DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 3/20/26. Claims 1-13 are cancelled; claims 14 and 18 are amended; claims 14-18 are pending.
Priority
2. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the 35 U.S.C. 112(a). See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed application, Application No. 17/473874, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for claims 14-18 of this application. Specifically, the limitation in claim 14 requiring “a fourth material having a fourth density … disposed in the plurality of recesses of the insert” is not supported by the parent application.
Claim Rejections - 35 USC § 103
3. 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 of this title, 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.
4. Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Clarke et al. (US Pub. No. 2020/0298077) in view of Best et al. (US Pat. No. 6,045,456).
With respect to claims 14-15 and 17, Clarke et al. teaches a golf club head 100 comprising: a face plate 155, a body 110, and an insert 240; the body 110 comprising an upper portion 108, a lower portion 109, a sole 107, a rear 103, and a top rail 106; wherein: the sole 107 rests on a ground plane; the rear 103 comprises an inflection seam 130; the lower portion 109 is bounded by the inflection seam 130 and the sole 107; the face plate 155, the sole 107, the rear 103, and the top rail 106 enclose a cavity 120 (paragraph [0087]); the insert 240 is received in the cavity 120 (paragraph [0136]); the insert 240 comprises an insert upper portion 250 configured to be received into the upper portion 108 of the body 110; the insert 240 comprises an insert lower portion 260 configured to be received into the lower portion 109 of the body 110 Id; the insert 240 comprises a front surface 241, a rear surface 242, a perimeter 244, a sole surface, and an insert inflection seam 245 that separates the insert upper portion 250 from the insert lower portion 260 (paragraphs [0136]-[0137]); the insert upper portion 250 and the insert lower portion 260 are integrally formed at the insert inflection seam 235 (Fig’s 10-12); the insert 240 comprises a plurality of recesses 269 on the front surface 241 extending rearwardly; the plurality of recesses 269 are located on the insert lower portion 260; each recess 266 in the plurality of recess are separated from each adjacent recess by a rib 268 (Fig.’s 10-12; paragraph [0140]); and the perimeter 244 of the insert 240 lies flush against walls of the cavity 120 (paragraph [0139]).
Clarke et al. further teaches wherein the face plate 155 comprises a first material of a first density, wherein: the first density has a density ranging from 2.6 and 8.7 g/cc (paragraph [0186]); the body 110 comprises a second material of a second density, the second density is between 7.7 and 8.1 g/cc (paragraph [0175]). At paragraph [0178], Clark et al. teaches wherein insert 140 comprises a third material of a third density, the third density is between 2.4 g/cc and 5 g/cc; (paragraph [0139]), wherein the third density less than the first and second densities (paragraph [0173]); and wherein the insert fills a percentage of a volume of the cavity, selected from the group of ranges consisting of: 80% to 85%, 85% to 90%, 90% to 95%, 95% to 100%, and 80% to 90%. Admittedly, Clark does not expressly state that the materials for insert 140 are applicable to insert 240, or wherein the insert 240 fills the cavity in the same amount as insert 140. However, at person ordinary skill in the art at the time of applicant’s effective filing would have found it obvious to select the third material for insert 240 using the third material cited for insert 140, and fill the cavity with the insert 240 an amount with which insert 140 fills the cavity. The rationale to combine is to distribute weight to peripheral portions of the body (i.e. improve MOI/forgiveness), while also providing strength and flexibility to the club.
Clarke et al. does not expressly teach a fourth material having a fourth density disposed in the plurality of recesses of the insert. However, analogous art reference Best teaches that it is known to provide a dampening member 36 having a fourth density within a recess 32 that opens to a rearward face of a striking plate, wherein the cavity extends rearwardly (Fig. 3; column 2, lines 45-67). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to fill the recesses 269 of the insert 240 of Clarke et al. with a dampening material as taught in Best. The rationale to combine is to dampen vibrations, thus improving the feel of the golf club. The proposed modification has a reasonable expectation of success as Best contemplates the use of low-density materials for the dampener Id. As such, the insert 240 will remain light weight. Regarding the requirement that the fourth density is between 0.5 g/cc and 1.3 g/cc, Best does not expressly disclose the precise density of the low density dampeners. However, 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), MPEP 2144.05. In the instant case, one having ordinary skill in the art would recognize that density is a result effective variable for the weight distribution and dampening effect. Moroever, applicant’s specification fails to provide criticality to the claimed range. One ordinary skill in the art would have found it obvious to select an optimal density for the fourth material, including within the claimed ranges, from routine experimentation. The rationale to optimize is to maintain a low weight of the insert, while also dampening vibrations to improve the feel of the club.
With respect to claim 16, Clarke et al teaches wherein: the insert weighs less than a similar insert lacking the one or more recesses by a mass selected from the group consisting of: between 5 and 6 grams, between 5.5 and 6.5 grams, between 6 and 7 grams, between 6.5 and 7.5 grams, between 7 and 8 grams, between 7.5 and 8.5 grams, between 8 and 9 grams, between 8.5 and 9.5 grams, and between 9 and 10 grams (paragraph [0142]).
With respect to claim 18, Clarke et al teaches: a heel and a toe; an x-axis, extending in a heel-to-toe direction, parallel to the face plate, and coincident with a center of gravity of the golf club head; a y-axis, orthogonal to the ground plane and coincident with the center of gravity; wherein: a moment of inertia, Ixx, measured about the x-axis ranges between 78 gram square inches and 120 gram square inches; and a moment of inertia, Iyy, measured about the y-axis ranges between 310 gram square inches and 466 gram square inches (paragraph [0267])
Response to Arguments
5. Applicant's arguments filed 6/25/26 have been fully considered but they are not persuasive.
Applicant correctly notes that the rejection under 35 USC 103 using primary reference Clarke et al. (US Pub. No. 2020/0298077) would be in error if the claims are entitled to parent application 17/473874. Thus, the entire issue is whether the claim 14 limitation of “a fourth material having a fourth density is disposed in the plurality of recesses of the insert” is supported by 17/473874. Examiner maintains this claim element is not supported.
Applicant cites to paragraphs [00115], [00116], [0121], [0234], [0235] and [0267] of 17/473874 as providing the requisite support. However, these paragraphs fail to describe any teaching pertaining to the plurality of recesses of the insert. Examiner emphasizes that the recesses are specifically required to be “located on the insert lower portion” and on “the front surface (of the insert) extending rearwardly”. The fourth material having a fourth density is specifically required to be “disposed in the plurality of recesses”. This is shown in Fig 69 of the present application, but not 17/473874. Applicant argues that the parent application teaches wherein the insert comprises multiple materials that can be arranged in different orientations. Examiner agrees that the parent application teaches a multi material insert, including a fourth material. But the claims require the fourth material to be “disposed in the plurality of recesses of the insert”. This is not taught in 17/473874; Clarke et al. remains prior art.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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