DETAILED ACTION
This Office action is responsive to communication received 09/26/2025 – Response to Election / Restriction Filed.
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 .
Election/Restrictions
Applicant’s election of Species III in the reply filed on 09/26/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Status of Claims
Claims 1-20 remain pending.
Claims 1-11 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Drawings
The drawings were received on 07/11/2022. These drawings are acceptable.
Priority
Noting that this application is a CIP of an earlier-filed application, and considering that the combination of a grip having a butt end, a distal end, a front portion, a left edge and a right edge, as specifically recited in independent claim 12, is first supported by the disclosure in the instant application, the effective filing date of claims 12-20 of this CIP is the actual filing date of this instant application, namely 07/11/2022. See MPEP 2152.01.
FOLLOWING IS AN ACTION ON THE MERITS:
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 12-20 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 12, line 2, describing the butt end as “adjacent to a terminal portion of said shaft” implies that the shaft is a part of the claimed invention. However, the preamble sets forth the shaft in a functional phrase. Why not consider reciting --a butt end configured to be located adjacent a terminal portion of said shaft--. In lines 4-5, the terms “front”, “rear”, “left side” and “right side” do not positively provide the relationship among these parts of the grip. Any portion of the grip may be a front portion, a rear portion, a left side portion and/or a right side portion, as broadly as claimed. Are these parts (i.e., front portion, left side portion, right side portion) identifiable when viewing the grip from a front view? In line 6, here again, it is not clear exactly which side comprises a “left edge” or which side comprises a “right edge”. In lines 7-11, from what direction is the grip being viewed and/or how is the grip oriented in order for a person to recognize which side is a left edge or a right edge. What view of the front portion is being examined when attempting to identify the centerline or the taper both away from and toward the centerline?
As to claim 13, line 2, “normal address position” has not been adequately defined in the claims. Note that the grip of independent claim 12 has not been identified as being a grip for any particular field of endeavor. In other words, there is no mention whatsoever that the grip is a golf club grip configured to be attached to a golf club shaft. A “normal address position” recited in claim 13 might provide some meaning in the golf art. However, as broadly as claimed, the grip may serve as a grip for another sporting implement in for example a baseball bat, a tennis racket, a lacrosse stick or even a ski pole. Thus, the meaning of “normal address position” may not be readily apparent when considered in a sport other than golf. Clarification is requested. Also, is the ”target line” in line 2 a physical line or an imaginary target line and between what points does the target line extend? How is “parallel to a target line” to be interpreted?
As to claim 14, this claim shares the indefiniteness of claim 12.
As to claim 15, from what position or in what view is the front portion being examined when attempting to interpret the right edge, the left edge and the taper?
As to claim 16, line 4, the orientation of the shaft axis has not been identified nor has the shaft been positively recited in the claim. Without knowing how the shaft is oriented, there is no way to be able to determine which angle is being referenced. In line 6, here again, the “normal address position” has not been adequately defined in the claims. Note that the grip of independent claim 12 has not been identified as being a grip for any particular field of endeavor. In other words, there is no mention whatsoever that the grip is a golf club grip configured to be attached to a golf club shaft. A “normal address position” recited in claim 16 might provide some meaning in the golf art. However, as broadly as claimed, the grip may serve as a grip for another sporting implement in for example a baseball bat, a tennis racket, a lacrosse stick or even a ski pole. Thus, the meaning of “normal address position” may not be readily apparent when considered in a sport other than golf. Clarification is requested.
As to claim 17, this claim shares the indefiniteness of claims 16 and 12. Without knowing how the shaft is oriented, there is no way to be able to determine which angle is being referenced.
As to claim 18, “a prescribed lie angle of said shaft axis” implies that the shaft is positively being recited as a part of the claimed invention. However, the preamble sets forth the shaft in a functional phrase. Neither a shaft nor a lie angle of the shaft has not been positively set forth.
As to claim 19, observations similar to what has been noted under claim 16 apply here. The orientation of the shaft axis has not been identified nor has the shaft been positively recited in the claim. Without knowing how the shaft is oriented, there is no way to be able to determine which angle is being referenced. In line 6, here again, the “normal address position” has not been adequately defined in the claims. Note that the grip of independent claim 12 has not been identified as being a grip for any particular field of endeavor. In other words, there is no mention whatsoever that the grip is a golf club grip configured to be attached to a golf club shaft. A “normal address position” recited in claim 19 might provide some meaning in the golf art. However, as broadly as claimed, the grip may serve as a grip for another sporting implement in for example a baseball bat, a tennis racket, a lacrosse stick or even a ski pole. Thus, the meaning of “normal address position” may not be readily apparent when considered in a sport other than golf. Clarification is requested.
As to claim 20, this claim shares the indefiniteness of claims 19, 16 and 12. Without knowing how the shaft is oriented, there is no way to be able to determine which angle is being referenced.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 2,149,911 to East.
Note the annotated version of Fig. 8, below:
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As to claim 12, East shows a grip (Fig. 8) configured to attach to a shaft having a shaft axis (Fig. 1), said grip comprising: a butt end adjacent to a terminal portion of said shaft; a distal end opposite said butt end; a front portion, a rear portion, a left side portion, and a right side portion extending a length of said grip from said butt end to said distal end; and a left edge and a right edge on said front portion extending said length of said grip, wherein said left edge and said right edge are symmetrical to each other along a centerline of said front portion, as shown in annotated Fig. 8, above. Moreover, when moving in a direction from said butt end to said distal end, said left edge and said right edge taper away from said centerline of said front portion then taper back towards said centerline of said front portion (i.e., page 2, col. 1, lines 56-70; and annotated Fig. 8, above).
As to claim 14, said left edge and said right edge are smooth and continuous along said length of said grip. See annotated Fig. 8, above.
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 2,149,911 to East in view of US PUBS 2018/0264340 to Kovarik et al (hereinafter referred to as “Kovarik”).
As to claim 13, East does not explicitly disclose that the identified right and left edges of the grip are oriented in a plane that is parallel to a target line. However, it is noted that the claim does not require the combination of a shaft and a grip nor are the particulars of the target line (i.e., beginning and ending points) identified and claimed. Note that the grip in East is clearly capable of being attached to a shaft such that a plane containing the identified right and left edges of the grip may be oriented parallel to a target line (i.e., parallel to a plane that is perpendicular to a plane containing the striking face). Kovarik teaches that putter grips complying with the rules of golf prescribed by the U.S. Golf Association are often arranged and shaped so that a flat surface of the grip is arranged in a perpendicular fashion with respect to the plane of the face to provide a golfer with a reference point to help keep the ball striking face square to the target (i.e., see paragraph [0035] in Kovarik). In view of the teaching in Kovarik, 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 grip in East by combining the grip with a club shaft such that a plane containing the identified right and left edges of the grip in East would have been oriented parallel with an imaginary target line extending from the striking face of the club head to the intended target, the motivation being to enable a golfer to more accurately align the face of the club head square to the target form improved accuracy.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 2,149,911 to East in view of USPN D417,895 to Kim.
As to claim 15, and with reference to Fig. 8 in East, it appears that East does not explicitly detail that the “taper back towards said centerline of said front portion” is located “nearer said distal end than said butt end”. Kim shows a grip design in which left and right edges taper away from a centerline of the grip and then taper back towards the centerline at a portion of the grip that is closer to the distal end than the butt end. See annotated FIG. 1 of Kim, below:
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In view of the teaching in Kim, 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 grip in East by having the left and right edges taper back towards the centerline at a location closer to the distal end as compared to the butt end in order to, for example, provide a comfortable resting arrangement for the fingers of a golfer who may tend to hold the grip more distal from the butt end when holding the grip prior to executing a stroke. Moreover, it is noted that the applicant has not described any criticality or reasoning for including the taper of the left and right edges back towards the centerline at a location nearer the distal end of the grip. As such, the arrangement of the tapering of the right and left edges adjacent the distal end is seen to be an obvious change in shape. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 2,149,911 to East in view of USPN 5,174,572 to Ho and further in view of US PUBS 2002/0151376 to Verne.
As to claims 16-18, East fails to explicitly disclose “wherein said butt end has a top surface which is substantially planar, wherein said top surface of said butt end is formed at a first angle with respect to a first plane normal to said shaft axis, said first angle being between about 10° and about 30°, and wherein said top surface of said butt end is substantially parallel to a ground plane when said grip is held in a normal address position” (claim 16), as well as “wherein said first angle is about 20°” (claim 17) and “wherein said first angle is complementary to a prescribed lie angle of said shaft axis” (claim 18). Ho shows an arrangement of a top portion of a grip being oriented at a first angle with respect to a first plane normal to the shaft axis. Ho does not explicitly disclose the claimed first angle (i.e., the first angle is depicted as θ and the prescribed lie angle is β in the annotated version of FIG. 4, below).
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However, Verne shows it to be old in the golf club art for a golfer to assume a “normal address position” wherein the lie angle of the club is set at 72 degrees. Also, the rules of golf dictate that the lie angle (e.g., for a putter-style club) must remain below 80 degrees. This 80-degree rule is also acknowledged by the applicant (i.e., specification, paragraph [0014]). With the lie angle β set to about 72 degrees, as taught by Verne, the angle θ formed at a first angle with respect to a first plane normal to said shaft axis in Ho would have been equal to approximately 18 degrees, which is within the range required by claim 16 and about equal to the requirement of the first angle recited in claim 17. In view of the publication to Verne and the above reasoning, setting the first angle θ between about 10° and 30°, as required by claim 16, or setting the first angle θ to about 20°, as required by claim 17, or setting the first angle to correspond to the prescribed lie angle, as required by claim 18, in the Ho device in order to arrange the golf putter in a normal address position to conform to the rules of golf and to provide a comfortable stance for a golfer in the address position, would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. With this modification of Ho, it would have thus 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 grip in East such that the butt end has a top surface which is substantially planar, wherein the top surface of said butt end is formed at a first angle with respect to a first plane normal to said shaft axis, the first angle being between about 10° and about 30°, and wherein the top surface of said butt end is substantially parallel to a ground plane when said grip is held in a normal address position and moreover to have provided that the first angle is about 20° and also to provide that the first angle is complementary to a prescribed lie angle of the shaft axis for similar reasons as stated above, namely to enable the golfer to assume a proper stance prior to executing a putt.
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Claims 16-18 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over USPN 2,149,911 to East in view of JP 2010-088844A to Watanabe, cited by applicant, and further in view of US PUBS 2002/0151376 to Verne.
As to claims 16-18, East fails to explicitly disclose “wherein said butt end has a top surface which is substantially planar, wherein said top surface of said butt end is formed at a first angle with respect to a first plane normal to said shaft axis, said first angle being between about 10° and about 30°, and wherein said top surface of said butt end is substantially parallel to a ground plane when said grip is held in a normal address position” (claim 16), as well as “wherein said first angle is about 20°” (claim 17) and “wherein said first angle is complementary to a prescribed lie angle of said shaft axis” (claim 18). Watanabe shows an arrangement of a top portion (5) of a grip (4) being oriented at a first angle with respect to a first plane normal to the shaft axis. Watanabe does not explicitly disclose the claimed first angle (i.e., the first angle is depicted as θ and the prescribed lie angle is β in the annotated version of FIG. 4, again shown below).
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However, Verne shows it to be old in the golf club art for a golfer to assume a “normal address position” wherein the lie angle of the club is set at 72 degrees. Also, the rules of golf dictate that the lie angle (e.g., for a putter-style club) must remain below 80 degrees. This 80-degree rule is also acknowledged by the applicant (i.e., specification, paragraph [0014]). With the lie angle β set to about 72 degrees, as taught by Verne, the angle θ formed at a first angle with respect to a first plane normal to said shaft axis in Watanabe would have been equal to approximately 18 degrees, which is within the range required by claim 16 and about equal to the requirement of the first angle recited in claim 17. In view of the publication to Verne and the above reasoning, setting the first angle θ between about 10° and 30°, as required by claim 16, or setting the first angle θ to about 20°, as required by claim 17, or setting the first angle to correspond to the prescribed lie angle, as required by claim 18, in the Watanabe device in order to arrange the golf putter in a normal address position to conform to the rules of golf and to provide a comfortable stance for a golfer in the address position, would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. With this modification of Watanabe, it would have thus 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 grip in East such that the butt end has a top surface which is substantially planar, wherein the top surface of said butt end is formed at a first angle with respect to a first plane normal to said shaft axis, the first angle being between about 10° and about 30°, and wherein the top surface of said butt end is substantially parallel to a ground plane when said grip is held in a normal address position and moreover to have provided that the first angle is about 20° and also to provide that the first angle is complementary to a prescribed lie angle of the shaft axis for similar reasons as stated above, namely to enable the golfer to assume a proper stance prior to executing a putt.
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Allowable Subject Matter
Claims 19-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fig. 1 in Bradford;
Figs. 1, 9 and 12 in Wang;
Figs. 1 and 4 in Tuerschmann;
Fig. 50 in Huang;
Figs. 1 and 2 in Perry;
Figs. 9-10 in Zichmanis;
Fig. 5 in Koblentz;
Fig. 6 in Garner;
Fig. 1 in Crosier;
Figs. 1-4 in Woodhouse.
Conclusion
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