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
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected embodiment, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/17/25.
With respect to the embodiments of figs. 26-33, such call for the combination of a stainless steel “ringshell’ with a crown opening and sole opening [00116]. It is disclosed that use of heavy stainless steel for larger drivers are enabled by this design [00117].
Claim 18 is directed to merely a composite body club with a striking face requiring no stainless ring shell or openings. Instead, the claim is directed to properties of density, size and center of gravity of a club head having a composite body which is considered distinct from the previously recited claims. While applicant considers such to be “generic”, the examiner does not agree as it is directed more generally to composite clubs which are not the same as in the previous claims that recite the structural combination to be in a body of a stainless steel ringshell. As such, claims 18-20 have been withdrawn as being directed to a non-elected invention.
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 1-7 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.
In the previous office action;
“The scope of claims 1 and 13 are unclear where one cannot determine that structural relationship between the steel ring and the aft body portion. It is not clear if the steel ring forms part of the body portion or if they are two separate elements.”
Applicant has amended the claims to recite that the ring and crown and sole sub-shell “define” an aft body portion. However, merely defining does not sufficiently set forth the structural relationship. Most broadly “defining” suggest that such are merely some part of the aft body portion. Even in light of the specification the “ring shell” is embodied as 2612. In fig. 26 such appears to be part of the face and maybe the crown as shown in fig. 29. Fig. 28 suggest that such is part of the sole. Here it is not clear if “ring” is merely descriptive of the shell or something structurally more. It appears that the ring shell is descriptive of the stainless aft body of the club head by which the crown opening and sole opening are formed. However, it is not clear from any recitation in the claim how such elements interrelated to form the aft body portion behind the striking face as now recited in the claim. As such, this rejection remains.
It is further rejected in the previous office action;
“Further with respect to the reference to dimensional qualities of the thickness of the sub-shells, no structures are recited such that one can clearly determine how such dimensions are defined to be measured. For example, a three-dimensional element such as a subshell can have 3 dimensions that can be defined as a thickness.”
Applicant argues that one skilled in the art would recognize that such a thickness with respect to a “ shell-type structure” would refer to “wall thickness” and points to fig. 28. The examiner does not agree since no structure with respect to the crown or sole is positively recited with respect to it shape. The term “sub-shell” is most broadly descriptive at best. Where the claims define the limits of the invention, it must be clearly recited which dimension of the element and its shape the limitation to a “thickness” is attempting to limit. It is not appropriate to import the specification or any of the figures into the claim. As such this portion of the rejection remains.
Applicant’s remarks with respect to the center of gravity measurement, “in a top side to bottom side direction” is noted and this portion of the grounds for rejection has not been sustained.
Applicant’s amendments and remarks with respect to the recite ratios are noted and this portion of the grounds for rejection has not been sustained.
Claim Rejections - 35 USC § 103
Claim(s) 1-17 and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greaney et al. 11,219,803 in view of Nielson et al. 10,035,049 and further in view of Larsen et al. 2020/0023247 and further in view of Greaney et al. 2021/0060392.
`As set forth in the previous office action;
“As to claims 1 and 13, Greaney ‘803 shows a golf club head with the clearly anticipated structures constructed with steel ring shell having element 348 as shown in fig. 14A shell having a striking face portion 318 and an aft body portion 332 behind the striking face portion and extending to the back side, wherein the striking face portion defines a face center 323 and a crown and sole opening as shown in fig. 17. In the open language of the claim Greaney 348 can be considered to be a sole opening located on a toe-side of the aft body. He does not discuss size of such openings. He further only discusses the use of steel (col. 41, ln. 19). However, Nielson teaches in similarly constructed clubs that the body can be made of stainless steel (col. 39, ln. 46). To have selected a material such as stainless steel suitable for a particular purpose in a club like that of Greaney has been held obvious. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)
The concept of designing a golf club using materials and their thicknesses to “discretionary mass” (col. 41, ln. 9) to achieve desired properties with respect to moments of inertia and center of gravity is considered known and well understood in the art of golf where computer modeling is used routinely to optimize expected results. With respect to the thickness of the crown and sole inserts, Nielson teaches that such variables as thickness may be adjusted, “to enhance durability, acoustic properties or other properties…” (col. 17, ln. 27). While Greaney inherently as a thickness to his sub-shells, he does not discuss them directly. To have selected a thickness within the claimed range of .3-.9mm for the crown and .5-1.5mm for the sole would have been an obvious matter of design choice to select that amount of discretionary mass and strength as desired by the design of the club.
Similarly, the density of the shell is considered a property of the material selected and a selection with respect to the strength and weight requirements of the design of the club. Where Greaney shows the use of carbon fiber composite having known density range between 1.4-1.8 g/cm^3, the density for the crown and sole sub-shells is considered shown.
Neither reference discusses the size of the openings. From Larson we see that such constructed clubs have a crown of 9000mm^2 [0114] within the range claimed. As such, the crown area is considered fairly taught. Where the sole sub-shell in Greaney toe side is less in size, such is not discussed.
In such constructed clubs, Chao teaches that, “the size and shape of each opening may vary from one golf club to another, and are typically selected to allow the size of the opening to be as large as possible without compromising the structural integrity of the club head.” The relative size of the openings are taught as a results effective variable that can be adjusted in a club design to effect the moments of inertia, center of gravity and durability of the club head.
Lastly, Greaney at col. 18, ln. 63 teaches the CG to be -10 to 5mm from the face center and between 15-50mm teaching that it is known to design the placement of the CG within the claimed ranges of less than about 32.5 mm behind the face center in a front side to back side direction, and greater than about 4.8 mm below the face center in a top side to bottom side direction.
Claim 2 is considered shown by Greaney that discloses a volume up to 600cc at col. 7, ln. 38 but he does not discuss is ring element in terms of mass. Nielson teaches how to adjust the various alternative combinations of masses as a variable to affect the mass moments of inertia. Such is done by the selection of materials such as steel, stainless steel or non-metallic material as discussed at (col. 39, ln. 46). To have selected a material weight in mass of the ring shell of Greaney to be about 130 grams to about 170 grams would have been obvious in order to have optimized the moments of inertia and location of the center of gravity as desired by the design.
Claims 3- 11 and 14-17 recite dimensional sizes of the club within ranges related to each other such as the area of the sub-shells relative to their thickness, density relative to thickness and the material density selected relative to thicknesses, and the thickness of the sole relative to the thickness of the crown. Here, the scope of the claims are considered most broadly nothing more than claiming a range of materials, thicknesses and densities that are defined relative to other features of the club. The “ratios” need not be directly discussed by the applied art where such are inherently present even if not discussed in the same context as now being drafted in the claims. A review of the specification does not show any discovery or “inventive” in the ratios themselves that would advance the art of golf. Hence, it fails to show any such designs in material selection, size or thickness to be critical to any particular problem or any unexpected results. Instead, one skilled in the are working with computer modeling looking to optimize the materials, size and dimensions of a club like that of Greaney would have found such to be obvious for a particular design to adjust the moments of inertia, location of the CG and the durability of the designed club as desired. [00127] – [00140] state that such rations are exemplary and “preferable” and as such are not shown to be critical to solving any particular problem or producing any unexpected results.
The rational to designing a club using the materials and dimensions to optimize, balance and achieve desired design results such as strength, MOI, CG and vibrations is found "[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). In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art." A review of the specification shows nothing critical to the materials, sizes, thicknesses and densities of the combination of elements shown by the prior art. Here the club performs in striking the ball in substantially the same way with expected results. While it may be true that a club that flexes or has a different location of its CG will perform differently, such performance differences are understood in the art or easily modeled using computers to optimize the results for a particular club intended for a particular use for a particular type of golfer.”
With respect to the obviousness rejection, applicant argues the intended results of his invention with respect to the prior art as to how each achieve the desired C and inertia properties as oppose to the structural limitation recited in the claims.
With respect to the structural limitations in the claims, applicant argues that Greaney '803 does not disclose a ring shell structure in which the ring shell extends into the heel side of the sole. This is an amended limitation. However, such does appear to be shown as in his fig. 25 annotated below;
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Greaney’s addition elements he uses to control and adjust the discretional weight within his club head meet the open claim language in which the claim is drafted. Nielson is relied upon to teach the use of stainless steel in the construction of club heads as Greaney. Whether or not he teaches a symmetric sole configuration is not material to the contributions in the art which he is being relied upon.
Applicant unclearly argues that the Examiner has not identified features missing from Greaney '803 that are taught by Larsen. The rejection is clear that Larsen teaches the size of the crown opening in terms of area is missing from Greaney and Larsen teaches that such a size opening is not new.
Applicant argues that Greaney '392 does not teach or suggest the claimed asymmetric sole configuration in which the sole opening is located only on the toe- side with the ring shell extending into the heel side of the sole. Such a limitation does not appear in the claims and as such cannot be relied upon to distinguish over the applied art.
Lastly, applicant argues that Greaney does not show fiber reinforced polymer as recited in new claim 21. The examiner does not find this to be true where such composites appear shown starting at col. 2, ln. 66.
Applicant argues that Greaney show two separate sole openings. However, the instant claims merely call for, “a sole opening” to which two sole openings meet the open language construction of the claims. As such, these remarks fail to show how the limitation in the claims clearly distinguish over the applied art. As to the principle operation, the appear to be the same in each club by which a metal framed body (dubbed a ring shell by the instant claims) form openings which are closed by composite shells to adjust the CG and moments in the design of the club head. Here the principle operation of the club head to strike a golf ball remains the same and is not destroyed by any selection of material or size of the crown area that is suggested to be modified by the applied art.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here it is clear and admitted by applicant that stainless materials are known for the construction of club heads, Greaney shows his ring shell so that it extends into the heel side of the sole, Greaney shows at least a single sole opening and the sizes and dimensions would have been obvious in order to arrive at the desired CG and momentum properties. Computer modeling allows one to easily optimize, predict and adjust the discretionary weight within a club head to achieve the desired properties for a particular club for its intended purposes.
Applicant argues that his invention is not merely a change in size and proportion. He argues that his materials and ring shell achieve center of gravity and mass properties disclosed. It is well known in golf how to use materials to adjust the CG and momentums in a club head and how each affects the performance of the club when a ball is struck. He argues that his CG is more forward and downward. This removing weight from the rear and upsides of the club head have that known effect. This is not new.
And further in view of Hoffman et al. 10,086,240.
As to new claim 22, Nielson teaches at col. 39, ln. 46 17-4 stainless steel for use in the manufacture shell rings in golf clubs and that such may be cast at col. 16, ln. 36.
New claim 23 is directed to the relative thicknesses of the crown and sole. Greaney teaches at col. 41, ln. 8-30 the relationship of the body materials to the crown and sole thickness with respect to discretionary mass.
To have optimized such to freed up discretionary mass to control the location of the CG while taking into consideration the more durable thickness needs of the sole due to it impact with the ground would have been an obvious matter of design choice.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Nicholas Weiss at (571)270-1775.
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“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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