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 .
Election/Restrictions
Applicant’s election of Group II claims 4-5 in the reply filed on 02/13/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-3 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/13/2026.
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 4-5 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.
These claims are exceedingly unclear. They claim a manufacturing method, however, there are no concrete manufacturing steps or materials, only a general recitation of some shape of a shaft. Claim 4 line 4 recites “extending a length of the butt end section.” It is unclear what this “extending” is intended to mean. It is unclear what is to be extended. There is no material claimed, nor is there any physical element claimed. Is this intended to be an extrusion operation? Is there a blank or a tube that is being “extended”? Lines 4-5 further recite “extending a length...by one or more adjustment steps with respect to a basic shape” which is also unclear. What is “a basic shape” intended to be? Is this intended to be a cross-sectional shape of a tube? Is this a shape of a blank of material? Is this the overall shape of the shaft? Lines 5-6 then recite “eliminating the adjustment steps” which is unclear. Why would one form steps just to eliminate them? Is this intended to be omitting making steps for a portion of the butt section? If so, it is unclear why “eliminating” steps that were presumably already formed is recited. Claim 5 recites “an outer diameter of the straight portion is made equivalent to a largest outer diameter in the eliminated adjustment steps,” which is exceedingly unclear. The “straight portion” of claim 4 is recited to be located at the tip side of the shaft, which, according to the drawings, is the small outer diameter side, not the largest. There is no embodiment disclosed in the application where the tip side diameter is the same as the largest outer diameter, therefore, it is unclear what is attempting to be claimed. These claims do not currently recite any concrete manufacturing steps, are exceedingly unclear, and require significant correction.
Claim Rejections - 35 USC § 102 / 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 4-5 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Braly et al (US Patent No. 7,255,652 B2).
In Reference to Claims 4-5
Braly teaches (Claim 4) A manufacturing method of a golf shaft having a rigidity
distribution in which rigidity gradually increases from a tip end section to a butt
end section (fig. 1, stiffness / rigidity of a tubular shape increases with diameter of the tube, since this diameter is shown to increase from tip end to butt end in fig. 1, this rigidity distribution is inherent), comprising: extending a length of the butt end section in an axial direction by one or more adjustment steps with respect to a basic shape, and eliminating the adjustment steps corresponding to an amount of the extending of the length of the butt end section with respect to the basic shape (section 110, fig. 1, alternately section 110 and some adjacent items 122, fig. 1, note it is unclear what is attempting to be claimed; also see column 5 lines 23-30 for the step of “extending”), the basic shape in which an intermediate section between the tip end section and the butt end section has a main body (several of the central segments 122, fig. 1), a plurality of adjustment steps having different outer diameters located on a tip end side relative to the main body (item 130 and a couple of items 122 adjacent to item 130), and a straight portion having a constant outer diameter and located on the tip end side relative to the adjustment steps (item 130; column 3 lines 4-6);
(Claim 5) wherein an outer diameter of the straight portion is made equivalent to a largest outer diameter in the eliminated adjustment steps (this is exceedingly unclear, either item 130 or item 110, both are straight portions; column 2 lines 58-59 and column 3 lines 4-6).
Due to the confusing nature of the claims, it is unclear if applicant intended to recite some arrangement of method steps not found in the reference. As best understood, it appears that the prior art of Braly teaches the manufacturing method of a forming a stepped golf shaft with constant outer diameter elongated butt and tip portions, and stepped portions therebetween, meeting all of the claimed limitations.
However, in the event that applicant is intending to claim some other manufacturing steps to achieve this structure an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the stepped golf club shaft manufacturing method of Braly with the feature of an additional or different order of manufacturing steps simply as a matter of engineering design choice, since, it has been held that selecting any order of performing process steps is an obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). The end structure of what is currently being claimed is taught in Braly (fig. 1), along with manufacturing steps for imparting the structure to a material (column 4 line 46 – column 5 line 30), therefore, simply claiming a different order of manufacturing steps to achieve this result is not a patentable advance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711