DETAILED ACTION
Claim Rejections - 35 USC § 103
1. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 International Co. v. Teleflex Inc., 550 U.S. 398, 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. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(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;
(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.
2. Claims 1-13 and 15 rejected under 35 U.S.C. 103 as being unpatentable over Kaugars (US Pat. No. 4,169,595) in view of Cowdery et al. (US Pat. No. 2,196,742) and further in view of Meredith (US Pat. No. 5,074,555).
With respect to claims 1-11, Kaugars teaches a golf shaft comprising: a butt portion (0-10.5 inches in length) having: a proximal end (at 0 inches) configured to be attached to a golf grip; and a distal end at (10.5 inches), the butt portion being cylindrical and not tapered (Fig. 12); a tip portion (25-39 inches in length) having: a distal end (at 39 inches) configured to be attached to a golf club head; and a proximal end (at 25 inches), the tip portion being cylindrical; and a midsection (13.5 inches – 22 inches) connecting the proximal end of the tip portion with the distal end of the butt portion, the midsection beginning at least three inches from the distal end of the butt portion (at 13.5 inches) and ending at least three inches from proximal end of the tip portion (at 22 inches), the midsection including: a first portion having a first outer diameter that decreases in a direction of the proximal end of the tip portion at a first substantially linear taper rate (Fig. 12); and a second portion having a second outer diameter that decreases in the direction of the proximal end of the tip portion at a second substantially linear taper rate, wherein the second linear taper rate is different than the first linear taper rate (See Fig. 12 and annotated Fig. 12 below), wherein the midsection further includes a third portion having a third outer diameter that gradually decreases in the direction of the proximal end of the tip portion at a third linear taper rate Id.
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Admittedly, Kaugars teaches a stepped golf shaft, and not a stepless steel golf shaft as claimed. However, analogous art reference Cowdrey teaches that it is known to provide a steel shaft with variable tapering rates gradually decreasing in the direction from a butt portion to a proximal end of a tip portion without any step changes (page 3, column 1, lines 49-58). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to from the shaft of Kaugars as a stepless gradual tapering shaft as taught by Cowdrey. The rationale to combine is to utilize a known shaft forming technique to produce a shaft of varying tapering rates.
Kaugars does not expressly teach wherein the golf shaft is formed from a single hollow cylindrical tube of a uniform diameter. However, analogous art reference Meredith teaches this feature to be known in the art – column 3, lines 39-43; Fig.’s 2A-2C. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize a steel alloy for the shaft material, and swaging a hollow tube shaft to form the various parts of the shaft. The rationale to combine is to provide a lightweight, strong, durable shaft. Meredith further teaches a tip portion 62 being cylindrical and not tapered, wherein a wall thickness in the butt portion is less than the wall thickness in the tip portion (Fig.’s 2A-2C; column 3, lines 48-67; column 4, lines 1-15). A person ordinary skill in the art would find it obvious to provide an increased thickness of a constant diameter tip portion as this will expectantly increase rigidity at the tip portion. As a result, there will be less kick towards the tip and improved durability of the shaft.
From annotated Fig. 12, the change point from the first tapering rate to the second tapering rate is located around 16.8 inches; the change point from the second tapering rate to the third tapering rate is located around 19 inches; wherein the first tapering is the smallest, the second tapering rate is the largest, and the third tapering rate appears to be slightly bigger than the first. Notably, applicant’s specification does not provide any criticality to the change points of the first, second and third tapering rates. See paragraph [0050]-[0051]. The specification does not provide any criticality to the actual numeric values of the first, second and third taper rates. See paragraph [0049]. Moreover, the specific lengths of the first, second and third tapering rates are not disclosed as significant. See paragraph [0053]. Kaugars expressly teaches that the taper profile, which includes the change point, tapering lengths and tapering values, is known to be optimized through routine experimentation to provide the shaft “its characteristic flex pattern” – column 6. A person ordinary skill in the art would find it obvious to select an optimal tapering profile, including the change point location, lengths and tapering amount, through routine experimentation. See MPEP 2144.05 - where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The rationale to optimize is to provide a desired flexing profile of the shaft. The proposed modification has a reasonable expectation of success as Kaugars is not restrictive in its tapering profile.
With respect to claims 12-13, Kaugars does not expressly disclose a fourth taper section in a fourth portion of the midsection having a fourth length as claimed. However, applicant’s specification does not provide any criticality to the number of tapering sections. See paragraph [0054]. Moreover, the specific lengths of the first, second, third and fourth tapering rates are not disclosed as significant. See paragraph [0053]. Kaugars expressly teaches that the taper profile, which includes the different tapering sections with various tapering lengths, is known to be optimized through routine experimentation to provide the shaft “its characteristic flex pattern” – column 6. A person ordinary skill in the art would find it obvious to select an optimal tapering profile, including the number of different tapering sections and their corresponding lengths, through routine experimentation. See MPEP 2144.05 - where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The rationale to optimize is to provide a desired flexing profile of the shaft. The proposed modification has a reasonable expectation of success as Kaugars is not restrictive in its tapering profile
With respect to claim 15, the combination of Kaugars as modified above is considered to teach wherein the first and second portions are frustoconical. Kaugars teaches a reducing diameter tubular shaft from butt to tip portion, and Cowdrey teaches a gradual tapering of the shaft.
3. Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kaugars (US Pat. No. 4,169,595) in view of Cowdery et al. (US Pat. No. 2,196,742) and further in view of Meredith (US Pat. No. 5,074,555) and further in view of Hunter (US Pat. No. 3,809,403).
With respect to claims 19-20, Kaugars fails to expressly teach wherein the wall thickness in the first portion increases in the direction of the proximal end of the tip portion (with respect to claim 19), and wherein the wall thickness in the second portion increases in the direction of the proximal end of the tip portion (with respect to claim 20). However, analogous art reference Hunter teaches that it is known to provide an increasing wall thickness in a midsection portion of a shaft in a direction from a butt portion to a tip portion (TABLE). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to increase the wall thickness in the first and second portions of Kaugars. The rationale to combine is to add rigidity and durability to the shaft. This will prolong usage and provide directional stability to a hit ball.
Response to Arguments
4. Applicant’s arguments with respect to the pending claims 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.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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