DETAILED ACTION
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 .
Claim Rejections - 35 USC § 112
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 2-6, 10-14, and 16-18 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.
Claim 2 lines 6-9, claim 10 lines 34-37, and claim 16 lines 6-9 recite “disposed on a butt side with respect to the second region and that is not present in the second region.” Since the second region is at the butt end, these recitations do not make sense. Presumably applicant intended to claim these elements are on a butt side in the second region, but are not present in the first region, or similar. Appropriate correction is required.
It is unclear what is attempting to be claimed in claims 6, 12, and 18. These claims appear to just repeat different terms for the same item. It is unclear if this is intended to be a negative limitation, and what, specifically, this claim is attempting to further define. Appropriate correction / clarification is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Nakano (US Patent No. 10,086,245 B2).
In Reference to Claim 1
Nakano teaches (Claim 1) A golf club shaft being hollow, formed by a plurality of fiber reinforced resin layers, and comprising a tip end and a butt end (column 2 lines 56-62), wherein the golf club shaft has a weight of less than or equal to 50 g (column 22, table 8, 39 g), the golf club shaft has a flexural rigidity EI (N-m²) and a shaft wall thickness t (mm) at each position in an axial direction of the golf club shaft (fig. 8, column 21 table 3 shows EI values, and column 23 table 9 shows thicknesses), in a first region that extends from a position located 200 mm apart from the tip end to a position located 300 mm apart from the tip end, EI/t is greater than or equal to 10 and less than or equal to 40 (table 3 and fig. 8: at 250mm from tip EI is approximately 1.5kgf*m² which is 15.1N*m², table 9 shows thickness at the same location is .59mm, 15.1/.59 is approximately 25, within the claimed range), in a second region that extends from a position located 800 mm apart from the tip end to a position located 900 mm apart from the tip end, EI/t is greater than or equal to 45 and less than or equal to 80 (table 3 and fig. 8: at 850mm from tip EI is approximately 2.75kgf*m² which is 27N*m², table 9 shows thickness at the same location is .45mm, 27/.45 is approximately 60, within the claimed range), the fiber reinforced resin layers include straight layers (fig. 2, s1, s6, s8, s10, s11, s12, s13), a bias layer (fig. 2, one of items s2 or s4), and hoop layers (fig. 2, items s3, s5, s7, s9), the straight layers include a full length straight layer that is disposed over an entire length of the golf club shaft (one of items s6, s8, or s10) and a partial straight layer that is disposed in a part of the entire length of the golf club shaft (one of items s1, s11, s12 and s13), the hoop layers include a full length hoop layer that is disposed over the entire length of the golf club shaft (one of items s3, s7, and s9) and a partial hoop layer that is disposed in a part of the entire length of the golf club shaft (item s5), the partial hoop layer includes a specific butt hoop layer that is not present in the first region and that is disposed over an entirety of the second region (column 6 lines 50-63, length from butt end of this region can be 600mm, which would cover all of the claimed “second region” and would not reach to the “first region”), and the specific butt hoop layer has a thickness of greater than or equal to 0.05 mm (column 8 lines 35-38).
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.
Claims 1, 8, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano.
In Reference to Claim 1
As best understood by the examiner, all of the limitations of claim 1 are taught in Nakano as discussed above, since, the values disclosed at the club locations of Nakano fall within the claimed ranges.
In the event that applicant believes there is something more specific claimed in the rigidity over thickness ratio (EI/t) in claim 1 that is somehow not taught in Nakano, an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific rigidity to thickness ratio claimed simply as a matter of engineering design choice, since, it has been held that "where 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). Since the same general range of thicknesses and EI values are taught in Nakano (fig. 8, table 3, and table 9), and, since ratios within the claimed ranges are taught by applying these values in a ratio format, merely claiming a ratio that is more specific or slightly outside of these ranges would be an obvious matter of routine experimentation, and is not a patentable advance. Since Nakano teaches a wide range of EI values and thicknesses that reduce weight while providing sufficient stiffness, merely claiming values that are similar to, if not the same, as the disclosed values in Nakano that perform this same function is not a patentable advance.
In Reference to Claim 15
Nakano teaches (Claim 15) A golf club shaft being hollow, formed by a plurality of fiber reinforced resin layers, and comprising a tip end and a butt end (column 2 lines 56-62), wherein the golf club shaft has a weight of less than or equal to 50 g (column 22, table 8, 39 g), the golf club shaft has a flexural rigidity EI (N-m²) and a shaft wall thickness t (mm) at each position in an axial direction of the golf club shaft (fig. 8, column 21 table 3 shows EI values, and column 23 table 9 shows thicknesses), in a first region that extends from a position located 200 mm apart from the tip end to a position located 300 mm apart from the tip end, EI/t is greater than or equal to 10 and less than or equal to 40 (table 3 and fig. 8: at 250mm from tip EI is approximately 1.5kgf*m² which is 15.1N*m², table 9 shows thickness at the same location is .59mm, 15.1/.59 is approximately 25, within the claimed range), in a second region that extends from a position located 800 mm apart from the tip end to a position located 900 mm apart from the tip end, EI/t is greater than or equal to 45 and less than or equal to 80 (table 3 and fig. 8: at 850mm from tip EI is approximately 2.75kgf*m² which is 27N*m², table 9 shows thickness at the same location is .45mm, 27/.45 is approximately 60, within the claimed range), the fiber reinforced resin layers include straight layers (fig. 2, s1, s6, s8, s10, s11, s12, s13), a bias layer (fig. 2, one of items s2 or s4), and hoop layers (fig. 2, items s3, s5, s7, s9), the straight layers include a full length straight layer that is disposed over an entire length of the golf club shaft (one of items s6, s8, or s10) and a partial straight layer that is disposed in a part of the entire length of the golf club shaft (one of items s1, s11, s12 and s13), the hoop layers include a full length hoop layer that is disposed over the entire length of the golf club shaft (one of items s3, s7, and s9) and a partial hoop layer that is disposed in a part of the entire length of the golf club shaft (item s5), the partial hoop layer includes a specific butt hoop layer that is not present in the first region and that is disposed over an entirety of the second region (column 6 lines 50-63, length from butt end of this region can be 600mm, which would cover all of the claimed “second region” and would not reach to the “first region”), [].
Nakano fails to specifically teach the butt hoop layer is thicker than the full length hoop layer of claim 15.
However, Nakano teaches that adjusting the thickness of the butt hoop layer is contemplated for the purpose of making minor adjustments to the stiffness values of the shaft as well as for adjusting the center of gravity of the shaft (column 15 lines 1-14 and column 16 lines 1-9).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the butt hoop layer thicker than the full length hoop layer as a matter of engineering design choice, for the purpose of providing an optimum center of gravity or optimizing the stiffness values of the shaft as taught by Nakano, making the shaft more reliable, and more attractive to the users. The examiner further notes that it has been held that "where 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). Since the general conditions of adjusting the thickness of the butt hoop layer are taught in Nakano, merely making this layer slightly thicker or slightly thinner for the aforementioned purposes is an obvious matter of engineering design choice, and is not a patentable advance.
Additionally, as best understood by the examiner, all of the limitations regarding the EI/t ratio of claim 15 are taught in Nakano as discussed above, since, the values disclosed at the club locations of Nakano fall within the claimed ranges.
In the event that applicant believes there is something more specific claimed in the rigidity over thickness ratio (EI/t) in claim 1 that is somehow not taught in Nakano, an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific rigidity to thickness ratio claimed simply as a matter of engineering design choice, since, it has been held that "where 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). Since the same general range of thicknesses and EI values are taught in Nakano (fig. 8, table 3, and table 9), and, since ratios within the claimed ranges are taught by applying these values in a ratio format, merely claiming a ratio that is more specific or slightly outside of these ranges would be an obvious matter of routine experimentation, and is not a patentable advance. Since Nakano teaches a wide range of EI values and thicknesses that reduce weight while providing sufficient stiffness, merely claiming values that are similar to, if not the same, as the disclosed values in Nakano that perform this same function is not a patentable distinction.
In Reference to Claim 8
Nakano teaches all of claim 1 as discussed above.
Nakano fails to teach the feature of claim 8.
However, Nakano teaches that adjusting the thickness of the butt hoop layer is contemplated for the purpose of making minor adjustments to the stiffness values of the shaft as well as for adjusting the center of gravity of the shaft (column 15 lines 1-14 and column 16 lines 1-9).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the butt hoop layer thicker than the full length hoop layer as a matter of engineering design choice, for the purpose of providing an optimum center of gravity or optimizing the stiffness values of the shaft as taught by Nakano, making the shaft more reliable, and more attractive to the users. The examiner further notes that it has been held that "where 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). Since the general conditions of adjusting the thickness of the butt hoop layer are taught in Nakano, merely making this layer slightly thicker or slightly thinner for the aforementioned purposes is an obvious matter of engineering design choice, and is not a patentable advance.
Claims 2-6, 10-12, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano in view of Takasu et al. (US Patent No. 10,420,995).
In Reference to Claims 10 and 12
Nakano teaches (Claim 10) A golf club shaft being hollow, formed by a plurality of fiber reinforced resin layers, and comprising a tip end and a butt end (column 2 lines 56-62), wherein the golf club shaft has a weight of less than or equal to 50 g (column 22, table 8, 39 g), the golf club shaft has a flexural rigidity EI (N-m²) and a shaft wall thickness t (mm) at each position in an axial direction of the golf club shaft (fig. 8, column 21 table 3 shows EI values, and column 23 table 9 shows thicknesses), in a first region that extends from a position located 200 mm apart from the tip end to a position located 300 mm apart from the tip end, EI/t is greater than or equal to 10 and less than or equal to 40 (table 3 and fig. 8: at 250mm from tip EI is approximately 1.5kgf*m² which is 15.1N*m², table 9 shows thickness at the same location is .59mm, 15.1/.59 is approximately 25, within the claimed range), in a second region that extends from a position located 800 mm apart from the tip end to a position located 900 mm apart from the tip end, EI/t is greater than or equal to 45 and less than or equal to 80 (table 3 and fig. 8: at 850mm from tip EI is approximately 2.75kgf*m² which is 27N*m², table 9 shows thickness at the same location is .45mm, 27/.45 is approximately 60, within the claimed range), the fiber reinforced resin layers include straight layers (fig. 2, s1, s6, s8, s10, s11, s12, s13), a bias layer (fig. 2, one of items s2 or s4), and hoop layers (fig. 2, items s3, s5, s7, s9), the straight layers include a full length straight layer that is disposed over an entire length of the golf club shaft (one of items s6, s8, or s10) and a partial straight layer that is disposed in a part of the entire length of the golf club shaft (one of items s1, s11, s12 and s13), the hoop layers include a full length hoop layer that is disposed over the entire length of the golf club shaft (one of items s3, s7, and s9) and a partial hoop layer that is disposed in a part of the entire length of the golf club shaft (item s5), the partial hoop layer includes a specific butt hoop layer that is not present in the first region and that is disposed over an entirety of the second region (column 6 lines 50-63, length from butt end of this region can be 600mm, which would cover all of the claimed “second region” and would not reach to the “first region”), the partial straight layer includes a tip partial straight layer that is disposed in a tip portion of the golf club shaft (items s1, s11, s12, or s13), [];
(Claim 12) only the specific butt hoop layer is the partial hoop layer (item s5, fig. 2).
Nakano fails to teach an additional butt partial straight layer of claims 10 and 12.
Takasu teaches (Claim 10) a butt partial straight layer that is disposed in a butt portion of the golf club shaft, and the butt partial straight layer includes a specific butt straight layer that is disposed on a butt side with respect to the second region and that is not present in the second region (fig. 2, s7, column 12 lines 28-29, also note length of partial butt layer already taught in Nakano above; also note this is presumed to recite not present in the “first” region);
(Claim 12) wherein only the specific butt straight layer is the butt partial straight layer (item s7, fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the laminated golf club shaft of Nakano with the feature of an additional butt partial straight layer as taught by the laminated golf club shaft of Takasu for the purpose of adding further impact absorbing performance to the butt region of the club, improving hit feeling for a user as taught by Takasu (column 12 lines 4-21), making the club easier to use, more reliable, and more attractive to the users.
Additionally, as best understood by the examiner, all of the limitations regarding the EI/t ratio of claim 10 are taught in Nakano as discussed above, since, the values disclosed at the club locations of Nakano fall within the claimed ranges.
In the event that applicant believes there is something more specific claimed in the rigidity over thickness ratio (EI/t) in claim 1 that is somehow not taught in Nakano, an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific rigidity to thickness ratio claimed simply as a matter of engineering design choice, since, it has been held that "where 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). Since the same general range of thicknesses and EI values are taught in Nakano (fig. 8, table 3, and table 9), and, since ratios within the claimed ranges are taught by applying these values in a ratio format, merely claiming a ratio that is more specific or slightly outside of these ranges would be an obvious matter of routine experimentation, and is not a patentable advance. Since Nakano teaches a wide range of EI values and thicknesses that reduce weight while providing sufficient stiffness, merely claiming values that are similar to, if not the same, as the disclosed values in Nakano that perform this same function is not a patentable distinction.
In Reference to Claims 2 and 6
Nakano teaches all of claim 1 as discussed above.
Nakano further teaches (Claim 2) wherein the partial straight layer includes a tip partial straight layer that is disposed in a tip portion of the golf club shaft (any of items s1, s11, s12, or s13, fig. 2), [];
(Claim 6) only the specific butt hoop layer is the partial hoop layer (item s5, fig. 2).
Nakano fails to teach the additional butt partial straight layer of claims 2 and 6.
Takasu teaches (Claim 2) a butt partial straight layer that is disposed in a butt portion of the golf club shaft, and the butt partial straight layer includes a specific butt straight layer that is disposed on a butt side with respect to the second region and that is not present in the second region (fig. 2, s7, column 12 lines 28-29, also note length of partial butt layer already taught in Nakano above, also note this is presumed to recite not present in the “first” region);
(Claim 6) wherein only the specific butt straight layer is the butt partial straight layer (item s7, fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the laminated golf club shaft of Nakano with the feature of an additional butt partial straight layer as taught by the laminated golf club shaft of Takasu for the purpose of adding further impact absorbing performance to the butt region of the club, improving hit feeling for a user as taught by Takasu (column 12 lines 4-21), making the club easier to use, more reliable, and more attractive to the users.
In Reference to Claims 3-5
The modified device of Nakano teaches all of claims 1 and 2 as discussed above.
Nakano further teaches (Claim 5) wherein the tip partial straight layer includes a glass fiber reinforced layer that is reinforced with glass fibers, and the glass fiber reinforced layer is disposed on a tip side with respect to the first region and is not present in the first region (fig. 2, item s1, column 7 lines 9-20).
Nakano fails to teach the features of claims 3-4.
Takasu teaches (Claim 3) wherein the specific butt straight layer has a fiber elastic modulus of less than or equal to 10 t/mm² (table 2 line 1);
(Claim 4) wherein the specific butt straight layer is reinforced with glass fibers (column 12 lines 4-8).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the laminated golf club shaft of Nakano with the feature of a butt partial straight layer with glass fibers as taught by the laminated golf club shaft of Takasu for the purpose of adding further impact absorbing performance to the butt region of the club, improving hit feeling for a user as taught by Takasu (column 12 lines 4-21), making the club easier to use, more reliable, and more attractive to the users.
In Reference to Claim 11
The modified device of Nakano teaches all of claim 10 as discussed above.
Nakano fails to teach the feature of claim 11.
Takasu teaches (Claim 11) wherein the specific butt straight layer has a fiber elastic modulus of less than or equal to 10 t/mm² (table 2 line 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the laminated golf club shaft of Nakano with the feature of a butt partial straight layer with glass fibers with a low fiber elastic modulus as taught by the laminated golf club shaft of Takasu for the purpose of adding further impact absorbing performance to the butt region of the club, improving hit feeling for a user as taught by Takasu (column 12 lines 4-21), making the club easier to use, more reliable, and more attractive to the users.
In Reference to Claims 16-18
The modified device of Nakano teaches all of claim 15 as discussed above.
Nakano further teaches (Claim 16) wherein the partial straight layer includes a tip partial straight layer that is disposed in a tip portion of the golf club shaft (item s1, s11, s12, or s13, fig. 3);
(Claim 18) only the specific butt hoop layer is the partial hoop layer (item s5, fig. 2).
Nakano fails to teach the remaining features of claim 16 and 18 and the feature of claim 17.
Takasu teaches (Claim 16) a butt partial straight layer that is disposed in a butt portion of the golf club shaft, and the butt partial straight layer includes a specific butt straight layer that is disposed on a butt side with respect to the second region and that is not present in the second region (fig. 2, s7, column 12 lines 28-29, also note length of partial butt layer already taught in Nakano above, also note this is presumed to recite not present in the “first” region);
(Claim 17) wherein the specific butt straight layer has a fiber elastic modulus of less than or equal to 10 t/mm² (table 2 line 1);
(Claim 18) wherein only the specific butt straight layer is the butt partial straight layer (item s7, fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the laminated golf club shaft of Nakano with the feature of a butt partial straight layer with glass fibers with a low fiber elastic modulus as taught by the laminated golf club shaft of Takasu for the purpose of adding further impact absorbing performance to the butt region of the club, improving hit feeling for a user as taught by Takasu (column 12 lines 4-21), making the club easier to use, more reliable, and more attractive to the users.
Allowable Subject Matter
Claims 7, 9, 13, 14, 19, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Also see 112 issues above that would need to be overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711