DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 31 October 2025 was resubmitted as a Corrected IDS due to a typo. The examiner has noted this typo on the attached IDS. The information disclosure statements are being considered by the examiner.
Claim Objections
Claim 6 is objected to because of the following informalities: Regarding claim 6, line 2, “a” should be deleted before “7/16 inches.” Appropriate correction is required.
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 1-23 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.
Regarding claim 1, line 3, “an outer portion configured to directly contact and engage the interior cavity” is indefinite. A cavity is defined as an empty space. It is unclear how an outer portion can “directly contact” an empty space.
Regarding claim 1, line 9, “at least apertures” is indefinite. It is unclear how “at least” further limits “apertures.”
The term “approximately” in claims 4, 6, and 10 is a relative term which renders the claims indefinite. The term “approximately” is not defined by the claims, 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. This renders the hardness, outer diameter, and length of the vibration damper indefinite.
Regarding claim 9, lines 5-6, “a second portion that extends from to the first portion” is indefinite. It is unclear if the second portion extends from the first portion or extends to the first portion.
Regarding claim 9, lines 8-9, “a fourth portion that extends from to the third portion” is indefinite. It is unclear if the fourth portion extends from the third portion or extends to the third portion.
Regarding claim 22, line 4, “an outer portion configured to directly contact and engage the inner cavity” is indefinite. A cavity is defined as an empty space. It is unclear how an outer portion can “directly contact” an empty space.
Regarding claim 22, line 9, “at least apertures” is indefinite. It is unclear how “at least” further limits “apertures.”
Claim Rejections - 35 USC § 102
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 1-3, 5, 7-8, 11-13, 16-18, and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kumamoto (US 2003/0148820 A1).
Regarding claim 1, Kumamoto discloses a vibration damper [10] to be inserted within an interior cavity of a sports shaft [1], the vibration damper [10] comprising: an outer portion [11] configured to directly contact and engage the interior cavity of the sports shaft [1] (wherein a peripheral surface [14a] of the projected part [14] of the body [11] contacts an inner peripheral surface [1a] of the hollow pipe of the shaft [1]); a central mass [13] that extends coaxially with the outer portion [11] and that is disposed within the outer portion [11]; at least two arms [12] that extend outwardly and connect the central mass [13] to the outer portion [11]; and at least apertures [H] disposed between the central mass [13] and the outer portion [11] (paragraphs 0061-0065, 0077, 0091-0092, and Figures 1A-3B, 6A-6B, and 8A-8B).
Regarding claim 2, Kumamoto discloses the vibration damper of claim 1 wherein a fraction of (a) a mass of the central mass [13] and the at least two arms [12] divided by (b) a total mass of the vibration damper [10] is greater than one half (paragraph 0016 and 0022-0023; wherein the weight of the central part [13] alone can be up to 60% of the whole weight of the vibration absorption member [10] such that the mass of the central part [13] and the connection parts [12] would be greater than 60% (i.e., greater than one half) of the total weight of the vibration absorption member [10]).
Regarding claim 3, Kumamoto discloses the vibration damper of claim 1 wherein the vibration damper [10] has a uniform mass per unit length (paragraphs 0062-0064 and Figures 3A-3B; wherein the length [L] of the projected part [14] can be equal to that of the body [11] such that the vibration absorption member [10] has uniform mass per unit length).
Regarding claim 5, Kumamoto discloses the vibration damper of claim 1 wherein the outer portion [11], the central mass [13], and the at least two arms [12] are made of one of a viscoelastic material, an elastomeric material, thermoplastic polyurethane (TPU), polytetrafluoroethylene (PTFE), a rubber, a urethane poured foam, a solid foam, and a twisted braided round foam (paragraphs 0011-0013 and 0037).
Regarding claim 7, Kumamoto discloses the vibration damper of claim 1 wherein the vibration damper [10] is one of extruded, molded, and three dimensionally printed (paragraphs 0027, 0037, and 0084).
Regarding claim 8, Kumamoto discloses the vibration damper of claim 1 wherein the at least two arms [12] include three arms [12’, 12”] that extend outwardly and connect the central mass [13] to the outer portion [11] (paragraphs 0077, 0091-0092, and Figures 6B, 8A, and 8B).
Regarding claim 11, Kumamoto discloses the vibration damper of claim 1 wherein a total mass of the vibration damper [10] is between 2 and 4 grams (paragraphs 0016-0018 and Tables 1-2; wherein the total weight of the vibration absorption member [10] in E2-E8 is 3.0 or 3.3 g which falls within the claimed range).
Regarding claim 12, Kumamoto discloses the vibration damper of claim 1 wherein at least one of the at least two arms [12] includes a curved portion [32] (paragraph 0077 and Figure 6A).
Regarding claim 13, Kumamoto discloses the vibration damper of claim 1 wherein the at least two arms [12] include four arms [12’, 12”] (paragraphs 0077, 0091-0092, and Figures 6B, 8A, and 8B).
Regarding claim 16, Kumamoto discloses the vibration damper of claim 1 wherein an outer surface of the outer portion [11] includes features [14] configured to engage the interior cavity of the sports shaft [1] (paragraphs 0062, 0064-0065, and Figures 1B-3B).
Regarding claim 17, Kumamoto discloses the vibration damper of claim 1 wherein the outer portion [11] forms one of a squircle shaped tube (Figure 6B), a cylindrical tube (Figures 2A, 6A, 8A, and 8B), a hexagonal tube, a rectangular tube, and an octagonal tube (paragraphs 0062, 0077, 0091-0092, and Figures 1B, 2A, 3B, 6A-6B, and 8A-8B).
Regarding claim 18, Kumamoto discloses the vibration damper of claim 1 wherein one or more sides of the outer portion [11] are one of convex and concave (paragraph 0062 and Figures 2A, 6A, 8A and 8B).
Regarding claim 21, Kumamoto discloses the vibration damper of claim 1 wherein the at least two arms [12] each include at least one protrusion [32] (paragraph 0077 and Figure 6A; wherein the connection parts [12] increase in thickness).
Regarding claim 22, Kumamoto discloses a sports shaft [1] comprising: an elongated tubular portion (see shaft [1]) having an inner cavity; and a vibration damper [10] comprising: an outer portion [11] configured to directly contact and engage the inner cavity of the sports shaft [1] (wherein a peripheral surface [14a] of the projected part [14] of the body [11] contacts an inner peripheral surface [1a] of the hollow pipe of the shaft [1]); a central mass [13] that extends coaxially with the outer portion [11] and that is disposed within the outer portion [11]; at least two arms [12] that extend outwardly and connect the central mass [13] to the outer portion [11]; and at least apertures [H] disposed between the central mass [13] and the outer portion [11] (paragraphs 0061-0065, 0077, 0091-0092, and Figures 1A-3B, 6A-6B, and 8A-8B).
Regarding claim 23, Kumamoto discloses the sports shaft of claim 22, wherein the sports shaft [1] is one of a golf shaft [1], a hockey stick shaft, a lacrosse stick shaft, and a baseball bat (paragraph 0061 and Figure 1A).
Claims 1, 5, 7-8, 13, 17-20, and 22-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by You (US 6,117,028).
Regarding claim 1, You discloses a vibration damper [10] to be inserted within an interior cavity of a sports shaft [60], the vibration damper [10] comprising: an outer portion [20] configured to directly contact and engage the interior cavity of the sports shaft [60]; a central mass [26] that extends coaxially with the outer portion [20] and that is disposed within the outer portion [20]; at least two arms [24] that extend outwardly and connect the central mass [26] to the outer portion [20]; and at least apertures (see four apertures in Figure 2) disposed between the central mass [26] and the outer portion [20] (col. 2 lines 28-55, col. 3 lines 10-21, and Figures 1-2 and 5-10).
Regarding claim 5, You discloses the vibration damper of claim 1 wherein the outer portion [20], the central mass [26], and the at least two arms [24] are made of one of a viscoelastic material, an elastomeric material, thermoplastic polyurethane (TPU), polytetrafluoroethylene (PTFE), a rubber, a urethane poured foam, a solid foam, and a twisted braided round foam (col. 2 lines 31-39).
Regarding claim 7, You discloses the vibration damper of claim 1 wherein the vibration damper is one of extruded, molded, and three dimensionally printed. Regarding the recitation that the vibration damper is one of extruded, molded, and three dimensionally printed, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Regarding claim 8, You discloses the vibration damper of claim 1 wherein the at least two arms [24] include three arms that extend outwardly and connect the central mass [26] to the outer portion [20] (col. 2 lines 31-39 and Figures 1-2).
Regarding claim 13, You discloses the vibration damper of claim 1 wherein the at least two arms [24] include four arms (col. 2 liens 31-39 and Figures 1-2).
Regarding claim 17, You discloses the vibration damper of claim 1 wherein the outer portion [20] forms one of a squircle shaped tube, a cylindrical tube (Figure 2), a hexagonal tube, a rectangular tube, and an octagonal tube (col. 2 lines 28-32, col. 3 lines 10-15, and Figures 1-2).
Regarding claim 18, You discloses the vibration damper of claim 1 wherein one or more sides of the outer portion [20] are one of convex and concave (col. 2 lines 28-32 and Figure 2).
Regarding claim 19, You discloses the vibration damper of claim 1 wherein the central mass [26] incudes a hollow aperture (to accommodate weight [30]) through its center (col. 2 lines 28-55 and Figures 1-2).
Regarding claim 20, You discloses the vibration damper of claim 19 further comprising an insert [30] disposed within the hollow aperture (to accommodate weight [30]) (col. 2 lines 28-55 and Figures 1-2).
Regarding claim 22, You discloses a sports shaft [60] comprising: an elongated tubular portion (see tubular rod-shaped body [60]) having an inner cavity; and a vibration damper [10] comprising: an outer portion [20] configured to directly contact and engage the inner cavity of the sports shaft [60]; a central mass [26] that extends coaxially with the outer portion [20] and that is disposed within the outer portion [20]; at least two arms [24] that extend outwardly and connect the central mass [26] to the outer portion [20]; and at least apertures (see four apertures in Figure 2) disposed between the central mass [26] and the outer portion [20] (col. 2 lines 28-55, col. 3 lines 10-21, and Figures 1-2 and 5-10).
Regarding claim 23, You discloses the sports shaft of claim 22, wherein the sports shaft [60] is one of a golf shaft (see golf club [78]), a hockey stick shaft, a lacrosse stick shaft, and a baseball bat (see baseball bat [80]) (col. 3 lines 10-21 and Figures 9-10).
Claim Rejections - 35 USC § 103
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, 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.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kumamoto as applied to claim 1 above, and further in view of Durometer Shore Hardness Scale Explained published 30 July 2020; hereinafter Durometer.
Regarding claim 4, Kumamoto discloses the vibration damper of claim 1 wherein the outer portion [11], the central mass [13], and the at least two arms [12] are made of a material (elastic material such as a mixture of a thermoplastic elastomer and polypropylene or rubber) having a hardness (paragraph 0037). Kumamoto does not disclose the specific hardness of the material. Durometer, however, teaches that the durometer scale measures the A-shore hardness of rubber, plastics, and elastomers; wherein the A-shore scale ranges from 0 to 100, with common objects ranging from 20 (rubber bands) to 80 (leather belt) (pages 2-7). Durometer discloses A-shore hardness achieving the result of determining which material is best for a certain application and ensuring the material you are using is soft or firm enough for the intended purpose of the object (page 4); thus a person having ordinary skill in the art would have recognized that A-shore hardness is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure Kumamoto’s material to have a hardness between approximately 40 and 100 A-shore hardness to achieve desired flexibility of the object for the desired application, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II.
Claims 6, 10, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kumamoto.
Regarding claim 6, Kumamoto discloses the vibration damper of claim 1 wherein the outer portion [11] forms a cylindrical tube (paragraph 0062 and Figures 2A, 3B, 6A, and 8A-8B). Kumamoto is silent regarding the outer diameter of the cylindrical tube. However, Kumamoto discloses the size of the cylindrical body [11] achieving the result of securing the vibration absorption member [10] to the inside of the hollow and pipe-shaft shaft [1] of a golf club (paragraph 0061); thus a person having ordinary skill in the art would have recognized that outer diameter of the cylindrical tube is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure Kumamoto’s cylindrical tube to have an outer diameter that is between approximately 7/16 inches and ½ inches to achieve desired fixation within a golf club shaft, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II.
Regarding claim 10, Kumamoto does not disclose a length of the vibration damper being between approximately 0.5 and 8 inches. However, Kumamoto discloses a decreased length of the vibration damper achieving the result of lowering the overall weight of the golf club (paragraph 0033); thus a person having ordinary skill in the art would have recognized that vibration damper length is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure Kumamoto’s vibration damper to be between approximately 0.5 and 8 inches to achieve desired overall golf club weight, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II.
Regarding claim 14, Kumamoto discloses the vibration damper of claim 13 wherein the two arms [32] each include a first concave portion (e.g., see left side of upper connection part [32] in Figure 6A) and a second concave portion (e.g., see right side of upper connection part [32] in Figure 6A) (paragraph 0077 and Figure 6A). Kumamoto only discloses two arms in this embodiment, not four. However, Kumamoto discloses other embodiments including four or eight arms (paragraphs 0091-0092 and Figures 6B and 8A-8B) and that the connection parts may have various configurations and numbers (paragraphs 0019 and 0077). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure the embodiment of 6A in Kumamoto to include four arms because Kumamoto discloses that the connection parts may have various numbers between two and ten (paragraphs 0019 and 0077). This amounts to a simple substitution of one known configuration for another to obtain predictable results.
Regarding claim 15, the modified Kumamoto discloses the vibration damper of claim 14 wherein the first concave portion (e.g., see left side of upper connection part [32] in Figure 6A) extends radially outwardly from the central mass [13] in one of a clockwise direction and a counterclockwise direction (counterclockwise; see Figure 6A) and the second concave portion (e.g., see right side of upper connection part [32] in Figure 6A) extends outwardly in the other one of the clockwise direction (clockwise; see Figure 6A) and the counterclockwise direction (paragraph 0077 and Figure 6A).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over You as applied to claim 1 above, and further in view of Durometer.
Regarding claim 4, You discloses the vibration damper of claim 1 wherein the outer portion [20], the central mass [26], and the at least two arms [24] are made of a material (rubber or foam) having a hardness (col. 2 lines 31-32). You does not disclose the specific hardness of the material. Durometer, however, teaches that the durometer scale measures the A-shore hardness of rubber; wherein the A-shore scale ranges from 0 to 100, with common objects ranging from 20 (rubber bands) to 80 (leather belt) (pages 2-7). Durometer discloses A-shore hardness achieving the result of determining which material is best for a certain application and ensuring the material you are using is soft or firm enough for the intended purpose of the object (page 4); thus a person having ordinary skill in the art would have recognized that A-shore hardness is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure You’s material to have a hardness between approximately 40 and 100 A-shore hardness to achieve desired flexibility of the object for the desired application, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over You.
Regarding claim 6, You discloses the vibration damper of claim 1 wherein the outer portion [20] forms a cylindrical tube (col. 2 lines 28-32 and Figures 1-2). You is silent regarding the outer diameter of the cylindrical tube. However, You discloses the size of the tubular body [20] achieving the result of securing the tubular body [20] within the inner wall of a tubular rod-shaped body [60] of a sporting good handle (col. 3 lines 10-21 and Figures 1 and 5-10); thus a person having ordinary skill in the art would have recognized that outer diameter of the cylindrical tube is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure You’s cylindrical tube to have an outer diameter that is between approximately 7/16 inches and ½ inches to achieve desired fixation within a sporting good handle, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II.
Additional Subject Matter
Claim 9 is not rejected under art; however, it is rejected under 35 U.S.C. 112(b) and is therefore not allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Chauvin et al. (US 2021/0121754 A1) and Van Nguyen et al. (US 2018/0361215 A1) which both disclose similar vibration dampers for sports shafts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711