DETAILED ACTION
This Office action is responsive to communication received 09/26/2025 – Election.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Invention I (claim 1-14) in the reply filed on 09/26/2025 is acknowledged. Claims 15-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Status of Claims
Claims 1-20 remain pending.
Claims 15-20 have been withdrawn from further consideration.
Drawings
The drawings were received on 08/09/2022 These drawings are acceptable.
Information Disclosure Statement
Regarding the IDS received 08/09/2022, Cite No. 11, identified as Document Number 5,238,529, with a Publication Date of 08-24-1993 and a Patentee Name of Douglas, the citation recorded by the applicant matches the actual content of USPN 5,238,529 in the PTO records and thus this document has been marked, as "considered”. However, the relevance of this document to the claimed subject matter is not understood. An explanation is requested.
Priority
Based on the combination of elements set forth in independent claim 1, namely the combination of a striking face, a body portion, a pocket with a backing portion and an undercut around a perimeter of the pocket, and a face insert with an inner portion and an outer portion along with a protrusion extending beyond a perimeter of the inner portion of the face insert, which first find support in the disclosure of the instant filing, the effective filing date of independent claim 1 along with dependent claims 2-14 is the actual filing date of the instant application, namely 08/09/2022. See MPEP 2152.01.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2021/0060829 to Martens et al (hereinafter referred to as “Martens”) in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”).
As to claim 1, Martens discloses a golf club head (FIGS. 2 and 41-42) comprising: a striking face provided near a forward portion of said golf club head; and a body portion (4100) connected to an aft portion of said striking face further comprising a crown (204), a sole (206) and a skirt (208), wherein said striking face comprises: a pocket (222; and paragraph [0002]) at a frontal portion of said striking face made out of a first material having a first density, said pocket having a backing portion at a center of said pocket, said pocket having an undercut (4128; FIG. 42) around a perimeter of said pocket; and a face insert (4120) attached to said pocket made out of a second material having a second density, wherein said protrusion (4129) is adapted to engage said undercut (4128), and wherein said second density is less than said first density (i.e., paragraph [0002]).
Martens does not explicitly disclose “said face insert having an inner portion adjacent said backing portion of said pocket, said face insert having an outer portion opposite said inner portion, said outer portion of said face insert having a protrusion around a perimeter of said outer portion, wherein said protrusion extends beyond a perimeter of said inner portion of said face insert”. Bissonnette teaches that a face insert may include a variable thickness portion in order to change the flexural thickness of the striking face (i.e., col. 2, lines 41-63). Note that Bissonnette teaches that striking faces may include inserts having uniform thickness or inserts having variable thickness (i.e., col. 1, lines 39-44; col. 2, lines 40-41; and col. 17, lines 54-60). With the central portion of the face insert in Bissonnette comprising a thickened portion, as illustrated in FIG. 9A, it can be said that Bissonnette teaches an insert having an inner portion with thickness (T1-T2A), and an outer portion, with thickness (T2A), and having a protrusion (i.e., generally shown near numeral 238 in FIG. 9A), with the protrusion extending beyond a perimeter of the inner portion. In view of the teaching in Bissonnette, 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 Martens by providing an inner portion and an outer portion, with a protrusion extending beyond a perimeter of the inner portion, with the arrangement of an inner portion and an outer portion essentially providing a variable thickness face insert, with there being a reasonable expectation of success that having a face insert with an inner portion and an outer portion would have enabled the skilled artisan to more selectively control the compliance of the striking face for improved club head performance.
As to claim 2, the first material (of the pocket) in Martens is a metal (i.e., paragraph [0068]) and the second material (of the face insert) is a composite material (i.e., paragraph [0069]).
As to claim 3, said metal in Martens is titanium (i.e., Abstract) and said composite material is carbon fiber composite (i.e., Abstract and paragraph [0069]).
As to claim 5, in Martens, a ratio between a thickness of said protrusion and a thickness of said backing portion is less than 0.8. See paragraph [0139] and noting the thickness (d2) of the face insert that includes the protrusion (4129) and the thickness (d3) of the backing portion.
As to claim 6, the face insert in Martens is bonded to said pocket using a glass weave impregnated with an adhesive (i.e., paragraph [0077]).
As to claim 7, in Martens, said adhesive and said composite material can be cured at the same temperature (i.e., paragraph [0077]).
As to claim 8, in Martens, a total thickness of said face insert including a thickness of said inner portion of said face insert and a thickness of said outer portion of said face insert at a central location of said face insert is between 0.2 mm and 2.5 mm, and wherein a thickness of said backing portion of said pocket is between 1.0 mm and 3.5 mm. Paragraph [0139] sets for the overall thickness for each of the face insert and the backing portion. With the modification of Martens to include a face insert having an outer portion and an inner portion, as taught by Bissonnette, it is clear that the skilled artisan would have maintained the overall thickness of the face insert and the backing portion to be within the overall limits set forth in Martens in order to maintain a suitable weight and to offer proper compliance of the striking face upon impact with a golf ball. Any further distinctions in the thickness of the face insert and/or backing portion would have been realized 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 claim 9, said total thickness of said face insert is about 1.2 mm. Again, see paragraph [0139] in Martens and the rationale provided under claim 8, above.
As to claim 10, said thickness of said backing portion of said pocket is about 2.2 mm. Again, see paragraph [0139] in Martens and the rationale provided under claim 8, above.
As to claim 11, Martens lacks “said thickness of said inner portion of said face insert is approximately equal to said thickness of said outer portion of said face insert at said central location of said face insert”. Looking at FIG. 9A and col. 12, lines 43-59 in Bissonnette, the identified inner portion is sized as (T1-T2A), which is 0.140-0.74 = 0.6 inch. The identified outer portion is sized as T2A = 0.74 inch. Thus, it can be said that the thickness of said inner portion of said face insert is approximately equal to said thickness of said outer portion of said face insert. Even if one were to argue that the inner portion and outer portion identified in Bissonnette are not approximately equal to each other, the skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to modify the face insert in the Bissonnette device, which is used to modify the face insert in the Martens club head, to include inner and outer portions of approximately equal thickness such that the striking face insert exhibits a specific coefficient of restitution.
As to claim 12, said undercut is a dovetail shaped undercut (4128; paragraph [0140]) and said protrusion (4129; paragraph [0141]) is a dovetail shaped protrusion. See FIGS. 41-42 in Martens.
As to claim 13, said dovetail shaped protrusion (4129) forms an angle Ɵ of between about 40 degrees and about 65 degrees with said striking face. See paragraph [0140] in Martens.
As to claim 14, a depth of said dovetail shaped undercut (4128) or a length of said dovetail shaped protrusion (4129) is between about 3 mm and about 6 mm. See paragraph [0141] in Martens.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2021/0060829 to Martens et al (hereinafter referred to as “Martens”) in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”) and also in view of USPN 10,350,468 to Hebreo.
As to claim 4, Martens, as modified by Bissonnette, lacks “a gap between said protrusion of said face insert and a rearward surface of said undercut”. Initially, it is noted that the applicant briefly mentions a gap (i.e., Specification, paragraphs [00153] and [00156]), but provides no further description as to the purpose of the gap. Here, Hebreo is cited to show that it is old in the art to provide a spacing or gap rearward of the striking face, and between the perimeter of the striking face and the supporting structure rearward of the striking face perimeter (i.e., see gap 660 and FIGS. 10A, 10B). The gap in Hebreo clearly provides for added compliance of the striking face during impact with a golf ball. In view of the teaching in Hebreo, 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 Martens by providing a gap between said protrusion of said face insert and a rearward surface of said undercut, the motivation being to enable the striking face to exhibit added resilience upon impact with a golf ball so as to improve the overall performance of the club head.
Claim Objections - Minor
Claim 6 is objected to because of the following informalities: In line 2, it is suggested that the language “glass weave” read --glass fiber weave-- for consistency with the language in the specification (e.g., paragraphs [0158] – [0160]). Appropriate correction is required.
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.
Claim 7 is 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.
In line 2, “can be cured at the same temperature” (emphasis added) is indefinite. Why not say --have a same cure temperature--.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Applicant’s attention is directed to the following three (3) rejections under nonstatutory double patenting and referencing prior patents 11,186,016; 12,472,663; and 11,433,574.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,186,016 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”).
On one hand, the claims of the ‘016 patent are more specific than the instant claims in that the claims of the ‘016 patent further require a Striking Thickness Ratio of less than about 1.0… and wherein said distance (d11) is generally greater than the thickness (d3) of said backing portion.
On the other hand, the claims of the ‘016 patent lack “said face insert having an inner portion adjacent said backing portion of said pocket, said face insert having an outer portion opposite said inner portion, said outer portion of said face insert having a protrusion around a perimeter of said outer portion, wherein said protrusion extends beyond a perimeter of said inner portion of said face insert”. Bissonnette teaches that a face insert may include a variable thickness portion in order to change the flexural thickness of the striking face (i.e., col. 2, lines 41-63). Note that Bissonnette teaches that striking faces may include inserts having uniform thickness or inserts having variable thickness (i.e., col. 1, lines 39-44; col. 2, lines 40-41; and col. 17, lines 54-60). With the central portion of the face insert in Bissonnette comprising a thickened portion, as illustrated in FIG. 9A, it can be said that Bissonnette teaches an insert having an inner portion with thickness (T1-T2A), and an outer portion, with thickness (T2A), and having a protrusion (i.e., generally shown near numeral 238 in FIG. 9A), with the protrusion extending beyond a perimeter of the inner portion. In view of the teaching in Bissonnette, 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 claimed club head in the ‘016 patent by providing an inner portion and an outer portion, with a protrusion extending beyond a perimeter of the inner portion, with the arrangement of an inner portion and an outer portion essentially providing a variable thickness face insert, with there being a reasonable expectation of success that having a face insert with an inner portion and an outer portion would have enabled the skilled artisan to more selectively control the compliance of the striking face for improved club head performance.
As for the remaining limitations in claim 1, including the details of the striking face, body portion, pocket, undercut, protrusion, face insert attached to the pocket, and first and second materials of diverse density, see claims 1 and 9 of the ‘016 patent.
Claims 2-3 and 5-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,186,016 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”) and also in view of USPN 8,517,859 to Golden et al (hereinafter referred to as “Golden”).
As to claims 2-3, the claimed invention of the ‘016 patent does not require the specific compositions for the first and second materials. Golden teaches a club head body, which includes a pocket, and formed of a metal material such as titanium, while the face insert may be formed of a second material such as carbon composite (i.e., see claim 1 of the Golden patent along with col. 16, lines 29-52; and col. 18, lines 4-10 exploring the use of titanium and carbon fiber composite materials). The combination of metal and composite materials adjacent the front surface of the club head in Golden provides structural stability while reducing the overall weight of the club head. In view of the teaching in Golden, 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 claimed invention of the ‘016 patent to include a combination of metal such as titanium for the first material and composite such as carbon fiber material for the second material, the motivation being to provide a sufficiently strong face impact surface with less weight for improved club head performance.
As to claims 6-7, Golden shows it to be obvious to attach a face insert portion using a cure-type adhesive (i.e., col. 10, lines 9-50). The curing of the adhesive and the composite material for the face insert enables the pocket to be fully filled and enables a desired roll/bulge to be achieved during the curing process for the face insert. One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘016 patent to include curable adhesive for bonding the face insert within the pocket for better retention.
As to claims 5 and 8-11, the claimed invention of the ‘016 patent recognizes a relationship between the thickness of the pocket, which is filled with a face insert, and the thickness of the backing portion, but does not require the particular dimensions set forth in claims 5 and 8-11. Here, col. 8, line 52 through col. 9, line 51 in Golden outlines the thickness of each of the face insert as well as the pocket and backing portion. Here, the teaching in Golden combined with the interpretation of the modified face insert to include inner and outer portions and a protrusion, as explained under claim 1 above, would have rendered it obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed device of the ‘016 patent to include the specific dimensions for the thickness of the protrusion, the thickness of the inner portion of the face insert, the thickness of the outer portion of the face insert and the thickness of the backing portion to provide the best balance between face durability and weight without compromising club head performance. Optimizing the dimensions would have involved obvious 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 claim 12, claim 1 of the ‘016 patent details a dovetail shaped undercut and dovetail shaped protrusion.
As to claim 13, claim 1 of the ‘016 patent details an angle of between 40 degrees and 65 degrees.
As to claim 14, see claims 6-7 of the ‘016 patent.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,186,016 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”) and also in view of USPN 8,517,859 to Golden et al (hereinafter referred to as “Golden”) and also in view of USPN 10,350,468 to Hebreo.
As to claim 4, the claimed invention of the ‘016 patent, as modified by Bissonnette and Golden, lacks “a gap between said protrusion of said face insert and a rearward surface of said undercut”. Here, Hebreo is cited to show that it is old in the art to provide a spacing or gap rearward of the striking face, and between the perimeter of the striking face and the supporting structure rearward of the striking face perimeter (i.e., see gap 660 and FIGS. 10A, 10B). The gap in Hebreo clearly provides for added compliance of the striking face during impact with a golf ball. In view of the teaching in Hebreo, 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 claimed club head in the ‘016 patent by providing a gap between said protrusion of said face insert and a rearward surface of said undercut, the motivation being to enable the striking face to exhibit added resilience upon impact with a golf ball so as to improve the overall performance of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,472,663 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”).
On one hand, the claims of the ‘663 patent are more specific than the instant claims in that the claims of the ‘663 patent further require wherein said crown further comprises; a constant thickness portion located near said striking face, and a transition portion located aft of said constant thickness portion…and wherein said distance (d11) is generally greater than a thickness (d3) of said backing portion.
On the other hand, the claims of the ‘663 patent lack “said face insert having an inner portion adjacent said backing portion of said pocket, said face insert having an outer portion opposite said inner portion, said outer portion of said face insert having a protrusion around a perimeter of said outer portion, wherein said protrusion extends beyond a perimeter of said inner portion of said face insert”. Bissonnette teaches that a face insert may include a variable thickness portion in order to change the flexural thickness of the striking face (i.e., col. 2, lines 41-63). Note that Bissonnette teaches that striking faces may include inserts having uniform thickness or inserts having variable thickness (i.e., col. 1, lines 39-44; col. 2, lines 40-41; and col. 17, lines 54-60). With the central portion of the face insert in Bissonnette comprising a thickened portion, as illustrated in FIG. 9A, it can be said that Bissonnette teaches an insert having an inner portion, with thickness (T1-T2A), and an outer portion, with thickness (T2A), and having a protrusion (i.e., generally shown near numeral 238 in FIG. 9A), with the protrusion extending beyond a perimeter of the inner portion. In view of the teaching in Bissonnette, 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 claimed club head in the ‘663 patent by providing an inner portion and an outer portion, with a protrusion extending beyond a perimeter of the inner portion, with the arrangement of an inner portion and an outer portion essentially providing a variable thickness face insert, with there being a reasonable expectation of success that having a face insert with an inner portion and an outer portion would have enabled the skilled artisan to more selectively control the compliance of the striking face for improved club head performance.
As for the remaining limitations in claim 1, including the details of the striking face, body portion, pocket, undercut, protrusion, face insert attached to the pocket, and first and second materials of diverse density, see claim 1 of the ‘663 patent.
Claims 2-3 and 5-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,472,663 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”) and also in view of USPN 8,517,859 to Golden et al (hereinafter referred to as “Golden”).
As to claims 2-3, the claimed invention of the ‘663 patent does not require the specific compositions for the first and second materials. Golden teaches a club head body, which includes a pocket, and formed of a metal material such as titanium, while the face insert may be formed of a second material such as carbon composite (i.e., see claim 1 of the Golden patent along with col. 16, lines 29-52; and col. 18, lines 4-10 exploring the use of titanium and carbon fiber composite materials). The combination of metal and composite materials adjacent the front surface of the club head in Golden provides structural stability while reducing the overall weight of the club head. In view of the teaching in Golden, 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 claimed invention of the ‘663 patent to include a combination of metal such as titanium for the first material and composite such as carbon fiber material for the second material, the motivation being to provide a sufficiently strong face impact surface with less weight for improved club head performance.
As to claims 6-7, Golden shows it to be obvious to attach a face insert portion using a cure-type adhesive (i.e., col. 10, lines 9-50). The curing of the adhesive and the composite material for the face insert enables the pocket to be fully filled and enables a desired roll/bulge to be achieved during the curing process for the face insert. One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘663 patent to include curable adhesive for bonding the face insert within the pocket for better retention.
As to claims 5 and 8-11, the claimed invention of the ‘663 patent recognizes a relationship between the thickness of the extended thickness of the dovetail shaped protrusion and the thickness of the backing portion, but does not require the particular dimensions set forth in claims 5 and 8-11. Here, col. 8, line 52 through col. 9, line 51 in Golden outlines the thickness of each of the face insert as well as the pocket and backing portion. Here, the teaching in Golden combined with the interpretation of the modified face insert to include inner and outer portions and a protrusion, as explained under claim 1 above, would have rendered it obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed device of the ‘663 patent to include the specific dimensions for the thickness of the protrusion, the thickness of the inner portion of the face insert, the thickness of the outer portion of the face insert and the thickness of the backing portion to provide the best balance between face durability and weight without compromising club head performance. Optimizing the dimensions would have involved obvious 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 claim 12, claim 1 of the ‘663 patent details a dovetail shaped undercut and dovetail shaped protrusion.
As to claim 13, claim 1-3 of the ‘663 patent details an angle of between 40 degrees and 65 degrees.
As to claim 14, see claims 1 of the ‘663 patent.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,472,663 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”) and also in view of USPN 8,517,859 to Golden et al (hereinafter referred to as “Golden”) and also in view of USPN 10,350,468 to Hebreo.
As to claim 4, the claimed invention of the ‘663 patent, as modified by Bissonnette and Golden, lacks “a gap between said protrusion of said face insert and a rearward surface of said undercut”. Here, Hebreo is cited to show that it is old in the art to provide a spacing or gap rearward of the striking face, and between the perimeter of the striking face and the supporting structure rearward of the striking face perimeter (i.e., see gap 660 and FIGS. 10A, 10B). The gap in Hebreo clearly provides for added compliance of the striking face during impact with a golf ball. In view of the teaching in Hebreo, 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 claimed club head in the ‘663 patent by providing a gap between said protrusion of said face insert and a rearward surface of said undercut, the motivation being to enable the striking face to exhibit added resilience upon impact with a golf ball so as to improve the overall performance of the club head.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,433,574 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”).
On one hand, the claims of the ‘574 patent are more specific than the instant claims in that the claims of the ‘574 patent further require a perimeter portion made out of a first material having a first density around a border of said striking face; and a central portion near a center of said striking face surrounded by said perimeter portion, wherein said central portion is welded to said perimeter portion.
On the other hand, the claims of the ‘574 patent lack “said face insert having an inner portion adjacent said backing portion of said pocket, said face insert having an outer portion opposite said inner portion, said outer portion of said face insert having a protrusion around a perimeter of said outer portion, wherein said protrusion extends beyond a perimeter of said inner portion of said face insert”. Bissonnette teaches that a face insert may include a variable thickness portion in order to change the flexural thickness of the striking face (i.e., col. 2, lines 41-63). Note that Bissonnette teaches that striking faces may include inserts having uniform thickness or inserts having variable thickness (i.e., col. 1, lines 39-44; col. 2, lines 40-41; and col. 17, lines 54-60). With the central portion of the face insert in Bissonnette comprising a thickened portion, as illustrated in FIG. 9A, it can be said that Bissonnette teaches an insert having an inner portion with thickness (T1-T2A), and an outer portion, with thickness (T2A), and having a protrusion (i.e., generally shown near numeral 238 in FIG. 9A), with the protrusion extending beyond a perimeter of the inner portion. In view of the teaching in Bissonnette, 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 claimed club head in the ‘574 patent by providing an inner portion and an outer portion, with a protrusion extending beyond a perimeter of the inner portion, with the arrangement of an inner portion and an outer portion essentially providing a variable thickness face insert, with there being a reasonable expectation of success that having a face insert with an inner portion and an outer portion would have enabled the skilled artisan to more selectively control the compliance of the striking face for improved club head performance.
As for the remaining limitations in claim 1, including the details of the striking face, body portion, pocket, undercut, protrusion, face insert attached to the pocket, and first and second materials of diverse density, see claim 8 of the ‘574 patent.
Claims 2-3 and 5-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,433,574 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”) and also in view of USPN 8,517,859 to Golden et al (hereinafter referred to as “Golden”).
As to claims 2-3, the claimed invention of the ‘574 patent does not require the specific combination of the compositions for the first and second materials. However, it is noted that the claims of the ‘574 patent require carbon fiber composite material for the face insert (i.e., see claims 7 and 20 of the ‘574 patent). Golden teaches a club head body, which includes a pocket, and formed of a metal material such as titanium, while the face insert may be formed of a second material such as carbon composite (i.e., see claim 1 of the Golden patent along with col. 16, lines 29-52; and col. 18, lines 4-10 exploring the use of titanium and carbon fiber composite materials). The combination of metal and composite materials adjacent the front surface of the club head in Golden provides structural stability while reducing the overall weight of the club head. In view of the teaching in Golden, 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 claimed invention of the ‘574 patent to include a combination of metal such as titanium for the first material and composite such as carbon fiber material for the second material, the motivation being to provide a sufficiently strong face impact surface with less weight for improved club head performance.
As to claims 6-7, Golden shows it to be obvious to attach a face insert portion using a cure-type adhesive (i.e., col. 10, lines 9-50). The curing of the adhesive and the composite material for the face insert enables the pocket to be fully filled and enables a desired roll/bulge to be achieved during the curing process for the face insert. One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘574 patent to include curable adhesive for bonding the face insert within the pocket for better retention.
As to claims 5, 8 and 11, the claimed invention of the ‘574 patent recognizes a relationship between the thickness of the pocket, which is filled with a face insert, and the thickness of the backing portion, but does not require the particular dimensions set forth in claims 5, 8 and 11. Here, col. 8, line 52 through col. 9, line 51 in Golden outlines the thickness of each of the face insert as well as the pocket and backing portion. Here, the teaching in Golden combined with the interpretation of the modified face insert to include inner and outer portions and a protrusion, as explained under claim 1 above, would have rendered it obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed device of the ‘574 patent to include the specific dimensions for the thickness of the protrusion, the thickness of the inner portion of the face insert, the thickness of the outer portion of the face insert and the thickness of the backing portion to provide the best balance between face durability and weight without compromising club head performance. Optimizing the dimensions would have involved obvious 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 claim 9, see claims 4-5 and 18-19 of the ‘574 patent.
As to claim 10, see claims 1-3 and 15-17 of the ‘574 patent.
As to claim 12, see claims 1, 8 and 14 of the ‘574 patent. The specific incorporation of a “dovetail” shaped protrusion and a “dovetail” shaped undercut would have involved an obvious change in shape of the mating undercut and protrusion for better retention. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.) See MPEP 2144.
As to claim 13, see claims 10-11 of the ‘574 patent, which detail an angle of between 40 degrees and 65 degrees.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,433,574 in view of USPN 6,605,007 to Bissonnette et al (hereinafter referred to as “Bissonnette”) and also in view of USPN 8,517,859 to Golden et al (hereinafter referred to as “Golden”) and also in view of USPN 10,350,468 to Hebreo.
As to claim 4, the claimed invention of the ‘574 patent, as modified by Bissonnette and Golden, lacks “a gap between said protrusion of said face insert and a rearward surface of said undercut”. Here, Hebreo is cited to show that it is old in the art to provide a spacing or gap rearward of the striking face, and between the perimeter of the striking face and the supporting structure rearward of the striking face perimeter (i.e., see gap 660 and FIGS. 10A, 10B). The gap in Hebreo clearly provides for added compliance of the striking face during impact with a golf ball. In view of the teaching in Hebreo, 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 claimed club head in the ‘574 patent by providing a gap between said protrusion of said face insert and a rearward surface of said undercut, the motivation being to enable the striking face to exhibit added resilience upon impact with a golf ball so as to improve the overall performance of the club head.
Observations on Obviousness-Type Double Patenting
Applicant is respectfully urged to maintain a clear line of demarcation between the instant claim set and the claims in the related applications and prior patents listed herein below. While no double patenting rejections based on the copending applications and prior patents listed below are currently being made of record, maintaining a clear distinction between the instant claims and the claims of each of the related applications and prior patents listed here will help to reduce the likelihood of obviousness-type double patenting concerns arising during later prosecution in the instant case. It is clear that the applicant, who in this case is most familiar with the language, content and prosecution history of the related applications and prior patents identified here, is best equipped to recognize any potential double patenting concerns and should therefore make an effort to amend the instant claims or file appropriate terminal disclaimers. The applicant is respectfully requested to provide further comment as to whether the applicant believes that the claims of the applications and prior patents listed here conflict, or do not conflict, with the claims of the instant application.
USPNs: 8221261; 8517859; 9033818; 8496542; 8864602; 9199137; 8758161; 8876629; 9192826; 9370698; 10357901; 9717960; 10143898; 11318643; 11511464; 11498246; 12005617; 12409585 and 10940617.
United States Application Serial Nos: 17/982,295
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fig. 3 in Golden (‘803);
Figs. 8 and 9 in Boyd show a dovetail connection; and
Chao (‘800) shows a composite striking face insert.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711