DETAILED ACTION
Priority
The Examiner appreciates that applicant has perfected the priority chain. That is, the chain now reads the 14/534,308 is the parent, so that the current application 18/170,659 is a CON of 15/058,188 which is a CON of 14/534,308. 14/534,308 has a filing date of 11/6/14.
With that said, the specification between the application 14/534,308 changes with the 15/058,188 application (the 14 series application has 56 paragraphs, and the 15 series application has 61 paragraphs). Additional and new language in the 15 series application can be found at pars. [0004], [0005], [0037], [0046], and [0047]. As such, 15/058,188 should have been correctly listed as a CIP of parent application 14/534,308; and not a CON.
With that said, the additional material found in 15/058,188 does not change the priority of the currently presented claims. All claims have a priority date of 11/6/14 based on parent application 14/534,308.
Election/Restrictions
Newly submitted claims 101-103 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: newly listed claims 101-103 are specifically directed at “a golf club grip”. This is a sub-combination. However, originally presented claims 1-12 were directed at the combination (i.e. the grip, the shaft, and the head). At the time of filing, current claims 101-103 could have been properly restricted from claims 1-12 as being directed toward a sub-combination. Combination/sub-combinations are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the sub-combination as claimed for patentability, and (2) that the sub-combination has utility by itself or in other combinations (MPEP § 806.05(c)). As originally presented, claims 1-12 (i.e. the combination) did not require the particulars of claims 101-103 (i.e. the sub-combination) including:
(a) non-parallel to the grip center axis in a plane coincident with the first axis,
(b) parallel to the grip center axis in a plane coincident with the second axis, and
(c) angled such that the lie angle is the same regardless of the position of the golfer's
hands along the length of the exterior surface.
Furthermore, the sub-combination (claims 101-103) has utility in other combinations of golf clubs (i.e. other heads/shafts).
As claims 101-103 are directed at the sub-combination, and because the originally presented claims did not require the particulars of the sub-combination, claims 101-103 are withdrawn according to election by original presentation as being directed toward a sub-combination.
Specification
The specification amendment received 10/22/25 is accepted.
For claim 1, the Examiner construes “approximately” to be “10% of the stated value” according to applicant’s par. [0034].
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:
Claim 1 – the reference line at the front edge of the grip and aligned with the club face is never discussed (presumably support from Fig. 8A). Par. [0059] talks about the “reference line” being “parallel” to the face, but never aligned with the face. Also, the shaft center axis being “approximately perpendicular to the club face” is also not in the specification.
Claim 24 – the language of claim 24 does not appear to have antecedent basis in the specification
Claim 43 – the language “approximately circular cross section” does not have proper antecedent basis
Claim 45 – the language “approximately unform cylinder” does not have proper antecedent basis
Claim 50 – the language “approximately circular cross section” does not have proper antecedent basis
Claim 83 – all of the “approximate” shapes of claim 83 do not have proper antecedent basis (i.e. “approximately elliptical”, “approximately rectangular”, etc.)
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 40 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 40 now claims “about 1.2 degrees to about 1.8 degrees”. These specific values do not appear in the specification (see specification, par. [0053]). As such, the values are new matter, and also cannot support the claimed range.
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 1-5, 9, and 11 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. Claim 1 claims “wherein the shaft center axis is approximately perpendicular to the club face” (emphasis added). This language is unclear, and it is unclear in which orientation applicant is looking at the golf club in order to claim this limitation. For example, the Examiner initially assumed that applicant was claiming this limitation based on a front view, i.e. Fig. 2 (see below), because this is only view that shows the shaft axis as it relates to the club face.
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However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. The Examiner also construes “perpendicular” to be a “stated value of 90 degrees”. So is applicant specifically attempting to claim that the acute angle from perpendicular is between 0 and 9 degrees (i.e. the actual lie angle is from 81 to 90 degrees)? This would seem to be in contradiction of both the USGA guidelines (see applicant’s par. [0033], stating that the lie angle must be at least “10 degrees” off perpendicular, and par. [0043] stating that the lie can be 80 degrees”; or 10 degrees off perpendicular). In any event, applicant should both clarify the claim language (i.e. specific view wherein this is shown) and go on record as to the intent of the claim limitation. The Examiner also kindly requests that applicant point to support in the drawings for this being shown; because respectfully, other than the above lie angle discussion, the Examiner does not see it.
Claim 5 is 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. Claim 5 claims that “the grip center axis is at an angle with respect to the shaft and grip center axes” (emphasis added). The Examiner fails to see on the grip center axis can be at an angle as compared to itself.
Claim 40 is 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 term “about” in claim 40 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Furthermore, as noted in the 112(a) above, applicant does not have support for the newly claimed range.
Claim 44 is 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 z-axis” of claim 44, line 2 does not have antecedent basis.
Claim 45 is 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. Claim 45 claims that the grip is “approximately uniform cylinder”. The problem with this limitation is, first, there is not actual antecedent basis in the specification for this language (i.e. there is a claim objection). Second, as noted above, par. [0034] means that “approximately” is interpreted as “10% of the stated value” (emphasis added). However, there is no stated value in claim 45. As such, “approximately uniform cylinder” is indefinite.
Claim 50 is 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. Claim 50 claims that the channel is “approximately circular in cross-section”. The problem with this limitation is, first, there is not actual antecedent basis in the specification for this language (i.e. there is a claim objection). Second, as noted above, par. [0034] means that “approximately” is interpreted as “10% of the stated value” (emphasis added). However, there is no stated value in claim 50. As such, “approximately circular in cross section” is indefinite.
Claim 83 is 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. Claim 83 claims uses the “approximately” in front of a plurality of different shapes. The problem with this limitation is, first, there is not actual antecedent basis in the specification for these approximate shapes (i.e. there is a claim objection). Second, as noted above, par. [0034] means that “approximately” is interpreted as “10% of the stated value” (emphasis added). However, there is no stated value in claim 83. As such, the claim is indefinite.
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, 9, 18, 19, 23, 24, 27, 39, 40, 43, 45, 49, and 50 are rejected under 35 U.S.C. 103 as being unpatentable Sussich (US Pub. No. 2014/0096087 A1) in view of Kronogǎrd (herein “Kronogard”; WO Pub. No. 92/17247).
Regarding claim 1, Sussich discloses a golf club comprising: a shaft having a shaft center axis (Fig. 7 below, item 42, noting an imaginary center axis would be inherent); a grip at one end of the shaft (Fig. 7, item 44), the grip having a grip center axis (Fig. 7, item 44; noting an imaginary center axis would be inherent), and a front edge of the grip having a reference line extending down the side of the grip an exterior front surface of the grip (Fig. 7, noting this would be inherent), the grip further comprising a channel configured to receive the shaft therein and having a channel center axis (Fig. 7, noting the channel would be obvious, the axis would be inherent); a club head at another end of the shaft, the club head comprising a club face configured to make contact with a golf ball (Fig. 7, item 24; noting this is functionally possible given the structure) and a reference line at the grip edge at the front edge of the grip aligned with the club face (Fig. 7, item 24; noting an imaginary reference line is shown), wherein the shaft axis is approximately perpendicular to the face (as noting in the 112(b) above, the Examiner is completely unclear what applicant means by this limitation, is this the lie angle?) and wherein the golf club is configured to resist twisting when the club face contacts the golf ball by correcting the club face (Figs. 6 and 7 and pars. [0045], [0047], and [0058]; noting this is completely obvious to a POSA, noting any golf club made to measure some length and have some weight would inherently have a MOI about its center of gravity, that MOI is a resistance to twisting and impact). It is noted that Sussich does not specifically disclose that the reference line off the grip aligns with the face, wherein the grip center axis and the channel center axis are not parallel to one another; wherein the channel is angled within the grip so as to provide a lean of the shaft. However, Sussich specifically states that at least the top edge of the grip should be aligned with the face (Fig. 7 and par. [0060]). In addition, Kronogard discloses a similar putter wherein the grip center axis and the channel center axis are not parallel to one another (Fig. 10 below; as annotated); wherein the channel is angled within the grip so as to provide a lean of the shaft (Fig. 10, as annotated). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sussich to use the grip center axis and the channel center axis are not parallel to one another; wherein the channel is angled within the grip so as to provide a lean of the shaft as taught by Kronogard because doing so would be combining prior art elements (a grip on a forward press putter and a grip that accommodates the angle of a forward press) according to known methods (a substitution of the grip off-axis channel as compared to the grip front face) to obtain predictable results (the continued ability to use a grip that is aligned with the front face, the grip being able to accommodate a forward press using an off-axis channel, see Kronogard: page 7, lines 5-7, and grip providing the user with a “convenient and relaxed grip” – see Kronogard: page 6, lines 37-38). Finally, regarding alignment of the reference line between the face surface and the grip surface, in keeping with the original disclosure of Sussich, if the Sussich and Kronogard were to be bodily incorporated, it would have been obvious to a POSA to align the front of the grip with the face, because Sussich specifically requires the alignment so that “the user’s hands are positioned directly above the ball’s impact” (see Sussich: par. [0052]; see annotated combined drawing of the two references below) while also “rotating the grip somewhat in relation to the shaft so that the plan surface has a desired direction (i.e. flat as compared to the front face) (see Kronogard: page 6, lines 22-23).
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Regarding claim 2, the combined Sussich and Kronogard disclose that [the club is] configured and arranged such that the shaft is secured within the grip channel wherein the shaft center axis is parallel to the channel center axis but the shaft center axis is angled relative to the grip center axis and the shaft center axis is not parallel to the grip center axis (Kronogard: Fig. 10 above, noting this is obvious).
Regarding claim 3, the combined Sussich and Kronogard disclose that golf club is configured such that an angle between the grip center axis and the shaft center axis is responsible to the lean of the shaft (Kronogard: Fig. 10 above; noting this is functionally possible given the structure).
Regarding claim 5, the combined Sussich and Kronogard disclose that the shaft center axis and the channel center axis are parallel to one another but the grip center axis is at an angle with respect to the shaft axis (Kronogard: Fig. 10; noting this is obvious).
Regarding claim 9, the combined Sussich and Kronogard disclose that the lean of the shaft is a forward lean of the shaft with respect to the club face (Sussich: Fig. 7 above).
Regarding claim 18, Sussich discloses a golf club (Fig. 7 above) comprising: a shaft having a first end, a second end, and a shaft center axis (Fig. 7 above, item 42, noting an imaginary center axis, first end, and second end would be inherent), the shaft comprising an approximately round cross section with respect to the shaft axis (Fig. 7 and Fig. 5; noting “round or circular” shafts are well-known in the art as seen in Fig. 5); a grip at one end of the shaft, the grip having a grip center axis and configured to be connected at the second end of the shaft (Fig. 7, item 44; noting an imaginary center axis would be inherent), the grip including a cross section with respect to the grip axis (Fig. 7 above, and par. [0060]; noting some cross section is inherent), the grip further comprising a channel configured to receive the shaft therein and having a channel center axis (Fig. 7/ noting some channel axis would be inherent); the channel is within and along a longitudinal direction of the grip and configured to receive the shaft therein (Fig. 7 above), a club head connected directly to the first end of the shaft (Fig. 7 above, item 24), the club head comprising a top side and a club face configured to make contact with a golf ball (Fig. 7 above). It is noted that Sussich does not specifically disclose that the channel having a channel axis approximately coincided with the shaft axis but not with the grip axis; and wherein the grip center axis and the channel center axis are not parallel to one another; and wherein the channel is angled within the grip so as to provide a lean of the shaft in a direction viewable in a side view of the golf club relative to the club head. However, Sussich specifically states that at least the top edge of the grip should be aligned with the face (Fig. 7 and par. [0060]). In addition, Kronogard discloses a similar putter the channel having a channel axis approximately coincided with the shaft axis but not with the grip axis (Fig. 10 above); and wherein the grip center axis and the channel center axis are not parallel to one another (Fig. 10 above); and wherein the channel is angled within the grip so as to provide a lean of the shaft in a direction viewable in a side view of the golf club relative to the club head (Fig. 10 above). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sussich to make the channel have a channel axis approximately coincided with the shaft axis but not with the grip axis; and wherein the grip center axis and the channel center axis are not parallel to one another; and wherein the channel is angled within the grip so as to provide a lean of the shaft in a direction viewable in a side view of the golf club relative to the club head by Kronogard because doing so would be combining prior art elements (a grip on a forward press and a grip that accommodates the angle of a forward press) according to known methods (a substitution of the grip off-axis channel as compared to the grip front face) to obtain predictable results (the continued ability to use a grip that is aligned with the front face, the grip being able to accommodate a forward press using an off-axis channel, see Kronogard: page 7, lines 5-7, and grip providing the user with a “convenient and relaxed grip” – see Kronogard: page 6, lines 37-38).
Regarding claim 19, the combined Sussich and Kronogard disclose that the lean of the shaft is a direction viewable in a side view of the golf club is a forward lean of the shaft towards the club face (see Fig. 7; combined invention above).
Regarding claim 23, the combined Sussich and Kronogard disclose that the side view of the golf club is looking down a horizontal line parallel to the club face (see Fig. 7; combined invention above).
Regarding claim 24, the combined Sussich and Kronogard disclose that the side view of the golf club looking down the horizontal line parallel to the club face is 90 degrees from a view of the golf club looking down a line perpendicular to the club face (Fig. 7, combined invention above).
Regarding claim 27, the combined Sussich and Kronogard disclose that the horizontal line is approximately perpendicular to the club face (Fig. 7, combined invention above).
Regarding claim 39, Sussich discloses a golf club comprising: a club head having a top surface and a club head face (Fig. 7 above, noting a top surface an face are inherent); a straight shaft having a first end, a second end, and a shaft axis, the first end of the shaft is configured to be attached to the top side of the club head (Fig. 7 above, item 42; noting the claim does not require the entirety of the shaft to be straight); a grip having a grip center axis and configured to be connected at the second end of the shaft (Fig. 7, item 44; noting an imaginary center axis would be inherent), the grip having a section with respect to the grip axis defined by a long axis and a short axis with the short axis having different dimensions than the long axis (Fig. 4, item 44; noting the imaginary long axis being longitudinal axis, the short axis being an axis perpendicular to that); a channel within and along a longitudinal direction of the grip and configured to receive the shaft therein (Fig. 7 above, noting this is obvious), the channel having a channel axis approximately coincided with the shaft axis (Fig. 7 above; noting this is obvious), the channel comprising an approximately circular cross section with respect to along the channel axis (Fig. 7, and Fig. 5; noting the use of a circular shaft would be obvious to a POSA, specifically as shown in Fig. 5); and wherein the golf club is configured to enable the face to at least on one of resist or correct twisting of the shaft during an arc stroke when the golf club is making contact with the golf ball (Figs. 6 and 7 and pars. [0045], [0047], and [0058]; noting this is completely obvious to a POSA, noting any golf club made to measure some length and have some weight would inherently have a MOI about its center of gravity, that MOI is a resistance to twisting at impact). It is noted that Sussich does not specifically disclose that the channel/shaft axis coincide, but not with the grip axis and wherein the shaft intersects the grip axis to form an angle between the shaft axis and the grip axis, and wherein the angle between the shaft axis and grip axis is in the range of about 0.5 degrees to about 20 degrees. However, Kronogard discloses a similar putter that that the channel/shaft axis coincide, but not with the grip axis (Fig. 10 above) and wherein the shaft intersects the grip axis to form an angle between the shaft axis and the grip axis (Fig. 10 above), and wherein the angle between the shaft axis and grip axis is in the range of about 0.5 degrees to about 20 degrees (page 6, lines 27-30; noting specifically 10 degrees). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sussich to make the channel/shaft axis coincide, but not with the grip axis and wherein the shaft intersects the grip axis to form an angle between the shaft axis and the grip axis, and wherein the angle between the shaft axis and grip axis is in the range of about 0.5 degrees to about 20 degrees taught by Kronogard because doing so would be combining prior art elements (a grip on a forward press putter and a grip that accommodates the angle of a forward press, the angle being 10 degrees) according to known methods (a substitution of the grip off-axis channel as compared to the front face) to obtain predictable results (the continued ability to use a grip that is aligned with the front face, the grip being able to accommodate a forward press using an off-axis channel at 10 degrees, see Kronogard: page 7, lines 5-7, and grip providing the user with a “convenient and relaxed grip” – see Kronogard: page 6, lines 37-38).
Regarding claim 40, it is noted that the combined Sussich and Kronogard do not specifically disclose that the slant angle between the shaft axis and the grip axis comprises about 1.2° to about 1.8°. However, regarding the exact angle of the shaft axis as compared to the grip, it has been held that 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)(see applicant’s spec, par. [0053], applicant giving no support for the lesser claimed range, let alone criticality). In addition, to support the Examiner’s assertion that grip to channel axis angle is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Kronogard which specifically states that shaft to grip angle is a result-effective variable used to orient the plan surface (page 6, lines 22-23). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact angle between the shaft and grip axis would be found through routine experimentation in order to optimize the orientation of the plan surface.
Regarding claim 43, the combined Sussich and Kronogard disclose that the long axis and the short axis of the cross section intersects at a first point, and wherein the first point does not coincide with a second point of the approximately circular cross section of the channel at the second end of the shaft (Kronogard: Fig. 10; noting this limitation is directed at completely imaginary limitations, but met by Kronogard; Sussich: Fig. 2, item 42A making obvious that the shaft, and corresponding channel, are circular in nature).
Regarding claim 45, it is noted that the combined Sussich and Kronogard do not specifically disclose that the grip is comprised of an approximately uniform cylinder and the shaft is inserted in the cylinder of the grip in a slanted manner. However, regarding the exact shape of the grip, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s entire spec, applicant not even discussing “approximately uniform cylinder”, let alone giving criticality to it). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the grip would not be significant: that is, the grip would provide the forward press regardless of its exact shape.
Regarding claim 49, the combined Sussich and Kronogard disclose that the golf club is adapted such that the shaft is not aligned directly above the center of mass of the club head (Kronogard: Fig. 4; noting this would be inherent, or at least obvious) to at least one of: resist or correct twisting of the shaft during an arc of the stroke when the golf club contacts the golf ball (Kronogard: Fig. 4; noting this is functionally possible given the above claimed structure).
Regarding claim 50, the combined Sussich and Kronogard disclose that the channel comprising an approximately circular cross section with respect to the channel axis (Kronogard: Fig. 4 and 10, and Sussich: Fig. 2 and 7; noting the use of a circular shaft, as thus a corresponding circular channel within the grip, is well-known to a POSA; as see in Sussich: Fig. 2, item 42A).
Claims 4, 21, 25, 28, and 83 are rejected under 35 U.S.C. 103 as being unpatentable over Sussich (US Pub. No. 2014/0096087 A1) in view of Kronogǎrd (herein “Kronogard”; WO Pub. No. 92/17247) and in further view of McLoughlin (US Pub. No. 2013/0130825 A1).
Regarding claims 4, 21, 25, and 28, the combined Sussich and Kronogard disclose that the grip has some cross section with respect to the grip center axis such that a first axis in the grip cross section and a second axis in the grip cross section are perpendicular to one another but have different dimensions from one another (Sussich: Fig. 7 and par. [0060]; specifically stating that it is “conical” or tapering in nature; see also Kronogard: Fig. 10 above; clearly showing that the distal end of the grip has a larger width than the proximate side). It is noted that the combined Sussich and Kronogard do not specifically disclose that the cross section is elliptical. However, McLoughlin disclose a similar style of grip (Fig. 3) wherein the grip has an elliptical cross section (Fig. 2A and par. [0059]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Sussich and Kronogard to use an elliptical cross section grip as taught by McLoughlin because doing so would be combing prior art elements (using a grip that has some tapering shape and using a grip that has a tapering shape in the form of an elliptical) according to known methods (making the exterior of the grip in the form of an elliptical) to yield predicable solutions (making the grip exterior in the form of an elliptical and tapering shape, the elliptical and tapering shape known to work for golf head putters).
Regarding claim 83, it is noted that the combined Sussich and Kronogard do not specifically disclose that the grip comprising one of an approximately elliptical cross section, an approximately rectangular cross section, an approximately triangular cross section, an approximately hexagonal cross section, an approximately circular cross section, or an approximately square cross section with respect to the channel axis. However, both Sussich and Kronogard disclose some grip that would have an approximate cross-sectional shape (Sussich: Fig. Fig. 7, item 44 and Kronogard: Fig. 10). In addition, McLoughlin disclose a similar style of grip (Fig. 3) wherein the grip has an elliptical cross section (Fig. 2A and par. [0059]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Sussich and Kronogard to use an elliptical cross section grip as taught by McLoughlin because doing so would be combing prior art elements (using a grip that has some tapering shape and using a grip that has a tapering shape in the form of an elliptical) according to known methods (making the exterior of the grip in the form of an elliptical) to yield predicable solutions (making the grip exterior in the form of an elliptical and tapering shape, the elliptical and tapering shape known to work for golf head putters).
Claims 11, 22, 26, and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Sussich (US Pub. No. 2014/0096087 A1) in view of Kronogǎrd (herein “Kronogard”; WO Pub. No. 92/17247) and in further view of Hannon et al. (herein ”Hannon”; US Pat. No. 5,290,035).
Regarding claims 11, 22, and 26, it is noted that the combined Sussich and Kronogard do not specifically disclose that the golf club is self-balancing and adapted such that the club face at least one of: seeks approximately square or provides approximately zero torque with respect to the shaft, to an arc of stroke when the golf club contacts a golf ball. However, Sussich discloses the ability to distribute the weight the golf club as desired (par. [0047]-[0051]). In addition, Hannon disclose that the golf club is self-balancing (Fig. 6; noting it is adapted to self-balance with the face square) and adapted such that the club face at least one of: seeks approximately square or provides approximately zero torque with respect to the shaft, to an arc of stroke when the golf club contacts a golf ball (col. 2, lines 2-8 and col. 4, lines 41-53; noting it seeks square during the putting stroke as there is “no moment about the shaft axis”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Sussich and Kronogard to make the golf club self-balancing and adapted such that the club face at least one of: seeks approximately square or provides approximately zero torque with respect to the shaft, to an arc of stroke when the golf club contacts a golf ball as taught by Hannon because doing so would be combining prior art elements (a putter that can have variable weighting and a putter that can be weighted to be face balanced) according to known methods (weight the putter to have a face balance) to yield predictable results (weighting the putter to have a face balance, the face seeking square during the putting stroke because there is no moment about the shaft axis).
Regarding claim 44, it is noted that the combined Sussich and Kronogard do not specifically disclose that the club seeks a square face when swung by a user, thereby reducing torque in the Z axis when the face of the club hits the ball. However, Sussich discloses the ability to distribute the weight the golf club as desired (par. [0047]-[0051]). In addition, Hannon disclose a similar putter wherein the club seeks a square face when swung by a user, thereby reducing torque in the Z axis when the face of the club hits the ball (col. 2, lines 2-8 and col. 4, lines 41-53; noting it seeks square during the putting stroke as there is “no moment about the shaft axis”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Sussich and Kronogard to make the club seeks a square face when swung by a user, thereby reducing torque in the Z axis when the face of the club hits the ball as taught by Hannon because doing so would be combining prior art elements (a putter that can have variable weighting and a putter that can be weighted to be face balanced) according to known methods (weight the putter to have a face balance) to yield predictable results (weighting the putter to have a face balance, the face seeking square during the putting stroke because there is no moment about the shaft axis).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Sussich (US Pub. No. 2014/0096087 A1) in view of Schön (herein “Kronogard”; WO Pub. No. 92/17247) and as evidenced Kronogǎrd (herein “Kronogard ‘439”; WO Pub. No. 2009/005439 A1).
Regarding claim 20, it is noted that the combined Sussich and Kronogard do not specifically disclose that the forward lean of the shaft towards the club face has a forward lean angle of 1 degree towards the club face. However, Sussich clearly discloses a forward lean at some angle (Fig. 7 above). In addition, regarding the exact forward lean angle, it has been held that 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))(see applicant’s spec, par. [0059], applicant giving no criticality for 1 degree within the disclosed 1-6 degrees). In addition, to support the Examiner’s assertion that forward lean angle is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Kronogard ‘439 which specifically states that forward lean angle is a result-effective variable based on player convenience/preference angle (page 5, lines 13-17 and figs. 11 to 14). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact forward lean angle could be optimized through routine experimentation based on the user preference.
Response to Arguments
Applicant’s arguments with respect to the current 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.
Priority
The Examiner appreciates applicant’s perfection of priority, and the specific support for the independent claims mapped back to the parent application 14/534,308. As such, the Examiner has given a priority date of 11/6/14 for all the currently presented claims.
112(a) Rejections
Previous 112(a) rejections are overcome based on applicant’s Remarks and the claim amendments. However, a new 112(a) rejection is given for claim 40. The Examiner does not see the specific values of claim 40 listed anywhere in the specification.
112(b) Rejections
The Examiner is unclear why these claims are being argued. The claims appear to be cancelled, rendering the discussion moot.
102 Rejection
The previous 102 rejection has been rendered moot based on applicant’s perfection of priority.
103 Rejection
A new 103 rejection has been given; rendering discussion of the previous 103 moot.
Interview Summary
In the Remarks made 5/3/25, concerning face-center balanced putters and the interview summary provided by the Examiner, applicant stated “Applicant is unaware of any type of center-face balanced putter, and does not fully understand discussion relating to that terminology” (see Remarks, page 27; emphasis added).
In the current Remarks (and Remarks received 8/29/25, page 35), applicant appears to take the position that applicant did understand the “discussion of the terminology”, but both engineers” stated that “face-center balanced putters…do not exist in the marketplace or the prior art” (emphasis added). This is an interesting position, especially when applicant (and “both engineers”) were made aware of Taylor as prior art (US Pat. No. 3,954,265) and the specific face balancing as shown in Fig. 4. In summary, and with all due respect, these statements regarding “center-face balanced putters” were never made during the interview and the Examiner’s detailed interview agenda provides an exact response to his questions from the engineers. In addition, the Examiner’s has never wavered in the specifics of his interview summary and completely stands by the original interview summary as posted on 4/15/25.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (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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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
2/2/26
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711