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 .
Terminal Disclaimer
The terminal disclaimer filed on 4/1/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US11,607,590; US11,013, 964; US11,554,296; US12,070,660; and US10,398,946 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
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 1-18 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.
With respect to independent claim 1, further clarification is require what is applicant consider “a hosel comprising a threaded bore located at a hosel lower end”. According to the original disclosure, the hosel is define as element “1015” (e.g., Fig. 1) whereas the threaded bore defines as element “3458” (Fig. 41).
Same issues with respect to independent claim 9, which recite similar limitations.
Depended claims 2-8 and claims 10-18 are rejected based on their dependency to respective independent claims 1 and 9.
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 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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Golden et al US 8,535,173 (“Golden”) in view of Bennett et al US 2009/0239676 (“Bennett”).
As per claim 1, Golden discloses a golf coupling mechanism between a golf club head and a golf club shaft (releasable hosel mechanism between head 100 and shaft (not shown))(Figs. 1-3; 5:8-7:65) , the golf coupling mechanism comprising:
a hosel comprising a bore located at a hosel lower end (a hosel for receiving releasable hosel mechanism 106-206-306; comprising a bore at the bottom thereof)(Figs. 1-3 in conjunction to at least 3:19-47 and 5:8-35);
a shaft sleeve configured to be coupled to an end of the golf club shaft and a hosel (shaft sleeve 210/310)(Figs. 2 and 3; 5:35+); wherein: the shaft sleeve comprises: a shaft bore configured to receive the end of the golf club shaft (Figs. 2 and 3; 5:56-6:41);
a shaft sleeve body comprising a sleeve outer wall (Figs. 2 and 3);
a threaded recess comprising threading corresponding to a securing fastener (threaded at the bottom of sleeve 210/310 to receive fastener 218/318)(Figs. 2 and 3; 6:2-10);
a shaft sleeve cap configured to be coupled with the shaft sleeve (construed as wedge ring 212)(Fig. 2; 5:56-6:5);
and a coupler set comprising: up to six couplers protruding from the sleeve outer wall (construed as plurality of tangs 220, which as shown are less than six, and thus interpreted as “up to six couplers”)(Fig. 2; 6:56+).
Golden is not specific regarding the hosel comprising a threaded bore located at the hosel lower end and the golf coupling mechanism does not comprise a retainer element.
However, in a similar field of golf coupling means between a golf club head and a golf club shaft, Bennett discloses a hosel comprising a threaded bore located at the hosel lower end (bore 28 of hosel 18; including a threaded inserts 22) and the golf coupling mechanism does not comprise a retainer element (the coupling mechanism includes screw 24 and does not comprises a retainer)(Fig. 4 paragraph [0050]). Therefore, 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 to form Golden’s hosel comprising a threaded bore located at the hosel lower end and the golf coupling mechanism does not comprise a retainer element for the reason that a skilled artisan would have been motivated in utilizing known coupling means therebetween the golf club head and the golf club shaft in a firm and secure manner.
As per claim 2, Golden discloses wherein the fastener comprises a head, a shank and a threaded portion (fastener 218)(Fig. 2 and 6:5-10; note also the examiner’s markings hereinafter)
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As per claim 3, with respect to wherein: the threaded bore comprises a minor diameter defined by opposing crests of the threaded bore; the threaded portion comprises a major diameter defined by opposing crests of the threaded portion; and the shank comprises a diameter, note Fig. 3 in conjunction to Fig. 2, regarding the fastener shank, as marked above of Golden).
As per claim 4, with respect to wherein the minor diameter of the threaded bore is less than the major diameter of the threaded portion and the diameter of the shank is less than the minor diameter of the threaded bore, note Golden’s Fig. 3 as fastener 318 positioned within the threaded bore of the shaft sleeve (again, note the examiner’s markings above regarding the “shank” of the fastener to be as such).
As per claim 5, although Golden is not specific wherein the coupler set is asymmetric in profile, it is noted that The Federal Courts have held that the
configuration of the claimed product was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product was significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Therefore, 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 to form Golden’s coupler set as asymmetric in profile for the reason that a skilled artisan would have been motivated as a user’s design choice absent persuasive evidence that such particular configuration is significant.
As per claim 6, although Golden is not specific regarding wherein the shaft sleeve further comprises a shaft sleeve height ranging between 2.00 inches and 2.20 inches, it is noted that claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions. Therefore, 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 to form Golden’s sleeve shaft with such dimensions as claimed since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case the device of Golden would have not operate differently with the dimension as claimed and would function appropriately with the claimed dimension. Further, it appears that applicant places no criticality on the range claimed, and merely indicates that the range “may” be within the claimed dimension
As per claim 7,with respect to wherein the up to six couplers are configured to restrict rotation of the shaft sleeve relative to the golf club head, note Figs. 2 and 3 in conjunction to at least 5:55+ as the tangs 220 (i.e., up to six couplers) fit with the hosel mechanism (e.g., wedge, and etc.) to firmly retain the shaft sleeve relative to the head, of Golden. In addition, it is noted that it has been held that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function; and manner of operating the device does not differentiate apparatus claim from the prior art "[A]pparatus claims cover what a device is, not what a device does; see Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) and In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). The examiner takes the position that Golden’s device is fully capable to perform as such since it includes all the structural limitations as claimed.
As per claim 8, with respect to wherein: the shaft sleeve cap is removably coupled with the shaft sleeve body, note Golden ‘s Fig. 2 (5:56+) regarding cap (wedge 212) removably coupled with shaft sleeve body 210.
Golden is not specific regarding and the shaft sleeve cap comprises soft polymeric plastic can be no greater than 55 on the Shore D durometer scale.
However, 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) and Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Therefore, 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 to form Golden’s cap as soft polymer plastic can be no greater than 55 on the Shore D durometer scale for the reason that a skilled artisan would have been motivated in using known material as durable enough yet light enough cap as coupling mechanism between the golf club head and the golf club shaft.
Claim(s) 9-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Golden in view of Bennett and Sato US 2011/0118044 (“Sato”).
As per claim 9, Golden discloses a golf coupling mechanism between a golf club head and a golf club shaft (releasable hosel mechanism between head 100 and shaft (not shown))(Figs. 1-3; 5:8-7:65), the golf coupling mechanism comprising:
a hosel comprising a bore located at a hosel lower end (a hosel for receiving releasable hosel mechanism 106-206-306; comprising a bore at the bottom thereof)(Figs. 1-3 in conjunction to at least 3:19-47 and 5:8-35);
a shaft sleeve configured to be coupled to an end of the golf club shaft and a hosel (shaft sleeve 210/310)(Figs. 2 and 3; 5:35+);
a shaft receiver of the golf club head configured to receive the shaft sleeve (head 200/300 includes a receiver to receive the shaft sleeve 210/310 within)(Figs. 2-3; 5:55-6:41) wherein: the shaft sleeve comprises:
a shaft bore configured to receive the end of the golf club shaft (Figs. 2 and 3; 5:56-6:41);
a threaded bore comprising threading corresponding to a securing fastener (threaded at the bottom of sleeve 210/310 to receive fastener 218/318)(Figs. 2 and 3; 6:2-10); a shaft sleeve body comprising a sleeve outer wall (Figs. 2 and 3);
a shaft sleeve cap configured to be coupled with the shaft sleeve (construed as wedge ring 212)(Fig. 2; 5:56-6:5); a coupler set comprising: up to eight couplers (construed as plurality of tangs 220, which as shown are less than eight, and thus interpreted as “up to eight couplers”)(Fig. 2; 6:56+).
Golden is not specific regarding the hosel comprising a threaded bore located at the hosel lower end and the golf coupling mechanism does not comprise a retainer element. Golden is not specific regarding the shaft receiver is integral with the hosel.
Golden is not specific regarding and the shaft receiver comprises: a receiver coupler set comprising up to eight indentations to receive the up to eight couplers.
With respect to the hosel threaded bore at the lower end, Bennett discloses a hosel comprising a threaded bore located at the hosel lower end (bore 28 of hosel 18; including a threaded inserts 22) and the golf coupling mechanism does not comprise a retainer element (the coupling mechanism includes screw 24 and does not comprises a retainer)(Fig. 4 paragraph [0050]). Therefore, 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 to form Golden’s hosel comprising a threaded bore located at the hosel lower end and the golf coupling mechanism for the same reasons discussed above with respect to claim 1.
With respect to the shaft receiver is integral with the hosel, it is noted that it has been held that where the only difference between a prior art product and a claimed product is the construction of the claimed product, the Federal Circuit have held “that the use of a one piece construction instead of the structure disclosed in [the prior
art] would be merely a matter of obvious engineering choice” In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Also, consider, applicant’s disclosure at [082] “In the present example, shaft receiver 3200 is integral with hosel 1015 of club head 101, but there can be embodiments where shaft receiver 3200 can be distinct from hosel 1015 and coupled thereto via one or more fastening methods, such as via adhesives, via a screw thread mechanism, and/or via a bolt or rivet”. Therefore, 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 to form Golden’s shaft receiver as integral with the hosel for the reason that a skilled artisan would have been motivated in utilizing known coupling technique to insure a firm and secure connection between the shaft receiver and the hosel.
With respect to a receiver coupler set, Sato discloses a shaft receiver comprises: a receiver coupler set comprising up to eight indentations to receive up to eight couplers (a head 2 with shaft receiver ( within 2e) to receive a shaft holder 5B (i.e., a shaft sleeve); whereas the receiver 2e includes a plurality (up to eight) convex/concave portions 10/11 (i.e., indentations) complementary to the set of couplers (convex/concave portions 10/11) of holder 5B)(Fig. 8 [0079]+). Therefore, 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 to form Golden’s shaft receiver comprises: a receiver coupler set comprising up to eight indentations to receive the up to eight couplers for the reason that a skilled artisan would have been motivated in using known mechanical means/fastening to firmly connect the golf head-to-shaft sleeve-to-golf shaft.
As per claim 10, Golden discloses wherein: the fastener comprises a head, a shank and a threaded portion (fastener 218)(Fig. 2 and 6:5-10; note also the examiner’s markings hereinafter).
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As per claim 11, with respect to wherein: the threaded bore comprises a minor diameter defined by opposing crests of the threaded bore; the threaded portion comprises a major diameter defined by opposing crests of the threaded portion; and the shank comprises a diameter, note Fig. 3 in conjunction to Fig. 2, regarding the fastener shank, as marked above of Golden.
As per claim 12, with respect to wherein: the minor diameter of the threaded bore is less than the major diameter of the threaded portion and the diameter of the shank is less than the minor diameter of the threaded bore, note Golden’s Fig. 3 as fastener 318 positioned within the threaded bore of the shaft sleeve (again, note the examiner’s markings above regarding the “shank” of the fastener to be as such).
As per claim 13, although Golden is not specific regarding wherein: the coupler set is asymmetric in profile, as mentioned above with respect to claim 5, such would have been obvious absent persuasive evidence that the particular configuration of the claimed product was significant. The examiner maintains his position that such modification would have been obvious for the same reasons discussed above (e.g., with respect to claim 5).
As per claim 14, with respect to wherein: the coupler set protrudes from a top section of the sleeve outer wall towards the sleeve top end, note Golden’s Fig. 2 regarding tangs 220.
As per claim 15, with respect to wherein: the receiver coupler set is indented into a top section of a receiver inner wall, note Sato’s Fig. 8 as concave/convex 11/10 with receiver 2e. Therefore, 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 to form Golden’s the receiver coupler set is indented into a top section of a receiver inner wall for similar reasons discussed above with respect to claim 9.
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Golden, Bennett and Sato as applied to claim 9 above, and further in view of SATO US 2011/0263348 (“SATO”).
As per claim 16, Golden - Bennett -Sato is not specific regarding wherein: the shaft bore is further configured to receive and retain a tip weight; and wherein the tip weight is disposed between a bottom surface of the shaft bore and the end of the golf club shaft.
However, SATO discloses a shaft bore is further configured to receive and retain a tip weight; and wherein the tip weight is disposed between a bottom surface of the shaft bore and an end of a golf club shaft (weight material 110 receives within a shaft bore (of shaft case 15) and position between a shaft end (of shaft 14) and bottom surface of the shaft bore)(Figs. 21 and 23; [0123], [0131], [0137] and [0143]). Therefore, 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 to form the modified Golden’s whereas the shaft bore is further configured to receive and retain a tip weight; and wherein the tip weight is disposed between a bottom surface of the shaft bore and the end of the golf club shaft for the reason that a skilled artisan would have been motivated by SATO’s suggestions that such weight means is suitable for adjusting the weight of the golf device (in at least [0018] and [0022]). Such modification to Golden is much desired as it is known to use weight means to adjust a golf device’s weight suitable to user’s preference and performances.
As per claim 17, SATO is not specific regarding wherein: the tip weight comprises a mass ranging from 3 grams to 7 grams. However, as mentioned above, claims which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions; see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it 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 to form Golden modified by at least the teachings of SATO, as weight means with such dimensions as claimed since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device
As per claim 18, although Golden is not specific regarding wherein: the tip weight comprises a height between 0.200 inch and 0.500 inch, the examiner maintains his position that such modification would have been obvious for the same reasons discussed above with respect to claim 6.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18 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.
In particular, applicant’s argument regarding “Golden fails to teach or suggest each and every limitation of the claimed invention.2 Golden does not teach or suggest a hosel comprising a threaded bore located at a hosel lower end. Additionally, Golden fails to teach or suggest a coupling mechanism that does not comprise a retainer element (i.e. a washer). Therefore, Golden fails to teach or suggest all the elements of the claimed invention.”(remarks pages 9-10), are moot as such new limitations are taught by the reference to Bennett as set forth above.
With respect to dependent claims 5-6, and 8, applicant didn’t argue any specific, but merely stated that the claims are allowable based upon their dependency to claim 1 (remarks page 10). As set forth above such new limitations are taught by the reference to Bennett and claims 4-5 and 8, are rejected over the prior art as set forth above in section 6.
On pages 10-11, applicant discussed the rejection of claims 9-15, and argued the same, that is Golden is not specific regarding a hosel comprising a threaded bore located at the hosel lower end and the golf coupling mechanism does not comprise a retainer element. However, as set forth above such new limitations are taught by the reference to Bennett, and thus applicant’s arguments are moot.
With respect to dependent claims 16-18, applicant didn’t argue any specific, but merely stated that the claims are allowable based upon their dependency to claim 9 (remarks page 12). As set forth above such new limitations are taught by the reference to Bennett and claims 4-5 and 8, are rejected over the prior art as set forth above in section 8.
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 AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.K/Examiner, Art Unit 3711 5/7/2026
/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711
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