DETAILED ACTION
Priority
Regarding claim 1 and 8, applicant previously deleted language from the claim in a specific attempt to obtain an earlier filing date. Claim 1, as amended, claims “wherein a section of the golf club beginning at the striking face and moving rearwards along an axis parallel to the z-axis includes a series of materials consisting of: a first material, followed by a second material, followed by a third material, followed by a fourth material, followed by a fifth material”. Applicant previously argued that this limitation is found in Figs. 41 and 42. The first parent app that used Figs. 41 and 42 is parent app 17/085,474. Thus, claim 1 (and 8) get(s) a priority date of 10/30/20; when the parent was filed.
Claims 2-5, 7, and 9 receive a priority date of 3/15/23. That is, this current application, par. [00340] is where applicant lists out the material in order and the relative hardness of each.
Claims 10-13, 17, 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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clausen et al. (herein “Clausen”; US Pub. No. 2008/0318705 A1).
Regarding claim 1, Clausen 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. 2, shown below); a hosel configured to receive a shaft (Fig. 3), the hosel located on a heel side of the golf club head (Fig. 3; noting this is inherent), the heel side located opposite a toe side (Fig. 2, 3 or 38; noting this is inherent); 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. 3; 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 includes a series of materials consisting 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. 2; noting a line parallel to the z-axis through the materials include five materials including: the face, adhesive from par. [0021]-[0023], silicone 36, polycarbonate 38, and silicone 36).
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Regarding claim 8, Clausen 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. 2 above).
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Soracco et al. (herein “Soracco”; US Pub. No. 2008/0058119 A1).
Regarding claim 1, Soracco 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. 19, shown below); a hosel configured to receive a shaft (Fig. 20), the hosel located on a heel side of the golf club head (Fig. 12 being exemplary; noting this is inherent), the heel side located opposite a toe side (Fig. 12 being exemplary; noting this is inherent); 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. 19; 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 includes a series of materials consisting 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. 19; noting a line parallel to the z-axis through the materials consists of five materials including: the face, adhesive from par. [0083], insert 81 per par. [0081], insert 88 per par. [0082], and insert 81).
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Regarding claim 8, Soracco 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. 19 above).
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 2, 3, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Soracco et al. (herein “Soracco”; US Pub. No. 2008/0058119 A1) and/or in view Ines et al. (herein “Ines”; US Pub. No. 2021/0339097 A1).
Regarding claim 2, Soracco discloses that the first material comprises steel (Fig. 19 and par. [0046]; noting steel), the second material comprises an adhesive (par. [0083]), the third material comprises polymer (Fig. 19, item 81 and par. [0081]; noting polyurethane), the fourth material comprises metal (Fig. 19, item 88 and par. [0082]; noting aluminum), and the fifth material comprises polymer (Fig. 19, item 81; noting polyurethane). It is noted that Soracco does not specifically disclose that the second material comprises polymer, the third material comprises steel, and the four material comprises polymer. However, Ines disclose that the second material comprises polymer (Fig. 41, item 702A and par. [0146]; noting the damping element may be an “elastomer”), the third material comprises steel (Fig. 41 and par. [0278]; noting the support arm may be steel), and the four material comprises polymer (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). Thus it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Soracco to use dampening sandwich that utilizes a second material as a polymer, a third material as steel, and a four material as polymer as taught by Ines because doing so would be a simple substitution of one element (the multi-material dampening sandwich used in Ines) for another (the multi-material dampening sandwich used in Soracco) to obtain predicable results (the continued ability to use a multi-material dampening sandwich to create dampening in a golf club, the dampening sandwich material using a second material as a polymer, a third material as a steel, and a fourth material as polymer). In the alternative, Ines makes obvious Figs. 41 and 42 which applicant previously argued shows support for all of the limitations of claim 1. Claim 2 and its dependents (3-5) get a new priority date. That is, regarding claim 2, Ines discloses that the first material comprises steel (Fig. 41, item 718 and par. [0223]; noting the face may be steel), the second material comprises polymer (Fig. 41, item 702A and par. [0146]; noting the damping element may be an “elastomer”), the third material comprises steel (Fig. 41 and par. [0278]; noting the support arm may be steel), the fourth material comprises polymer (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 (Fig. 41 and par. [0223]; noting the back cover may be “acrylonitrile butadiene styrene”; a polymer). The above analysis is an obvious rejection pulling from different disclosure within the Ines reference. Claim 2 reads in the limitations of claim 1 and claim 2. As such, Ines alone makes obvious the limitations of claims 2 above.
Regarding claim 3, it is noted that the combined Soracco and Ines do not specifically disclose that the fourth material comprises silicone or epoxy. However, Ines makes obvious that the fourth material may be a polymer (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). In addition, Soracco makes obvious that the dampening element may be in the form of silicone (par. [0047]). Thus, it would have been obvious to modify Ines or the combined Soracco and Ines to make the fourth polymer silicone as taught by Soracco because doing so would be a simple substitution of one element (silicone for a dampening element) for another (polymer for a dampening element) to obtain predictable results (the continued ability to use a polymer in a dampening element sandwich, the polymer being silicone).
Regarding claim 9, Ines makes obvious Figs. 41 and 42 which applicant argues shows support for all of the limitations of claim 1. Claim 9 and gets a new priority date. Ines disclose that the first material has a hardness greater than the second material (pars. [0223] and [0146]; noting this is obvious as the face may be “steel” and the second material may be an elastomer with Shore A of 10 to 95, see par. [0281]), the second material has a hardness less than the third material (pars. [0146], [0281], and [0278]; again, noting the support arm can be “steel”; making this obvious), the third material has a hardness greater than the fourth material (pars. [0278] and [0249]; noting the fourth material may be silicone with a Shore A of 50 to 70, and the third material, i.e. the arm, can be steel), and the fourth material has a hardness less than the fifth material (Fig. 64 and par. [0262]; making obvious the ability to use higher and lower hardness in adjacent layers of damping elements in order to optimize the face support, COR and reduce vibration; restated, the exact relative hardness of the fourth and fifth material as compared to each other could be found through routine experimentation in order to optimize the face support, COR and vibration reduction).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Soracco et al. (herein “Soracco”; US Pub. No. 2008/0058119 A1) and/or in view Ines et al. (herein “Ines”; US Pub. No. 2021/0339097 A1) and in further view of Roach (US Pub. No. 2008/0058117 A1).
Regarding claim 4, it is noted that the combined Soracco and/or Ines does not specifically disclose that the fourth material comprises a room-temperature-vulcanizing sealant. However, Ines makes obvious that the fourth material may be a polymer (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). In addition, Soracco makes obvious that the dampening element may be in the form of silicone (par. [0047]). Finally, 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 the combined Soracco and/or 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 or polymer) to obtain predictable results (the continued ability to use silicone/polymer as a damping element, the silicone being RTZ-627).
Regarding claim 5, the combined Soracco and/or Ines and Roach disclose that the room-temperature-vulcanizing sealant has a hardness between about 10 Shore A and about 50 Shore A (Ines: par. [0249]; specifically listing silicone with a Shore A hardness of “approximately 50 to 70 Shore A”; making obvious the claimed range).
Claim 7 is 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 Takeda (US Pub. No. 2003/0125132 A1) and in further view of Taylor et al. (herein “Taylor”; US Pub. No. 2009/0111607 A1).
Regarding claim 7, Ines makes obvious Figs. 41 and 42 which applicant argues shows support for all of the limitations of claim 1. Claim 7 and gets a new priority date. 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 a room-temperature-vulcanizing sealant or an epoxy (Fig. 41, item 702F and pars. [0237] and [0247]; making obvious the use of “epoxy” to secure one element to another as shown in Fig. 41), and the fifth material comprises acrylonitrile butadiene styrene (Fig. 41 and par. [0223]; noting the back cover may be “acrylonitrile butadiene styrene”; a polymer). It is noted that Ines does not specifically disclose that the face or first material is SUP10 steel. However, Ines discloses that the face may be steel (par. [0223]). In addition, Takeda discloses the use of SUP10 steel as the face (par. [0026]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Ines to use SUP10 steel as the first material or face material as taught by Takeda because doing so would be a simple substitution of one element (SUP10 steel face) for another (a generic steel for the face) to obtain predictable results (the continued ability to use steel for the face, the face being SUP10 steel that is known to work as a face material in irons). Finally, it is noted that the combined Ines and Takeda do not specifically disclose that the third material or arm material is 17-4 steel. However, Ines discloses that the arm may be made out of steel (par. [0278]). In addition, Taylor specifically discloses that the golf iron body may be made from 17-4 steel (par. [0003]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Ines and Takeda to use 17-4 steel as the third material or arm material as taught and suggested by Taylor because doing so would be a simple substitution of one element (using 17-4 for the body steel, including the arm steel) for another (a generic steel for the arm) to obtain predictable results (the continued ability to use steel for the arm, arm being 17-4 steel that is known to work as a body material in irons).
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 9/22/25 have been fully considered but they are not persuasive.
102 Rejection
With regards to claims 1 and 8, the Examiner continues to make a rejection based on Clausen. The Examiner also gives a rejection based on Soracco.
For the record, claim 1 now actually claims “wherein a section of the golf club beginning at the striking face and moving rearwards along an axis parallel to the z-axis includes a series of materials consisting of” (emphasis added). As “includes” should be construed “comprising” (see MPEP 2111.03), it is unclear if applicant is actually limiting anything by amending the claim to state “consisting of”. That is, given the plain language of claim 1, the materials can comprise or “include” six materials, and applicant is just calling out five by the phrase “consisting of”. In any event, the Examiner construes that applicant intends to limit the claims so that only five materials are present by way of the amendment to claim 1. The rejection of the claims above is consistent with that interpretation.
103 Rejection
Applicant argues the gap of previous claim 17 now incorporated into claim 10 by way of amendment. The argument is not compelling for the following reason. On page 8 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 8). 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.
In addition, for the rejection of claim 10, the Examiner now also brings in Cardani et al, US Pub. No. 2014/0274456 A1 as evidence. Cardani evidences that the exact adhesive material selected and its corresponding thickness is obvious based on the materials physical properties and its corresponding vibration dampening effect (par. [0082]).
No other arguments are advanced.
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
1/12/26
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711