DETAILED ACTION
Priority
Regarding claim 1 and 7-9, the claims receive a priority date of 3/15/23. Applicant argues support for the amendments via pars. [000339]-[00340] and Fig. 111 of this current CIP application (see Remarks, received 4/28/26, page 5). Pars. [00339]-[00340] and Fig. 111 are not found in parent application 18/102,224.
Claims 10, 19, and 20 get a priority date of this current CIP application (i.e. 3/15/23) based on Fig. 111 and par. [00340] in which the current claimed invention is disclosed. Restated, Fig. 111 and par. [00340] are not present in parent application 18/102,224. The priority date of these claims has never been argued by applicant.
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 and 7-9 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 now claims “wherein each of the first material, the second material, the third material, the fourth material, and the fifth material are different materials” (emphasis added). The claim is indefinite because the specification and the claim itself does not explain what “different materials” encompass. Does claim 1 require all of the “materials” to be “different” in name, location, chemical composition, physical properties, a combination, or all of the above? For example, is a silicone with a 40 Shore D and a silicone with a 60 Shore D a “different material”? Afterall, these two materials have different physical properties, but they are the same in name. Are SUP10 steel and a 17-4 steel two “different materials”? Afterall, they are both variations of the base material of “steel”. This ambiguity is directly evident in claim 7. Claim 7 claims variations in the type of “steel”. It could be argued that the base “material” is the same in the form of steel, so that claim 7 does not disclose a first material “different” from a third material. Furthermore, the “room-temperature-vulcanizing sealant” in claim 7 is disclosed as a “silicone” in par. [00339] of the specification. As such, the fourth material in the form of a “RTV” and the second material in the form of “silicone” are actually both the same base material of “silicone”. Also, could not the second material “silicone” actually be a RTV and still read on the claim?
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, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert et al. (herein “Gilbert”; US Pub. No. 2006/0234804 A1).
Regarding claim 1, Gilbert discloses a golf club head (Fig. 5 below) comprising: a striking face including a front surface configured to strike a golf ball and a rear surface opposite the front surface (Fig. 5, shown below; noting the ability to strike a golf ball is functionally language possible given the structure); a hosel configured to receive a shaft (Fig. 5 below; noting “configured to receive a shaft” is functionally possible given the structure), the hosel located on a heel side of the golf club head (Fig. 3 being exemplary), the heel side located opposite a toe side (Fig. 3 being exemplary); a coordinate system centered at a center of gravity of the golf club head, the coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when the golf club head is in an address position at a prescribed loft and lie, an x-axis perpendicular to the y-axis and parallel to the striking face, extending towards the heel side of the golf club head, and a z-axis, perpendicular to the y-axis and the x-axis and extending through the striking face (Fig. 5 below; noting this is inherent as the coordinate system is completely imaginary); wherein a section of the golf club head beginning at the striking face and moving rearwards along an axis parallel to the z-axis consists of: a first material, followed by a second material, followed by a third material, followed by a fourth material, followed by a fifth material (Fig. 5 below), wherein each of the first material, the second material, the third material, the fourth material, and the fifth material are different materials (par. [0040]; noting the first material can be the striking face and can be “titanium”, par. [0041]; noting the second material can adhere the insert to the front face and can be “epoxy”, par. [0041]; noting the third material can be the lightweight core made from aluminum, par. [0042]; noting the fourth material can be the dampening element made from urethane, and par. [0038]; noting the fifth material can be the club head body made from “stainless steel”). The Examiner gives the above rejection under a 103 because Gilbert discloses a finite list of potential materials used for each element. As such, it would have been obvious to POSA at the time of filing that specific materials could be selected from the finite list to render the claimed limitations obvious.
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Regarding claim 8, Gilbert discloses that section is continuous with no gaps between the first material and the second material, the second material and the third material, the third material and the fourth material, and the fourth material and the fifth material (Fig. 5 above).
Regarding claim 9, Gilbert disclose that the first material has a hardness greater than the second material (see rejection of claim 1 above, noting a hardness of titanium which is a metal being greater than the hardness of epoxy which is a polymer is obvious), the second material has a hardness less than the third material (see rejection of claim 1 above, noting a hardness of epoxy which is a polymer being less than the hardness of aluminum which is a metal is obvious) the third material has a hardness greater than the fourth material (see rejection of claim 1 above, noting a hardness of aluminum which is a metal being more than the hardness of urethane which is a polymer is obvious), and the fourth material has a hardness less than the fifth material (see rejection of claim 1 above, noting a hardness of urethane which is a polymer being less than the hardness of steel which is a metal is obvious).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Gilbert et al. (herein “Gilbert”; US Pub. No. 2006/0234804 A1) in view of Ines et al. (herein “Ines”; US Pub. No. 2021/0339097 A1) in view Takeda (US Pub. No. 2003/0125132 A1) in view of Taylor et al. (herein “Taylor”; US Pub. No. 2009/0111607 A1) and in further view of Roach (US Pub. No. 2008/0058117 A1).
Regarding claim 7, Gilbert discloses that the first material comprises metal (par. [0040]; noting titanium), the second material comprises a polymer (par. [0041]), the third material comprises metal (par. [0041]; noting aluminum), the fourth material comprises a polymer (par. [0042]; noting polyurethane), and the fifth material comprises metal (par. [0038]; noting stainless steel). It is noted that Gilbert does not specifically disclose that the first material is SUP10 steel, the second is silicone, the third is 17-4 steel, the fourth material is RTV, and the fifth material is acrylonitrile butadiene styrene. However, Ines disclose that the first material comprises steel (Fig. 41, item 718 and par. [0223]; noting the face may be steel), the second material comprises silicone (Fig. 41, item 702A and par. [0146]; noting the damping element may be an “elastomer”; and pars. [0249], [0254], and [0280]; making obvious that the damping element may be “silicone”), the third material comprises steel (Fig. 41 and par. [0278]; noting the support arm may be steel), the fourth material comprises silicone (Fig. 41, item 702A and par. [0146]; noting the damping element may be an “elastomer”; and pars. [0249], [0254], and [0280]; making obvious that the damping element may be “silicone”; noting “room-temperature-vulcanizing sealant” is a form of silicone, see applicant’s spec. par. [00339]), and the fifth material comprises acrylonitrile butadiene styrene (Fig. 41 and par. [0223]; noting the back cover may be “acrylonitrile butadiene styrene”). In addition, regarding the exact type of steel and silicone used, it has been held that the selection of a known material based on its suitability for its intended use is obvious. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). For example, Takeda discloses the use of SUP10 steel as the face (par. [0026]). Taylor specifically discloses that the golf iron body may be made from 17-4 steel (par. [0003]). Roach discloses the ability to use RTV silicone as a dampening material (par. [0018]). Thus, it would obvious to a person of ordinary skill in the art at the time to modify Gilbert to use the above material arrangement as taught by Ines because doing so would be use of a known technique (using materials in a certain order to create vibration dampening) to improve a similar product (a golf club with dampening properties) in the same way (using materials in a certain order to create vibration dampening). In addition, it would have been obvious to a person of ordinary skill in the art to select the specific material as claimed because: 1) the use of SUP10 steel would have the mechanical strength with minimum thickness and the spring to serve as a face plate (see Takeda: par. [0030]); 2) the use of 17-4 would provide better feel to the user (see Taylor: par. [0003]); and 3) the use of RTV would allow for quick cure time and thus ease of manufacturing (see Roach: par. [0018]).
Claim 10, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ines et al. (herein “Ines”; US Pub. No. 2021/0339097 A1) in view of Roach (US Pub. No. 2008/0058117 A1) and in further view of Matsunaga (US Pub. No. 2009/0247314 A1).
Regarding claim 10, Ines discloses a golf club head comprising: a striking face including a front surface configured to strike a golf ball and a rear surface opposite the front surface (Fig. 41, item 718 being the striking face with a front and rear surface); a back portion behind the striking face extending from a topline to a sole (Figs. 59-60; noting these are different embodiments, but still obvious under Boston Scientific); a back cover attached to the back portion to enclose a cavity in the golf club head (Fig. 21, item 913; see also Figs. 48 and 59-60, item 1002; noting these are different embodiments, but still obvious under Boston Scientific); a hosel configured to receive a shaft (Fig. 38, proximate item 704), the hosel located on a heel side of the golf club head (Fig. 38; noting this is inherent), the heel side located opposite a toe side (Fig. 38; noting this is inherent); a support arm attached to the back portion and spanning at least a portion of the cavity (Fig. 41, item 762); a coordinate system centered at a center of gravity of the golf club head, the coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when the golf club head is in an address position at a prescribed loft and lie, an x-axis perpendicular to the y-axis and parallel to the striking face, extending towards the heel side of the golf club head, and a z-axis, perpendicular to the y-axis and the x-axis and extending through the striking face (par. [0014]; noting also this is inherent and/or obvious); wherein the back cover is attached to a shelf on the back portion (Figs. 48 and 51, item 1014 being the shelf); wherein the back cover is attached to the support arm using a bonding element (Fig. 42, item 702F, noting pars. [0249], [0254], and [0280]; making obvious that the damping element may be “silicone”; see also pars. [0237] and [0247]; making obvious the use of “epoxy” to secure one element to another, i.e. the medallion to another part, as shown in Fig. 41) wherein the bonding element is located in a gap between the back cover and the support arm (Fig. 41, item 702F); wherein the gap has some distance and wherein the bonding element is silicone (Fig. 42, item 702F, noting pars. [0249], [0254], and [0280]; making obvious that the damping element may be “silicone”). The above rejection is given under a 103 as the Examiner pulls disclosure and limitations from multiple embodiments. Restated, the Federal Circuit held in Boston Scientific that combining two embodiments in the same prior art “does not require a leap of inventiveness” (see Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009)). As such, combining different prior art embodiments within the same disclosure would be obvious to a POSA. It is noted that Ines does not specifically disclose that the silicone comprises a room-temperature-vulcanizing sealant or that the gap is greater than or equal to 3.0 mm. However, Ines discloses the use of silicone as the damping material (pars. [0249], [0254], and [0280]). Furthermore, Roach discloses a damping material that may be a RTV, aka a room temperature vulcanization, silicone (par. [0018]; specifically disclosing “RTV-627”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Ines to use a RTZ silicone as the fourth material as taught by Roach because doing so would be a simple substitution of one element ( RTV-627) for another (silicone) to obtain predictable results (the continued ability to use silicone as a damping element, the silicone being RTZ-627). Finally, regarding the gap between the back cover and the support arm, Ines clearly discloses that there is a gap with some ascertainable distance (Fig. 41, item 702F filling that gap). Matsunaga discloses that the bonding element used to secure back cover to the body is 0.3 mm or less (par. [0036])(see applicant’s spec, [00339] stating that RTV can be used for “15 mm or less”; the Examiner finding no criticality to claiming a gap greater than or equal to 3.0 mm under Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)). In addition, applicant is selecting a known adhesive and thickness based on its desired physical properties and the its ability to dampen vibration (see Sinclair & Carroll Co. v. Interhelical Corp., 325 U.S. 327, 65 USPQ 297 (1945); noting selection of a known material based on its suitable for an intended purpose is obvious; see specifically as evidence, Cardani et al, US Pub. No. 2014/0274456 A1; par. [0082]; specifically stating that the selection of the precise adhesive and its corresponding thickness is based on its physical properties and is vibration dampening effect). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact gap size would not make the invention perform differently: that is, the RTV would continue to fill the gap size, regardless of the exact size of the gap. In addition and in the alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing that the use of a specific adhesive and is corresponding thickness (i.e. gap thickness) would be obvious based on the materials physical properties and its corresponding dampening effect.
Regarding claim 19, the combined Ines, Roach, and Matsunaga disclose a damping element positioned between the support arm and the rear surface of the striking face (Ines: Fig. 41, item 702A and par. [0146]; noting the damping element may be an “elastomer”).
Regarding claim 20, the combined Ines, Roach, and Matsunaga disclose that the first material comprises steel (Ines: Fig. 41, item 718 and par. [0223]; noting the face may be steel), the second material comprises polymer (Ines: Fig. 41, item 702A and par. [0146]; noting the damping element may be an “elastomer”), the third material comprises steel (Ines: Fig. 41 and par. [0278]; noting the support arm may be steel), the fourth material comprises polymer (Ines: Fig. 41, item 702F and par. [0240]; noting item 702F may be a “damping element” and par. [0146] makes obvious that it may be an elastomer, i.e. a polymer), and the fifth material comprises polymer (Ines: Fig. 41 and par. [0223]; noting the back cover may be “acrylonitrile butadiene styrene”; a polymer). The above is given consistent with the holding of (see Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009)). Restated, the Examiner pulls for different sections of the Ines disclosure that make it obvious that certain material may be used.
Response to Arguments
Applicant's arguments filed 4/28/26 have been fully considered but they are not persuasive.
102 Rejection
The previous 102 rejection over Clausen is removed. The previous 102 over Soracco is removed. As such, any arguments with regards to these references is moot.
103 Rejection
With regards to claim 9, the claim is now obvious in view of Gilbert. Any arguments directed toward Ines with regards to claim 9 are now moot.
With regards to claim 7, the Examiner believes that selection of the exact materials would have been obvious to a POSA based on the attributes of the particular materials. The rejection of claim 7 has been amended accordingly. For the record, applicant appears to hinge patentability of claim 7 by removing “epoxy” and using only “RTV”. The Examiner does not really see any criticality in the specification for using one over the other as discussed below; especially when no dimension (i.e. gap size) is specifically claimed in claim 7.
Regarding claim 10, applicant argues the holding in Boston Scientific. Applicant states that the Examiner “misapplies the holding in Boston Scientific” and the Examiner utilizes a “overly broad interpretation” of the holding. Respectfully submitted, applicant does not support this position with any specific citations or facts from Boston Scientific. Furthermore, the holding in Boston Scientific generally does state that incorporation of features in different embodiments onto the same base element does not take a “leap of inventiveness”. Various courts and Board decisions have generally found that the holding in Boston Scientific is not limited to combination of features from literally side-by-side embodiments; but rather applies to different embodiments within a single disclosure. As such, the Examiner’s application of Boston Scientific is completely consistent with the holding in Boston Scientific.
Applicant argues the gap of claim 10. Once again, the argument is not compelling for the following and previously stated reasons. On page 10 of Reply, applicant argues that “for a gap of 3.0 mm or greater (which is claimed), it is critical to use RTV sealant for the bonding element in order to span the larger gap while retaining pliability over a wide temperature range’ (see Remarks, page 10). However, based on the argument, applicant is arguing criticality for the RTV and not the actual size of the gap. That is, Roach already makes obvious the use of RTV. The question then becomes, what is the criticality for the actual gap size? There is no criticality for the exact gap size. There is criticality for using RTV in a larger gap size, but there is no criticality for the actual gap being larger than 3.0 mm. In addition, applicant’s own specification specifically states that RTV can be used for a gap size of “15.0 mm or less” (see par. [00339]). This passage undermines any criticality for using a gap larger than 3.0 mm because the RTV can be used for any gap size less than 15 mm. Granted, if a gap of larger than 3.0 mm is used, RTV is the preferred material. But there is no criticality to the actual gap size when Roach already makes obvious the use of RTV.
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 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
5/18/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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