Prosecution Insights
Last updated: October 26, 2026
Application No. 17/863,351

GOLF CLUB HEAD WITH IMPROVED INERTIA PERFORMANCE

Non-Final OA §103
Filed
Jul 12, 2022
Priority
Dec 13, 2018 — CIP of 16/219,651 +4 more
Examiner
PASSANITI, SEBASTIANO
Art Unit
3711
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
ACUSHNET Company
OA Round
3 (Non-Final)
83%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
98%
With Interview

Examiner Intelligence

Grants 83% — above average
83%
Career Allowance Rate
1442 granted / 1738 resolved
+13.0% vs TC avg
Strong +15% interview lift
Without
With
+15.1%
Interview Lift
resolved cases with interview
Fast prosecutor
1y 10m
Avg Prosecution
30 currently pending
Career history
1775
Total Applications
across all art units

Statute-Specific Performance

§101
1.3%
-38.7% vs TC avg
§103
39.1%
-0.9% vs TC avg
§102
18.9%
-21.1% vs TC avg
§112
19.1%
-20.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1738 resolved cases

Office Action

§103
DETAILED ACTION This Office action is responsive to communication received 05/15/2026 – Request for Continued Examination (RCE) and 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 . Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/15/2026 has been entered. Status of Claims Claims 1-20 remain pending. Response to Arguments In the arguments received 05/15/2026, the applicant contends that none of the previously-applied prior art references of record shows “a second weight member having a second mass located near a central portion of said golf club head in a heel to toe orientation, substantially in line and behind said face center and located near a rear skirt portion of said golf club head, wherein said first mass is at least 2 grams greater than said second mass, wherein said second weight member is located at a distance of less than 20 mm from a back edge of the golf club head”, as now required by independent claim 1, and that none of the previously-applied prior art references of record shows “a second weight member having a second mass located near a central portion of said golf club head in a heel to toe orientation, substantially in line and behind said face center and located near a rear skirt portion of said golf club head, wherein said first mass is at least 2 grams greater than said second mass”, as now required by independent claim 14. IN RESPONSE: Applicant’s arguments, see scanned page 2, line 24 through scanned page 3, line 9, filed with the Remarks of 05/15/2026, with respect to the rejection(s) of claim(s) 1-2 under 35 U.S.C. §103(a) as being unpatentable over U.S. Patent No. 6,991,558 to Beach et al in view of U.S. Patent No. 6,254,494 to Hasebe et al and also in view of U.S. Patent Publication No. 2010/0203983 to Stites et al have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. Applicant’s abbreviated arguments, see scanned page 5, line 18 through scanned page 6, line 2, filed with the Remarks of 05/15/2026, with respect to the rejection(s) of claim(s) 14-18 under 35 U.S.C. §103 as being unpatentable over U.S. Patent No. 6,991,558 to Beach et al in view of U.S. Patent No. 6,254,494 to Hasebe et al and also in view of U.S. Patent Publication No. 2010/0203983 to Stites et al and also in view of US PUBS 2015/0231453 to Harbert et al have been fully considered and are persuasive. Further arguments by the applicant discussing the rejections of dependent claims 3-13 and 19-20 and alleging that none of the further, previously-applied teaching references combined in the various rejections under 35 U.S.C. §103 cure the deficiencies of the base reference to US Patent No. 6,991,558 to Beach et al have been fully considered and are persuasive. However, upon further consideration, a new ground(s) of rejection is being made in view of various new combinations with the prior art references to US PUBS 2020/0188746 to Sugimae et al as a base reference; along with US PUBS 2009/0286611 to Beach et al; US PUBS 2015/0231453 to Harbert et al; and US PUBS 2010/0203983 to Stites et al. No further explanation is deemed necessary here. / / / FOLLOWING IS AN ACTION ON THE MERITS: Claim Objections - Minor Claims 1 and 14 are objected to because of the following informalities: As to claim 1, line 10, “a” (first occurrence) should read --the--, since a heel to toe orientation has previously been set forth in line 6. As to claim 14, line 12, “a” (first occurrence) should read --the--, since a heel to toe orientation has previously been set forth in line 8. Appropriate correction is required. Claim Rejections - 35 U.S.C. § 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. PNG media_image1.png 18 19 media_image1.png Greyscale "[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. PNG media_image1.png 18 19 media_image1.png Greyscale 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. PNG media_image1.png 18 19 media_image1.png Greyscale I. EXEMPLARY RATIONALES PNG media_image1.png 18 19 media_image1.png Greyscale Exemplary rationales that may support a conclusion of obviousness include: PNG media_image1.png 18 19 media_image1.png Greyscale (A) Combining prior art elements according to known methods to yield predictable results; PNG media_image1.png 18 19 media_image1.png Greyscale (B) Simple substitution of one known element for another to obtain predictable results; PNG media_image1.png 18 19 media_image1.png Greyscale (C) Use of known technique to improve similar devices (methods, or products) in the same way; PNG media_image1.png 18 19 media_image1.png Greyscale (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; PNG media_image1.png 18 19 media_image1.png Greyscale (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; PNG media_image1.png 18 19 media_image1.png Greyscale (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; PNG media_image1.png 18 19 media_image1.png Greyscale (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 1 is 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 independent claim 1, Sugimae discloses a golf club head (1300) comprising: a frontal portion (1304), including a striking face, forming a rearward facing face cup (i.e., paragraph [0085] and FIG. 13); a rear portion (1306), attached to said frontal portion, forming a rear portion of said golf club head (i.e., paragraph [0085] and FIG. 13); a first weight member (2008; FIGS. 29 and 31) having a first mass (2008) and located near a central portion of said golf club head in a heel to toe orientation, substantially in line with and behind a 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 weight 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 a back edge of the golf club head (i.e., see paragraph [0113]); wherein the first mass is at least 2 grams greater than the second mass (i.e., in at least one example, a forward weight 3008 may be heavier by about 5 grams 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 center of gravity and a moment of inertia about said x-axis through the center of gravity (MOI-X), a moment of inertia about said y-axis through the center of gravity (MOI-Y), and a moment of inertia about said z-axis through the center of gravity (MOI-Z) (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 0.7 (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 “said golf club head has a volume greater than about 420 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 greater than about 420 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. Sugimae also differs from the claimed invention in that Sugimae does not explicitly disclose “wherein 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. See paragraphs [0237] – [0240] in Beach for a discussion of MOI values. 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] in Sugimae). 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 device in Sugimae to include the recited MOI-Y value to reduce the tendency of the club head to rotate during an off-center shot and to improve the performance of the club head. 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 value required by claim 1, 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 2-13 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 claims 2-3, Sugimae does not explicitly disclose a “composite type material” for the frontal portion. Harbert discloses that the club head body may comprise metals or composites or combinations thereof (i.e., paragraph [0019]). 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 to include composite material for the frontal portion in order to change the weight distribution of the club head. Moreover, as metals and composites are known for their use in the golf club head art, the skilled artisan would have been well aware of the advantages of selecting a suitable material based upon the needs of the club designer (e.g., metallic materials lend themselves to casting and forging operations and may be selected for their strength, lightweight and rust-resistant properties, while composites lend themselves to a plurality of easy and affordable molding practices and are likewise lightweight). Moreover, it is noted that Sugimae already takes into account the use of composite materials within the Sugimae club head, wherein Sugimae discloses that using thermoplastic material for portions of the 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 portions of the heel and toe body members adjacent the frontal portion). Note that the selection of a known material to take advantage of the properties of the known material has been established as being within the level of one of ordinary skill in the art. See MPEP 2144.07: “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 claims 4 and 8, Sugimae also differs from the claimed invention in that Sugimae does not explicitly disclose “wherein said MOI-Y is less than 300 kg-mm2” (claim 4) and does not explicitly disclose “wherein said MOI-Y is between about 250 kg-mm2 and 300 kg-mm2” (claim 8). 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. See paragraphs [0237] – [0240] in Beach for a discussion of MOI values. 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] in Sugimae). 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 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. 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 4 and 8, 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. As to claims 5 and 12, Sugimae, as modified by Beach, does not specify the location of the center of gravity of the golf club head 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, “Example M” 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, “Example M” 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 center of gravity of the golf club head using a measurement that correlates with a distance less than about 0.4 times 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 claims 6 and 13, Sugimae does not specify the location of the center of gravity of the golf club head 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, “Example M” in Harbert). 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, “Example M” 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 Sugimae by incorporating a location for the center of gravity of the golf club head using a measurement that correlates with a distance less than about 0.35 times 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 7, although Sugimae discloses an MOI-X that is generally greater than about 300 kg-mm2, as stated in paragraph [0067], Sugimae is aware of the effect on a golf club head when MOI-X is lowered and that the location of the center of gravity significantly affects the MOI-X (i.e., see paragraph [0063], [0067] – [0069], [0098] and [0112] in Sugimae). Beach shows it to be obvious to make use of an MOI-X that is less than 300 kg-mm2 (i.e., see paragraph [0238] in Beach). Given the fact that Sugimae recognizes the effect on club head performance with an increase or decrease in MOI-X, and given the fact that the wide range of values for Ixx in Beach encompasses the MOI-X values required by claim 7, any further distinctions over the values of the MOI-X 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. As to claims 9-11 in general, Sugimae lacks the specific, claimed ratios. Here, Beach provides further guidance for arranging the Ixx, Iyy and Izz to improve club head performance (i.e., see paragraphs [0237] – [0240] in Beach. Here, Beach provides the necessary teachings of an Iyy (i.e., a moment of inertia in the front-to-back direction), which corresponds to the claimed MOI-Z as well as an Ixx (i.e., a moment of inertia in a heel-to-toe direction), which corresponds to the claimed MOI-X, and Izz (i.e., a moment of inertia in a crown-to-sole direction), which corresponds to the claimed MOI-Y. In view of the further teachings 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 provided the club head in Sugimae with a suitable MOI-X, MOI-Y and MOI-Z to enhance the stability of the club head. Note the specific arrangements of MOI-Y, MOI-X and MOI-Z, as taught by Beach, and as outlined below: More specific to claim 9, the golf club head in Beach 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). Again, see paragraphs [0237] – [0240] in Beach. More specific to claim 10, the golf club head in Beach has a MOI-X to MOI- Z ratio of greater than about 1.10. 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 1.10 (i.e., using Ixx of 400 and Iyy of 300 yields a ratio of 1.3). Again, see paragraphs [0237] – [0240] in Beach. More specific to claim 11, the golf club head in Beach 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). Again, see paragraphs [0237] – [0240] in Beach. / / / / Claims 14-20 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”) and also in view of US PUBS 2010/0203983 to Stites et al (hereinafter referred to as “Stites”). As to independent claim 14 and dependent claim 15, Sugimae discloses a golf club head (1300) comprising: a frontal portion (1304), including a striking face, forming a rearward facing face cup (i.e., paragraph [0085] and FIG. 13); a rear portion (1306), attached to said frontal portion, forming a rear portion of said golf club head (i.e., paragraph [0085] and FIG. 13); a first weight member (2008; FIGS. 29 and 31) having a first mass (2008) and located near a central portion of said golf club head in a heel to toe orientation, substantially in line with and behind a 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 weight 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 (i.e., see paragraph [0113]) and located near a rear skirt portion of the golf club head (FIGS. 29 and 31); wherein the first mass is at least 2 grams greater than the second mass (i.e., in at least one example, a forward weight 3008 may be heavier by about 5 grams 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 center of gravity and a moment of inertia about said x-axis through the center of gravity (MOI-X), a moment of inertia about said y-axis through the center of gravity (MOI-Y), and a moment of inertia about said z-axis through the center of gravity (MOI-Z) (i.e., MOI about the three axes of the coordinate system is discussed in paragraphs [0066] – [0085]). Sugimae differs from the claimed invention in that Sugimae does not explicitly disclose “said golf club head has a volume greater than about 420 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 greater than about 420 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. Sugimae also differs from the claimed invention in that Sugimae does not explicitly disclose “wherein said MOI-Y is less than 300 kg-mm2” (claim 14) and does not explicitly disclose “wherein said MOI-Y is between about 250 kg-mm2 and 300 kg-mm2” (claim 15). 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. See paragraphs [0237] – [0240] in Beach for a discussion of MOI values. 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] in Sugimae). 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 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. 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 14 and 15, 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. Although Sugimae appears to show a frontal portion forming a face cup in FIG. 13, as noted hereinabove, and although Sugimae appears to show a rear portion with a recessed ledge in the embodiment in FIG. 38, Sugimae does not explicitly disclose or show the combination of a face cup and a portion with the claimed feature "wherein said rear portion has a forward facing opening that has a recessed ledge adapted to engage said frontal portion". Stites discloses that a club head may be constructed with a face cup (FIG. 3; paragraphs [0020] and [0028]). The arrangement of a face cup enables different materials to be used for the frontal and rear portions of the club head to enable the weight distribution of the club head to be distributed, as desired by the clubmaker. 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 Sugimae to include a face cup as part of the frontal portion in order to assist the club designer in arranging materials of diverse densities at the frontal and rear portions of the club head for better weight distribution and enhanced club head performance. In addition, Stites teaches that the rear portion of the club head body includes a forward facing opening with a ledge portion that accepts the frontal portion (i.e., see FIGS. 2-4 and paragraph [0044]), with Stites teaching that the connection between the front and aft body sections increases the club head strength and is more resistant to failure. 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 Sugimae to include a recessed ledge on the rear portion, which is adapted to engage said frontal portion, with there being a reasonable expectation of success that the connection between the front and rear portions would have been stronger and less prone to failure under repeated impacts. Sugimae does not specify the location of the center of gravity of the golf club head 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, “Example M” 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, “Example M” 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 center of gravity of the golf club head using a measurement that correlates with a distance less than about 0.4 times 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 16, Sugimae does disclose a location for the location of the center of gravity 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, “Example M” in Harbert). A value of 0.35 times the face height of 36.0 mm yields a value of 12.6 mm. It is noted that TABLE 4, “Example M” in Harbert reveals a Zup of 13.6 mm for a face height of 36 mm, which is slightly outside of the value required by claim 16, but which may, in one interpretation, be considered to meet the limitation “less than about 0.35 times a face height” (emphasis added). Even if one were to argue that Harbert does not show a value for Zup that is “less than about 0.35 times a face height”, it is noted that no criticality has been established by the applicant for the language “center of gravity of said golf club head has a vertical distance up from the ground plane, CG, that is less than about 0.35 times a face height from the ground plane” (emphasis added). The claimed value has merely been disclosed as being ‘preferred’. The effect of shifting the CG-y slightly upward or downward would have been recognized by the skilled artisan. Thus, using routine experimentation, 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 center of gravity using a measurement that correlates with a distance less than about 0.35 times 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. "[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. As to claim 17, Sugimae does not disclose a location for the center of gravity 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, “Example M” in Harbert). 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, “Example M” 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 Sugimae by incorporating a location for the CG-y using a measurement that correlates with a distance less than about 0.35 times 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 claims 18-19, Sugimae does not explicitly disclose a “composite type material” for the frontal portion. Harbert discloses that the club head body may comprise metals or composites or combinations thereof (i.e., paragraph [0019]). 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 to include composite material for the frontal portion in order to change the weight distribution of the club head. Moreover, as metals and composites are known for their use in the golf club head art, the skilled artisan would have been well aware of the advantages of selecting a suitable material based upon the needs of the club designer (e.g., metallic materials lend themselves to casting and forging operations and may be selected for their strength, lightweight and rust-resistant properties, while composites lend themselves to a plurality of easy and affordable molding practices and are likewise lightweight). Moreover, it is noted that Sugimae already takes into account the use of composite materials within the Sugimae club head, wherein Sugimae discloses that using thermoplastic material for portions of the 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 portions of the heel and toe body members adjacent the frontal portion). Note that the selection of a known material to take advantage of the properties of the known material has been established as being within the level of one of ordinary skill in the art. See MPEP 2144.07: “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 20, Sugimae lacks the specific, claimed ratio. Here, Beach provides further guidance for arranging the Ixx, Iyy and Izz to improve club head performance (i.e., see paragraphs [0237] – [0240] in Beach. Here, Beach provides the necessary teachings of an Iyy (i.e., a moment of inertia in the front-to-back direction), which corresponds to the claimed MOI-Z as well as an Ixx (i.e., a moment of inertia in a heel-to-toe direction), which corresponds to the claimed MOI-X, and Izz (i.e., a moment of inertia in a crown-to-sole direction), which corresponds to the claimed MOI-Y. In view of the further teachings 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 provided the club head in Sugimae with a suitable MOI-Y and MOI-Z to enhance the stability of the club head. 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). Again, see paragraphs [0237] – [0240] in Beach. Further References of Interest The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the arrangement of a first weight and a second weight in FIG. 48 of Cleghorn; FIG. 15A in Evans shows a first weight (202a) and a second weight (202b); Note FIG. 4 in Jertson; and FIG. 1 in Yoneyama shows first and second weights generally arranged in a front-to-back direction on a sole portion. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. SEBASTIANO PASSANITI Primary Examiner Art Unit 3711 /SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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Prosecution Timeline

Jul 12, 2022
Application Filed
Jul 15, 2025
Non-Final Rejection mailed — §103
Nov 06, 2025
Response Filed
Feb 18, 2026
Final Rejection mailed — §103
May 15, 2026
Request for Continued Examination
May 18, 2026
Response after Non-Final Action
Sep 28, 2026
Non-Final Rejection mailed — §103 (current)

Precedent Cases

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3-4
Expected OA Rounds
83%
Grant Probability
98%
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1y 10m (~0m remaining)
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