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 .
Claims 1-21 are pending for examination. Claims 1, 2, 9, 10, and 18 are amended, and claim 21 is newly added.
Claim Objections
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14 and 15 are rejected under 35 U.S.C. 112(d) as failing to comply with the requirements for a claim in dependent form, because it does not further limit the subject mater of claim 9 from which it depends. Claim 15 is also rejected due to its dependency.
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 1-8 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. Claim 1: the amended limitation, “wherein at least one of the inner diameter or the outer diameter of the golf shaft includes a curvature that varies…… The specification does not disclose a curvature. Dependent claims 2-8 are rejected due to their dependency from claim 1.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Akatsuka et al. (US 5685783) in view of Chambers, Jr. (US 5681226).
Regarding claim 1, Akatsuka et al. disclose a golf shaft (1 in Fig. 1) comprising:
a first end (2 in Fig. 1) and a second end (3 in Fig. 1) disposed opposite the first end along a longitudinal axis of the golf shaft (1), wherein the golf shaft defines one or more internal cavities (See Fig. 1, col. 2, lines 42-62) extending along the longitudinal axis, wherein the golf shaft has an overall length (The shaft 1 has a tip end 2 and a grip end 3 and a total length from the tip end 2 to the grip end 3 of 810-1,300 mm.) from the first end to the second end, an outer diameter (Y1, Y2, or Y3), an inner diameter (X1, X2,or X3), and a wall thickness (Y1-X1, Y2-X2 or Y3-X3), wherein the wall thickness varies along the overall length (Abstract and col. 1, line 58-col. 2, line 20). Akatsuka et al. do not explicitly disclose wherein at least one of the inner diameter or the outer diameter of the golf shaft includes a curvature that varies continuously in a direction from the first end toward the second end along at least a portion of the golf shaft.
Chambers, Jr., however, discloses a golf shaft that shows inner diameter or outer diameter of a golf shaft that includes a curvature that varies continuously in a non-linear manner (col. 4, ll. 10-46; The power section 6 of the shaft 2 is the longest single portion and commonly is on the order of 30-36 in. (760-910 mm) in length. In diameter, the lower (hosel) end normally has the minimum diameter, usually about 3/8 in. (10 mm), and the shaft tapers upwardly expanding to approximately 5/8 in. (16 mm) at the upper end of the power portion where it meets the transition section 8. The wall thickness of the power portion 6 will normally be uniform throughout its length. The actual wall thickness will depend upon the type of material from which the shaft is made, with composite materials commonly requiring greater thickness than metal. The upper or grip section 4 of the shaft is normally formed as a right circular cylinder of a diameter in the range of 11/8.-13/8 in. (29-35 mm). In this portion also, the wall thickness is normally uniform throughout the section. Depending on the method of manufacture, the wall thickness in the grip portion may be different from or the same as the wall thickness in the power portion. The grip section will normally be approximately 9-12 in. (230-310 mm.) in length. Joining the two sections 4 and 6 is the transition section 8. Transition section 8 has a generally funnel-like or S-shape expanding from the smaller diameter of the power section 6 at its junction with that section to the larger diameter of the grip section 4 at its junction with that section.).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to modify a golf shaft of Akatsuka et al. with a curvature that varies continuously in a non-linear manner as taught by Chambers, Jr. to increase controllability and playability of a golf club and game (col.3 ll. 42-62).
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Akatsuka et al. (US 5685783) in view of Chambers, Jr. (US 5681226) and further in view of Hobbs (US 11298600).
Regarding claim 2, Akatsuka et al. and Chambers, Jr. disclose a golf shaft as discussed above.
However, neither Akatsuka et al. nor Chambers, Jr. discloses the golf shaft comprises a stiffness profile, wherein the stiffness profile is based at least in part on user data corresponding to a swing pattern of a user of the golf shaft.
Hobbs discloses a golf club shaft and manufacturing the club using a computer-assisted drawing (CAD) program. The user may add one or more of the lattice structures 121, 321, 721, 821, 921 at any point within the extended body 105, in the CAD model. The user can print the model using one of the large-format 3D printers disclosed above. The user can then measure the EI of the 3D printed shaft. The user can then view the measured EI curve. The user can adjust parameters of the CAD model of the shaft. Also, column 12, lines 28+ discloses that The EI curve gives an engineering description of a flex profile as the variation of EI along the shaft. EI is a structural term, the abbreviation of “E times I”, where: E stands for “modulus of elasticity”, and I stands for “area moment of inertia”. It is well-known that a golfer may choose a different flex level of a golf shaft based on his/her swing speed and preference.
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to incorporate a user (golfer) profile based on a golf shaft material (flex profile) and a user’s swing speed of a golf club to the teachings of Akatsuka et al. and Chambers, Jr. to make a golf club that appropriately matches the user’s swing speed to a particular stiffness of club shaft to produce maximum performance of the golf club based on the user’s swing data.
Regarding claim 6, Akatsuka et al. and Chambers, Jr. disclose a golf shaft comprising, among other things, a first end, a second end, and variation of a wall thickness.
Akatsuka et al. and Chambers, Jr. do not explicitly disclose a golf shaft further comprising an internal lattice structure disposed within at least one or more internal cavities.
However, Hobbs discloses a golf club shat that includes an internal lattice structure (col.
1, lines 43-67). The lattice structure may be used to control the stiffness of the golf club with
provides more stiffness choices to golfers.
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to modify a golf shaft with a variation of wall
thickness as disclosed in Akatsuka et al. and Chambers, Jr. with an internal lattice structure as taught by Hobbs to allow a manufacturer and a golfer more choices in selecting a desired stiffness from a golf shaft (col. 8, ll. 18-28).
Claims 3-5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over
Akatsuka et al. (US 5685783) in view of Chambers, Jr. (US 5681226 and further view of Blough (US 20030144073A1).
Regarding claim 3, Akatsuka et al. in view of Chambers, Jr. discloses a golf shaft comprising, among other things, a first end, a second end, and variation of a wall thickness. Akatsuka et al. and Chambers, Jr. do not explicitly disclose a golf shaft with a different taper rate.
However, Blough discloses that it is possible for a tip and grip end of a golf shaft to be
tapered ([0016] and [0022] to provide a finished club with a desired feel and can be tailored to
suit individual golfers needs.
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to modify a golf shaft with a variation of wall
thickness and a different taper rate to maximize performance while meeting individual golfers
needs (Blough, Fig. 4 and [0021]).
Regarding claim 4, Akatsuka et al. and Chambers, Jr. in view of Blough disclose the golf shaft of claim 1, wherein the golf shaft comprises one or more metals or metal alloys ([0017]).
Regarding claim 5, Akatsuka et al. and Chambers, Jr. in view of Blough disclose the golf shaft of claim 1, wherein the golf shaft comprises a single component ([0017]).
Regarding claim 7, Akatsuka et al. and Chambers, Jr. in view of Blough disclose the golf shaft of claim 1, further comprising an external geometric structure (90 in Fig. 3A, Blough) disposed along an outer surface of the golf shaft, and wherein the external geometric structure has a pattern of geometric shapes.
Regarding claim 8, Akatsuka et al. and Chambers, Jr. in view of Blough disclose the golf shaft of claim 7, wherein the pattern of geometric shapes is a repeating pattern (Blough, [0029]).
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Akatsuka et al. (US 5685783) in view of Hobbs (US 11298600).
Regarding claim 9, Akatsuka et al. disclose a golf shaft (1 in Fig. 1) comprising:
a first end (2 in Fig. 1) and a second end (3 in Fig. 1) disposed opposite one another along a longitudinal axis of the golf shaft (1), wherein the golf shaft defines one or more internal cavities (see Fig. 1) extending along the longitudinal axis, wherein the golf shaft has an overall length (The shaft 1 has a tip end 2 and a grip end 3 and a total length from the tip end 2 to the grip end 3of 810-1,300 mm.) from the first end to the second end, an outer diameter (Y1, Y2, or Y3), an inner diameter (X1, X2, or X3), and a wall thickness (Y1-X1, Y2-X2 or Y3-X3), wherein the wall thickness varies along the overall length (col. 1, line 58-col. 2, line 20 and col. 4, lines 10-20, Table 1).
Akatsuka et al. do not explicitly disclose a method for manufacturing a golf shaft comprising determining user data corresponding to a swing pattern of a user of the golf shaft, generating a CAD model based at least in part on the user data and receiving the CAD model corresponding to the golf shaft and forming, based at least in part on the CAD model, the golf shaft using one or more additive manufacturing techniques.
However, Hobbs discloses a golf club shaft and manufacturing the club using a computer-assisted drawing (CAD) program. The user may add one or more of the lattice structures 121, 321, 721, 821, 921 at any point within the extended body 105, in the CAD model. The user can print the model using one of the large-format 3D printers disclosed above. The user can then measure the EI of the 3D printed shaft. The user can then view the measured EI curve. The user can adjust parameters of the CAD model of the shaft. Also, Column 12, lines 28+ discloses that The EI curve gives an engineering description of a flex profile as the variation of EI along the shaft. EI is a structural term, the abbreviation of “E times I”, where: E stands for “modulus of elasticity”, and I stands for “area moment of inertia”. It is well-known that a golfer may choose a different flex level of a golf shaft based on his/her swing speed and preference.
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to incorporate a method of making a golf shaft
using CAD as taught by Hobbs to a golf shaft with a variation of wall thickness as disclosed in
Akatsuka et al. to increase productivity in manufacturing process for the purpose of maximizing
cost and effectiveness in club making (col. 1, line 43- col. 2, line 12).
Regarding claim 16, Akatsuka et al. and Hobbs in view of Chambers, Jr. disclose a method of 9, wherein the golf shaft further comprises an internal lattice structure disposed within at least one of the one or more internal cavities (Hobbs, col. 1, lines 43-55).
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over
Akatsuka et al. (US 5685783) in view of Hobbs (US 11298600) further in view of Chambers, Jr. (US 5681226).
Regarding claim 10, Akatsuka et al. in view of Hobbs disclose the method of claim 9.
Akatsuka et al. or Hobbs do not specifically disclose wherein at least one of the infer diameter or the outer diameter of the golf shaft varies continuously in a non-linear manner along at least a portion of the golf shaft.
However, Chambers, Jr. discloses a golf shaft that shows inner diameter or outer diameter of a golf shaft that includes a curvature that varies continuously in a non-linear manner (col. 4, ll. 10-46; The power section 6 of the shaft 2 is the longest single portion and commonly is on the order of 30-36 in. (760-910 mm) in length. In diameter, the lower (hosel) end normally has the minimum diameter, usually about 3/8 in. (10 mm), and the shaft tapers upwardly expanding to approximately 5/8 in. (16 mm) at the upper end of the power portion where it meets the transition section 8. The wall thickness of the power portion 6 will normally be uniform throughout its length. The actual wall thickness will depend upon the type of material from which the shaft is made, with composite materials commonly requiring greater thickness than metal. The upper or grip section 4 of the shaft is normally formed as a right circular cylinder of a diameter in the range of 11/8.-13/8 in. (29-35 mm). In this portion also, the wall thickness is normally uniform throughout the section. Depending on the method of manufacture, the wall thickness in the grip portion may be different from or the same as the wall thickness in the power portion. The grip section will normally be approximately 9-12 in. (230-310 mm.) in length. Joining the two sections 4 and 6 is the transition section 8. Transition section 8 has a generally funnel-like or S-shape expanding from the smaller diameter of the power section 6 at its junction with that section to the larger diameter of the grip section 4 at its junction with that section.).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to modify a golf shaft of Akatsuka et al./Hobbs with at least one of the inner diameter or the outer diameter of the golf shaft that varies continuously in a non-linear manner along at least a portion of the golf shaft as taught by Chambers, Jr. to increase controllability and playability of a golf club and game (col.3 ll. 42-62).
Claims 11-15 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over
Akatsuka et al. (US 5685783) in view of Hobbs (US 11298600) further in view of Blough (US
20030144073A1).
Regarding claim 11, Akatsuka et al. in view of Hobbs disclose a golf shaft comprising,
among other things, a first end, a second end, and variation of a wall thickness. Akatsuka et al.
in view of Hobbs do not explicitly discloses a golf shaft with a different taper rate.
However, Blough discloses that it is possible for a tip and grip end of a golf shaft to be
tapered ([0016] and [0022] to provide a finished club with a desired feel and can be tailored to
suit individual golfers needs.
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to modify a golf shaft with a variation of wall
thickness and a different taper rate to maximize performance while meeting individual golfers
needs (Blough, Fig. 4 and [0021]).
Regarding claim 12, Akatsuka et al. and Hobbs further in view of Blough disclose a
method of 9, wherein forming the golf shaft using one or more additive manufacturing
techniques comprises forming the golf shaft of one or more metals or metal alloys using one or
more metal additive manufacturing techniques (Hobbs, col. 1, line 43- col. 2, line 22).
Regarding claim 13, Akatsuka et al. and Hobbs further in view of Blough disclose a
method of 9, wherein forming the golf shaft using one or more additive manufacturing
techniques comprises forming the golf shaft as a single component using the one or more
additive manufacturing techniques (Hobbs, col. 1, line 43- col. 2, line 22).
Regarding claim 14, Akatsuka et al. and Hobbs further in view of Blough disclose a
method of 9, further comprising: determining user data corresponding to a swing pattern of a
predetermined user of the golf shaft; generating the CAD model based at least in part on the user
data (Hobbs, col. 13, lines 25-35).
Regarding claim 15, Akatsuka et al. and Hobbs further in view of Blough disclose a
method of 14, further comprising determining a stiffness profile of the golf shaft based at least in
part on the user data, wherein generating the CAD model based at least in part on the user data
comprises generating the CAD model based at least in part on the stiffness profile (Hobbs, col.
13, lines 25-35).
Regarding claim 17, Akatsuka et al. and Hobbs further in view of Blough disclose a
method of 9, further comprising an external geometric structure (Blough, 90 in Fig. 3A) disposed
along an outer surface of the golf shaft, and wherein the external geometric structure has a
pattern of geometric shapes.
Regarding claims 18-21, Akatsuka et al. disclose a golf shaft (1 in Fig. 1) comprising:
a first end (2 in Fig. 1) and a second end (3 in Fig. 1) disposed opposite the first end along a
longitudinal axis of the golf shaft (1), wherein the golf shaft has an overall length from the first
end to the second end (The shaft 1 has a tip end 2 and a grip end 3 and a total length from the tip
end 2 to the grip end 3 of 810-1,300 mm.) a shaft body extending from the first end to the second
end having outer surface, wherein the shaft defines an internal cavity (see Fig. 1) extending
along the longitudinal axis.
Akatsuka et al. do not explicitly disclose a method for manufacturing
a golf shaft comprising receiving a CAD model corresponding to the golf shaft and forming,
based at least in part on the CAD model, the golf shaft using one or more additive manufacturing
techniques and an external geometric structure disposed along the outer surface, wherein the
external geometric structure has a pattern of geometric shapes.
However, Hobbs discloses a method of making golf club shafts that includes
designing a shaft in a computer-assisted drawing (CAD) program. With reference to FIGS. 1, 6, 11, 16, 26, 29, and 34 respectively, to make the golf club shafts 101, 301, 401, 501, 701, 801, 901 of the disclosure, a user may create models of one or more of the shafts 101, 301, 401, 501, 701, 801, 901 in a computer-assisted drawing (CAD) program (col. 13, ll. 14+). The user may add one or more of the lattice structures 121, 321, 721, 821, 921 at any point within the extended body 105, in the CAD model. Hobbs further discloses a portion of the shaft is made by additive manufacturing (col. 2, lines 13-22). Hobbs further discloses a portion of the shaft is made by additive manufacturing (col. 2, lines 13-22).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to incorporate a method of making a golf shaft
using CAD as taught by Hobbs to a golf shaft with a variation of wall thickness as disclosed in
Akatsuka et al. to increase productivity in manufacturing process for the purpose of maximizing
cost and effectiveness in club making (col. 1, line 43- col. 2, line 12).
Akatsuka et al. and Hobbs do not disclose a pattern of external geometric structure.
Blough discloses an external geometric structure (90 in Fig. 3A) disposed along an outer
surface of the golf shaft, and wherein the external geometric structure has a pattern of geometric
shapes. The geometric shapes may be a repeating pattern or a non-repeating pattern ([0029]) to
enhance performance, show a quality marking or arbitrary patterns.
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to incorporate a method of making a golf shaft
using CAD as taught by Hobbs to a golf shaft with a variation of wall thickness as disclosed in
Akatsuka et al. and Blough to increase productivity in manufacturing process for the purpose of
maximizing cost and effectiveness in club making (col. 1, line 43- col. 2, line 12).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Response to Rejection Under 35 U.S.C. §102
The applicant argued that independent claim 1 is amended to recite that “at least one of the inner diameter or the outer diameter of the golf shaft includes a curvature that varies continuously in a non-linear manner in a direction from the first end toward the second end along at least a portion of the golf shaft”
While Akatsuka reference teaches a variable thickness of inner diameter or outer diameter. It does not explicitly disclose a curvature. Chambers, Jr. discloses a golf shaft that
at least one of the inner diameter or the outer diameter of the golf shaft includes a curvature that varies continuously in a non-linear manner in a direction from the first end toward the second end along at least a portion of the golf shaft (See Fig. 1 and Col. 3. ll. 42+). Thus, Claim 1 and dependent claims 2-7 remain rejected.
Response to Rejection under 35 U.S.C. § 103
The applicant further argues that Hobbs fails to disclose a method for manufacturing a golf club that includes generating a CAD model based at least in part on user data, such user data corresponding to a swing pattern of a user. The applicant also argues that Hobbes does not collect user data corresponding to a swing pattern.
The examiner respectfully disagrees. Hobbs, discloses a user creating models of one or more of the shafts in a CAD. Hobbs further discloses a user may produce a golf club shaft with any desirable stiffness or flex and other properties of the disclosure. The stiffness, flex, and feel of a shaft may be evaluated by comparing one shaft to another according to standardized metrics established in the art. One such standardized metric established in the art as a basis for comparing shafts is the EI curve. The EI curve gives an engineering description of a flex profile as the variation of EI along the shaft. EI is a structural term, the abbreviation of “E times I”, where: E stands for “modulus of elasticity”, and I stands for “area moment of inertia”. It is well-known that a golfer may want to choose a different flex level of a golf shaft based on his/her swing speed and preference. Therefore, the user data, flex profile, swing pattern of a user, and other factors are all closely related for making a golf shaft with a particular flex and inflection point to meet the user’s needs. Thus, independent claims 9 and 18 and their dependent claims remain rejected.
In addition, it appears that the applicant intended to cancel claim 14 in the remarks. However, amended claims included claim 14 as one of original claims.
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 STEVEN S PAIK whose telephone number is (571)272-2404. The examiner can normally be reached Mon-Fri.
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STEVEN S. PAIK
Supervisory Patent Examiner
Art Unit 2876
/STEVEN S PAIK/Supervisory Patent Examiner, Art Unit 2876