DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 3/2/26. Claims 1-20 are cancelled; claims 21-39 are added and pending.
Priority
2. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed application, Application No. 18/155620, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for claims 1-20 of this application. Limitation pertaining to the threaded hosel flange are not supported by the parent application(s).
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 21-39 are rejected under 35 U.S.C. 103 as being unpatentable over Geer et al. (US Pub. No. 2020/0360771) in view of Bennett et al. (US Pub. No. 2018/0028877), or in the alternative, in further view of Bolane et al. (US Pub. No. 2013/0244805)
With respect to claims 21-24, Geer et al. teaches a golf club comprising: an iron-type club head 100 comprising: a loft angle; a lie angle (paragraph [0035]); and a hosel 132, having: a hosel bore 140 including a hosel bore axis 180 extending along a centerline of the hosel bore 140 (paragraph [0040]), wherein the hosel bore 140 comprises a hosel flange 144; a shaft 136; and a golf coupling mechanism 104 configured to be inserted into the hosel 132 and to couple the shaft 136 to the iron-type club head 100 (paragraph [0038]), the golf coupling mechanism 104 comprising: a shaft sleeve 156 disposed within the hosel bore 140 and including: a sleeve bore configured to receive an end of the shaft 136 (paragraph [0039]); a sleeve axis 176 extending along a centerline of the sleeve bore and angled relative to the hosel bore axis 180 such that the sleeve bore is non-concentric with the hosel bore 140 (paragraph [0040]), wherein rotation of the shaft sleeve 156 within the hosel bore 140 changes the loft angle and the lie angle of the iron-type club head 100 (paragraph [0041]); a sleeve coupler set 184 having a plurality of sleeve couplers protruding from an outer surface of the shaft sleeve 156 (paragraphs [0042]-[0044])
; and a threaded bottom end bore 172 (paragraph [0039]); a shaft cap 192 configured to be inserted into the sleeve bore (paragraph [0051]); and a securing fastener 152 having securing fastener threads configured to threadably couple to the bottom end bore 172 (paragraph [0039]), thereby to secure the coupling mechanism 104 and attach the shaft 136 to the iron-type club head 100 (best seen in Fig. 8; See also paragraphs [0038], [0051]); per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the securing fastener 152 threadably engages corresponding threads of the bottom end bore to provide the securing of the coupling mechanism 104 and shaft 136 to the club head 100.
Geer et al. further teaches wherein: the fastener 152 comprises a head, a shank and a threaded portion (best seen in Fig. 8; See also paragraph [0051]), wherein: the hosel flange 144 comprises a minor diameter; the threaded portion comprises a major diameter defined by opposing crests of the threaded portion; and the shank comprises a diameter (inherent). Admittedly, Geer et al. fails to expressly teach wherein the hosel flange 144 is threaded, wherein: the threaded hosel flange comprises a minor diameter defined by opposing crests of the threaded hosel flange and wherein: the minor diameter of the threaded hosel flange is less than a major diameter of the threaded portion and the diameter of the shank is less than the minor diameter of the threaded hosel flange. However, analogous art reference Bennett et al. teaches the following to be known in the art: a threaded hosel flange (“threads 181”), wherein: the threaded hosel flange comprises a minor diameter defined by opposing crests of the threaded hosel flange and wherein: the minor diameter of the threaded hosel flange is less than a major diameter of a threaded portion of a screw, and the diameter of a shank of the screw is less than the minor diameter of the threaded hosel flange (Fig. 87; paragraph [0292]).
Examiner notes Bennett et al. teaches wherein retainer 177 can be omitted and the threads 181 would serve as the only component that retains screw within the hosel when the screw is disengaged from a sleeve. Bennett et al. further teaches the threads are not re-engaged unless the desired screw is to be removed. Based on these teachings, a person ordinary skill in the art would understand that the minor diameter of the threaded hosel flange is less than a major diameter of a threaded portion of a screw. Per KSR, exemplary rationales that may support a conclusion of obviousness include: (B) Simple substitution of one known element for another to obtain predictable results. Here, at time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to substitute the retaining assembly of Geer with the retaining assembly teachings of Bennett et al. The rationale to combine is to allow the fastener to remain retained with the hosel even when the sleeve portion is not threadingly engaged with the fastener using a known retention arrangement. This will expectantly allow dynamic adjustment and removal of the coupling mechanism/shaft without the fastener being fully withdrawn from the hosel. This will ease and improve adjusting of the hosel assembly. The proposed modification has a reasonable expectation of success as the functionality and intended purpose of Geer et al. is not frustrated. The combined art is considered to teach the following: a securing fastener having securing fastener threads configured to threadably couple to the bottom end bore (Geer et al. – Fig. 8; Bennett et al. -Fig. 87), thereby to secure the coupling mechanism and attach the shaft to the iron-type club head, as well as to the threaded hosel flange (Bennett et al.), thereby to retain the securing fastener within the hosel bore, without a washer (Bennett et al. – threads 181), when the securing fastener is unattached to the bottom end bore. Per MPEP 2111, the Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard: The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” As shown in Fig. 87 of Bennett et al., no washer is used within the hosel bore, and no washer is used when to retain the fastener in the hosel bore when the securing fastener is unattached to the bottom. Washer 648 is positioned outside the hosel bore and provides no functionality when the securing fastener 624 is unthreaded with bottom end bore. Thus, meeting the claimed functional language – See also MPEP 2114 In re Schreiber. Should applicant traverse this position based on the presence of washer 648, in the alternative, examiner cites to Bolane et al. for its teaching that it is known to position a securing fastener 24 directly interfaced to a hosel flange underside without the use of a washer (Fig. 20A). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to remove the washer at the underside of the threaded flange of Geer + Bennett. The rationale to combine is to reduce manufacturing costs and assembly time.
With respect to claim 25, Geer et al. teaches wherein the sleeve coupler set 184 is asymmetric in profile (paragraph [0047]).
With respect to claim 26, Geer et al. teaches wherein the sleeve coupler set 184 of the shaft sleeve 156 further comprises a first coupler; a second coupler, a third coupler, and a fourth coupler (paragraph [0046]).
With respect to claims 27-28, Geer et al. teaches wherein the hosel bore 140 comprises a receiver coupler set 188 having a plurality of receiver couplers indented into an internal surface of the hosel 132 (paragraph [0045]); wherein the sleeve coupler set 184 of the shaft sleeve 156 is configured to sit against the receiver coupler set 188 of the hosel bore 140 to restrict rotation of the shaft 136 relative to the iron-type club head 100 (paragraph [0048]).
With respect to claims 29-32, Geer et al. teaches a golf club comprising: an iron-type club head 100 comprising: a loft angle; a lie angle (paragraph [0035]); and a hosel 132, having: a hosel bore 140 including a hosel bore axis 180 extending along a centerline of the hosel bore 140 (paragraph [0040]), wherein the hosel bore 140 comprises a hosel flange 144; a shaft 136; and a golf coupling mechanism 104 configured to be inserted into the hosel 132 and to couple the shaft 136 to the iron-type club head 100 (paragraph [0038]), the golf coupling mechanism 104 comprising: a shaft sleeve 156 disposed within the hosel bore 140 and including: a sleeve bore configured to receive an end of the shaft 136 (paragraph [0039]); a sleeve axis 176 extending along a centerline of the sleeve bore and angled relative to the hosel bore axis 180 such that the sleeve bore is non-concentric with the hosel bore 140 (paragraph [0040]), wherein rotation of the shaft sleeve 156 within the hosel bore 140 changes the loft angle and the lie angle of the iron-type club head 100 (paragraph [0041]); a sleeve coupler set 184 having a plurality of sleeve couplers protruding from an outer surface of the shaft sleeve 156 (paragraphs [0042]-[0044]); and a threaded bottom end bore 172 (paragraph [0039]); a shaft cap 192 configured to be inserted into the sleeve bore (paragraph [0051]); and a securing fastener 152 having securing fastener threads configured to threadably couple to the bottom end bore 172 (paragraph [0039]), thereby to secure the coupling mechanism 104 and attach the shaft 136 to the iron-type club head 100 (best seen in Fig. 8; See also paragraphs [0038], [0051]); and a removable spacer 216 configured to couple with a top section of the shaft sleeve 156 (paragraph [0061]; Fig.’s 10-13), and a removable extender 228 configured to couple with a bottom section of the shaft sleeve 156 (paragraph [0064]; Fig.’s 12-15), wherein the removable spacer 216 and removable extender 228 increase a length of the shaft (paragraph [0068]-[0069]).
Geer et al. further teaches wherein: the fastener 152 comprises a head, a shank and a threaded portion (best seen in Fig. 8; See also paragraph [0051]), wherein: the hosel flange 144 comprises a minor diameter; the threaded portion comprises a major diameter defined by opposing crests of the threaded portion; and the shank comprises a diameter (inherent). Admittedly, Geer et al. fails to expressly teach wherein the hosel flange 144 is threaded, wherein: the threaded hosel flange comprises a minor diameter defined by opposing crests of the threaded hosel flange and wherein: the minor diameter of the threaded hosel flange is less than a major diameter of the threaded portion and the diameter of the shank is less than the minor diameter of the threaded hosel flange. However, analogous art reference Bennett et al. teaches the following to be known in the art: a threaded hosel flange (“threads 181”), wherein: the threaded hosel flange comprises a minor diameter defined by opposing crests of the threaded hosel flange and wherein: the minor diameter of the threaded hosel flange is less than a major diameter of a threaded portion of a screw, and the diameter of a shank of the screw is less than the minor diameter of the threaded hosel flange (Fig. 87; paragraph [0292]). Examiner notes Bennett et al. teaches wherein retainer 177 can be omitted and the threads 181 would serve as the only component that retains screw within the hosel when the screw is disengaged from a sleeve. Bennett et al. further teaches the threads are not re-engaged unless the desired screw is to be removed. Based on these teachings, a person ordinary skill in the art would understand that the minor diameter of the threaded hosel flange is less than a major diameter of a threaded portion of a screw. Per KSR, exemplary rationales that may support a conclusion of obviousness include: (B) Simple substitution of one known element for another to obtain predictable results. Here, at time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to substitute the retaining assembly of Geer with the retaining assembly teachings of Bennett et al. The rationale to combine is to allow the fastener to remain retained with the hosel even when the sleeve portion is not threadingly engaged with the fastener using a known retention arrangement. This will expectantly allow dynamic adjustment and removal of the coupling mechanism/shaft without the fastener being fully withdrawn from the hosel. This will ease and improve adjusting of the hosel assembly. The proposed modification has a reasonable expectation of success as the functionality and intended purpose of Geer et al. is not frustrated. The combined art is considered to teach the following: a securing fastener having securing fastener threads configured to threadably couple to the bottom end bore (Geer et al. – Fig. 8; Bennett et al. -Fig. 87), thereby to secure the coupling mechanism and attach the shaft to the iron-type club head, as well as to the threaded hosel flange (Bennett et al.), thereby to retain the securing fastener within the hosel bore, without a washer (Bennett et al. – threads 181), when the securing fastener is unattached to the bottom end bore. Per MPEP 2111, the Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard: The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” As shown in Fig. 87 of Bennett et al., no washer is used within the hosel bore, and no washer is used when to retain the fastener in the hosel bore when the securing fastener is unattached to the bottom. Washer 648 is positioned outside the hosel bore and provides no functionality when the securing fastener 624 is unthreaded with bottom end bore. Thus, meeting the claimed functional language - See also MPEP 2114 In re Schreiber. Should applicant traverse this position based on the presence of washer 648, in the alternative, examiner cites to Bolane et al. for its teaching that it is known to position a securing fastener 24 directly interfaced to a hosel flange underside without the use of a washer (Fig. 20A). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to remove the washer at the underside of the threaded flange of Geer + Bennett. The rationale to combine is to reduce manufacturing costs and assembly time.
With respect to claim 33, Geer et al. teaches wherein: the sleeve coupler set 184 is asymmetric in profile (paragraph [0047]).
With respect to claim 34, Geer et al. teaches wherein: the removable spacer 216 further comprises a receiver coupler set 224 having a plurality of receiver couplers (paragraph [0063]); and the sleeve coupler set 184 of the shaft sleeve 156 is configured to sit against the receiver coupler set 224 of the removable spacer 216 to restrict rotation of the shaft sleeve 156 relative to the removable spacer 216 (paragraphs [0063], [0085]). See also MPEP 2114 - In re Schreiber.
With respect to claims 35-36, Geer et al. teaches wherein the removable spacer 216 further comprises a spacer coupler set 220 having a plurality of spacer couplers protruding from an outer surface of the removable spacer 216 (paragraph [0067], [0086]-[0087]; Fig. 15), wherein: the hosel bore 140 comprises a receiver coupler set 188 having a plurality of receiver couplers indented into an internal surface of the hosel 132 (paragraph [0045]); and the spacer coupler set 220 of the removable spacer 216 is configured to sit against the receiver coupler set 188 of the hosel bore 140 to restrict rotation of the golf coupling mechanism 104 relative to the iron-type club head 100 (paragraph [0063]; [0087]). See also MPEP 2114 - In re Schreiber.
With respect to claims 37-39, Geeer et al. teaches wherein the shaft sleeve 156 further comprises locking channels 236 located at the bottom section of the shaft sleeve (paragraph [0065]); wherein: the removable extender 228 comprises a first engagement member 232 and a second engagement member 232 (paragraph [0065]); and the first and second engagement member 232 of the removable extender 228 are configured to couple with the locking channels 232 of the shaft sleeve 156 to restrict rotation of the removable extender 228 relative to the shaft sleeve 156 (paragraphs [0065], [0095]-[0096]); wherein removable extender 228 is secured to the shaft sleeve 156 without the use of a threads Id. See also MPEP 2114 - In re Schreiber.
Response to Arguments
5. Applicant's arguments filed 3/2/26 have been fully considered but they are not persuasive.
Applicant argues that the combination Greer and Bennett would result in the use of a washer to retain the securing fastener within the hosel bore when the securing fastener is unattached to the bottom end bore. Examiner respectfully disagrees. First, the combination results in the washer 148 of Greer being eliminated for the threaded flange 181 that catches the bigger threads of the securing fastener 624 taught in Bennett (Fig. 87). A person ordinary skill in the art would recognize that the combined art would render Greer’s washer redundant and unnecessary since the threaded flange would prevent the securing fastener from exiting the hosel bore. Secondly, the washer 648 of Bennett is not used to retain the securing fastener 624 within the hosel bore when the securing fastener 624 is unattached to the bottom end bore. Washer 648 is positioned outside the hosel bore and provides no functionality when the securing fastener 624 is unthreaded with bottom end bore. In a broadest and reasonable interpretation of the claims, in view of the specification as a whole, the scope of the claims does not forbid the use of a washer in the golf club. It merely says that no washer is used to retain the securing fastener within the hosel bore when the securing fastener is unattached to the bottom end bore.
Lastly, applicant argues that unexpected results were achieved using an exemplary golf club head coupling mechanism depicted in Fig. 8B as compared to a control golf club head depicted in Fig. 8A, which used a washer, fastener and shaft sleeve. According to applicant, the exemplary golf club endured 200 cycles without failing, while the control golf club failed every 56 cycles. As such, according to applicant, the obviousness combination would thus be improper. Examiner respectfully disagrees. In order for evidence of secondary considerations to be accorded substantial weight, there must be a nexus, i.e., a legally and factually sufficient connection or correspondence between the submitted evidence and the claimed invention. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373, 2019 USPQ2d 483355 (Fed. Cir. 2019), cert. denied, 141 S.Ct. 373 (2020). MPEP 2145. Applicant or patent owner bears the burden of establishing a nexus between the objective evidence of nonobviousness and the claimed invention. See In re Huang, 100 F.3d 135, 140, 40 USPQ 1685, 1689 (Fed. Cir. 1996). Here, applicant has failed to meet this burden. Moroever, the material of the retaining element used in the control golf club was not discussed. A person ordinary skill in the art would understand that a more durable material for the retaining element (i.e. washer material) would potentially have a substantial effect on the durability of its retaining function. This crucial factor was not addressed by applicant. Moreover, evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) MPEP 716.02(c). Here, per KSR, exemplary rationales that may support a conclusion of obviousness include: (B) Simple substitution of one known element for another to obtain predictable results. Here, at time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to substitute the retaining assembly of Geer with the retaining assembly teachings of Bennett et al. The rationale to combine is to allow the fastener to remain retained with the hosel even when the sleeve portion is not threadingly engaged with the fastener using a known retention arrangement. This will expectantly allow dynamic adjustment and removal of the coupling mechanism/shaft without the fastener being fully withdrawn from the hosel. This will ease and improve adjusting of the hosel assembly. After careful consideration of the secondary evidence (i.e. unexpected results), examiner considers the probabitive value of the alleged unexpected result to be outweighed by the evidence supporting prima facie obviousness. Thus, the obviousness rejection is maintained.
Conclusion
6. 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 MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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