DETAILED ACTION
This Office action is responsive to communication received 02/03/2026 – Amendment.
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 1-3, 5, 8 and 12-13 remain pending.
Response to Arguments
In the arguments received 02/03/2026, and insofar as the rejection of claims 1-3 under 35 U.S.C. 103 as being unpatentable over US PUBS 2007/0293349 to Chao et al (hereinafter referred to as “Chao”) in view of USPN 5,377,986 to Viollaz et al (hereinafter referred to as “Viollaz”) and also in view of US PUBS 2005/0233127 to Steffier (hereinafter referred to as “Steffier”), the applicant contends that none of the cited references teaches that every fiber in each of at least three adjacent layers is oriented in a same direction.
With respect to the rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Pond (USPN 5,524,331, cited by applicant) in view of US PUBS 2007/0293349 to Chao et al (hereinafter referred to as “Chao”) and further in view of USPN 5,377,986 to Viollaz et al (hereinafter referred to as “Viollaz”), the applicant contends that none of the cited references teaches at least five adjacent layers having fibers oriented in a same direction.
IN RESPONSE:
Applicant’s arguments have been noted. Applicant’s attention is directed to the newly-cited prior art reference to Isayev (USPN 5,268,225), which teaches that all fibers within at least five adjacent layers in a composite are oriented in a same direction (i.e., see FIG. 1 and FIG. 5 along with col. 2, lines 27-36 and lines 47-50; col. 3, lines 26-39; col. 4, lines 14-18; and col. 7, lines 23-33 in Isayev). The arrangement of adjacent layers and all fibers oriented in a same direction within each layer provides for the construction of anisotropic laminates and accords mechanical properties of higher performance and higher strength to the composite structure (i.e., col. 8, line 60 through col. 9, line 42 in Isayev). A complete explanation for the modification of each of the primary references cited in the rejections of independent claims 1 and 8 is included in the detailed rejections provided hereinbelow.
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 (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.
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.
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.
Claim 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2007/0293349 to Chao et al (hereinafter referred to as “Chao”) in view of USPN 5,377,986 to Viollaz et al (hereinafter referred to as “Viollaz”) and further in view of USPN 5,268,225 to Isayev and also in view of US PUBS 2005/0233127 to Steffier.
As to claim 1, Chao discloses a golf club head (10) comprising: a striking face (14) provided near a forward portion (Fig. 1) of said golf club head (10); a body (12) connected to an aft portion of said striking face (14) further comprising a crown, a sole, and a skirt (i.e., although not numbered, Figs. 1 and 2 collectively show the customary crown, sole and skirt portions of a wood-type hollow metal club head depicted in Chao), wherein said body comprises a first material having a first density (i.e., paragraphs [0027] and [0049] note that the body 12 is a metallic body and thus the metallic composition includes a first density); said striking face (14) further comprising: an inner portion (16; Fig. 4) located at an inner side of said striking face (14); and an outer portion (18; Fig. 4) located at an outer side of said striking face (14), wherein at least one of said inner portion and said outer portion comprises a second material having a second density (i.e., inner portion 16 comprises composite material having a second density; see paragraph [0049]), wherein said second material comprises one or more layers of composite material (i.e., Fig. 3 depicts the composite nature of region 16 of the striking face 14; also, see paragraph [0028]).
Chao does not explicitly detail “at least three adjacent layers having fibers, and wherein every fiber in each of said at least three adjacent layers is oriented in a same direction” when describing the makeup of the composite material of the striking face. Here, Viollaz shows it to be old in the art to provide a club head with a striking face formed of composite material that comprises a plurality of layers, with at least four adjacent layers in Viollaz being depicted as having a same fiber orientation. Note the four plies (21, 22, 23, 24), which are part of subset 20, as shown in FIG. 9 and as described in col. 3, line 65 through col. 4, line 22 in Viollaz. Each of the layers or plies (21, 22, 23, 24) include a same fiber angle orientation (i.e., each of plies 21, 22, 23, 24 include a same orientation of fibers in horizontal and vertical directions), with the arrangement of the various plies serving to optimize the strength of the striking plate. While it may be argued that Viollaz does not explicitly show that “every fiber in each of said at least three adjacent layers is oriented in a same direction”, the further teaching reference to Isayev teaches that all fibers within at least five adjacent layers in a composite are oriented in a same direction (i.e., see FIG. 1 and FIG. 5 along with col. 2, lines 27-36 and lines 47-50; col. 3, lines 26-39; col. 4, lines 14-18; and col. 7, lines 23-33 in Isayev). The arrangement of adjacent layers and all fibers oriented in a same direction within each layer provides for the construction of anisotropic laminates and accords mechanical properties of higher performance and higher strength to the composite structure (i.e., col. 8, line 60 through col. 9, line 42 in Isayev). In view of the teaching in Isayev, 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 Viollaz, which in turn is relied upon to modify the structure of the club head in Chao, by modifying the composite material used for the striking face to include at least three adjacent layers having every fiber oriented in a same direction in each layer in order to strategically strengthen the striking plate along a predetermined direction, thereby enhancing club head performance.
In addition, Chao does not explicitly detail ”a substantially linear elastic to failure characteristic” when describing the composite material. Steffier provides a teaching of a composite material in which a region having a linear-elastic failure characteristic is desirable for the structural application of the composite material, with Steffier further teaching that the composite material will exhibit cracks or degradation if the limits of the material are exceeded (i.e., paragraphs [0003] and [0008] in Steffier). Moreover, the applicant has disclosed that the linear-elastic to failure characteristic is based upon the material makeup and the arrangement of the material itself (i.e., see Specification, paragraphs [00100]-[00102] and disclosing a material having multiple plies, a certain tensile strength, a certain modulus of elasticity and a calculated Strain to Failure Percentage). In this case, Chao discloses a composite material arranged in plies, having a tensile strength of 4500 MPa (4.5 GPa) with a tensile modulus of elasticity of either 234 GPa, and a composite material arranged in plies, having a tensile strength of 4900 MPa (4.9 GPa) with a tensile modulus of elasticity of 240 GPa, which would result in a Strain to Failure Percentage for each material of less than 2% (i.e., see paragraphs [0030]-[0031] describing two preferred carbon fiber materials that can be used as part of the composite, multi-ply construction for the face portion 16). Given that Chao presents a composite material having the characteristics described by the applicant and given the fact that Steffier acknowledges that there exists a “useful” stress-strain region represented by a linear-elastic response for composite 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 modified the club head in Chao by assembling a specific number of plies of the composite material, with the fibers in each ply oriented in a predetermined angular orientation, and selecting a composite material that satisfies the necessary Strain to Failure Percentage requirements, with there being a reasonable expectation of success that the attributes of the composite material (e.g., the tensile strength and modulus of elasticity) would have provided for a linear-elastic to failure characteristic so that the striking face would have been better able to withstand repeated ball impacts.
As to claim 2, said composite material in Chao has a tensile strength greater than about 4.0 GPa (i.e., paragraph [0031] disclose a “34-700” carbon fiber as part of a composite material having a tensile strength of 4500 MPa (4.5 GPa) as well as a different carbon fiber “TR50A” usable as part of a composite material and having a tensile strength of 4900 MPa (4.9 GPa).
As to claim 3, said composite material in Chao has a tensile strength less than about 6.0 GPa (i.e., paragraph [0031] disclose a “34-700” carbon fiber as part of a composite material having a tensile strength of 4500 MPa (4.5 GPa) as well as a different carbon fiber “TR50A” usable as part of a composite material and having a tensile strength of 4900 MPa (4.9 GPa).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2007/0293349 to Chao et al (hereinafter referred to as “Chao”) in view of USPN 5,377,986 to Viollaz et al (hereinafter referred to as “Viollaz”) and further in view of USPN 5,268,225 to Isayev and also in view of US PUBS 2005/0233127 to Steffier and also in view of the combined teachings of Murphy (US PUBS 2006/0046868) and Murphy (USPN 6,406,378).
As to claim 5, Chao, as modified by Viollaz, Isayev and Steffier, does not explicitly disclose “a substantially vertical direction” for the same direction of the fiber orientation in two adjacent layers of the composite material. Murphy (‘868) teaches that the fiber orientation in a composite material that makes up the face portion of a club head may be adjusted to fine-tune the rigidity and the coefficient of restitution (COR) of the club head (i.e., see Figs. 1-4 and paragraphs [0030]-[0032]). Additionally, Murphy (‘378) teaches that the fiber orientation of the layers of composite material may be arranged to control the sound of the golf club head upon ball impact with the striking face. In at least Figs, 12 and 14 of Murphy (‘378), the face is constructed with plural layers of composite material in which the fiber orientation is arranged in a sole-to-crown direction (i.e., col. 1, lines 61-67; and col. 6, lines 22-46). In view of the combined teachings in Murphy (‘868) and Murphy (‘378), 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 further modified the composite structure in Chao by orienting the fibers of adjacent layers in directions that would have enabled the skilled artisan to change the rigidity and COR of the face structure as well as alter the sound characteristics of the club head. As Chao already shows layers having a vertical orientation, to have further modified the arrangement of the layers to include adjacent layers each having a vertical orientation to similarly change the rigidity or other characteristic of the face would have been obvious to one of ordinary skill in the art. Here, the further modification of Chao to include adjacent layers with the same fiber orientation in a substantially vertical direction would have involved applying a known technique (i.e., arrangement of plural, adjacent layers having the same substantially vertical fiber orientation as taught by Murphy (‘378) and arranging fibers in a composite material to yield a desired rigidity and COR as taught by Murphy (‘868)) to a known device (i.e., each of Chao, Murphy (‘868) and Murphy (‘378) are directed to wood-type club heads) ready for improvement to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Pond (USPN 5,524,331, cited by applicant) in view of US PUBS 2007/0293349 to Chao et al (hereinafter referred to as “Chao”) and further in view of USPN 5,377,986 to Viollaz et al (hereinafter referred to as “Viollaz”) and further in view of USPN 5,268,225 to Isayev.
As to claim 8, Pond shows a golf club head (10; FIGS. 1, 2, 5) comprising: a striking face (28) provided near a forward portion of said golf club head; a body (12) connected to an aft portion of said striking face further comprising a crown, a sole, and a skirt (i.e., a crown, sole and skirt are shown in the usual and customary locations in FIG. 1), wherein said body (10) comprises a first material (i.e., the body is made of metal; Abstract) having a first density (i.e., metal has a first density); said striking face (28) further comprising: an inner portion (30) located at an inner side of said striking face; and an outer portion (32) located at an outer side of said striking face, wherein said outer portion comprises a second material having a second density (i.e., the outer layer 32 is formed of an epoxy impregnated carbon fiber sheet; col. 4, lines 48-52).
Although it may be argued that the epoxy impregnated carbon fiber sheet of the outer layer (32) presents one or more layers of composite material, reference is nonetheless made to the teaching reference to Chao, which shows it to be old in the art to incorporate a composite material within a striking face portion, wherein the composite material includes one or more layers of composite material (e.g., a known composite as taught by Chao, wherein Fig. 3 depicts the composite, layered nature of region 16 of the striking face 14; also, see paragraph [0028] in Chao). Here, 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 simply substituted a composite material constructed with one or more layers, as taught by Chao, for the epoxy impregnated carbon fiber sheet of outer layer (32) shown in Pond, in order to take advantage of the known properties of the known composite material used by Chao. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (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.). See MPEP 2144.07.
While it is noted that the Chao reference does not explicitly detail “five adjacent layers having fibers oriented in a same direction” when describing the makeup of the composite material of the striking face, the further teaching in Viollaz shows it to be old in the art to provide a club head with a striking face formed of composite material that comprises a plurality of layers, with at least four adjacent layers in Viollaz being depicted as having a same fiber orientation. Note the four plies (21, 22, 23, 24), which are part of subset 20, as shown in FIG. 9 and as described in col. 3, line 65 through col. 4, line 22 in Viollaz. Each of the layers or plies (21, 22, 23, 24) include a same fiber angle orientation (i.e., each of plies 21, 22, 23, 24 include a same orientation of fibers in horizontal and vertical directions), with the arrangement of the various plies serving to optimize the strength of the striking plate. While it may be argued that Viollaz does not explicitly show “five adjacent layers having fibers oriented in a same direction”, the further teaching reference to Isayev teaches that fibers within at least five adjacent layers in a composite are oriented in a same direction (i.e., see FIG. 1 and FIG. 5 along with col. 2, lines 27-36 and lines 47-50; col. 3, lines 26-39; col. 4, lines 14-18; and col. 7, lines 23-33 in Isayev). The arrangement of five adjacent layers and having fibers oriented in a same direction within each layer provides for the construction of anisotropic laminates and accords mechanical properties of higher performance and higher strength to the composite structure (i.e., col. 8, line 60 through col. 9, line 42 in Isayev). In view of the further teaching in Isayev, 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 Viollaz, which in turn is relied upon to modify the structure of the club head in Chao, which in turn is relied upon to modify the clubhead in Pond, by modifying the composite material used for the striking face to include at least five adjacent layers having fibers oriented in a same direction in order to strategically strengthen the striking plate along a predetermined direction, thereby enhancing club head performance.
In addition, Pond does not explicitly teach that the striking face is “attached to said body at an outer periphery of said striking face”. Here, Chao teaches that a composite striking face is attached to a main club head body around its periphery (i.e., paragraph [0006] and claim 1 in Chao). One of ordinary skill in the art and before the effective filing date of the claimed invention to have attached the insert in Pond to the main body merely to take advantage of another common assembly technique. Here, the modification of Pond using the teachings in Chao for attaching an outer periphery of the striking face to the body would have involved the use of a known technique to improve similar devices in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Although none of Pond, Chao, Viollaz and Isayev explicitly discloses a strain to failure percentage that is “about 2.5%”, it is clear that the strain to failure percentage is a function of the tensile strength divided by the tensile modulus of elasticity of a selected fiber material (i.e., see paragraph [0100] of applicant’s specification). The skilled artisan would have found it obvious to select a suitable carbon fiber reinforced composite material for the Pond striking face, as modified by the combined teachings in Chao, Viollaz and Isayev, which would have resulted in a strain to failure percentage of about 2.5% in order to enhance the ball striking characteristics of the striking face (i.e., provide impact resistance without detrimental cracking of the composite material). Selection of a suitable carbon fiber material for use in the Pond striking face would have been obvious to one of ordinary skill in the art. Again, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (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.). See MPEP 2144.07.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Pond (USPN 5,524,331, cited by applicant) in view of US PUBS 2007/0293349 to Chao et al (hereinafter referred to as “Chao”) and further in view USPN 5,377,986 to Viollaz et al (hereinafter referred to as “Viollaz”) and further in view of USPN 5,268,225 to Isayev and also in view of the combined teachings of Murphy (US PUBS 2006/0046868) and Murphy (USPN 6,406,378).
As to claim 12, Pond, as modified by Chao, Viollaz and Isayev, does not explicitly disclose “a substantially vertical direction” for the same direction of the fiber orientation in two adjacent layers of the composite material. Murphy (‘868) teaches that the fiber orientation in a composite material that makes up the face portion of a club head may be adjusted to fine-tune the rigidity and the coefficient of restitution (COR) of the club head (i.e., see Figs. 1-4 and paragraphs [0030]-[0032]). Additionally, Murphy (‘378) teaches that the fiber orientation of the layers of composite material may be arranged to control the sound of the golf club head upon ball impact with the striking face. In at least Figs, 12 and 14 of Murphy (‘378), the face is constructed with plural layers of composite material in which the fiber orientation is arranged in a sole-to-crown direction (i.e., col. 1, lines 61-67; and col. 6, lines 22-46). In view of the combined teachings in Murphy (‘868) and Murphy (‘378), and considering that the combined teachings of Chao and Viollaz would have made it obvious to use composite, layered materials as part of a striking face construction, 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 further modified the composite structure used in the outer portion of the striking face in Pond by orienting the fibers of adjacent layers in directions that would have enabled the skilled artisan to change the rigidity and COR of the face structure as well as alter the sound characteristics of the club head. As Chao already shows layers having a vertical orientation, to have modified the arrangement of the layers to include adjacent layers each having a vertical orientation to similarly change the rigidity or other characteristic of the face would have been obvious to one of ordinary skill in the art. Here, the modification of Chao, which is used to modify Pond, to further include adjacent layers with the same fiber orientation in a substantially vertical direction would have involved applying a known technique (i.e., arrangement of plural, adjacent layers having the same substantially vertical fiber orientation as taught by Murphy (‘378) and arranging fibers in a composite material to yield a desired rigidity and COR as taught by Murphy (‘868)) to a known device (i.e., each of Chao, Viollaz, Murphy (‘868) and Murphy (‘378) are directed to wood-type club heads) ready for improvement to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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Claims 13 is rejected under 35 U.S.C. 103 as being unpatentable over Pond (USPN 5,524,331, cited by applicant) in view of US PUBS 2007/0293349 to Chao et al (hereinafter referred to as “Chao”) and further in view of USPN 5,377,986 to Viollaz et al (hereinafter referred to as “Viollaz”) and further in view of USPN 5,268,225 to Isayev and also in view of US PUBS 2005/0233127 to Steffier.
As to claim 13, Pond, as modified by Chao, Viollaz and Isayev, does not explicitly disclose that the composite material “has a substantially linear elastic to failure characteristic”. Steffier provides a teaching of a composite material in which a region having a linear-elastic failure characteristic is desirable for the structural application of the composite material, with Steffier further teaching that the composite material will exhibit cracks or degradation if the limits of the material are exceeded (i.e., paragraphs [0003] and [0008] in Steffier). Moreover, the applicant has disclosed that the linear-elastic to failure characteristic is based upon the material makeup and the arrangement of the material itself (i.e., see Specification, paragraphs [00100] - [00102] and disclosing a material having multiple plies, a certain tensile strength, a certain modulus of elasticity and a calculated Strain to Failure Percentage). In this case, Chao discloses a composite material arranged in plies, having a tensile strength of 4500 MPa (4.5 GPa) with a tensile modulus of elasticity of either 234 GPa, and a composite material arranged in plies, having a tensile strength of 4900 MPa (4.9 GPa) with a tensile modulus of elasticity of 240 GPa, which would result in a Strain to Failure Percentage for each material of less than 2% (i.e., see paragraphs [0030] - [0031] describing two preferred carbon fiber materials that can be used as part of the composite, multi-ply construction for the face portion 16). Given that Chao presents a composite material having the characteristics described by the applicant and given the fact that Steffier acknowledges that there exists a “useful” stress-strain region represented by a linear-elastic response for composite 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 modified the club head in Chao by assembling a specific number of plies of the composite material, with the fibers in each ply oriented in a predetermined angular orientation, and selecting a composite material that satisfies the necessary Strain to Failure Percentage requirements, with there being a reasonable expectation of success that the attributes of the composite material (e.g., the tensile strength and modulus of elasticity) would have provided for a linear-elastic to failure characteristic so that the striking face would have been better able to withstand repeated ball impacts. Therefore, to have modified the Pond device by substituting the epoxy impregnated carbon fiber sheet of the outer layer (32) with a composite having a linear elastic to failure characteristic, as proffered by the modification of Chao, as further modified by Viollaz, Isayev and Steffier, would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to improve the ball-striking performance of the striking face insert.
As for the further limitations of “a tensile strength of greater than about 4.0 GPa and less than about 6.0 GPa”, see paragraph [0031] in Chao and the description of the tensile strength for the carbon fiber materials disclosed, which supports the obviousness of including a composite material having the claimed tensile strength within the Pond device. Again, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (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.). See MPEP 2144.07.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See col. 3, lines 12-37 in Hecht.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendment of independent claim 1 to now include the limitation “and wherein every fiber in each of said at least three adjacent layers is oriented in a same direction” (italicized/underlined language added by amendment) along with the amendment to independent claim 8 to now include the limitation “wherein said composite material comprises at least five adjacent layers having fibers oriented in a same direction” (italicized/underlined language added by amendment) necessitated the new grounds of rejection.
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.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711