DETAILED ACTION
This Office action is responsive to communication received 03/02/2026 – Request for Continued Examination (RCE), Petition and IDS.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-18 remain pending.
Status of Petition
The petition for unintentional delay of a priority claim under 37 CFR §1.78(e), received 03/02/2026, has been dismissed. See the decision, mailed 06/04/2026.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 03/02/2026 has been entered.
Allowable Subject Matter
The previous indicated allowability of claims 1-18 has been withdrawn in view of the newly discovered reference to USPN 5,494,281 to Chen, which was cited by the applicant and received with the IDS of 03/02/2026, and which was submitted concurrently with the filing of an RCE. In combination with Chen, the further, newly discovered references to US PUBS 2005/0164800 to Wood et al and US PUBS 2006/0252586 to Nguyen along with US PUBS 2012/0184394 to Boyd et al (already of record) form the basis of various rejections set forth, below.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2, 4-7 and 10-12 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2005/0164800 to Wood et al (hereinafter referred to as “Wood”) in view of USPN 5,494,281 to Chen and also in view of US PUBS 2006/0252586 to Nguyen.
As to claims 1, 11 and 17, see annotated FIG. 2, hereinbelow, wherein Wood shows a golf club head comprising: a crown, a sole, a face comprising a face insert; wherein a crown intersection (24) provides a smooth transition between the face and the crown and refers to a crown radius of the golf club head; wherein a sole intersection (26) comprises a smooth transition between the face and the sole and refers to a lead edge radius of the golf club head; wherein a face portion is limited to the face insert (22), and comprises only a portion of the face (i.e., paragraph [0016]); the face portion comprising a first material having a first yield strength and wherein the first material comprises a first alloy (i.e., the first material of the face comprises 465 steel, which clearly includes a yield strength). Wood further shows a second material comprising a second alloy with a second yield strength (i.e., the body portion includes 17-4 stainless steel, which clearly includes a yield strength; see paragraph [0016]).
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Wood lacks an explicit disclosure of “the first yield strength being approximately 1551 megapascals; and a support body comprising a second material having a second yield strength, the support body being configured to be coupled to the face portion, the second yield strength being approximately 1138 megapascals; wherein the support body further comprises a face support body comprising a remaining portion of the face; and wherein the support body completely surrounds a perimeter edge of the face portion; wherein: … and a yield strength ratio of the second yield strength to the first yield strength is greater than or equal to approximately 0.50”.
Chen shows it to be old in the art to provide “a support body comprising a second material having a second yield strength, the support body being configured to be coupled to the face portion, … wherein the support body further comprises a face support body comprising a remaining portion of the face; and wherein the support body completely surrounds a perimeter edge of the face portion”. The support body comprises a portion of the peripheral ledge structure that surrounds the face insert and provides a seat or backing for a rear portion of the face insert around the peripheral portion of the face insert. The support portion, which is a part of the casing that defines the club head crown and sole, is attached to the face portion (i.e., col. 2, lines 23-27). Also, a portion of the face support body faces a forward direction and thus may be understood as comprising a remaining portion of the face surrounding a perimeter edge of the face insert. Note annotated FIG. 1 below:
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In view of the teaching in Chen, 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 Wood by including a support body that completely surrounds the perimeter edge of the face portion in order to provide a more secure attachment between the face portion and the remainder of the club head body. The ledge structure depicted by Chen would have enabled the face insert in Wood to be properly seated in the forward portion of the opening in the main club head body. Using the Chen teaching, one would have realized that portions of both the crown and sole, proximate the face portion, would have served as a support body for the face portion and that the material of the main club head body including the crown and the sole would have included a second material that would have clearly included a yield strength.
Regarding the claimed yield strength for the first and second materials, 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 achieved a desired yield strength for the first and second materials in the modified Wood golf club head by simply taking advantage of conventional heat treating processes, since the skilled artisan in the metallurgical and manufacturing arts would have been well aware of the effects of heat treatments on metals and alloys for the purpose of varying the parameters of the metals or alloys. There would have been nothing unexpected about altering the yield strength through a heat treatment process that is routinely used in manufacturing. For example, the use of heating and quenching steps as part of a heat treatment process for enhancing yield strength is old in the sporting goods art, as evidenced by the teaching reference to Nguyen, which shows it to be commonly known to use a heat treatment operation to provide exceptionally high yield strength in a metal or alloy (i.e., paragraph [0061]). Also, where the general conditions of the claim are disclosed, as is the case here (i.e., consider that Wood uses 17-4 stainless steel, which is a second material that is disclosed by the applicant in paragraph [0089] of the specification; and Wood uses a high strength 465 steel that is similar to carpenter grade 455 steel, which is a first material disclosed by the applicant in paragraph [0063] of the specification), discovering the optimum or workable ranges for the yield strength would have involved only routine skill in the art. It is not inventive to discover the optimum or workable ranges by routine experimentation. Also, the claimed values for the first yield strength and the second yield strength are not deemed critical. The claimed values do not produce any new and unexpected results which are different in kind and not merely in degree from what the prior art shows or suggests (i.e., the prior art to Wood shows that the face portion comprises a 465 steel, which would likely exhibit a higher yield strength than the 17-4 steel material used for the remainder of the club head body). Considering the teachings of Wood, as modified by Chen, along with the teachings of Nguyen, and further considering the above reasoning, any further variations in the value for the first yield strength and the second yield strength in order to vary the performance characteristics of the first alloy and the second alloy, respectively, and thus enhance the performance characteristics of the club head in Wood, would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to achieve through routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Incorporating the observations hereinabove regarding the claimed yield strength for the first and second materials, it is clear that the claimed ratio of the second yield strength to the first yield strength would likewise have depended upon the specific material selected for each of the first and second materials, with a yield strength of each material being selected commensurate with the needs of the club head designer. Thus, the claimed ratio would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention through routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 2, 12 and 18, again incorporating the observations hereinabove regarding the claimed yield strength for the first and second materials, it is clear that the claimed ratio of the second yield strength to the first yield strength would likewise have depended upon the specific material selections for each of the first and second materials, with a yield strength of each material being selected commensurate with the needs of the club head designer. As such, the claimed ratio would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention through routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 4 and 14, Wood discloses that the second material includes 17-4 stainless steel (i.e., see paragraph [0016]).
As to claims 5 and 15, Wood shows that the face portion (i.e., the insert 22) consists essentially of the first material, namely the 465 steel (i.e., see paragraph [0016] and FIG. 1).
As to claims 6, 7 and 16, as noted under claim 1 supra and as identified in the annotated FIG. 1 of Chen hereinabove, it is clear that the support body identified in Chen comprises a crown support body; and the crown comprises the crown support body; and the crown support body consists essentially of the second material, as required by claims 6 and 16, and that the support body comprises a sole support body; and the sole comprises the sole support body; and the sole support body consists essentially of the second material, as required by claim 7. In view of the teachings in Chen, 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 Wood to include the structure required by claims 6, 7 and 16 to provide a more secure attachment between the face portion and the remainder of the club head body.
As to claim 10, Wood shows a wood-type golf club head.
Claims 3, 8, 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2005/0164800 to Wood et al (hereinafter referred to as “Wood”) in view of USPN 5,494,281 to Chen and also in view of US PUBS 2006/0252586 to Nguyen and also in view of US PUBS 2012/0184394 to Boyd et al (hereinafter referred to as “Boyd”).
As to claims 3 and 13, Wood, as modified by Chen and Nguyen, lacks an explicit disclosure of “carpenter grade 455 steel” (claim 3) and “carpenter grade 475 steel” (claim 13) for the specific, claimed material for the first material. Instead, Wood discloses 465 steel. Here, Boyd notes that a striking face portion may include 455 stainless steel or other materials, noting that paragraph [0115] in Boyd states:
“…the single piece head and/or the body member may be made from 17-4 stainless steel, and the face plate member may be formed of 455 or 465 stainless steel, or other materials may be used.” (emphasis added).
In view of the teaching in Boyd, 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 prior art golf club head in Wood by selecting another known high strength steel material such as 455 steel or even 475 steel, as the substitution of one high strength steel material for another high strength steel material would have involved an obvious selection of materials. See MPEP 2144.07 which states: “[T]he 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) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).”
As to claims 8 and 9, Wood, as modified by Chen and Nguyen, lacks an explicit disclosure of “the face portion comprises a face center, and a thickness of the face portion at the face center is less than or equal to approximately 0.2540 centimeter” (claim 8) and “the thickness of the face portion at the face center is less than or equal to approximately 0.1905 centimeter” (claim 9). Here, Boyd teaches that the thickness of the face portion at a center of the face portion is 1.9 mm (i.e., see paragraph [0101]). Clearly, a change in the thickness of the impact face would have affected the compliance of the face and would have altered the coefficient of restitution, which would have changed the amount of energy imparted to a struck golf ball. A club head designer would also have recognized that the impact face must be dimensioned with a thickness sufficient enough to prevent failure of the face under impact, while also accounting for the weight added or subtracted from the front portion of the golf club head when a change is made in the thickness of the face. In view of the teaching in Boyd and the above reasoning, 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 face portion in the club head in Wood by including a face thickness at the center of the impact face equal to approximately 0.2540 centimeter, or less than or equal to approximately 0.1905 centimeter, with there being a reasonable expectation of success that appropriately sizing the thickness of the face would have maintained the structural integrity of the impact portion while providing a measurable amount of flexure for improved club head performance.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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