DETAILED ACTION
This Office action is responsive to communication received 09/30/2025 – Terminal Disclaimer; 11/06/2025 – 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 .
Terminal Disclaimer
The terminal disclaimer filed on 09/30/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPN 11331546 and which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Numbers 17700439 and 17713464 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Status of Claims
Claims 1-20 remain pending.
Response to Arguments
In the arguments received 11/06/2025, the applicant contends that the prior art reference to Beach et al (US PUBS 2009/0286611) is silent on the placement of “a first weight member 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 of less than about 15 mm from a center of gravity (CG) of said golf club head”. The applicant further contends that the prior art reference to Stites (US PUBS 2010/0203983) is incapable of curing the alleged deficiencies in Beach. The applicant makes similar remarks with respect to the further teaching references to Sugimae et al (US PUBS 2020/0188746) and Harbert et al (US PUBS 2015/0231453), noting that neither Sugimae nor Harbert is capable of curing the alleged deficiencies in Beach.
IN RESPONSE:
Applicant’s arguments, see scanned page 3, line 27 through scanned page 4, line 9, filed with the remarks of 11/06/2025, with respect to the rejection of claims 1 and 2 under 35 U.S.C. §103 as being unpatentable over US PUBS 2009/0286611 to Beach et al in view of US PUBS 2010/0203986 to Stites have been fully considered and are persuasive.
Applicant’s arguments, see scanned page 5, line 22 through scanned page 6, line 2, filed with the remarks of 11/06/2025, with respect to the rejection of claims 14-18 under 35 U.S.C. §103 as being unpatentable over US PUBS 2009/0286611 to Beach et al in view of US PUBS 2010/0203986 to Stites and also in view of US PUBS 2015/0231453 to Harbert et al have been fully considered and are persuasive.
However, in view of the amendments to each of independent claims 1 and 14 and upon further consideration, a new ground(s) of rejection is being made in view of the newly-cited references to USPN 6,991,558 to Beach et al and USPN 6,254,494 to Hasebe et al. The previously-applied references, including US PUBS 2010/0203983 to Stites et al, US PUBS 2020/0188746 to Sugimae et al, and US PUBS 2015/0231453 to Harbert et al are being used for substantially the same teachings set forth in the previous rejection. The previously-applied reference US PUBS 2009/0286611 to Beach et al is also being used for some of the teachings previously relied upon. No further explanation is deemed necessary.
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 1-20 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 1, line 6, “said face center” lacks proper antecedent basis.
As to claims 2-13, these claims share the indefiniteness of claim 1.
As to claim 14, line 8, “said face center” lacks proper antecedent basis.
As to claims 15-18, these claims share the indefiniteness of claim 14.
As to claim 19, “said composite type material” lacks proper antecedent basis. Note that the composite type material is first introduced in claim 18. Thus, claim 19 should perhaps depend from claim 18.
As to claim 20, this claim shares the indefiniteness of claim 19 (dependent on claim 14).
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.
"[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.
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.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(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;
(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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,991,558 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”) and also in view of US PUBS 2010/0203983 to Stites et al (hereinafter referred to as “Stites”).
As to claim 1, Beach shows a golf club head (50; FIGS. 5-8) comprising: a frontal portion further comprising a striking face (58) located at a forward portion of said golf club head; a rear portion attached to the strike plate (i.e., outer shell 64 is attached to strike plate 58; col. 4, lines 57-58) to define a club head volume of between about 200 cc and about 450 cc (i.e., col. 5, lines 13-15). Beach further includes a first weight member (74a; FIGS. 7-8 and col. 5, lines 40-53) having a first mass and located near a central portion of the golf club head in a heel to toe direction, substantially in line with and behind a face center and located near the striking face and at a first distance from a center of gravity (CG) of the golf club head. Note that the CG is shown in FIGS. 2-3 and discussed in col. 2, lines 39-64 in Beach. With reference to FIG. 1 and col. 2, lines 52-63, an x-axis is defined as a horizontal axis tangent to a geometric center of said striking face with a positive direction towards a heel of said golf club head (i.e., in Beach, the axis in the heel-toe direction is along an axis labeled as 28); a y-axis is a vertical axis orthogonal to said x-axis with a positive direction towards a crown of said golf club head (i.e., Beach defines a crown-to-sole direction of the coordinate system along an axis labeled 26); and a z-axis being orthogonal to both said x-axis and said y-axis with a positive direction towards said frontal portion of said golf club head (i.e., Beach defines a front-to-back direction of the coordinate system along an axis labeled 30); and wherein said golf club head has a moment of inertia about said x-axis (MOI-X) (i.e., Beach details Ixx about the axis 28 in a heel-to-toe direction; also see col. 2, line 64 through col. 3, line 4), a moment of inertia about said y-axis (MOI-Y) (i.e., Beach details Izz about the vertical axis in a crown-to-sole direction; again see col. 2, line 64 through col. 3, line 4), and a moment of inertia about said z-axis (MOI-Z) (i.e., Beach details Iyy about the horizontal axis in a front-to-back direction; again see col. 2, line 64 through col. 3, line 4), wherein said MOI-Y is less than 400 kg-mm2 (i.e., Beach details an Izz, which corresponds to MOI-Y, of at least 250 kg-mm2 ; see col. 7, lines 7-14); and wherein said golf club head has a MOI-X to MOI-Y ratio of greater than about 0.7. Here, the claim requires a ratio between what the applicant has defined as MOI-X (i.e., moment of inertia about an axis in a heel/toe direction) divided by MOI-Y (i.e., moment of inertia about an axis in a crown/sole direction). In Beach, the equivalent comparison would be Ixx/Izz. With reference to col. 5, line 66 through col. 6, line 32 in Beach, an Ixx of about 215 kg-mm2 is realized, when using a volume of 300 cm3 along with the equation Ixx ≥ .46 * HV + 77, as defined by Beach. An Izz for Beach is disclosed as being at least 250 kg-mm2 (i.e., col. 7, lines 7-14). Thus, Beach provides a ratio Ixx/Izz of 215/250 = 0.860, which meets the claimed ratio limitation of MOI-X to MOI-Y of greater than 0.7.
Beach lacks a “face cup”. 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 Beach 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.
Beach also lacks “at a first distance of less than about 15 mm from a center of gravity (CG) of said golf club head” for the distance between the first weight member and the CG. Here, Hasebe shows it to be old in the art to locate a first weight member (4; FIGS. 1-3) within 15 mm of a strike face plane and to locate the CG within 25 mm from the front face portion (3). Thus, the weight member (4) is located roughly 10 mm from the CG. Hasebe discloses that placing the CG closer to the face and keeping the CG low with the assistance of added weight helps to impart appropriate back spin to a struck golf ball for improved accuracy as a result of an increase in the moment of inertia (i.e., col. 2, lines 40-67; col. 3, lines 5-17; and col. 3, lines 47-56 in Hasebe). In view of the teaching in Hasebe, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by placing the first weight member (74a) at a distance less than 15 mm from the center of gravity in order to maintain added weight closer to the plane of the striking face, thus providing a lower center of gravity and increasing the moment of inertia for about the heel/toe axis to improve the performance of the club head during off-center hits.
As to claim 2, Beach states that composite material may be used for the front striking face as well as for the hosel and outer body (i.e., col. 4, lines 53-63).
Claims 3-4 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,991,558 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”) and also in view of US PUBS 2010/0203983 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2020/0188746 to Sugimae et al (hereinafter referred to as “Sugimae”).
As to claim 3, a density of “less than about 3.0 g/cc” for the composite material is absent from the combination of Beach, Hasebe and Stites. To have further modified the club head in Beach by selecting a composite type material with a density less than about 3.0 g/cc would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention in view of the further teaching to Sugimae, which shows it to be old in the art to take advantage of thermoplastic material having a density of less than 3.0 g/cc (i.e., paragraph [0096] in Sugimae). Here, thermoplastics are known in the golf club head art and facilitate the use of compression molding, injection molding or 3D printing of club head parts. Again, the selection of a known material to take advantage of the properties of the known material has been determined to be within the level of one of ordinary skill in the art. See MPEP 2144.07 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
As to claim 4, with reference to col. 7, lines 7-14, Beach details an Izz (which corresponds to the claimed MOI-Y) of at least 250 kg-mm2. Thus, the MOI-Y may be less than 300 kg-mm2.
As to claim 7, with reference to col. 5, line 66 through col. 6, line 32, Beach details an Ixx (which corresponds to the claimed MOI-X) of about 215 kg-mm2, when using a volume of 300 cm3 along with the equation Ixx ≥ .46 * HV + 77, as defined by Beach. Thus, the MOI-X may be less than 300 kg-mm2.
As to claim 8, with reference to col. 7, lines 7-14, Beach details an Izz (which corresponds to the claimed MOI-Y) of at least 250 kg-mm2. Thus, the MOI-Y may be between about 250 kg-mm2 and 300 kg-mm2.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,991,558 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”) and also in view of US PUBS 2010/0203983 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2020/0188746 to Sugimae et al (hereinafter referred to as “Sugimae”) and also in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach (‘611)”)
As to claims 9-11 in general, Beach, as modified by Hasebe, Stites and Sugimae, lacks the specific, claimed ratios. Here, Beach (‘611) provides further guidance for arranging the Ixx, Iyy and Izz to improve club head performance (i.e., see paragraphs [0237] – [0240] in Beach (‘611)). Combined with Beach, the Beach (‘611) reference 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 (‘611), 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 Beach 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 (‘611), and as outlined below:
More specific to claim 9, the golf club head in Beach (‘611) has a MOI-Y to MOI-Z ratio of greater than about 1.5. Here, Beach (‘611) 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 (‘611) 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 (‘611).
More specific to claim 10, the golf club head in Beach (‘611) has a MOI-X to MOI- Z ratio of greater than about 1.10. Here, Beach (‘611) 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 (‘611) 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 (‘611).
More specific to claim 11, the golf club head in Beach (‘611) has a MOI-X to MOI- Z ratio of greater than about 1.20. Here, Beach (‘611) 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 (‘611) 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 (‘611).
Claims 5-6 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,991,558 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”) and also in view of US PUBS 2010/0203983 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2020/0188746 to Sugimae et al (hereinafter referred to as “Sugimae”) and also in view of US PUBS 2015/0231453 to Harbert et al (hereinafter referred to as “Harbert”).
As to claims 5 and 12, Beach does disclose a location for the location of the CG-y (i.e., in Beach, the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the horizontal centerline 31; also, see FIG. 4 and col. 3, line 56 through col. 4, line 21). However, Beach, even as modified by Hasebe, Stites and Sugimae, does not specify the CG-y with respect to a relationship between the face height and a height from a ground plane. Here, Harbert details the face height along with the location of the center of gravity Zup in a vertical crown-to-sole direction from the ground plane. More specifically, the face height disclosed by Harbert is 36.0 mm (i.e., see TABLE 4 in Harbert). A value of 0.4 times the face height of 36.0 mm yields a value of 14.4 mm. It is noted that TABLE 4 in Harbert reveals a Zup of 13.6 mm for a face height of 36 mm and thus meets the claimed limitations. In view of the teaching in Harbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by incorporating a location for the CG-y using a measurement that correlates with the face height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head.
As to claims 6 and 13, Beach does disclose a location for the location of the CG-y (i.e., in Beach, the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the horizontal centerline 31; also, see FIG. 4 and col. 3, line 56 through col. 4, line 21). However, Beach, even as modified by Hasebe, Stites and Sugimae, does not specify the CG-y with respect to a relationship between the crown height and a height from a ground plane. Here, Harbert details the crown height (i.e., head height) along with the location of the center of gravity Zup in a vertical crown-to-sole direction from the ground plane. More specifically, the crown height disclosed by Harbert is 42.5 mm (i.e., see TABLE 4 in Beach). A value of 0.35 times the head height of 42.5 mm yields a value of 14.9 mm. It is noted that TABLE 4 in Harbert reveals a Zup of 13.6 mm for a head height of 42.5 mm and thus meets the claimed limitations. In view of the teaching in Harbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by incorporating a location for the CG-y using a measurement that correlates with the crown height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head.
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,991,558 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”) and also in view of US PUBS 2010/0203983 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2015/0231453 to Harbert et al (hereinafter referred to as “Harbert”).
As to claim 14, Beach shows a golf club head (50; FIGS. 5-8) comprising: a frontal portion further comprising a striking face (58) located at a forward portion of said golf club head; a rear portion attached to the strike plate (i.e., outer shell 64 is attached to strike plate 58; col. 4, lines 57-58) to define a club head volume of between about 200 cc and about 450 cc (i.e., col. 5, lines 13-15). Beach further includes a first weight member (74a; FIGS. 7-8 and col. 5, lines 40-53) having a first mass and located near a central portion of the golf club head in a heel to toe direction, substantially in line with and behind a face center and located near the striking face and at a first distance from a center of gravity (CG) of the golf club head. Note that the CG is shown in FIGS. 2-3 and discussed in col. 2, lines 39-64 in Beach. With reference to FIG. 1 and col. 2, lines 52-63, an x-axis is defined as a horizontal axis tangent to a geometric center of said striking face with a positive direction towards a heel of said golf club head (i.e., in Beach, the axis in the heel-toe direction is along an axis labeled as 28); a y-axis is a vertical axis orthogonal to said x-axis with a positive direction towards a crown of said golf club head (i.e., Beach defines a crown-to-sole direction of the coordinate system along an axis labeled 26); and a z-axis being orthogonal to both said x-axis and said y-axis with a positive direction towards said frontal portion of said golf club head (i.e., Beach defines a front-to-back direction of the coordinate system along an axis labeled 30); and wherein said golf club head has a moment of inertia about said x-axis (MOI-X) (i.e., Beach details Ixx about the axis 28 in a heel-to-toe direction; also see col. 2, line 64 through col. 3, line 4), a moment of inertia about said z-axis (MOI-Y) (i.e., Beach details Izz about the vertical axis in a crown-to-sole direction; again see col. 2, line 64 through col. 3, line 4), and a moment of inertia about said z-axis (MOI-Z) (i.e., Beach details Iyy about the horizontal axis in a front-to-back direction; again see col. 2, line 64 through col. 3, line 4), wherein said MOI-Y is less than 400 kg-mm2 (i.e., Beach details an Izz, which corresponds to MOI-Y, of at least 250 kg-mm2 ; see col. 7, lines 7-14).
Beach lacks a “face cup” as well as “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 Beach 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 Beach 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.
Beach also lacks “at a first distance of less than about 15 mm from a center of gravity (CG) of said golf club head” for the distance between the first weight member and the CG. Here, Hasebe shows it to be old in the art to locate a first weight member (4; FIGS. 1-3) within 15 mm of a strike face plane and to locate the CG within 25 mm from the front face portion (3). Thus, the weight member (4) is located roughly 10 mm from the CG. Hasebe discloses that placing the CG closer to the face and keeping the CG low with the assistance of added weight helps to impart appropriate back spin to a struck golf ball for improved accuracy as a result of an increase in the moment of inertia (i.e., col. 2, lines 40-67; col. 3, lines 5-17; and col. 3, lines 47-56 in Hasebe). In view of the teaching in Hasebe, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by placing the first weight member (74a) at a distance less than 15 mm from the center of gravity in order to maintain added weight closer to the plane of the striking face, thus providing a lower center of gravity and increasing the moment of inertia for about the heel/toe axis to improve the performance of the club head during off-center hits.
Beach does disclose a location for the location of the CG-y (i.e., in Beach, the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the horizontal centerline 31; also, see FIG. 4 and col. 3, line 56 through col. 4, line 21). However, Beach, even as modified by Hasebe and Stites, does not specify the CG-y with respect to a relationship between the face height and a height from a ground plane. Here, Harbert details the face height along with the location of the center of gravity Zup in a vertical crown-to-sole direction from the ground plane. More specifically, the face height disclosed by Harbert is 36.0 mm (i.e., see TABLE 4 in Harbert). A value of 0.4 times the face height of 36.0 mm yields a value of 14.4 mm. It is noted that TABLE 4 in Harbert reveals a Zup of 13.6 mm for a face height of 36 mm and thus meets the claimed limitations. In view of the teaching in Harbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by incorporating a location for the CG-y using a measurement that correlates with the face height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head.
As to claim 15, with reference to col. 7, lines 7-14, Beach details an Izz (which corresponds to the claimed MOI-Y) of at least 250 kg-mm2. Thus, the MOI-Y may be between about 250 kg-mm2 and 300 kg-mm2.
As to claim 16, Beach does disclose a location for the location of the CG-y (i.e., in Beach, the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the horizontal centerline 31; also, see FIG. 4 and col. 3, line 56 through col. 4, line 21). However, Beach, even as modified by Hasebe and Stites, 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 0.35 times the face height of 36.0 mm yields a value of 12.6 mm. It is noted that TABLE 4 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 Beach by incorporating a location for the CG-y using a measurement that correlates with the face height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head. "[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, Beach does disclose a location for the location of the CG-y (i.e., in Beach, the location of the center of gravity along the vertical axis is referenced as CGz and is measured with respect to the location of the horizontal centerline 31; also, see FIG. 4 and col. 3, line 56 through col. 4, line 21). However, Beach, even as modified by Hasebe and Stites, does not specify the CG-y with respect to a relationship between the crown height and a height from a ground plane. Here, Harbert details the crown height (i.e., head height) along with the location of the center of gravity Zup in a vertical crown-to-sole direction from the ground plane. More specifically, the crown height disclosed by Harbert is 42.5 mm (i.e., see TABLE 4 in Beach). A value of 0.35 times the head height of 42.5 mm yields a value of 14.9 mm. It is noted that TABLE 4 in Harbert reveals a Zup of 13.6 mm for a head height of 42.5 mm and thus meets the claimed limitations. In view of the teaching in Harbert, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Beach by incorporating a location for the CG-y using a measurement that correlates with the crown height from a ground plane in order to enable the skilled artisan to more precisely locate the center of gravity with respect to a dimension of the club head and with respect to a fixed reference point or plane to enhance the overall performance of the club head.
As to claim 18, Beach states that composite material may be used for the front striking face as well as for the hosel and outer body (i.e., col. 4, lines 53-63).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,991,558 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”) in view of US PUBS 2010/0203983 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2015/0231453 to Harbert et al (hereinafter referred to as “Harbert”) and also in view of US PUBS 2020/0188746 to Sugimae et al (hereinafter referred to as “Sugimae”).
As to claim 19, a density of “less than about 3.0 g/cc” is absent from the combination of Beach, Stites, Hasebe and Harbert. To have further modified the club head in Beach by selecting a composite type material with a density less than about 3.0 g/cc would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention in view of the further teaching to Sugimae, which shows it to be old in the art to take advantage of thermoplastic material having a density of less than 3.0 g/cc (i.e., paragraph [0096] in Sugimae). Here, thermoplastics are known in the golf club head art and facilitate the use of compression molding, injection molding or 3D printing of club head parts. Again, the selection of a known material to take advantage of the properties of the known material has been determined to be within the level of one of ordinary skill in the art. See MPEP 2144.07 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 6,991,558 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”) in view of US PUBS 2010/0203983 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2015/0231453 to Harbert et al (hereinafter referred to as “Harbert”) and also in view of US PUBS 2020/0188746 to Sugimae et al (hereinafter referred to as “Sugimae”) and also in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach (‘611)”)
As to claim 20, Beach, as modified by Hasebe, Stites, Harbert and Sugimae, lacks the specific, claimed ratio. Here, Beach (‘611) provides further guidance for arranging the Ixx, Iyy and Izz to improve club head performance (i.e., see paragraphs [0237] – [0240] in Beach (‘611)). Combined with Beach, the Beach (‘611) reference 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 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 (‘611), 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 Beach with a suitable MOI-Y and MOI-Z to enhance the stability of the club head. Note the specific arrangements of MOI-Y and MOI-Z, as taught by Beach (‘611), wherein the golf club head has a MOI-Y to MOI-Z ratio of greater than about 1.5. Here, Beach (‘611) 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 (‘611) 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 (‘611).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Figs. 6 and 16 in Curtis;
Figs. 5 and 7-16 in Kobayashi;
Fig. 20 in McCabe;
Figs. 2 and 10 in Chen;
Figs. 13A, 13B and 14D in Beno;
Figs. 14 and 17 in Harbert (‘027); and
Fig. 3B in Beach (‘864).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendments to each of independent claims 1 and 14 to include further limitations with respect to “a first weight member 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 of less than about 15 mm from a center of gravity (CG) of the golf club head” (claims 1 and 14) along with “wherein said rear portion has a forward facing opening that has a recessed ledge adapted to engage said frontal portion” (claim 14), in part, 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.
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