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 .
Claim Rejections - 35 USC § 112
Claims 1-20 remain 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.
With respect to claim 1, 7 and 14, and the terms “front facing” and “rear facing”, applicant’s amendments and remarks are noted and the grounds for rejection with respect to such recitations has not been maintained.
The recitations of, “external bonding lip”, “internal molded step”, and “shelf” has been sustained to the extent that one cannot determine what structures, shapes or features are included in a “lip” or a “step” and how such cooperated and are related to the return or body. Applicant argues that the specification and drawing provide a clear picture of the relationship of such elements. Such is improper to import the specification into the claims. The Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) established that while claims "must be read in view of the specification," courts must avoid "reading a limitation from the specification into the claim" absent express definition (lexicography) or disavowal. “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitation that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Here the claims define the boundaries of the claimed invention and not the specification. As such, applicant’s position is insufficient to overcome the grounds for rejection and it remains.
Similarly with respect to the recitations of the term "compliments", applicant again improperly refers to the embodiments of the specification and drawings to attempt to imports structure into the claims. The term is subjective and not all persons will agree. Further the claim does not define what which structures in any element renders such capable of being described as complimentary. Since one cannot determine which structures or which features are to compliment one another, one cannot clearly determine the scope of the claim.
With respect to, “Said engagement angle…at a crown portion” and “at a sole portion” as lacking a proper antecedent, applicant asserts that the present application only defines one engagement angle, and that engagement angle is the same at the crown portion as well as at the sole portion. This is insufficient as the only presentation of an engagement angle in claim 1 is with respect to the internal molded step as it “compliments” the external lip to in some way form “an “engagement angle” no structures, shapes or relationships between any of the elements as to how such are formed or cooperated to form such an angle is recited in the claim. As such, one must speculate the structures of a step and a lip and how such are related to cooperate to form something that someone could describe as an “engagement angle”. Here there is no structures recited on the "crown portion" or "sole portion" that have any angles and as such the lacking of a proper antecedent basis is considered proper. While applicant points to [00136], no explicit definition for an “insertion axis” given or how such is to be defined. While it gives a general example of an axis running horizontal to the ground plane, it does not describe how such is to be established with respect to the engagement angle, crown, front portion or the body. Where the claim fails to recite how such an axis is to be defined or established with respect to the other elements recited in the claim, the indefiniteness rejection remains.
The rejection of claims 11-14 and 18-20 remain rejected as set forth above where the engagement angle has not been clearly recited in such a way as to allow one to determine between which elements such an angle is to be measured. Claim 11 now calls for the previously recited engagement angle to be in some way defining both a crown and a sole engagement angle without showing how such an angle is to be measured and between which element such an angle is established. As such one cannot determine the scope of the claim and the grounds for rejection remains.
Claim Rejections - 35 USC § 103
Claim(s) 1-3 and 7-10 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jacobson 6,602,149.
As set forth in the previous office action,
“With respect to the claims, cup face construction in golf clubs are generally a face portion that is connected to a body portion such as that shown by Jacobson that shows a club head with an aft body portion 1104 attached to a return 1106. Here the scope of the claims recites no particulars to the shape and construction of the club and is largely directed to the design of the lap joint to connect the club head members. Applicant broadly dubs this joint “engagement members” where the recited features are considered shown in the annotated figure of Jacobson below;
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From fig. 8, the engagement angle of the bonding lip to the engagement portion of 180 degrees is the same in the crown and sole and an axis can inherently be drawn in Jacobson such that it forms an insertion angle within of .5 to 3.5 degrees. The claims recite no restrictions or direction as to how such a reference angle is to be applied to the elements of the club head.”
Applicant asserts that, “Jacobson clearly teaches an insertion angle of zero (0) degrees in his annotated image on page 5 of the office action.” The examiner does not agree as set forth the claims do no set any limits on how one is to define an insertion angle. Where one can clearly draw and define an axis offset from the ground plane at an angle between .5 and 3.5 degrees and define it as an insertion angle, this limitation is inherently met by the prior art. As such, applicant’s remarks fail to show how the limitations of the claim distinguish over the applied art. Applicant disagrees with this stating, “the claims specifically recite that the insertion axis is relative to the ground plane.” This offers little as in the in the prior art a ground plane exist and a relative axis can easily and inherently defined relative to it. Paragraphs [00135] and the accompanying FIG. 35 offered by applicant are not limitations of the claims and cannot be properly imported. Applicant should refer to specific limitations in the claim which he relies upon that clearly distinguish over the art that such an insertion axis can inherently be defined with respect to the ground plan at the range of an angle being recited. As such, applicant fails to show how the grounds for rejection is in error.
Further with respect to the newly applied art, a “nibbed scarf joint” is considered a known type of lap joint and applicant is not considered the inventor of such. The applied art teaches how one would work with the angle between the elements of such a joint of achieve the desired strength and durability.
Where applicant has amended the claims to recited, “wherein said golf club head is in an address position” such does not offer any further limitations or relationship that clearly defines how an insertion axis or angle is establish. As such, the grounds for rejection remains.
Claim(s) 4-6 and 11-13 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jacobson 6,602,149 in view of Dawson et al. 9,682,295 in view of Dimensions.com and further in view of Science Direct, The Effect of Angle on the Strain of Scarf Lap Joint Subjected to Tensile Loads.
“As set forth in the previous office action,
With respect to claims 4-6, the lack of clarity of how the engagement angle relates makes it pure speculation to apply art to the scope of the claim. However, Dawson is applied to teach alternate lap joints used to attach members in golf where they meet at an angle of a broad range of less than 90 degrees in order to improve the bond. To have provided an angular relationship of the surfaces of Jacobson at less than 90 within the range of 11-13 degrees would have been obvious to have made the bond stronger to prevent separation.
Similarly with respect to claim 7-13, the club head of Jacobson can be held such that his engagement angle between the joint elements about 4 degrees meet the relative recitations in the claims.”
As to 4-6 and 11-13, Dawson et al. is applied to teach the use of a scarf joint. Applicant searches Dawson for the word "axis" merely to conclude that his invention is patentable as he does not use the term to define his structures. Such is not relevant. In context, scarf joints are known alternative joints and the angle between the mating elements produce known results to one of ordinary skill in the art. As such, applicant fails to show how his claimed invention is not fairly taught as set forth in the grounds for rejection.
Applicant argues that the angle taught by Dawson relates to the angle of the rear flange, not the lap joint. Dawson’s fig. 12 clearly shows an angle. Without any discussion of its magnitude or design. Dimensions.com teaches the “nibbed scarf joints” are a known alternative type of lap joint. To that extent, the Science Direct has been applied to teach the results of designing the angle between elements in a scarf joint to determine their mechanical properties and how 3D FEM can be used to optimize such. Applicant is has not discovered “engagement angles” in scarf joints or that manipulation of the angle between then has an effect on the joint properties. Such is considered known as provided by the applied art now positively applied. "[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 such, applicant’s remark fail to show how the recited ranges are critical and solve any particular problem or produce any unexpected results.
To have selected the range of angles recited in the claimed invention would have been obvious in order to optimize the angle of the joint to achieve the strength desired so that such would not fail for its intended purpose.
Claim(s) 14-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jacobson 6,602,149 in view of Dawson et al. 9,682,295 and further in view of Dimensions.com and further in view of Science Direct, The Effect of Angle on the Strain of Scarf Lap Joint Subjected to Tensile Loads and further in view of Yabu 6,875,126 as set forth in the previous office action.
Claim 14 appears to be directed to a cup faced construction where the aft body is assembled from a crown and sole piece. Such a construction is generally known as taught by Yabu. Here where the angle of the ground plane appears to be dependent on the relative positioning of the club head, the claim is not considered to be definite.
Claims 15-20 are considered met with respect to Jacobson and Dawson as set forth above with respect to their corresponding claims.
Conclusion
Applicant's arguments filed 10/24/25 have been fully considered but they are not persuasive as set forth above in the grounds for rejection.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Melba Bumgarner at (571)272-4709.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711