said center of gravity of a vertical distance up from a ground plane, CG-y, is at less about 0.35 times a crown height from said ground plane-- be drafted to read --wherein a vertical distance up from a ground plane, CG-y, of said center of gravity, is at least about 0.35 times a crown height from said ground plane--.
As to claim 9, line 14, it appears that “passing a” should read --passing through a-- for clarity.
As to claim 13, the manner of identifying the CG-y distance is not grammatically coherent. It is suggested that the phrase “wherein said center of gravity of a vertical distance up from a ground plane, CG-y, that is at less about 0.4 times a face height from said ground plane-- be drafted to read --wherein a vertical distance up from a ground plane, CG-y, of said center of gravity, is at least about 0.4 times a face height from said ground plane--.
As to claim 14 (dependent upon claim 13), the manner of identifying the CG-y distance, which has been previously set forth in claim 13, is not grammatically coherent. It is suggested that the phrase “wherein said center of gravity of a vertical distance up from a ground plane, CG-y, that is at less about 0.35 times a crown height from said ground plane-- be drafted to read --wherein said vertical distance up from said ground plane, CG-y, of said center of gravity, is at least about 0.35 times a crown height from said ground plane--. Note the differences here between similar recitations in claims 6-7 and claims 13-14. Each of claims 6 and 7 depend from claim 1. While claim 13 depends from claim 9, note that claim 14 depends from claim 13, thus requiring modifications for referring back to the vertical distance CG-y and the ground plane, which were both initially recited in claim 13.
As to claim 15, line 11, it appears that “passing a” should read --passing through a-- for clarity.
Claim Rejections - 35 USC § 112(b)
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 1-19 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.
As to claim 1, line 17, “said center of gravity distance” lacks proper antecedent basis. While the CG-C distance along a Z-axis is recited as being measured away from a shaft axis, there is no way of determining where the shaft axis is in relation to the golf club head. In fact, there is no recitation of a shaft whatsoever. Thus, the location of the “shaft axis” becomes arbitrary and the location of the center of gravity derived from a measurement using the shaft axis as a reference point cannot be positively ascertained.
As to claims 2-8, these claims share the indefiniteness of claim 1.
As to claim 9, line 20, “said center of gravity distance” lacks proper antecedent basis. While the CG-C distance along a Z-axis is recited as being measured away from a shaft axis, there is no way of determining where the shaft axis is in relation to the golf club head. In fact, there is no recitation of a shaft whatsoever. Thus, the location of the “shaft axis” becomes arbitrary and the location of the center of gravity derived from a measurement using the shaft axis as a reference point cannot be positively ascertained.
As to claims 10-14, these claims share the indefiniteness of claim 9.
As to claim 15, line 19, “said center of gravity distance” lacks proper antecedent basis. While the CG-C distance along a Z-axis is recited as being measured away from a shaft axis, there is no way of determining where the shaft axis is in relation to the golf club head. In fact, there is no recitation of a shaft whatsoever. Thus, the location of the “shaft axis” becomes arbitrary and the location of the center of gravity derived from a measurement using the shaft axis as a reference point cannot be positively ascertained.
As to claims 16-19, these claims share the indefiniteness of claim 15.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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Claims 1-4 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”) in view of US PUBS 2005/0239576 to Stites et al (hereinafter referred to as “Stites”).
As to claim 1, Beach shows a golf club head (6700; FIG. 67B) comprising: a frontal portion further comprising a striking face (6724) that helps define a face center (i.e., every striking face includes a face center), located at a forward portion of said golf club head; a rear portion (6702), located aft of said striking face, and coupled (i.e., adhesively or mechanically attached; paragraph [0271]) to said frontal portion to define a club head volume of between about 250 cc and about 400 cc (i.e., paragraph [0231]); and at least one first weighting member (i.e., weighting member 6304 in FIG. 63A, or weighting member 6410 in FIG. 64A) located near a central portion of said golf club head in a heel to toe orientation, substantially in line with and behind said face center; wherein an x-axis is defined as a horizontal axis tangent to a geometric center of said striking face with a positive direction towards a heel of said golf club head (i.e., Beach defines an x-axis, similarly defined; paragraph [0233]), a y-axis is a vertical axis orthogonal to said x-axis with a positive direction towards a crown of said golf club head (i.e., Beach defines a crown-to-sole direction of the coordinate system as a z-axis; paragraph [0233]), and a z-axis being orthogonal to both said x-axis and said y-axis with a positive direction towards said frontal portion of said golf club head (i.e., Beach defines a front-to-back direction of the coordinate system as a y-axis; paragraph [0233]), and wherein said golf club head has a moment of inertia about said x-axis (MOI-X) (i.e., Beach details Ixx about the x-axis), a moment of inertia about said y-axis (MOI-Y) (i.e., Beach details Izz about the vertical axis in a crown-to-sole direction), and a moment of inertia about said z-axis (MOI-Z) (i.e., Beach details Iyy about the horizontal axis in front-to-back direction), and wherein said golf club head has a MOI-X to MOI-Y ratio of greater than about 0.65. With reference to paragraphs [0238] - [0240], Beach details an Ixx of between about 70 kg-mm2 and about 400 kg-mm2 and further details an Izz between about 200 kg-mm2 and about 600 kg-mm2. Again, note that Ixx disclosed by Beach represents the MOI-X required by the claim and that Izz disclosed by Beach represents the MOI-Y required by the claim. Thus, a ratio of Ixx to Izz in Beach may be found to be greater than about 0.65 (i.e., using Ixx of 400 and Izz of 600 yields a ratio of 0.67).
Beach does not explicitly disclose “wherein said center of gravity distance, away from a shaft axis, measured along the Z-axis, (CG-C) is between about 10 mm to about 25 mm”. Note that Beach discloses that the center of gravity (CGy) along the Y-axis, which corresponds to the claimed Z-axis, has been disclosed as being about 25 mm and about 40 mm aft of the center-face (i.e., see paragraph [0236] in Beach). Moreover, Beach shows that the shaft axis falls slightly behind the face plane (i.e., FIGS. 67A and 67F in Beach). Thus, any measured distance along the Y-axis in Beach, from the shaft axis rearward to the center of gravity, would be slightly less than a distance of the center of gravity disclosed by Beach as measured aft of the center-face. A distance from the shaft axis to the center of gravity in Beach corresponds to the CG-C distance now claimed. As for any specific, claimed dimensions associated with CG-C, attention is directed to Stites, which teaches identifying a location of the center of gravity using a dimension Delta Y measured from a plane containing a shaft axis rearward to a plane containing the center of gravity (i.e., see paragraph [0013], Fig. 1B and TABLE 1, TABLE 2, and TABEL 3 in Stites). In Stites, the Delta Y dimension falls within the now-claimed range of about 10 mm to about 25 mm for CG-C and is identified as a way of obtaining better club head performance (i.e., see TABLE 1, disclosing a Delta Y of 0.6 – 1.2 inches (15.24 mm to 30.48 mm)). Stites locates the center of gravity rearward of a plane containing the shaft axis in an effort to provide a club head that is more productive in achieving flight altitude, flight distance and increasing shot accuracy (i.e., see paragraph [0013] in Stites). In view of the teaching in Stites, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by locating the center of gravity (CG) rearward of a plane containing the shaft axis a distance CG-C between about 10 mm and 25 mm in order to improve the ball flight characteristics of a struck golf ball and thus improve the performance of the golf club head.
As to claim 2, said golf club head has a MOI-Y to MOI-Z ratio of greater than about 1.5. Here, Beach details an Izz that represents the claimed MOI-Y and is disclosed as between about 200 kg-mm2 and about 600 kg-mm2. Here, Beach details an Iyy that represents the claimed MOI-Z and is disclosed as between about 200 kg-mm2 and about 400 kg-mm2. Thus, a ratio Izz to Iyy may be found to be greater than about 1.5 (i.e., using Izz of 600 and Iyy of 375 yields a ratio of 1.6).
As to claim 3, said golf club head has a MOI-X to MOI- Z ratio of greater than about 1.1.
Here, Beach details an Ixx that represents the claimed MOI-X and is disclosed as between about 70 kg-mm2 and about 400 kg-mm2. Here, Beach details an Iyy that represents the claimed MOI-Z and is disclosed as between about 200 kg-mm2 and about 400 kg-mm2. Thus, a ratio Ixx to Iyy may be found to be greater than about 1.1 (i.e., using Ixx of 400 and Iyy of 300 yields a ratio of 1.3).
As to claim 4, said golf club head has a MOI-X to MOI- Z ratio of greater than about 1.20. Here, Beach details an Ixx that represents the claimed MOI-X and is disclosed as between about 70 kg-mm2 and about 400 kg-mm2. Here, Beach details an Iyy that represents the claimed MOI-Z and is disclosed as between about 200 kg-mm2 and about 400 kg-mm2. Thus, a ratio Ixx to Iyy may be found to be greater than about 1.20 (i.e., using Ixx of 400 and Iyy of 300 yields a ratio of 1.3).
As to claim 7, said MOI-Y is less than 400 kg-mm2. Here, Beach details an Izz that represents the claimed MOI-Y and is disclosed as between about 200 kg-mm2 and about 600 kg-mm2. Thus, the MOI-Y (i.e., the Izz in Beach) may be less than 400 kg-mm2.
As to claim 8, said MOI-Y is less than 300 kg-mm2. Here, Beach details an Izz that represents the claimed MOI-Y and is disclosed as between about 200 kg-mm2 and about 600 kg-mm2. Thus, the MOI-Y (i.e., the Izz in Beach) may be less than 300 kg-mm2.
Claims 5-6 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”) in view of US PUBS 2005/0239576 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2015/0231453 to Harbert et al (hereinafter referred to as “Harbert”).
As to claim 5, Beach does disclose a location for the location of the CG-y (i.e., the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the face center; see paragraph [0233] and TABLE 8), but does not specify the CG-y with respect to a relationship between the face height and a height from a ground plane. Here, Harbert details the face height along with the location of the center of gravity Zup in a vertical crown-to-sole direction from the ground plane. More specifically, the face height disclosed by Harbert is 36.0 mm (i.e., see TABLE 4 in Harbert). A value of 0.4 times the face height of 36.0 mm yields a value of 14.4 mm. It is noted that TABLE 4 in Harbert reveals a Zup of 13.6 mm for a face height of 36 mm and thus meets the claimed limitations. In view of the teaching in Harbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by incorporating a location for the CG-y using a measurement that correlates with the face height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head.
As to claim 6, Beach does disclose a location for the location of the CG-y (i.e., the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the face center; see paragraph [0233] and TABLE 8), but does not specify the CG-y with respect to a relationship between the crown height and a height from a ground plane. Here, Harbert details the crown height (i.e., head height) along with the location of the center of gravity Zup in a vertical crown-to-sole direction from the ground plane. More specifically, the crown height disclosed by Harbert is 42.5 mm (i.e., see TABLE 4 in Beach). A value of 0.35 times the head height of 42.5 mm yields a value of 14.9 mm. It is noted that TABLE 4 in Harbert reveals a Zup of 13.6 mm for a head height of 42.5 mm and thus meets the claimed limitations. In view of the teaching in Harbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by incorporating a location for the CG-y using a measurement that correlates with the crown height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head.
As to claim 9, Beach shows a golf club head (6700; FIG. 67B) comprising: a frontal portion further comprising a striking face (6724) that helps define a face center (i.e., every striking face includes a face center), located at a forward portion of said golf club head; a rear portion (6702), located aft of said striking face, and coupled (i.e., adhesively or mechanically attached; paragraph [0271]) to said frontal portion to define a club head volume of between about 250 cc and about 400 cc (i.e., paragraph [0231]); wherein an x-axis is defined as a horizontal axis tangent to a geometric center of said striking face with a positive direction towards a heel of said golf club head (i.e., Beach defines an x-axis, similarly defined; paragraph [0233]), a y-axis is a vertical axis orthogonal to said x-axis with a positive direction towards a crown of said golf club head (i.e., Beach defines a crown-to-sole direction of the coordinate system as a z-axis; paragraph [0233]), and a z-axis being orthogonal to both said x-axis and said y-axis with a positive direction towards said frontal portion of said golf club head (i.e., Beach defines a front-to-back direction of the coordinate system as a y-axis; paragraph [0233]); wherein said frontal portion and said rear portion combine to define a club head depth, which is a distance between a leading edge of said club head to a rear most portion of said golf club head, along said z-axis (i.e., at least FIG. 1B and FIG. 52 show a club head depth); and wherein said golf club head has a moment of inertia about said x-axis (MOI-X) (i.e., Beach details Ixx about the x-axis), a moment of inertia about said y-axis (MOI-Y) (i.e., Beach details Izz about the vertical axis in a crown-to-sole direction), and a moment of inertia about said z-axis (MOI-Z) (i.e., Beach details Iyy about the horizontal axis in front-to-back direction); wherein said MOI-Y of said golf club head is less than about 400 kg-mm2 (i.e., Beach details an Izz that represents the claimed MOI-Y and is disclosed as between about 200 kg-mm2 and about 600 kg-mm2. Thus, the MOI-Y (i.e., the Izz in Beach) may be less than 400 kg-mm2).
Beach does not explicitly disclose “wherein said center of gravity distance, away from a shaft axis, measured along the Z-axis, (CG-C) is between about 10 mm to about 25 mm”. Note that Beach discloses that the center of gravity (CGy) along the Y-axis, which corresponds to the claimed Z-axis, has been disclosed as being about 25 mm and about 40 mm aft of the center-face (i.e., see paragraph [0236] in Beach). Moreover, Beach shows that the shaft axis falls slightly behind the face plane (i.e., FIGS. 67A and 67F in Beach). Thus, any measured distance along the Y-axis in Beach, from the shaft axis to the center of gravity, would be slightly less than a distance of the center of gravity disclosed by Beach as measured aft of the center-face. A distance from the shaft axis rearward to the center of gravity in Beach corresponds to the CG-C distance now claimed. As for any specific, claimed dimensions associated with CG-C, attention is directed to Stites, which teaches identifying a location of the center of gravity using a dimension Delta Y measured from a plane containing a shaft axis rearward to a plane containing the center of gravity (i.e., see paragraph [0013], Fig. 1B and TABLE 1, TABLE 2, and TABEL 3 in Stites). In Stites, the Delta Y dimension falls within the now-claimed range of about 10 mm to about 25 mm for CG-C and is identified as a way of obtaining better club head performance (i.e., see TABLE 1, disclosing a Delta Y of 0.6 – 1.2 inches (15.24 mm to 30.48 mm)). Stites locates the center of gravity rearward of a plane containing the shaft axis in an effort to provide a club head that is more productive in achieving flight altitude, flight distance and increasing shot accuracy (i.e., see paragraph [0013] in Stites). In view of the teaching in Stites, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by locating the center of gravity (CG) rearward of a plane containing the shaft axis a distance CG-C between about 10 mm and 25 mm in order to improve the ball flight characteristics of a struck golf ball and thus improve the performance of the golf club head.
As noted hereinabove, Beach discloses a CG-z (i.e., Beach discloses a location of the center of gravity in a front-to-rear direction as CGy, which can be between 25 mm and 40 mm aft of the strike face; see paragraph [0236] in Beach), but does not explicitly disclose that the location of the center of gravity along a front-to-rear direction “is at least 0.33 times greater than said club head depth”. Harbert discloses that the CGy may be dimensioned to be between 10 mm and 50 mm (i.e., paragraph [0140]) and provides some examples in which the CGy and corresponding dimensions for the club head depth are stated (i.e., TABLES 3, 4 and 9). Looking at Example E in TABLE 3 and Example M in TABLE 4 of Harbert, the CGy value is very close to being at least 0.33 times greater than the club head depth. Any further distinctions over the combination of Beach and Harbert with respect to placement of the CGy would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention, since the skilled artisan would have been aware of the fact that the location of the center of gravity may vary based upon club head depth to maximize club head performance and that a difference in the CGy value from what is exampled in Harbert would have only involved a difference in degree, not a difference in kind, and would have been attainable through routine experimentation. "[W]here 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).
As to claim 10, the golf club head of Beach has a MOI-X to MOI-Y ratio of greater than about 0.65. With reference to paragraphs [0238] - [0240], Beach details an Ixx of between about 70 kg-mm2 and about 400 kg-mm2 and further details an Izz between about 200 kg-mm2 and about 600 kg-mm2. Again, note that Ixx disclosed by Beach represents the MOI-X required by the claim and that Izz disclosed by Beach represents the MOI-Y required by the claim. Thus, a ratio of Ixx to Izz in Beach may be found to be greater than about 0.65 (i.e., using Ixx of 400 and Izz of 600 yields a ratio of 0.67).
As to claim 11, Beach includes a volume is less than about 300 cc (i.e., paragraph [0231]).
As to claim 12, Beach details an Izz that represents the claimed MOI-Y and is disclosed as between about 200 kg-mm2 and about 600 kg-mm2. Thus, the MOI-Y (i.e., the Izz in Beach) may be less than 300 kg-mm2.
As to claim 13, Beach does disclose a location for the location of the CG-y (i.e., the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the face center; see paragraph [0233] and TABLE 8), but does not specify the CG-y with respect to a relationship between the face height and a height from a ground plane. Here, Harbert details the face height along with the location of the center of gravity Zup in a vertical crown-to-sole direction from the ground plane. More specifically, the face height disclosed by Harbert is 36.0 mm (i.e., see TABLE 4 in Harbert). A value of 0.4 times the face height of 36.0 mm yields a value of 14.4 mm. It is noted that TABLE 4 in Harbert reveals a Zup of 13.6 mm for a face height of 36 mm and thus meets the claimed limitations. In view of the teaching in Harbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by incorporating a location for the CG-y using a measurement that correlates with the face height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head.
As to claim 14, Beach does disclose a location for the location of the CG-y (i.e., the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the face center; see paragraph [0233] and TABLE 8), but does not specify the CG-y with respect to a relationship between the crown height and a height from a ground plane. Here, Harbert details the crown height (i.e., head height) along with the location of the center of gravity Zup in a vertical crown-to-sole direction from the ground plane. More specifically, the crown height disclosed by Harbert is 42.5 mm (i.e., see TABLE 4 in Beach). A value of 0.35 times the head height of 42.5 mm yields a value of 14.9 mm. It is noted that TABLE 4 in Harbert reveals a Zup of 13.6 mm for a head height of 42.5 mm and thus meets the claimed limitations. In view of the teaching in Harbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by incorporating a location for the CG-y using a measurement that correlates with the crown height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”) in view of US PUBS 2005/0239576 to Stites et al (hereinafter referred to as “Stites”) and also in view of USPN 7,137,905 to Kohno (hereinafter referred to as “Kohno”) and also in view of US PUBS 2013/0102414 to De la Cruz et al (hereinafter referred to as “De la Cruz”).
As to claim 15, Beach shows a golf club head (6700; FIG. 67B) comprising: a frontal portion further comprising a striking face (6724) that helps define a face center (i.e., every striking face includes a face center), located at a forward portion of said golf club head; a rear portion (6702), located aft of said striking face, and coupled (i.e., adhesively or mechanically attached; paragraph [0271]) to said frontal portion to define a club head volume of between about 250 cc and about 400 cc (i.e., paragraph [0231]); wherein an x-axis is defined as a horizontal axis tangent to a geometric center of said striking face with a positive direction towards a heel of said golf club head (i.e., Beach defines an x-axis, similarly defined; paragraph [0233]), a y-axis is a vertical axis orthogonal to said x-axis with a positive direction towards a crown of said golf club head (i.e., Beach defines a crown-to-sole direction of the coordinate system as a z-axis; paragraph [0233]), and a z-axis being orthogonal to both said x-axis and said y-axis with a positive direction towards said frontal portion of said golf club head (i.e., Beach defines a front-to-back direction of the coordinate system as a y-axis; paragraph [0233]), and wherein said golf club head has a moment of inertia about said x-axis (MOI-X) (i.e., Beach details Ixx about the x-axis), a moment of inertia about said y-axis (MOI-Y) (i.e., Beach details Izz about the vertical axis in a crown-to-sole direction), and a moment of inertia about said z-axis (MOI-Z) (i.e., Beach details Iyy about the horizontal axis in front-to-back direction), and wherein said golf club head has a MOI-X to MOI-Y ratio of greater than about 0.65. With reference to paragraphs [0238] - [0240], Beach details an Ixx of between about 70 kg-mm2 and about 400 kg-mm2 and further details an Izz between about 200 kg-mm2 and about 600 kg-mm2. Again, note that Ixx disclosed by Beach represents the MOI-X required by the claim and that Izz disclosed by Beach represents the MOI-Y required by the claim. Thus, a ratio of Ixx to Izz in Beach may be found to be greater than about 0.65 (i.e., using Ixx of 400 and Izz of 600 yields a ratio of 0.67).
Beach lacks an explicit disclosure of “wherein said golf club head has a moment of inertia about a shaft axis (MOI-SA) measurement of less than about 800 kg-mm2”. Kohno shows it to be old in the art to provide a moment of inertia about the shaft axis less than 800 kg-mm2 in order to improve the directionality of a struck golf ball (i.e., col. 7, lines 15-20 and TABLE 1). In addition, the prior art to De la Cruz provides additional guidance for maintaining a lower moment of inertia about the shaft axis to facilitate a golfer’s ability to “square” the face of the golf club during the downswing to hit a straighter shot (i.e., see paragraph [0009] in De la Cruz). In view of the combined teachings in Kohno and De la Cruz, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by providing a moment of inertia about the shaft axis of less than about 800 kg-mm2 in order to assist the golfer with better control over the club head during the downswing, whereby the impact between the striking face and golf ball is more “square” in order to promote better golf ball directionality.
Beach does not explicitly disclose “wherein said center of gravity distance, away from a shaft axis, measured along the Z-axis, (CG-C) is between about 10 mm to about 25 mm”. Note that Beach discloses that the center of gravity (CGy) along the Y-axis, which corresponds to the claimed Z-axis, has been disclosed as being about 25 mm and about 40 mm aft of the center-face (i.e., see paragraph [0236] in Beach). Moreover, Beach shows that the shaft axis falls slightly behind the face plane (i.e., FIGS. 67A and 67F in Beach). Thus, any measured distance along the Y-axis in Beach, from the shaft axis to the center of gravity, would be slightly less than a distance of the center of gravity disclosed by Beach as measured aft of the center-face. A distance from the shaft axis rearward to the center of gravity in Beach corresponds to the CG-C distance now claimed. As for any specific, claimed dimensions associated with CG-C, attention is directed to Stites, which teaches identifying a location of the center of gravity using a dimension Delta Y measured from a plane containing a shaft axis rearward to a plane containing the center of gravity (i.e., see paragraph [0013], Fig. 1B and TABLE 1, TABLE 2, and TABEL 3 in Stites). In Stites, the Delta Y dimension falls within the now-claimed range of about 10 mm to about 25 mm for CG-C and is identified as a way of obtaining better club head performance (i.e., see TABLE 1, disclosing a Delta Y of 0.6 – 1.2 inches (15.24 mm to 30.48 mm)). Stites locates the center of gravity rearward of a plane containing the shaft axis in an effort to provide a club head that is more productive in achieving flight altitude, flight distance and increasing shot accuracy (i.e., see paragraph [0013] in Stites). In view of the teaching in Stites, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by locating the center of gravity (CG) rearward of a plane containing the shaft axis a distance CG-C between about 10 mm and 25 mm in order to improve the ball flight characteristics of a struck golf ball and thus improve the performance of the golf club head.
As to claim 16, in Beach, said golf club head has a MOI-Y to MOI- Z ratio of greater than about 1.68. Here, Beach details an Izz that represents the claimed MOI-Y and is disclosed as between about 200 kg-mm2 and about 600 kg-mm2. Here, Beach details an Iyy that represents the claimed MOI-Z and is disclosed as between about 200 kg-mm2 and about 400 kg-mm2. Thus, a ratio Izz to Iyy may be found to be greater than about 1.68 (i.e., using Izz of 600 and Iyy of 350 yields a ratio of 1.71).
As to claim 17, said MOI-Y in Beach is less than 400 kg-mm2. Here, Beach details an Izz that represents the claimed MOI-Y and is disclosed as between about 200 kg-mm2 and about 600 kg-mm2. Thus, the MOI-Y (i.e., the Izz in Beach) may be less than 400 kg-mm2.
As to claim 18, said MOI-Y in Beach is less than 300 kg-mm2. Here, Beach details an Izz that represents the claimed MOI-Y and is disclosed as between about 200 kg-mm2 and about 600 kg-mm2. Thus, the MOI-Y (i.e., the Izz in Beach) may be less than 300 kg-mm2.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”) in view of US PUBS 2005/0239576 to Stites et al (hereinafter referred to as “Stites”) and also in view of USPN 7,137,905 to Kohno (hereinafter referred to as “Kohno”) and also in view of US PUBS 2013/0102414 to De la Cruz et al (hereinafter referred to as “De la Cruz”) and also in view of US PUBS 2015/0231453 to Harbert et al (hereinafter referred to as “Harbert”).
As to claim 19, Beach, as modified by Stites, Kohno and De la Cruz, does not explicitly disclose that the location of the center of gravity along a front-to-rear direction “is at least 0.33 times greater than said club head depth”. Harbert discloses that the CGy may be dimensioned to be between 10 mm and 50 mm (i.e., paragraph [0140]) and provides some examples in which the CGy and corresponding dimensions for the club head depth are stated (i.e., TABLES 3, 4 and 9). Looking at Example E in TABLE 3 and Example M in TABLE 4 of Harbert, the CGy value is very close to being at least 0.33 times greater than the club head depth. Any further distinctions over the combination of Beach, Kohno, De la Cruz and Harbert with respect to placement of the CGy would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention, since the skilled artisan would have been aware of the fact that the location of the center of gravity may vary based upon club head depth to maximize club head performance and that a difference in the CGy value from what is exampled in Harbert would have only involved a difference in degree, not a difference in kind, and would have been attainable through routine experimentation. "[W]here 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).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See Figs. 14, 17 and 23 in Honea et al, detailing a Zcg distance.
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See Fig. 7 in Greaney showing a Delta 1 distance rearward of the shaft axis.
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendment of each of independent claims 1, 9 and 15 to further require “wherein said center of gravity distance, away from a shaft axis, measured along the Z-axis, (CG-C) is between about 10 mm to about 25 mm” necessitated the new grounds of rejection.
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.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art