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 .
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 (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 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(s) 1, 2, 5-7, 9, 10, 12, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holt et al., U.S. Patent Application No. 2007/0078026, in view of Lake, U.S. Patent No. 6,050,903. As to Claim 1, Holt teaches a golf club head assembly (20) comprising a golf club head (22) comprising a sole (26), and a hosel portion (44), paragraphs 0043 and 0046. A hosel opening (56) may extend at least partially through the hosel portion from a terminal end to a divider wall (66), paragraph 0049. A fastener opening may extend from the sole to the divider wall, paragraph 0047 and see Figure 3. A fastener (48) may comprise a head (82) and a threaded portion (84) extending from the head, paragraph 0056. A hosel insert (46) may comprise an upper portion having a shaft opening (68) shaped and sized to receive part of a golf club shaft, and a lower portion protruding from the upper portion and having a threaded fastener opening (76), paragraphs 0050 and 0054 and see Figures 4 and 5. The lower portion may extend at least partially into the hosel opening, the shaft opening may be positioned outside the hosel opening, the head may be positioned in the fastener opening, and the threaded portion may extend through a hole in the divider wall, at least partially through the hosel opening , and at least partially into the threaded fastener opening such that the hosel insert is coupled to the golf club head by the fastener, see Figure 3. Holt does not teach a configuration wherein the shaft opening may be entirely outside of the hosel opening. Lake teaches golf club head assembly (31, 32), Col. 4, ln. 33-38. Lake teaches a hosel insert (60) including a shaft opening (41) positioned entirely outside of a hosel opening (36), Col. 6, ln. 7-13 and 30-34, and see Figure 3. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Holt with the shaft opening arranged entirely outside the hosel opening, as taught by Lake, to provide Holt with a known substitute hosel arrangement. As to Claims 2 and 12, Holt teaches that the club head may be an iron type club head, see Abstract. As to Claim 5, Holt teaches that, in an assembled state, a shaft (14) may be fitted into the shaft opening, paragraph 0043 and see Figure 3. As to Claim 6, Holt teaches that the hosel opening may align with the fastener opening, paragraph 0047, suggesting that the inserted shaft longitudinal axis may be substantially parallel to the longitudinal axis of the hosel opening, when inserted fixedly. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the hosel opening to provide substantially parallel alignment with the longitudinal axis to the shaft, as suggested. As to Claim 7, Holt, as modified by Lake, is applied as in Claim 1, with the same obviousness rationale being found applicable. Further, Lake teaches that the lower portion (61) of the hosel insert may comprise a sidewall that tapers outwardly along a tapering direction from the terminal end of the hosel portion toward the sole to define an expanded space within the hosel insert, Col. 6, ln. 11-14 and see Figure 3. A fastener (66) may comprise a head and a threaded tapered portion extending from the head, Col. 6, ln. 12-15. The tapered portion of the fastener may extend from the head in a direction opposite the tapering direction of the hosel insert, see Figure 3. The lower portion of the insert may be expanded outwardly into space within the hosel opening in response to the tapered threaded portion of the fastener extending at least partially into the threaded fastener opening, Col. 6, ln. 16-20. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the hosel insert and fastener with cooperating tapered parts to expand as claimed and as taught by Lake, to provide Holt, as modified with a known substitute configuration of cooperating parts for coupling a shaft and club head. Holt, as modified, discloses the claimed invention except for reversing parts to place the outwardly tapering opening in the hosel insert instead of in the adjacent hosel portion. It would have been obvious to one of ordinary skill in the art before the effective filing date to place the outwardly tapered portion to provide an expanded space in the hosel portion, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167. As to Claim 9, Holt teaches that the head may have a tool indent, shaped and sized to receive a tool configured to controllably move the threaded portion at least partially through the threaded fastener opening, extending from the sole to the hosel opening, paragraph 56 and see Figures 2 and 3, noting socket screw (80). The fastener opening may have less breadth than the head along a direction perpendicular to a longitudinal axis of the hosel opening such that the tool indent may be at least partially exposed through the fastener opening and the head may be blocked from moving through the fastener opening, see Figure 3. As to Claim 10, Lake is applied as in Claim 1, with the same obviousness rationale being found applicable. As to Claim 13, Holt, is applied as in Claims 5 and 6 with the same obviousness rationale being found applicable. Holt, as modified, discloses the claimed invention except for specifying that the longitudinal axis of the shaft may be fixedly parallel to the longitudinal axis of the hosel opening. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the axes in parallel, as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 86 USPQ 70 (CCPA 1950).
Claim(s) 3, 4, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holt, in view of Lake, as applied to claim 1 above, and further in view of De La Cruz et al., U.S. Patent Application No. 2009/0247316. Holt, as modified, substantially shows the claimed limitations, as discussed above. As to Claims 3 and 11, Holt, as modified, is silent as to locking teeth. De La Cruz teaches a golf club head assembly (12, 10), paragraph 0047. The club head assembly may comprise a hosel insert (20, 16) including a plurality of locking teeth (17) protruding from and exterior, paragraph 0047 and see Figure 1. A hosel portion (18) may have a corresponding plurality of grooves (19) formed on a terminal end and arranged circumferentially around a hosel opening, paragraph 0047 and see Figure 1. The plurality of grooves may be shaped and sized to respectively receive at least part of the plurality of locking teeth when the club head assembly is assembled such that the insert is blocked from rotational movement relative to the club head, paragraph 0047. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Holt, as modified, with cooperating locking teeth and grooves on the hosel insert and hosel portion respectively, as taught by De La Cruz, to provide Holt, as modified, with a known substitute anti-rotation feature. As to Claim 4, De La Cruz teaches at least three locking teeth, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Holt, as modified, with at least three locking teeth, as taught by De La Cruz, to provide Holt, as modified with a known substitute quantity of locking teeth.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holt, in view of Lake, as applied to claim 7 above, and further in view of Bay, U.S. Patent Application No. 2013/0170900. Holt, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 8, Holt, as modified, does not disclose slits extending from an end of the lower portion. Bay teaches a fitting (130) for coupling with a shaft comprising a tapered fastener (134) threadable into an end of the fitting, which may be provided with slits extending from an end toward an opposite end, paragraph 0064 and see Figures 23-25. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Holt, as modified, with slits in the end receiving the tapered fastener, as taught by Bay, to provide Holt, as modified, with slits in the lower portion of the hosel insert distal to the upper portion toward the upper portion to yield the predictable result of facilitating expansion of hosel insert for coupling.
Claim(s) 14, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holt, in view of De La Cruz. As to Claim 14, Holt is applied as in Claim 1. Holt teaches that the end of the shaft may extend at least partially through the hosel opening, see Figure 3. The examiner finds that the fastener opening may be considered as a counterpart to the fastener hole. Holt teaches a hosel insert comprising a threaded fastener opening on a lower portion, as discussed above but Holt is silent as to a threaded insert fitted into an end of the shaft. De La Cruz teaches a club head assembly comprising a hosel insert (16, 20) comprising a threaded insert (20) shaped and sized to be fitted at least partially into an interior of an end of a club shaft, paragraph 0048 and see Figure 1. A lower portion of the threaded insert extends into a hosel opening to receive the fastener into the threaded insert, paragraph 0048 and see Figure 4. The fastener may extend sequentially through the hole in the divider wall, through the fastener hole in the hosel insert and at least partially into the threaded insert, see Figure 4. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Holt, as modified, with a threaded insert configured as claimed and as taught by De La Cruz, to provide Holt, as modified, with a hosel insert configured with a portion extending into the club shaft and a lower portion having internal threads to receive the fastener in the manner of the lower portion of the hosel insert of Holt, to provide a known substitute hosel insert configuration. As to Claim 18, De La Cruz is applied as in Claim 3, with the same obviousness rationale being found applicable. As to Claim 20, De La Cruz teaches that the threaded insert may be adapted to be secured via glue (adhesive) paragraph 0048. It would have been obvious to one of ordinary skill in the art before the effective filing date to adapt the threaded insert for securing by glue, as taught by De La Cruz, to provide Holt, as modified, with a known substitute securing material.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holt, in view of De La Cruz, as applied to claim 14 above, and further in view of Ripp et al., U.S. Patent Application No. 2017/0095708. Holt, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 19, Holt is applied as in Claim 2 with regard to the club head being iron type and Holt teaches that a club head may comprise a striking face (30), sole (26), and a back portion (23) positioned rearward of the striking face and coupled between the sole and the striking face, paragraph 0043 and see Figures 19-20. Holt, as modified, is silent as to a flat weight. Ripp teaches a golf club head assembly (10) comprising a flat weight (14) configured to be coupled to a back portion by a fastening screw (52) paragraphs 0051 and 0054. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Holt, as modified, with a flat weight configured to be coupled to a back portion, as taught by Ripp, to provide Holt, as modified, with an additional feature, to yield the predictable result of facilitating the process of customizing club head weight.
Response to Arguments
Applicant’s arguments submitted 29 January 2026 have been considered but are moot in view of new grounds of rejection.
In response to applicant’s argument regarding the rejection of Claim 14, the examiner maintains the position that the modification of Holt according to the teaching of De La Cruz discloses a fastener (24) extending through a divider wall (34) to mate with internal threads of a threaded insert (20) which may be received into the club shaft. The arrangement is similar to that of Holt wherein the internal threads which receive the fastener extend from a lower portion of a hosel insert and perform the same function to couple the shaft to the club head. A person of ordinary skill in the art would have considered the teaching of the references in combination to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 24 July 2026
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