DETAILED ACTION
Priority
For claims 1-6, 8, 9, 11, 12, and 18-20, the claims receive a priority date of 9/30/22 from this current application, because, at a minimum, the phrase “the thermoset material is cured” is first used in par. [0032] of this current application. Restated, both independent claims 1 and 12 claim “the thermoset material is cured” and thus all of the claims receive the same priority date.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4, 5, 8, 9, 11, 12, and 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant now claims in claims 1 and 12 that “the shelf includes a protruding section extending inward along a same plane as the shelf”. In the Remarks, submitted 10/15/25, applicant specifically cites to par. [00325] and Fig. 105 for providing support for this limitation (see Remarks, page 8). Respectfully submitted, it does not. Nowhere in par. [00325] does the paragraph talk about the “plane”. Nowhere in Fig. 105 is a “plane” depicted. Presumably, applicant’s argument is that this structure is inherent. As such, assuming arguendo that the Examiner has reached this rejection in error, applicant should at least more specifically state where they have support for the limitation. In addition, the language needs to be added to the specification (i.e. there is a specification objection for a lack of antecedent basis), and the “plane” should be added to the drawing (there is a drawing objection).
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 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.
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 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1).
Regarding claim 1, Ines discloses a golf club head comprising (Fig. 2B or Fig. 59): a striking face (Fig. 2B, proximate item 218 or Fig. 60); a periphery portion surrounding and extending rearwards from the striking face (Figs. 2B and 4A, being exemplary, or Fig. 59); a coordinate system centered at a center of gravity of the golf club head, the coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when the golf club head is in an address position at a prescribed loft and lie, an x- axis perpendicular to the y-axis and parallel to the striking face, extending towards a heel of the golf club head, and a z-axis, perpendicular to the y-axis and the x-axis and extending through the striking face (Fig. 6A and par. [0117]; also noting a coordinate system is obvious or inherent; see also Figs. 51-60; noting this obvious or inherent); a hosel configured to receive a shaft (Fig. 2B; clearly showing a hosel, or Fig. 59 clearly showing a hosel), the hosel located on a heel side of the golf club head, the heel side located opposite a toe side (Fig. 4A; noting a heel and toe side are obvious or inherent, or Fig. 59); wherein the striking face comprises a front surface configured to strike a golf ball and a rear surface opposite the front surface (Fig. 1B, Fig. 60, item 1106 being the damping element); a damping element comprising a front surface and a rear surface, the rear surface of the damping element opposite the front surface of the damping element (Fig. 1B, item 102; noting a front and rear side is inherent, or Fig. 60); wherein the front surface of the damping element is in contact with the rear surface of the striking face (Fig. 1B or Fig. 60); a shelf extending inward from the periphery portion (Fig. 51 and Fig. 60 below; noting the “periphery portion” is simply the extreme outside surface of the club head that “extends rearwards from the striking face”; see also pars. [0228]-[0231]): and a back cover attached to the shelf to enclose a cavity in the golf club head (Figs. 54 as seen in Figs. 59 and 60), wherein the shelf includes a protruding section extending inward along a same plane as the shelf (see annotated, Fig. 60 below); wherein the protruding section spans the cavity from a topline region of the shelf to a lower toe region of the shelf (see Fig. 51, reproduced below; item 1014; noting this is obvious and/or inherent as the protruding section runs from what can be considered a “topline region” to “a lower toe region”); wherein the striking face comprises a first portion having a constant thickness (Fig. 2B, proximate item 222, Fig. 60; noting the striking face is all one thickness); wherein the striking face comprises a plurality of scorelines having the same length on the striking face (Fig. 10; noting “plurality” only requires two); wherein the front surface of the damping element contacts the first portion of the striking face (Fig. 2B, item 202 in contact with the portion 222, or Fig. 60); wherein the front surface of the damping element comprises a geometric center (Fig. 10, item 743, or Fig. 60, item 1106; noting a geometric center is inherent), that the rear surface of the striking face includes an elastomer material (par. [0237]; the Examiner noting that “rubber” actually can be either a “thermoplastic” or “thermoset”). Regarding the above rejection, the rejection is given under a 103 rejection as the Examiner utilizes multiple embodiments within a single disclosure. The Court held in Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009) that combining various embodiments within a single disclosure does not take a “leap of inventiveness”. As such, it would have been obvious to a POSA at the time of filing that features from various embodiments could be combined because all the embodiments deal with a single invention: an iron club head utilizing a dampening system. It is noted that Ines does not specifically disclose a center face plane parallel to the y-axis and the z-axis, the center face plane located equidistant from a heel-most extent of the plurality of scorelines and a toe-most extent of the plurality of scorelines. However, in Fig. 10, Ines clearly discloses a plurality of scorelines that can be used to denote an imaginary “center face plane” that is equidistant from the ends of the scorelines (see Fig. 10, reproduced below; noting the bottom two scorelines can be used). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Ines to use a center face plane located equidistant from the extreme edges of the scorelines as taught and suggested by Ines because doing so would be common sense by applying an imaginary center face plane at the middle of the scorelines. Finally, it is noted that the Ines does not specifically disclose that the elastomer material is a thermoset material; wherein the thermoset material is cured to the rear surface of the striking face with a thickness between 0.1 mm and 4.0 mm; wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D. However, Snyder discloses a similar iron golf club wherein the rear surface of the striking face includes a thermoset material (Fig. 2D, item 220 and pars. [0043] and [0088]); wherein the thermoset material is cured to the rear surface of the striking face (par. [0061]) with a thickness between 0.1 mm and 4.0 mm (par. [0078]; noting 0.5 to 3.0 mm anticipates the claimed range); wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D (par. [0088]; noting 25 to 85 Shore D makes obvious the claimed range, or 35 to 45 Shore D anticipates the claimed range). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Ines to make the rear surface of the striking face includes a thermoset material; wherein the thermoset material is cured to the rear surface of the striking face with a thickness between 0.1 mm and 4.0 mm: and wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D as taught by Snyder because doing so would be use of a known technique (using a thermoset layer behind a striking face, the layer having thickness of 0.1 to 4.0 mm and a Shore D of 30 to 50 Shore D) to improve a similar product (a golf club iron with a striking face with an elastomer placed directly adjacent the rear surface of the striking face) in the same way (using a thermoset layer directly behind a striking face, the layer having thickness of 0.1 to 4.0 mm and a Shore D of 30 to 50 Shore D, the thermoset layer supporting the front face while allowing it to “more easily flex” while providing dampening – see Snyder: pars. [0033] and [0042]).
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Regarding claim 9, the combined Ines and Snyder disclose that the thermoset material has a hardness of 40 Shore D (Snyder: par. [0088]; noting 25 to 85 Shore D or 35 to 45 Shore D makes obvious the claimed value).
Claims 4, 5, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) and in further view of Issertell et al. (herein “Issertell”; US Pub. No. 2016/0193508 A1).
Regarding claim 4, the combined Ines and Snyder discloses that the geometric center of the front surface of the damping element is located a damping offset distance toeward from the center face plane (Ines: Fig. 10 above; noting toeward is obvious). It is noted that the combined Ines and Snyder does not specifically disclose that the damping offset distance is of 5 mm or less. However, Ines discloses that a SROL length may be 24 mm with the tendency of the geometric center of the damping element to be toe side of the center face plane (Fig. 10, above, and par. [0179]; noting the SROL is measured at 1 mm off the heel end of the scorelines). In addition, Issertell discloses that the scoreline length of a plurality of scorelines of a similar iron can be 40 mm (Fig. 8 and par. [0137]). Finally, the Examiner notes that if the scoreline length is equal to 40 mm, and SROL is equal to 24 mm, the damping offset distance would be (24-1 mm) – (40/2) = 3 mm (the distance being within the claimed range). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines and Snyder to use a scoreline length of 40 mm as taught by Issertell so that the damping offset would be between 5 mm or less because doing so would be a simple substitution of one element (using a scoreline length of 40 mm) for another (a golf club that would inherently have a scoreline length as determined by a plurality of scorelines) to obtain predictable results (using a scoreline length of 40 mm so that the center face plane would be at 20 mm, and the damping offset would be 3 mm).
Regarding claim 5, the combined Ines, Snyder, and Issertell disclose that the first portion of the striking face has a thickness greater than 1.5 mm and less than 2.5 mm (Ines: par. [0182]; noting “less than or equal to 2.2 mm” makes obvious the claimed range).
Regarding claim 12, Ines discloses a golf club head comprising (Fig. 2B): a striking face (Fig. 2B, proximate item 218); a periphery portion surrounding and extending rearwards from the striking face (Figs. 2B and 4A, being exemplary); a coordinate system centered at a center of gravity of the golf club head, the coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when the golf club head is in an address position at a prescribed loft and lie, an x- axis perpendicular to the y-axis and parallel to the striking face, extending towards a heel of the golf club head, and a z-axis, perpendicular to the y-axis and the x-axis and extending through the striking face (Fig. 6A and par. [0117]; also noting a coordinate system is obvious or inherent); a hosel configured to receive a shaft (Fig. 2B; clearly showing a hosel), the hosel located on a heel side of the golf club head, the heel side located opposite a toe side (Fig. 4A; noting a heel and toe side are obvious or inherent); wherein the striking face comprises a front surface configured to strike a golf ball and a rear surface opposite the front surface (Fig. 1B); a damping element comprising a front surface and a rear surface, the rear surface of the damping element opposite the front surface of the damping element (Fig. 1B, item 102; noting a front and rear side is inherent); wherein the front surface of the damping element is in contact with the rear surface of the striking face (Fig. 1B); wherein the striking face comprises a first portion having a constant thickness (Fig. 2B, proximate item 222); wherein the striking face comprises a plurality of scorelines having the same length on the striking face (Fig. 10; noting “plurality” only requires two); wherein the periphery portion comprises a sole extending rearwards from a bottom of the striking face, a topline extending rearwards from a top of the striking face, and a back portion extending upwards from the sole and spaced from the striking face (Figs. 5A and 5B being exemplary), wherein the striking face and the periphery portion form a cavity, wherein the damping element resides within the cavity (Figs. 2B, 5A, and 5B, being exemplary); a shelf extending inward from the periphery portion (Fig. 51 and pars. [0228]-[0231]); and a back cover attached to the shelf to enclose the cavity (Figs. 54 as seen in Figs. 59 and 60); wherein the shelf includes a protruding section extending inward along a same plane as the shelf (see annotated, Fig. 60 above); wherein the protruding section spans the cavity from a topline region of the shelf to a lower toe region of the shelf (see Fig. 51, reproduced above; item 1014; noting this is obvious and/or inherent as the protruding section runs from what can be considered a “topline region” to “a lower toe region”); wherein the front surface of the damping element contacts the first portion of the striking face (Fig. 2B, item 202 in contact with the portion 222); wherein the front surface of the damping element comprises a geometric center (Fig. 10), wherein the first portion of the striking face has a thickness greater than 1.5 mm and less than 2.5 mm (par. [0182]; noting “less than or equal to 2.2 mm” makes obvious the claimed range), that the rear surface of the striking face includes an elastomer material (par. [0237]; the Examiner noting that “rubber” actually can be either a “thermoplastic” or “thermoset”). Regarding the above rejection, the rejection is given under a 103 rejection as the Examiner utilizes multiple embodiments within a single disclosure. The Court held in Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009) that combining various embodiments within a single disclosure does not take a “leap of inventiveness”. As such, it would have been obvious to a POSA at the time of filing that features from various embodiments could be combined because all the embodiments deal with a single invention: an iron club head utilizing a dampening system. It is noted that the Ines does not specifically disclose that the elastomer material is a thermoset material; wherein the thermoset material is cured to the rear surface of the striking face with a thickness between 0.1 mm and 4.0 mm; wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D. However, Snyder discloses a similar iron golf club wherein the rear surface of the striking face includes a thermoset material (Fig. 2D, item 220 and pars. [0043] and [0088]); wherein the thermoset material is cured to the rear surface of the striking face (par. [0061]) with a thickness between 0.1 mm and 4.0 mm (par. [0078]; noting 0.5 to 3.0 mm anticipates the claimed range); wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D (par. [0088]; noting 25 to 85 Shore D makes obvious the claimed range). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Ines to make the rear surface of the striking face includes a thermoset material; wherein the thermoset material is cured to the rear surface of the striking face with a thickness between 0.1 mm and 4.0 mm: and wherein the thermoset material has a hardness between 30 Shore D and 50 Shore D as taught by Snyder because doing so would be use of a known technique (using a thermoset layer behind a striking face, the layer having thickness of 0.1 to 4.0 mm and a Shore D of 30 to 50 Shore D) to improve a similar product (a golf club iron with a striking face with an elastomer placed directly adjacent the rear surface of the striking face) in the same way (using a thermoset layer directly behind a striking face, the layer having thickness of 0.1 to 4.0 mm and a Shore D of 30 to 50 Shore D, the thermoset layer supporting the front face while allowing it to “more easily flex” while providing dampening – see Snyder: pars. [0033] and [0042]). Finally, it is noted that the combined Ines and Snyder do not specifically disclose a center face plane parallel to the y-axis and the z-axis, the center face plane located equidistant from a heel-most extent of the plurality of scorelines and a toe-most extent of the plurality of scoreline, and wherein at least a portion of the damping element overlaps the center face plane, wherein the geometric center of the front surface of the damping element is located a damping offset distance toeward from the center face plane of 5 mm or less. However, in Fig. 10, Ines clearly discloses a plurality of scorelines that can be used to denote an imaginary “center face plane” that is equidistant from the ends of the scorelines (see Fig. 10, reproduced above; noting the bottom two scorelines can be used). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Ines to use a center face plane located equidistant from the extreme edges of the scorelines as taught and suggested by Ines because doing so would be common sense by applying an imaginary center face plane at the middle of the scorelines. Furthermore, regarding using a portion of the dampening element to overlap the center face plane but also having a center of the damping element offset from the center plane by 5 mm, while Fig. 10 above tends to show a geometric center of the dampening element toeward of the center face plane, Ines actually states that the “elastomer element can be disposed behind the approximate geometric center of the striking face” (i.e. approximately the center face plane)(par. [0132]). Ines also generally teaches that a diameter of the damping element may be from 12.5 to 18.5 mm (par. [0186]). In summary, what is obvious from Ines is that that the geometric center of the damping element may be “approximately” at the center face plane, but also slightly toeward, and that the element diameter can be roughly 12.5 to 18.5 mm. In addition, Ines discloses that a SROL length may be 24 mm (Fig. 10, above, and par. [0179]; noting the SROL is measured at 1 mm off the heel end of the scorelines). Furthermore, Issertell discloses that the scoreline length of a plurality of scorelines of a similar iron can be 40 mm (Fig. 8 and par. [0137]). Finally, the Examiner notes that if the scoreline length is equal to 40 mm, and SROL is equal to 24 mm, the damping offset distance would be (24-1 mm) – (40/2) = 3 mm (the distance being within the claimed range). The Examiner further notes that if the offset distance for the geometric center of the damping element from the center face plane is 3 mm, and the damping element can be 12.5 to 18.5 mm, a portion of that damping element would inherently “overlap the center face plane” as a radius of the dampening element would be 6.25 to 9.25 mm (i.e. over 3 mm). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines and Snyder to use a scoreline length of 40 mm as taught by Issertell so that the damping offset would be between 5 mm or less and so that at least a portion of the damping element overlaps the center face plane because doing so would be a simple substitution of one element (using a scoreline length of 40 mm) for another (a golf club that would inherently have a scoreline length as determined by a plurality of scorelines, and also having a damping element diameter of 12.5 to 18.5 mm) to obtain predictable results (using a scoreline length of 40 mm so that the center face plane would be at 20 mm, and the damping offset would be 3 mm so that at least a portion of the 6.25 to 9.25 radius damping element would inherently overlap the center face plane that is 3 mm away).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) and in further view of Roach et al. (herein “Roach”; US Pub. No. 2012/0028727 A1).
Regarding claim 8, the combined Ines and Snyder disclose that the back cover includes a thermoplastic material (Ines: par. [0206]; specifically listing “acrylonitrile butadiene styrene”, which is a thermoplastic). It is noted that the combined Ines and Snyder do not specifically disclose that the back cover includes a thermoset material. However, Roach discloses a similar iron with a rear back cover (Fig. 7, item 81) wherein the back cover can be a thermoset (par. [0053]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines and Snyder to make the back cover a thermoset material as taught by Roach because doing so would be a simple substitution of one element (using a thermoset) for another (using a thermoplastic) to obtain predictable results (using a thermoset for the back cover, the thermoset continuing to add vibration dampening to the golf club head much like a thermoplastic – see Roach: par. [0053]; the thermoset known to work as a vibration damping material for golf club irons).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) and in further view of Gilbert (US Pub. No. 2004/0053704 A1).
Regarding claim 11, it is noted that the combined Ines and Snyder do not specifically disclose that the thermoset material includes a filler material. However, Gilbert makes obvious the ability to use a thermoset material behind the striking face wherein fillers are used within the thermoset (par. [0024]; making obvious “inorganic fillers” and mineral fillers”; also made obvious by “mixtures thereof” as “low density fiber glass” can be mixed with “thermoset rubbers”). Thus, it would have bene obvious to a person of ordinary skill in the art at the time of filing to modify the combined Ines and Snyder to use a filler in the thermoset material as taught by Gilbert because doing so would be a simple substitution of one element (a thermoset material with a filler used behind a striking face) for another (a thermoset material used behind a striking face) to obtain predictable results (the continued ability to use a thermoset material behind a striking face, the thermoset material having a filler, and the thermoset material with a filler known to work in golf club applications involving golf club irons).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) in view of Issertell et al. (herein “Issertell”; US Pub. No. 2016/0193508 A1) and in further view of Gilbert (US Pub. No. 2004/0053704 A1).
Regarding claim 18, it is noted that the combined Ines, Snyder, and Issertell do not specifically disclose that the thermoset material includes a filler material. However, Gilbert makes obvious the ability to use a thermoset material behind the striking face wherein fillers are used within the thermoset (par. [0024]; making obvious “inorganic fillers” and mineral fillers”; also made obvious by “mixtures thereof” as “low density fiber glass” can be mixed with “thermoset rubbers”). Thus, it would have bene obvious to a person of ordinary skill in the art at the time of filing to modify the combined Ines, Snyder, and Issertell to use a filler in the thermoset material as taught by Gilbert because doing so would be a simple substitution of one element (a thermoset material used behind a striking face) to obtain predictable results (the continued ability to use a thermoset material behind a striking face, the thermoset material having a filler, and the thermoset material with a filler known to work in golf club applications involving golf club irons).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ines (US Pub. No. 2021/0121748 A1) in view of Snyder (US Pub. No. 2014/0274454 A1) in view of Issertell et al. (herein “Issertell”; US Pub. No. 2016/0193508 A1) and in further view of Nakamura (US Pub. No. 2008/0287216 A1) as evidenced by Kosmatka (US Pat. No. 5,830,084).
Regarding claim 19, it is noted that the combined Ines, Snyder, and Issertell do not specifically disclose that the striking face comprises a second portion, the second portion of the striking face located heelward of the center face plane, the second portion of the striking face having a thickness which tapers from a maximum thickness at a thick end of the second portion to a minimum thickness at a thin end of the second portion, wherein the thick end is located toeward of the thin end. However, Ines discloses an iron golf club (Fig. 6E). In addition, Nakamura discloses an iron golf club, wherein the face comprises a second portion (see Figs 5 and 6, reproduced below), the second portion of the striking face located heelward of the center face plane (see Fig. 5 and 6, below, noting a center face plane would be inherent or obvious at roughly the center of the face denoted as “SS”), the second portion of the striking face having a thickness which tapers from a maximum thickness at a thick end of the second portion to a minimum thickness at a thin end of the second portion (Figs. 5 and 6; noting it goes from tc1 to ts), wherein the thick end is located toeward of the thin end (Figs. 5 and 6; noting thickness tc1). In addition, assuming arguendo that “taper” means a “gradual curve”, Kosmatka evidences that a gradual curve may be used in place of a stepped profile as shown in Nakamura (col. 5, lines 19-25). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines, Snyder, and Issertell to make the striking face comprises a second portion, the second portion of the striking face located heelward of the center face plane, the second portion of the striking face having a thickness which tapers from a maximum thickness at a thick end of the second portion to a minimum thickness at a thin end of the second portion, wherein the thick end is located toeward of the thin end as taught by Nakamura because doing so would be use of a known technique (using a variable face thickness in an iron) to improve a similar product (an iron having a damping element) in the same way (using a partial unsupported or thinned face plate to improve overall deflection of the face – see Nakamura: par. [0048]). In addition, it would have been obvious to one of ordinary skill in the art the time of filing that using a smooth contour over a stepped gradient would be a simple substitution of one element (a smooth contour) for another (a stepped gradient) to obtain predictable results (the continued ability to transition from a thick to thin region using a smooth contour).
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Regarding claim 20, the combined Ines, Snyder, and Issertell, and Nakamura disclose that the striking face comprises a third portion, the third portion of the striking face located toeward of the center face plane, the third portion of the striking face having a thickness which tapers from a maximum thickness at a heel end of the third portion to a minimum thickness at a toe end of the third portion (Nakamura: Figs. 5 and 6, reproduced above; see Kosmatka for evidencing that “taper” can encompasses a smooth curve).
Response to Arguments
Applicant's arguments filed 10/15/25 have been fully considered but they are not generally persuasive.
Amendments
As noted above, the Examiner does not see where applicant has support for the claim amendments based on par. [00325] and/or Fig. 105. The Examiner can only assume that applicant believes that this is an inherent structure. Nonetheless, at a minimum and assuming arguendo that the limitation is not new matter, the language needs to be added to the specification, and the “plane” needs to be added to the drawings (i.e. at a minimum, there is both a drawing and specification objection).
112 Rejection
The previous 112 rejection is removed based on the cancelled claim language.
103 Rejection
Claims 1 and 9
Regarding the claim amendments, applicant generally argues that the prior art of record does not disclose “wherein the shelf includes a protruding portion section extending inward along a same plane as the shelf”. Respectfully submitted, the Examiner disagrees for the reasons as stated in the rejections of claims 1 and 12 above. It should be noted that applicant does not argue this limitation with any specificity, and gives only a general statement for patentability.
Next, applicant argues the Examiner’s use of Boston Scientific for the proposition that it is obvious to combine multiple embodiments within a single reference. Applicant’s position is essentially that Boston Scientific stands for the proposition that the two combined embodiments must be directly “adjacent” to one another in order to combine (see Remarks, page 9). The Examiner does not take such a limited approach to Boston Scientific. In Boston Scientific, the Court held that modifying the embodiment of one stent based on the stent shown in an adjacent embodiment did not require a “leap of inventiveness” (i.e. a standard that appears to be less than a KSR standard). The Examiner’s position, based on the holding in Boston Scientific, is that it is obvious to modify one embodiment by another when the embodiments are within a single disclosure and the modification is directed to the same invention. That is, the other embodiments show obvious variants of the same invention because that are directed at the same invention. The Examiner does not take the position that the embodiments must be literally “adjacent” to one another. This is the position that applicant appears to maintain in order to rebut the Examiner’s use of Boston Scientific.
Furthermore, the Examiner’s citations to other embodiments in the rejection simply more clearly show features that might not be so clear in the embodiment shown in Ines: Figs. 51-60. That is, Figs. 51-60 also show a golf club head, a striking face, a periphery portion, a hosel, the ability to have an imaginary coordinate system, a damping element adjacent the rear surface of the striking face. The Examiner simply points to these other embodiments because it is easier to see. For example, Ines: Fig. 10 shows “a plurality of scorelines having the same length of the striking face”. Is applicant’s position really that it is not obvious to use these scorelines on the embodiment of Figs. 51-60 simply because the actual length of the scorelines is not shown (see Fig. 60, clearly showing the use of scorelines, but none of the figures showing the actual length)? Is this not a simple substitution one element for another to obtain predictable results, or simply combining obvious variants according to known methods? Rather, applicant argues that the various embodiments depicting obvious variants are unobvious to combine. Respectfully, this argument is not compelling not only based on the holding in Boston Scientific, but also applying common sense (i.e. obvious to try based on an obvious variant within a single disclosure).
Claims 4, 5, and 12
The amendment to claim 12 is consistent with the amendment to claim 1 and does not make the claim patentable over the prior art.
Applicant once again repeats the arguments concerning the Examiner’s use of Boston Scientific. That argument has been addressed above.
No other arguments are advanced.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
1/26/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711