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
This action is in response to applicant’s remarks and amendments dated 06/16/2026. Claims 4 and 5 have been amended. Claims 1-3 were previously withdrawn. Claims 1-5 are currently pending.
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.
Claim 4 lines 11-18 are still exceedingly unclear. The language now recited here does not appear to have concrete method steps, but only recites a general design element without concrete steps for how the general design element is actually manufactured during the claimed method. It is unclear what the step of “setting a flex” is intended to be. As recited, this appears to simply be an ethereal recitation of essentially “some undefined length produces some particular flex characteristic.” Which would not only be inherent to any changes in length, but it is unclear what this is intended to concretely mean in a manufacturing process. There is no recitation for what this “flex” actually is. There is no recitation of what the “predetermined length” actually is. There is no recitation of what the “reference structure” actually is. Further, this section recites forming adjustment steps in a butt end section and then recites “omitting formation of the adjustment steps corresponding to an amount of the increase,” which is confusing and does not add any actual manufacturing steps to the claims. When forming adjustment steps, one would simply form the desired number of steps. It is unclear why the claim recites forming adjustment steps, and then “omitting formation” of the adjustment steps. These recitations not only negate each other, but make it unclear what is intending to be claimed. Presumably the end structure here is simply a certain amount of adjustment steps in a butt end section that produce a desired flex. This would be formed by creating the desired number of steps and desired lengths. The “omitting” step is unclear and confusing. Are steps formed and then some of them removed by a machining process? Is this simply a recitation of producing less steps in the butt end section? Appropriate correction / clarification is still required.
Claim 5 is still exceedingly confusing. The “straight portion” in claim 4 is recited as being located on the tip end side of the shaft relative to the adjustment steps (claim 4 lines 9-10), which indicates this straight portion has the smallest diameter. However, claim 5 then recites that this straight portion is made “equivalent to a largest outer diameter in the omitted adjustment steps,” which was defined in the butt end, and would be the largest diameter, not the smallest. There do not appear to be any embodiments shown or described where the tip end diameter is equivalent to the butt end diameter, therefore, this recitation is exceedingly confusing.
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 in an axial direction (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: forming a pipe body having a constant outer diameter (column 2 lines 26-29; column 4 lines 52-64); performing a stepping process to the pipe body (column 5 lines 23-30) to define the tip end section (item 130 and a couple of items 122 adjacent to item 130), the butt end section (section 110, fig. 1, alternately section 110 and some adjacent items 122, fig. 1, note it is unclear what the butt end is intended to be based on later recitations in this claim); and an intermediate section having a stepped main body (several of the central segments 122, fig. 1), adjustment steps having different outer diameters and located on a tip end side relative to the main body (items 122 adjacent item 130, fig. 1), and a straight portion having a constant outer diameter and located on the tip end side relative to the adjustment steps (item 130, fig. 1, column 3 lines 4-7); and setting a flex of the golf shaft according to a number of the adjustment steps in the stepping process by increasing a length of the butt end section in the axial direction by one or more adjustment steps with respect to a predetermined length of a butt end section of a reference structure having a predetermined flex, and omitting formation of the adjustment steps corresponding to an amount of the increase of the length of the butt end section with respect to a predetermined number of adjustment steps of the reference structure (item 110 and a couple adjacent items 122, fig. 1; note this is exceedingly unclear, however, as best understood, this is simply forming a particular number of adjustment steps in the butt end section; the diameter, length, and amount of which would inherently correspond to a particular amount of flex, i.e. “setting a flex”);
(Claim 5) wherein in the stepping process, an outer diameter of the straight portion is made equivalent to a largest outer diameter in the omitted 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, and/or a particular flex 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. It is also inherent that a length / diameter of a tube and number of stepped portions would affect / change a flex of the club.
However, in the event that applicant is intending to claim some other order of manufacturing steps or particular flex 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.
It is further noted 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). As noted above, it is unclear what, if anything, is actually being claimed with regard to the flex of the golf shaft, since no specific values are claimed and only the general recitation of length and number of steps affect a flex of a shaft, which seems it is inherent to any club formed with adjustment steps. I.e. a “flex” would inherently be set by manufacturing a particular length, diameter, and number of steps. However, in the alternate view that some particular flex is attempting to be claimed, the examiner notes that 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 a particular length of a butt end and / or a particular number of steps in order to tailor the shaft to have a particular flex simply as a matter of design choice, since length / diameter of a tube in a golf club shaft are result effective variables, i.e. variables that achieve a recognized result. In this case, the result of increasing or decreasing stiffness of a tube, which, increases / decreases the flex of a golf club shaft (summary and column 2 line 58 – column 3 line 3). Merely changing the length / number of steps in a butt end of the shaft to modify / tailor the flex of the golf club shaft is an obvious matter of engineering design choice, and is not a patentable advance.
Response to Arguments
Applicant's arguments filed 06/16/2026 have been fully considered but they are not persuasive.
Applicants comment with regard to the 112 rejection is noted, however, the new language beginning with “setting a flex” does not appear to clarify what is attempting to be claimed. These recitations simply seem to recite concepts relating to inconcrete associations between flex and length / number of steps, which would be inherent to any manufacturing method of a stepped golf club. It is still unclear what actual manufacturing steps are attempting to be claimed.
Applicant’s arguments / comments regarding this language in application to the prior art rejection are similarly not persuasive. The recitations do not provide any concrete manufacturing steps, but instead recite relationships between number of adjustment steps / length and the flex of a shaft. These elements are inherent to a manufactured stepped golf club; therefore, these recitations do not appear to define anything not already present in the prior art. See action above for further details.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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