DETAILED ACTION
This Office action is responsive to communication received 12/23/2025 – Amendment.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-16 and 18-20 remain pending.
Response to Arguments
In the arguments received 12/23/2025, the applicant addresses the outstanding rejections of the claims under 35 U.S.C. §112(a) and 35 U.S.C. §112(b). The applicant next contends that the prior art combination of Matsunaga (US PUBS 2007/0129167) and Saso (USPN 5,645,494) does not show, suggest or otherwise render obvious that “the volume of the heel-side aft slice is at least 15% greater than the volume of the toe-side aft slice” along with the further combination of limitations that specify the requirements for the locations of each of the toe-side aft slice and the heel-side aft slice and further combined with the requirements of a first area and a second area defined by the aft slice. The applicant further argues that the combination of Matsunaga and Schweigert et al (US PUBS 2011/0250986) does not show, suggest or otherwise render obvious that “the toe-side interior-most point is positioned above the heel-side interior-most point by an asymmetrical distance that is at least 10% of a height of the golf club head” along with the further combination of limitations that specify the particulars of both the aft slice and the offset perimeter slice curve.
IN RESPONSE:
Applicant’s arguments, see scanned page 4, line 32 through scanned page 6, line 13, filed with the Remarks of 12/23/2025, with respect to the rejection of independent claim 1 as being rejected under 35 U.S.C. §103 as being unpatentable over US PUBS 2007/0129167 to Matsunaga in view of USPN 5,645,495 to Saso have been fully considered and are persuasive.
Applicant’s arguments, see scanned page 7, line 19 through scanned page 9, line 3, filed with the Remarks of 12/23/2025, with respect to the rejection of independent claim 8 as being rejected under 35 U.S.C. §103 as being unpatentable over US PUBS 2007/0129167 to Matsunaga in view of US PUBS 2011/0250986 to Schweigert et al, have been fully considered and are persuasive.
Applicant’s arguments, see scanned page 9, lines 8-19, filed with the Remarks of 12/23/2025, with respect to the rejection of independent claim 15 as being rejected under 35 U.S.C. §103 as being unpatentable over US PUBS 2007/0129167 to Matsunaga in view of USPN 5,645,495 to Saso and also in view of US PUBS 2011/0250986 to Schweigert et al have been fully considered and are persuasive.
Although the applicant has addressed the initial concerns of indefiniteness under 35 U.S.C. §112(a) and 35 U.S.C. §112(b), the amendments to the claims raise further concerns of indefiniteness under 35 U.S.C. §112(b), as set forth in the rejection hereinbelow. No further comments are deemed necessary here.
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 1-17 and 18-20 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, lines 6-8, the phrase “the toe-side aft slice being the portion of the aft slice on the toe side of the rearmost point, the heel-side aft slice being the portion of the aft slice on the heel side of the rearmost point, and” appears to be misplaced. Initially, the phrase “the portion of the aft slice” appearing in each of lines 7 and 8 lacks proper antecedent basis. It would appear that the toe-side aft slice and the heel-side aft slice are referring to a different “portion” and such should be distinctly recited. Next, it would appear that the aft slice is not first defined until lines 9-12. Thus, it is not clear exactly what “the portion” is referring to. As a suggestion, greater clarity in the claim may be established by re-drafting and re-positioning the phrase identified above to a location in the body of the claim after the aft slice is defined or, alternatively, define the aft slice earlier in the body of the claim. Also, in lines 11-12, although the claim now requires an offset perimeter slice curve corresponding to the outer perimeter of the golf club head, it is not clear what the “corresponding” is referring to. It appears that the offset perimeter slice curve perhaps follows a corresponding shape of the outer perimeter of the golf club head at a rearmost portion of the club head, which would provide a clearer understanding of the perimeter offset distance of 1 inch, as subsequently recited in lines 16-17.
As to claims 2-3, these claims share the indefiniteness of claim 1. In addition, the language “at least 5% greater” (claim 2) and “at least 10% greater” (claim 3), when detailing the volume of the heel-side aft slice in relation to the toe-side aft slice, is indefinite given that the independent claim now requires that “the volume of the heel-side aft slice is at least 15% greater than the volume of the toe-side aft slice”. There is no way to determine the scope of what volume percentage or range of volume is covered by each of the percent recitations in claims 2 and 3. Claims 2 and 3 cannot require a volume differential less than the “at least 15% greater” limitation recited by the independent claim.
As to claim 4, line 4, “the address position” lacks proper antecedent basis. Why not say --an address position--.
As to claims 5-7, these claims share the indefiniteness of claim 1.
As to claim 8, line 7, “the address position” lacks proper antecedent basis. Why not say --an address position--. In lines 10-11, although the claim now requires an offset perimeter slice curve corresponding to the outer perimeter of the golf club head, it is not clear what the “corresponding” is referring to. It appears that the offset perimeter slice curve perhaps follows a corresponding shape of the outer perimeter of the golf club head at a rearmost portion of the club head, which would provide a clearer understanding of the perimeter offset distance of 1 inch, as subsequently recited in lines 15-16.
As to claim 9, this claim share the indefiniteness of claim 8.
As to claim 10, the language “at least 5% of a height of the golf club head” is indefinite given that the independent claim now requires that “the toe-side interior-most point is positioned above the heel-side interior-most point by an asymmetrical distance that is at least 10% of a height of the golf club head”. There is no way to determine the scope of what height percentage or range of height is covered by the percent recitation in claim 10. Claim 10 cannot require a height differential less than the “at least 10% of a height of the golf club head” limitation recited by the independent claim. Also, in claim 10, line 3, is “a height” a different height than what has been recited in claim 8, line 18? Or, should claim 10, line 3 instead read --the height--?
As to claim 11, line 3, “the portion of the aft slice” lacks proper antecedent basis. In line 4, “the portion of the aft slice” lacks proper antecedent basis. It would appear that the toe-side aft slice and the heel-side aft slice are referring to a different “portion” and such should be distinctly recited.
As to claims 12-14, these claims share the indefiniteness of claim 8.
As to claim 15, line 8, “the portion” lacks proper antecedent basis. In line 11, “the portion” lacks proper antecedent basis. It would appear that the toe-side aft slice and the heel-side aft slice are referring to a different “portion” and such should be distinctly recited. It would appear that the aft slice is not first defined until lines 17-19. Thus, it is not clear exactly what “the portion” (both occurrences) is referring to. As a suggestion, greater clarity in the claim may be established by re-drafting and re-positioning the phrase identified above to a location in the body of the claim after the aft slice is defined or, alternatively, define the aft slice earlier in the body of the claim. In lines 14-15, “the address position” lacks proper antecedent basis. Why not say --an address position--. In line 19, although the claim now requires an offset perimeter slice curve corresponding to the outer perimeter of the golf club head, it is not clear what the “corresponding” is referring to. It appears that the offset perimeter slice curve perhaps follows a corresponding shape of the outer perimeter of the golf club head at a rearmost portion of the club head, which would provide a clearer understanding of the perimeter offset distance of 1 inch, as subsequently recited in lines 24-25.
As to claim 16, this claim shares the indefiniteness of claim 15.
As to claim 18, this claim shares the indefiniteness of claim 15. In addition, the language “at least 5% greater”, when detailing the volume of the heel-side aft slice in relation to the toe-side aft slice is indefinite, given that the independent claim now requires that “the volume of the heel-side aft slice is at least 15% greater than the volume of the toe-side aft slice”. There is no way to determine the scope of what volume percentage or range of volume is covered by the percent recitation in claim 18. Claim 18 cannot require a volume differential less than the “at least 15% greater” limitation recited by the independent claim.
As to claims 19-20, these claims share the indefiniteness of claim 15.
In view of the amendments to the claims, received 12/23/2025, the Office has once again made every effort to identify all remaining instances of indefiniteness in the current claim set. To the extent that any remaining occurrences of indefiniteness may exist in the claims, the applicant is respectfully asked to thoroughly review the claims and to amend the claims to capture and to correct any remaining instances of indefiniteness of which the applicant may become aware of during the preparation of a response to this action.
Allowable Subject Matter
Claims 1-16 and 18-20 would be allowable if rewritten or amended 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendments to the claims have raised further concerns of indefiniteness under 35 U.S.C. §112(b).
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