DETAILED ACTION
This Office action is responsive to communication received 11/17/2022 – application papers received, including Power of Attorney; 12/06/2022 – Request for Corrected Filing Receipt; and 03/07/2025 – Power of Attorney.
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 .
Continuation Data
This application is a CIP of 17/370,083 07/08/2021 ABN and claims benefit of 63/052,739 07/16/2020.
Drawings
The drawings were received on 11/17/2022.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “a shaft, having an elongated shape extending from an upper end to a lower end; a grip on the upper end of the shaft” (claim 19) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Numeral “12” is used to reference a shaft, but not shown in the drawings. (e.g., throughout scanned pages 12-14 and 27-28 of the Specification).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Status of Claims
Claims 1-27 are pending.
Specification – Objections
The disclosure is objected to because of the following informalities:
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Here, the specification lacks proper antecedent basis for the sole camber percentage of the cross section of the golf club head being “greater than or equal to 60%” (claim 16) and “greater than or equal to 61%” (claim 17).
Here, the specification lacks proper antecedent basis for “a grip on the upper end of the shaft”, as recited in claim 19. Note that the specification, beginning at scanned page 12, details a “shaft 12 (not shown)”. The specification continues through several more pages to describe a “shaft 12” (e.g., throughout scanned pages 12-14 and 27-28).
Here, the specification lacks proper antecedent basis for “the cross section of the golf club head has a bounce angle of 30 to 40 degrees”, as recited in claim 6.
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Claim Objections - Minor
Claims 5-6, 18 and 23-24 are objected to because of the following informalities:
In each of claims 5-6 and 23-24, “10mm” should read --10 mm--.
As to claim 18, line 3, it appears that --the-- should follow “wherein” for proper grammar.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-4, 10-17 and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims are cast with open-ended numerical ranges. Here, the claims call for the radius of curvature is “50% or more” of a length of a total curve along the forward camber (claim 2) and the radius of curvature is “59% or more” of a length of a total curve along the forward camber (claim 3). Each of claims 2 and 3 covers a golf club head conceivably having a radius of curvature that is 100% of a length of a total curve along the forward camber. Here, claim 4 requires a sole width “less than 14 mm”, which implies that the sole width could be considerably less than 14 mm. Here, claim 10 requires trailing edge relief “greater than 5 degrees”, meaning it is possible that the trailing edge relief might conceivably be significantly greater than 5 degrees. Here, claim 11 requires trailing edge relief “less than 5 degrees”, meaning it is possible that the trailing edge relief might conceivably be 0 degrees. The sole camber percentage recited in each of claims 12-17 includes an open-ended range. For example, claim 12 requires a sole camber percentage “greater than or equal to 40%”. Similar observations may be made with respect to claims 13-17 and will not be repeated here, for brevity. In claim 22, the sole width again is recited as being “less than 14 mm”. While the existence of an open-ended numerical range does not necessarily translate into indefiniteness in the claims, the claims must be presented in such a way that, in light of the specification, one of ordinary skill in the art may make and/or use the invention. In this case, the specification lacks any guidance whatsoever as to how the skilled artisan would have interpreted the open-ended numerical ranges described here. See MPEP 2173.05(c).
More specific to claims 12-17, the phrase “the sole camber percentage” in each claim lacks proper antecedent basis.
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.
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.
Claims 1-3 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2012/0238376 to Knight et al (hereinafter referred to as “Knight”) in view of USPN 7,614,962 to Clausen.
As to claims 1 and 19-21, Knight shows a golf club head (102), comprising: a striking face portion (114) located at a frontal portion of the golf club head (FIG. 7); a topline located at an upper portion of the golf club head (not numbered, but clearly shown in FIG. 7); a heel portion (110) located at a proximal end of the golf club head, adapted to receive a shaft; a toe portion (112) located at a distal end of the golf club head opposite the heel portion; a sole (120), located at a lower portion of the golf club head; wherein the golf club head has a cross section (FIG. 8) at a midline of the golf club head; wherein the cross section is in a plane perpendicular to the striking face portion (i.e., see FIGS. 3 and 8 and the corresponding Brief Description of the Drawings); wherein in the cross section, a forward camber of the sole has a radius of curvature at a midpoint of the forward camber; wherein the radius of curvature is less than or equal to a sole width of the sole (i.e., see FIG. 10B and paragraph [0051] discussing the radius of curvature related to first radius section (130A), which is clearly depicted as being less than a width of the sole (120).
Knight does not explicitly detail “wherein the radius of curvature is greater than or equal to a leading edge height of the golf club head”. Clausen details an iron-type club head wherein the radius of curvature of the camber of the sole is dimensioned to be between 1.5 inches and 2.1 inches and is greater than a leading edge height of the golf club head, which is dimensioned to be set between 0.145 - 0.155 inch (i.e., col. 4, line 67 through col. 5, line 6). The sole in Clausen is configured to provide a desired effective bounce angle. In view of the teaching in Clausen, 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 Knight by configuring the radius of curvature of the sole to be greater than or equal to a leading edge height of the club head in order to provide an effective bounce angle to improve club head performance.
As to claims 2-3, Knight details that the convergence line (CL) depicted in FIG. 10B may be placed anywhere along the sole (i.e., paragraph [0051]). The convergence line delineates the first radius section 130A from the second radius section (13oB) and is set along a plane that contains the sole contact point. Thus, the length of a curve along the forward camber having the radius of curvature (i.e., having the radius of the first radius section 130A) is “50% or more” (claim 2) and “59% or more” (claim 3) of a length of a total curve along the forward camber from a leading edge of the golf club head to a sole contact point.
As to claim 18, Knight does not explicitly detail “wherein the midpoint is intersected by a center line that is tangent to a bounce line of the golf club head in the cross section; wherein [sic] bounce line extends from a leading edge of the golf club head to a sole contact point; wherein the center line intersects a center point located on the bounce line halfway between the leading edge and the sole contact point”. The claimed language merely sets forth a number of lines and points in a cross-section. Here, Clausen shows these features, which are depicted in an annotated version of FIG. 6, below.
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Although it may be argued that Clausen does not disclose that the drawings are drawn to scale, Clausen does discuss the interrelation among the bounce angle, sole camber and leading edge height to arrive at a desired and effective sole profile (i.e., col. 1, lines 21-27; col. 5, lines 26-31; col. 6, lines 1-12 and TABLE 1). Thus, the drawings in Clausen are being relied upon for what they would reasonably teach to one of ordinary skill in the art. Note MPEP 2125, stating “the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977)”. In view of the teachings in Clausen, 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 Knight by identifying a bounce line and a center line between the leading edge and the sole contact point as a way of further identifying the profile of the sole.
More specific to claim 19, Knight shows a shaft (106) and a grip (108) in FIG. 1.
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Claims 4-8 and 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2012/0238376 to Knight et al (hereinafter referred to as “Knight”) in view of USPN 7,614,962 to Clausen and also in view of USPN 10,143,900 to Harrington et al (hereinafter referred to as “Harrington”).
As to claims 4-6 and 22-24, Knight, as modified by Clausen, lacks an explicit disclosure of “a sole width that is less than 14 mm” (claims 4 and 22) and “a sole width between 10 mm and 14 mm” (claims 5-6 and 23-24). Harrington shows it to be old in the art to incorporate a sole width of between about 5 mm and 22 mm (i.e., col. 4, lines 1-10). As Harrington teaches that the sole width is dependent upon the bounce angle, it is clear that the skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to modify the golf club head in Knight to include an appropriately-dimensioned sole based upon the bounce angle to provide a smooth entry and exit through the turf during a club swing.
More specific to claims 6 and 24, Knight, as modified by Clausen, lacks an explicit disclosure of “the cross section of the golf club head has a bounce angle of 30 to 40 degrees”. Harrington teaches that a difference in bounce angle will yield different leading edge sole radius values and different trailing edge sole radius values, thus improving the performance of the club head by changing the sole profile. Harrington discloses that the bounce angle may generally be greater than 20 degrees (i.e., col. 5, lines 50-64 and col. 7, lines 5-21, along with FIGS. 4 and 6). In view of the further teaching in Harrington, 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 Knight by providing a bounce angle of between 30 to 40 degrees in order to alter the sole profile for improved club head performance. Here, the applicant has not disclosed any criticality for the claimed bounce angle range of 30 to 40 degrees. Considering that each of Knight, Clausen and Harrington disclose bounce angle as a factor in the profiling of the sole for improved club head performance, it is clear that the skilled artisan would have been able to attain a suitable bounce angle through routine experimentation. "[W]here 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). See MPEP 2144.05.
As to claims 7 and 25, Knight, as modified by Clausen, does not explicitly disclose “wherein the cross section of the golf club head has a sole radius that is less than 1.4 times the leading edge height”. Harrington, at TABLE 1, discloses various leading edge sole entry height dimensions as well as values for the leading edge sole radius. Looking at the dimensions for the “Low-Bounce”, for example, the sole radius in Harrington is just slightly greater than 1.4 times the leading edge height (i.e., 1.4 x leading edge sole entry height 3.08 = 4.312 mm, compared to the leading edge sole radius of 4.65 mm). Harrington acknowledges that the leading edge height of the club head along with the bounce angle and sole radius are all interrelated in order to create a sole profile that improves the performance of the golf club head (i.e., TABLE 1; col. 3, lines 31-46; and col. 6, lines 22-46). In view of the teaching in Harrington, 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 Knight by providing the cross section of the golf club head with a sole radius less than 1.4 times the leading edge height in order to generate a sole profile that improves club head performance by improving the sole contact characteristics of the sole when a golfer executes a swing. It is clear that the skilled artisan would have been able to attain a suitable distinction between the sole radius and the leading edge height through routine experimentation. "[W]here 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). See MPEP 2144.05.
As to claims 8 and 26, Knight, as modified by Clausen, lacks an explicit disclosure of “wherein the cross section of the golf club head has a ratio of sole radius to depth of camber that is between 2 and 4”. Here, the applicant has only provided a very brief description of “depth of camber” (i.e., see Specification, scanned pages 26-27), but has not established any criticality for the claimed ratio of “between 2 and 4”. The “depth of camber” appears to be alternative language that may be used to refer to the roundness features of the forward camber of the sole. Here, Harrington has established a camber area (i.e., TABLE 1; and Figs. 4-7) within which a depth of camber may clearly be identified. Harrington acknowledges that the leading edge height of the club head along with the bounce angle, sole radius, sole width and sole camber area are all interrelated in order to create a sole profile that improves the performance of the golf club head (i.e., see TABLE 1; col. 3, lines 31-46; and col. 6, lines 22-46). In view of the teaching in Harrington, 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 Knight by providing the cross section of the golf club head with a ratio of sole radius to depth of chamber to generate a sole profile that improves club head performance by improving the sole contact characteristics of the sole when a golfer executes a swing. It is clear that the skilled artisan would have been able to attain a suitable distinction between the sole radius and the depth of camber through routine experimentation. "[W]here 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). See MPEP 2144.05.
Claims 9-11 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2012/0238376 to Knight et al (hereinafter referred to as “Knight”) in view of USPN 7,614,962 to Clausen and also in view of USPN 6,569,029 to Hamburger.
As to claims 9-11 and 27, and as to the claimed “trailing edge relief”, although the prior art to Knight, as modified by Clausen, is silent as to the benefits or effects or specific values of any trailing edge relief, the patent to Hamburger clearly teaches that a trailing edge relief, identified by angle “T”, may be dimensioned to any convenient angle (i.e., FIG. 2 and col. 3, lines 43-51). An examination of FIG. 2 in Hamburger clearly would have taught the skilled artisan that a larger angle “T”, that is, a larger trailing edge relief, would have enabled the club head to have a higher bounce angle and thus open the face of the club head to a greater extent during a swing. Since the prior art to Hamburger teaches a direct relationship between the trailing edge relief (i.e., the trailing edge angle) and the bounce angle, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the club head in Knight to include a suitably-dimensioned trailing edge relief with there being a reasonable expectation of success that a larger trailing edge relief would have enabled the club head designer to include a higher bounce angle. Again, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2012/0238376 to Knight et al (hereinafter referred to as “Knight”) in view of USPN 7,614,962 to Clausen and also in view of conventional wedges and irons disclosed by the applicant (i.e., FIGS. 11-12 and scanned page 18 of the specification).
As to claims 12-14, Knight, as modified by Clausen, does not explicitly disclose the claimed sole camber percentages. The applicant has disclosed that a sole camber percentage “greater than or equal to 45%” (claim 12), “greater than or equal to 50%” (claim 13) and “greater than or equal to 55%” (claim 14) is found in conventional wedges and irons, wherein the applicant discloses that conventional wedge and irons have a sole camber percentage of 58.19%. Moreover, the applicant has not disclosed any criticality for the claimed “sole camber percentage” and given the fact that the applicant discloses that known CAD programming is used to calculate sole camber percentage based upon a cross-section of the golf club head, it is clear the one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the sole camber percentage of the club head in Knight, with there being a reasonable expectation of success that providing a more rounded appearance to the leading edge portion of the iron-type club head in Knight would have resulted in a golf club head that provides a smoother entry and exit through and across the turf during a swing.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2012/0238376 to Knight et al (hereinafter referred to as “Knight”) in view of USPN 7,614,962 to Clausen and also in view of conventional wedges and irons disclosed by the applicant (i.e., FIGS. 11-12 and scanned page 18 of the specification) and also in view of the combined teachings to USPN 6,569,029 to Hamburger and USPN 10,143,900 to Harrington et al (hereinafter referred to as “Harrington”).
As to claims 15-17, Knight, as modified by Clausen, does not explicitly disclose the claimed sole camber percentages. The applicant has disclosed that a sole camber percentage “greater than or equal to 45%” (claim 12), “greater than or equal to 50%” (claim 13) and “greater than or equal to 55%” (claim 14) is found in conventional wedges and irons, wherein the applicant discloses that conventional wedge and irons have a sole camber percentage of 58.19%. However, the applicant has not disclosed any criticality for the claimed “sole camber percentage” of increased percentages as recited in claims 15-17 and given the fact that the applicant discloses that known CAD programming is used to calculate sole camber percentage based upon a cross-section of the golf club head, it is clear the one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the sole camber percentage of the club head in Knight, with there being a reasonable expectation of success that providing a more rounded appearance to the leading edge portion of the iron-type club head would have resulted in a golf club head that provides a more smooth entry and exit through and across the turf during a swing. This conclusion is reached with a combination of the disclosure by the applicant of conventional wedges and iron-type club heads having a sole camber percentage of 58.19%, as discussed above, along with the further guidance provided by the teaching to Hamburger, which clearly teaches that a higher bounce angle will generally enable the golf club head to dig less into the sand or turf (i.e., col. 1, lines 36-43), and the further guidance provided by Harrington, which depicts a high bounce angle in FIG. 4.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Figs. 5-6 in Fenton;
Figs. 5, 6 and 7B in Poincenot;
Fig. 6 in Ban;
Fig. 4 in Harrington (‘356);
See Fig. 9 in Harrington (‘123); and note paragraph [0021] stating “[C]amber from leading edge to trailing edge ultimately adds bounce to a wedge or iron while reducing the sole width, sw”.
Note paragraph [0045] in Fossum, noting “as an increased camber radius of curvature results in a flatter sole region and less relief at the heel and toe regions. Increasing the camber radius of curvature can beneficially promote greater surface area on the low toe and/or low heel portions of the face plate”;
Figs. 8B-8D in Taylor;
Fig. 2 in Harrington (‘081);
Note paragraph [0121] in Shimahara (‘132);
Figs. 4 and 6 in Harrington (‘198);
Fig. 13 in Shimahara (‘580);
Fig. 4 in Greer;
Figs. 2, 4 and 6 in Harrington (‘131); and
Burnett discusses design parameters for the sole (i.e., col. 3, line 59 – col. 4, line 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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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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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711