DETAILED ACTION
This Office action is responsive to communication received 12/17/2025 – 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 1-12 remain pending.
Priority
In view of the changes introduced into independent claim 1 via the amendment received 12/17/2025, the effective filing date of independent claim 1 and dependent claims 2-12 has now been determined to be the actual filing date of this application, namely 04/05/2022.
Response to Arguments
In the arguments received 12/17/2025, the applicant contends that the prior art of record to USPN 7,497,788 to Imamoto does not teach the MOI relationships set forth in the present application and does not suggest the arrangement of the weighting members as now claimed.
The applicant moves on to argue that the secondary teaching to US PUBS 2009/0286611 to Beach et al (“Beach”) does not appreciate the reduced MOI values and more specifically the reduced MOI-Z values that allegedly increases club head speed which in turn maximizes ball speed.
With respect to the rejections based upon the teachings in US PUBS 2015/0231453 to Harbert et al (“Harbert”), the applicant argues that Harbert is directed to a significantly different type of club head and has a smaller club head height and smaller volume than the club head of the present application.
Similarly, in rebutting the rejections based upon the teachings in US PUBS 2018/0085641 to Breier et al (“Breier”) and US PUBS 2020/0188746 to Sugimae et al (“Sugimae”), the applicant argues that the club heads in Breier are directed to club heads of a completely different construction and that the Breier teachings are not applicable to the present application. The applicant concludes by noting that the applied prior art to Sugimae and the present application claim priority back to U.S. Patent Application No. 16/219,651, filed on December 13, 2018.
With respect to the provisional rejections of certain claims on the ground of nonstatutory double patenting, the applicant asserts that the copending applications identified in the rejections have not yet in fact been patented and that a terminal disclaimer is not required at the present time. The applicant further provides an explanation regarding the further, related application and patents identified under the section styled “Observations on Obviousness-Type Double Patenting” in the non-final Office action, mailed 07/22/2025.
IN RESPONSE:
Applicant’s arguments, see scanned page 2, lines 1-7, filed with the Remarks of 12/17/2025, with respect to the rejection(s) of the claim(s) under 35 U.S.C. §103, with reliance on Imamoto as a base reference have been fully considered and are persuasive. However, upon further consideration, a new ground(s) of rejection is made in view of US PUBS 2020/0188746 to Sugimae et al (“Sugimae”) as a base reference.
With respect to the arguments directed against the reliance on the prior art reference to Beach, it is noted that Beach is now being applied in combination with Sugimae, wherein Sugimae is aware of the effect on a golf club head when MOI-Y is lowered and that the location of the center of gravity significantly affects the MOI-Y (i.e., see paragraph [0063], [0067] – [0069], [0098] and [0112]). The teachings in Beach with respect to MOI are relevant to the combination with Sugimae, since Beach likewise acknowledges that the redistribution of mass, whether by material makeup of the club head or through the manipulation of the placement of separate weighting members, affects the center of gravity and the moment of inertia of the club head (i.e., see paragraph [0242] in Beach). The ranges of MOI taught by Beach incorporate the ranges of the inventive embodiment of the present application (i.e., Ixx in Beach corresponds to the MOI-X of the instant application; Iyy in Beach corresponds to the MOI-Z of the instant application; and Izz in Beach corresponds to the MOI-Y of the instant application; and see paragraphs [0238] – [0240] in Beach). Applicant’s attention is directed to the detailed rejection under 35 U.S.C. §103, hereinbelow.
With respect to the arguments directed against reliance on the prior art reference to Harbert, it is noted that Harbert makes reference to specific implementations using club heads having a larger volume, which are commensurate with the size of club heads used in the present application (i.e., see paragraph [0119] in Harbert). Thus, the teachings in Harbert, given the size and volume of the club heads disclosed, are pertinent to the instant application. Regardless of the club head height and volume, which the applicant argues are different from the club head height and volume disclosed for the instant application, Harbert still discloses and renders obvious the claimed relationships between the location of CG-Y and the face height and also between the location of the CG-Y and the crown height.
With respect to the arguments directed against the reliance on the prior art references to Breier and Sugimae for the specific materials recited in instant claims 10-12, it is noted that the skilled artisan has access to the knowledge gleaned from all relevant prior art in the golf club head arena, and is not limited by the category or style of club head. Here, Breier and Sugimae selectively disclose the materials required by claims 10-12, as outlined in the outstanding rejection(s). The materials known in the golf club head art are available to be used on any club head, as deemed appropriate by the club head designer. The applicant’s comments with respect to the shared priority date of the instant application and the reference to Sugimae have been noted. Original claims 11-12, for which the Sugimae teaching (published June 18, 2020), was relied upon in the non-final Office action rejection of 07/22/2025, depended from claim 10, which in combination with claim 1, established an effective filing date for claims 11-12 of April 05, 2022, the filing date of the instant application. Thus, Sugimae was available as prior art against claims 11-12 before the effective filing date of the claimed invention.
With respect to the arguments directed against the provisional rejection of certain claims on the ground of nonstatutory double patenting, the claims at present, as currently drafted, do not appear to present a conflict with either of copending applications 17/700,439 or 17/863,351, which were referenced in the non-final Office action rejections of 07/22/2025. The expanded explanations provided by the applicant with respect to the various copending applications and patents is noted and appreciated. Future amendments to the instant claims should be re-evaluated to ensure that a clear distinction is maintaining between the instant claims and any, related copending applications and prior patents.
FOLLOWING IS AN ACTION ON THE MERITS:
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.
Claims 1-5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2020/0188746 to Sugimae et al (hereinafter referred to as “Sugimae”) in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”).
As to claim 1, Sugimae discloses a golf club head (100) comprising: a frontal portion (104), further comprising a striking face including a face center (i.e., FIG. 1 shows face center 102; and FIG. 23 shows face center FC) located at a forward portion of said golf club head; a central body member (2004; FIG. 23; paragraph [0101]) extending from the frontal portion to a rear edge; a crown body member (2006, 2007; FIG. 27 and paragraph [0108]), located aft of said striking face, and coupled to said frontal portion and said central body member (i.e., paragraphs [0010] and [0096]); and a first weighting member (2008; FIGS. 29 and 31) having a first mass and 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 and located near the striking face and at a first distance less than 15 mm from a center of gravity (CG) of said golf club head (i.e., a centerline passing through weight 2008 is located less than 30 mm rearwardly from the striking face along the z-axis direction, as discussed in paragraph [0113], with the CG being located rearwardly from the face center a distance CG-Z of between 25 mm and 40 mm along the z-axis direction, as discussed in paragraph [0111] in Sugimae; and thus the weight 2008 may clearly be placed less than 15 mm from the CG); a second weighting member (2009) having a second mass and located near the central portion of the golf club head in the heel to toe orientation, substantially in line with and behind the face center and located a second distance of less than 20 mm from the rear edge (i.e., see paragraph [0113]); wherein the first mass is greater than the second mass (i.e., in at least one example, a forward weight 3008 may be heavier in mass than the aft weight member 3009, as discussed in paragraph [0118] in Sugimae); 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, a y-axis is a vertical axis orthogonal to said x-axis with a positive direction towards a crown of said golf club head, 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., see the illustrations of the coordinate systems (101, 201), as shown in FIGS. 1, 2); and wherein said golf club head has a moment of inertia about said x-axis (MOI-X) passing through the CG of said golf club head, a moment of inertia about said y-axis (MOI-Y) passing through the CG of said golf club head, and a moment of inertia about said z-axis (MOI-Z) passing through the CG of said golf club head (i.e., MOI about the three axes of the coordinate system is discussed in paragraphs [0066] – [0085]), and wherein said golf club head has a MOI-X to MOI-Y ratio of greater than about 0.65 (i.e., using values from paragraph [0067] in Sugimae, with a MOI-X value of 310 kg-mm2 and a MOI-Y value of 410 kg-mm2 yields a MOI-X to MOI-Y ratio of 0.76).
Sugimae differs from the claimed invention in that Sugimae does not explicitly disclose “a club head volume of between about 250 cc and about 400 cc”. Beach teaches that a common volume for a wood-type club head ranges between 110 cc and 600 cc (i.e., see paragraph [0231] in Beach), thereby providing the skilled artisan with latitude in sizing the club head to control the overall weight of the club head and the size of the sweet spot on the striking face. In view of the teaching in Beach, 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 Sugimae by providing a club head volume of between 250 cc and 400 cc to provide a specific weight distribution for the club head and further to help provide a more tailored and specific size for the sweet spot of the club head.
As to claim 2, using values from paragraph [0067] in Sugimae, with a MOI-X value of 310 kg-mm2 and a MOI-Y value of 410 kg-mm2 yields a MOI-X to MOI-Y ratio of 0.76.
As to claim 3, see claims 1 and 2 of Sugimae.
As to claim 4, see claim 5 of Sugimae.
As to claim 5, see claim 6 of Sugimae.
Sugimae is silent with respect to the specific, claimed MOI-Y of claim 8 and the claimed MOI-Y of claim 9. Although Sugimae discusses MOI-Y values to be generally greater than about 400 kg-mm2, Sugimae is aware of the effect on a golf club head when MOI-Y is lowered and that the location of the center of gravity significantly affects the MOI-Y (i.e., see paragraph [0063], [0067] – [0069] and [0112]). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Sugimae to include the recited MOI-Y values to reduce the tendency of the club head to rotate during an off-center shot and to improve the performance of the club head. Here, the claimed MOI-Y values are rendered obvious by the teachings in Beach, as follows:
As to claim 8, 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. See paragraphs [0237] – [0240] in Beach for a discussion of MOI values.
As to claim 9, 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. See paragraphs [0237] – [0240] in Beach for a discussion of MOI values.
Given the fact that Sugimae recognizes the effect on club head performance with an increase or decrease in MOI-Y, and given the fact that the wide range of values for Izz in Beach (again, noting that Izz in Beach represents the MOI-Y of the instant application) encompasses the MOI-Y values required by claims 8 and 9, any further distinctions over the values of the MOI-Y in Sugimae in 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). See MPEP 2144.05.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2020/0188746 to Sugimae et al (hereinafter referred to as “Sugimae”) in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”) and also in view of US PUBS 2015/0231453 to Harbert et al (hereinafter referred to as “Harbert”).
As to claim 6, Sugimae, as modified by Beach, does disclose a location for the location of the CG-Y, 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 Sugimae 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 7, Sugimae, as modified by Beach, does disclose a location for the location of the CG-Y, 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 39.1 mm (i.e., see TABLE 3 in Harbert). A value of 0.35 times the head height of 39.1 mm yields a value of 13.7 mm. It is noted that TABLE 3 in Harbert reveals a Zup of 12.7 mm for a head height of 39.1 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 Sugimae 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.
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Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2020/0188746 to Sugimae et al (hereinafter referred to as “Sugimae”) in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach”) and also in view of US PUBS 2018/0085641 to Breier et al (hereinafter referred to as “Breier”).
As to claim 10, Sugimae discloses that using thermoplastic material for portions of the crown body member is known in the art (i.e., see paragraph [0096] for a disclosure of “a thermoplastic material having a density of less than 3.0 g/cc” for the crown body member). However, Sugimae, even as modified by Beach, lacks the claimed “Ultimate Tensile Strength of greater than 2000 MPa” for the striking face. Breier teaches that a material having a UTS of greater than 2000 MPa may be used in the formation of a striking face insert in order to enable the skilled artisan to design a striking face of reduced thickness, yet high durability. See paragraph [0075] in Breier. In view of the teaching in Breier, 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 Sugimae to incorporate a material having the claimed UTS for the striking face in order to take advantage of the respective properties of these commonly-available materials. Moreover, note MPEP 2144.07, which discusses the obviousness in selecting a known material based upon its suitability for its intended use. “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.)”.
As to claim 11, Sugimae discloses at least one of the now-claimed thermoplastic materials. See paragraph [0096] in Sugimae.
As to claim 12, Sugimae discloses that the first weight member (i.e., see weight member 2008 in FIG. 31; also see weight member 3008 in FIG. 34) adjacent a frontal portion may have a mass of between 10 grams and 30 grams to effectively alter the placement of the center of gravity so as to positively impact the spin and launch characteristics of the golf club head (i.e., see paragraph [0113] in Sugimae and discussing weight member 2008; see paragraph [0118] in Sugimae and discussing weight member 3008).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fig. 4 in Jertson;
Fig. 5 in Boyd (‘705);
Figs. 3 and 5A in Stites;
Fig. 5 in Boyd (‘936);
Fig. 2 in Parsons;
Fig. 15A in Evans; and
Figs. 2-3 in Myers.
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. The amendments to claim 1 to now require that the first weighting member is “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 and located near the striking face and at a first distance less than 15 mm from a center of gravity (CG) of said golf club head; a second weighting member having a second mass and located near the central portion of the golf club head in the heel to toe orientation, substantially in line with and behind the face center and located a second distance of less than 20 mm from the rear edge; wherein the first mass is greater than the second mass” 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571)-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711