DETAILED ACTION
Election/Restrictions
1. Applicant's election with traverse of Invention II (Fig.’s 10-12; claims 1-7) in the reply filed on 11/17/25 is acknowledged. The traversal is on the ground(s) that Species I, III and V should be examined with elected species II because they share essential features. This is not found persuasive because the shaft receiving structure of each Invention comprises mutually exclusive structures identified in the Figures corresponding to the various embodiments of the inventions as listed in the Restriction Requirement. Applicant did not traverse this position. Examiner recognizes that some overlap exists between the distinct inventions, but the crux of the invention is the specific configuration of the shaft receiving structure. See Abstract; Technical Field, Background. Moroever prior art that reads on the elected embodiment, is unlikely to read on the non-elected distinct embodiments of Inventions I, III IV and V. Each distinct embodiment would require employing different search strings and search strategies. Given the numerous embodiments, this would create a serious search and examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
2. Claim 7 is objected to because of the following informalities: “tuber” should be amended to “tube”. Appropriate correction is required.
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.
4. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Solheim et al. (US Pub. No. 2014/0370999) in view of Nielson et al. (US Pub. No. 2016/0059093).
With respect to claim 1 and 5-6, Solheim et al. teaches a golf club head 10000 comprising: a strike face 10110 and a body secured together to define an interior cavity 12201; the body comprising a crown 10120, a sole 11130 opposite the crown, a heel , a toe opposite the heel, a skirt adjoining the crown and the sole (Fig’s 10-12; paragraph [0076]-[0078]), and a shaft-receiving structure; the shaft-receiving structure comprising a hosel 12510 and a shaft sleeve 10800, the hosel 12510 formed of a first material comprising a first density (paragraph [0091]); wherein: the hosel 12510 comprises a hosel wall forming at least a first portion of a hosel bore, a hosel wall upper portion 10130 forming a hosel bore opening 14131, and a hosel base 12522 opposite the hosel bore opening 14131, the hosel base 12522 formed at an interior surface of the sole, near the heel (Fig. 14); the hosel 12510 defines a hosel bore axis concentric with the hosel bore (i.e. concentric about hosel axis 14131 – Fig.’s 14-15; paragraph [0087]); the shaft sleeve 10800 is insertable into the hosel 12510 through the hosel bore opening 14131 and configured to couple a golf club shaft 11900 with the hosel 12510 (Fig. 12); the hosel bore opening 14131 is configured to receive the shaft sleeve 10800; a lip (at perimeter 12512 – Fig. 14) formed at a bottom portion of the hosel wall upper portion 10130; the shaft-receiving structure further comprises a tube insert 17600 extending through the interior cavity 12201, from the lip to the hosel base 12522 (Fig. 17; paragraph [0091])); the tube insert is separated from the hosel bore opening 14131 by the hosel wall upper portion 10130 (Fig. 17); wherein the tube insert 17600 is formed of a second material (paragraph [0091]); the tube insert 17600 forms a remainder of the hosel bore; and the tube insert 17600 seals the hosel bore from the interior cavity 12201 (Fig.’s 12, 17).
Solheim teaches wherein the first material can comprise a metallic material such as titanium or steel, and wherein the tube insert 17600 can be a plastic material or composite (paragraph [0091]). Solheim does not provide the density of the tube insert material, and thus fails to expressly teach wherein the tube insert 17600 second density is less than the first density. However, within the golfing art, it is known to utilize a TPU material with a density less than 3 g/cm3 as evidenced by Nielson et al. at paragraph [0300]. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a material for the tube insert of Solheim using the low density TPU material disclosed in Nielson. The rationale to combine is to ensure the strength and durability of the tube insert, without adding unnecessary weight. This will allow more discretionary weight to be located at optimal locations. The proposed modification has a reasonable expectation of success as Solheim expressly permits plastic and/or composite materials for the tube insert (paragraph [0091]). Lastly, steel and titanium, the materials of the first material, are known to comprise densities greater than the TPU material taught by Nielson et al.
With respect to claims 2-3, Solheim teaches wherein the shaft-receiving structure further comprises a hosel length (14602; See Fig.’s 14, 17), measured parallel to the hosel bore axis 14131 from the hosel bore opening 14131 to the hosel base 12522; the tube insert 17600 comprises a tube insert length 14601 (substantially represented by length 14601 – See Fig.’s 14, 17) measured from a top end of the tube insert to a bottom end; wherein the tube insert length 14601 is between 1.00 inch and 1.50 inch (i.e. “approximately 25.4 mm” – paragraph [0082]).
Solheim further teaches wherein the hosel length 14602 can be up to “approximately 38.1 mm” (paragraph [0082]). This creates a ratio of approximately 66% between the tube insert length 14602 and the hosel length, just outside the claimed range of between 70 and 90%. However, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976) – MPEP 2144.04. In reviewing applicant’s specification, the specification does not provide criticality to the claimed range, indicating that the lengths “can” be within the claimed range (paragraph [0103]). Moreover, reducing the length of the hosel will not adversely affect the functionality of Solheim as Solheim contemplates a hosel length less than 38.1 mm (paragraph [0082] – “up to approximately 38.1 mm”). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to scale down the length of the hosel, particularly at the upper portion. The rationale to do so is to lower the club CG and lower the weight of the hosel. This will add expected performance benefits of higher launch, more forgiveness, and faster club head speed. Lowering the hosel length from 38.1 by approximately 5mm will bring the ratio to ~75%, within the claimed range.
With respect to claim 4, Solheim teaches wherein the lip is formed by a change in thickness between the hosel wall upper portion and a remainder of the hosel wall, wherein the hosel wall upper portion comprises a greater thickness than the remainder of the hosel wall (Fig. 14 showing the lip formed by a reduction in thickness of the hosel wall upper portion, the reduced thickness portion being construed as a remainder of the hosel wall). 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.” In the instant case, a thickness of the remainder of the hosel wall is being broadly construed and does not require the entire hosel (other than hosel wall upper portion) to have a thickness less than a thickness of the hosell wall upper portion. This appears to comport with applicant’s specification, which shows the hosel to comprise a thickness near the base portion much greater than the thickness of the upper wall portion (See Fig. 10).
Allowable Subject Matter
5. Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
6. 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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711