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 .
Status of Claims
Claims 1-20, filed 4/17/2023, are pending and are currently under examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/17/2023 was filed after the mailing date of the first Office Action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 4, 7-9, 13, and 17-19 are objected to because of the following informalities:
Claims 1, 8, 13 and 18, recite “(A1)” that relies on a label “(A1)” that is explained only in the description. "(A1)" is an internal variable label from the specification and not a standard claim defined term.
Claim 4, recites "microballoons to foam the microballoons" which is informal and awkward wording.
Claims 9 and 19, recite “(A2)” that relies on a label “(A2)” that is explained only in the description. "(A2)" is an internal variable label from the specification and not a standard claim defined term.
Claims 7, 8, 17, and 18 recite material abbreviations such as “(NBR)”, “(HNBR)”, “(XNBR)”, or “(XHNBR)” that are not used later in the claims for reference and therefore do not aid in claim interpretation.
Appropriate correction is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mikura et al. (U.S. 9,630,077) in view of Sheridan (The Vanderbilt Rubber Handbook, 14th ed., 2010).
Regarding claim 1, Mikura teaches a golf club grip comprising a cylindrical portion having a cylindrical inner layer and a cylindrical outer layer provided outside the cylindrical inner layer. Specifically, Mikura discloses, with reference to Figures 1 and 2, a grip (1) including a cylindrical part (2) composed of an inner layer (2a) and an outer layer (2b). Mikura further discloses a golf club comprising a shaft, a head provided on one end of the shaft, and the grip provided on another end of the shaft, as shown in Figure 3. Mikura explicitly states that the grip for sporting goods “comprises a cylindrical portion composed of a cylindrical inner layer and a cylindrical outer layer” (col. 1, lines 42-45), thereby teaching the claimed grip structure.
Mikura further teaches that the cylindrical inner layer is formed from an inner layer rubber composition containing a base rubber. In particular, Mikura discloses that the porous rubber layer of the inner layer can be formed from an inner layer rubber composition containing a base rubber and a crosslinking agent, and expressly lists acrylonitrile-butadiene based rubbers including acrylonitrile-butadiene rubber (NBR), hydrogenated acrylonitrile-butadiene rubber (HNBR), carboxyl-modified acrylonitrile-butadiene rubber (XNBR), butadiene rubber (BR), styrene-butadiene rubber (SBR), polyurethane rubber (PU), isoprene rubber (IR), chloroprene rubber (CR), natural rubber (NR), ethylene-propylenediene rubber (EPDM), butyl rubber (IIR), and ethylene-propylene rubber (EPM), as suitable base rubbers (col. 6, lines 58-67, col. 7, lines 1-2). Accordingly, Mikura teaches an inner rubber composition containing an acrylonitrile-butadiene rubber as a base rubber.
However, Mikura does not expressly teach a numerical ‘maximum torque’ (MH) limitation of 0.5 N·m or greater, nor does Mikura disclose measurement of torque under specific rheological test conditions recited in claim 1, namely a vulcanization curve measured at 165° C and an amplitude angle of 1°, as recited in claim 1.
Sheridan provides authoritative disclosure regarding the rheological behavior of nitrile rubber compounds including acrylonitrile-butadiene based rubbers, during vulcanization. Sheridan explains that nitrile rubber “lends itself to a virtually infinite number of approaches to compounding,” resulting in compounds whose mechanical and cure properties span broad, predictable ranges (pp. 248-249, Table 7). The disclosure establishes that rheological properties, including torque response during vulcanization, are controlled through routine adjustment of formulation variables.
With respect to the limitations recited in claim 1, Sheridan teaches that nitrile-based rubber compounds, including NBR, XNBR, and HNBR typically and routinely exhibit maximum torque values exceeding 0.5 N·m when using standard rheological test methods. Specifically, Sheridan discloses MDR 2000 rheometer measurements at 0.5° arc and test temperatures ranging from 170-177° C showing maximum torque values ranging from approximately 0.81 to 1.85 N·m (Page 244, Table 2; Page 331, Table 3; Page 332, Table 4). Sheridan further discloses that rheological torque values exceeding 0.5 N·m are likewise observed using ODR rheometers at higher amplitudes and comparable temperatures (Page 244, Table 2; Page 62, Table 3).
The differences between the specific test conditions recited in claim 1 and those disclosed by Sheridan do not constitute a technical distinction conferring patentability. Sheridan’s disclosure encompasses torque values both above and below 165° C and at amplitudes both lower and higher than 1°, demonstrating that achieving a maximum torque value exceeding 0.5 N·m under the claimed conditions would have been predictable. In particular, Sheridan shows torque values exceeding 0.5 N·m even at lower amplitudes (0.5°) and higher temperatures (170-177° C), conditions that would be expected to reduce measured torque relative to the claimed conditions. Accordingly, achieving the claimed minimum torque at 165° C and 1° amplitude would have been inherently expected for nitrile-based rubber compositions of the type taught by Mikura.
Accordingly, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Mikura and Sheridan and to modify the inner layer rubber composition of Mikura such that it exhibits a maximum torque value of 0.5 N·m or more under the claimed vulcanization conditions, because Mikura teaches the use of acrylonitrile-butadiene based rubber compositions for golf club grips and Sheridan demonstrates that such compositions inherently and predictably exhibit torque values exceeding the claimed threshold under standard rheological test conditions. Adjusting formulation parameters or selecting test conditions to achieve a particular torque response therefore constitutes routine optimization of a result-effective variable, and as held by the court, “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)). Moreover, the selection of an acrylonitrile-butadiene based rubber for use in a golf club grip inner layer represents the use of a known material chosen for its recognized suitability for the intended use, which does not confer patentability, as “mere selection of known materials … on the basis of suitability for the intended use” has been held to be nonpatentable (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)). Further, applicant’s experimental data confirm that maximum torque value of 0.5 N·m does not represent a critical threshold. The data show torque values both below and above 0.5 N·m (e.g. 0.377-0.599 N·m) with no abrupt change in elongation, swelling, compression set, collapse resistance, or weather resistance. The absence of any inflection point or discontinuity at the claimed boundary demonstrates that the claimed maximum torque value does not define a critical range and does not produce unexpected results relative to the predictable behavior taught by Sheridan. As set forth in In re Boesch, evidence of unexpected properties must be shown through direct or indirect comparative testing against the closest prior art, and such evidence must establish that the claimed difference is not merely a difference in degree but reflects a meaningful and obvious improvement (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)).
Regarding claim 2, the combination of Mikura in view of Sheridan teaches the golf club grip in claim 1, wherein the cylindrical inner layer is a porous layer. Mikura expressly discloses that the cylindrical inner layer of the golf grip may be formed as a porous (foamed) layer from a rubber composition in order to reduce weight while maintaining mechanical strength and grip performance (Col. 5, lines 30-44). Mikura further discloses in the abstract that the inner layer may be a porous rubber or porous resin layer, while the outer layer is formed from a composition containing an acrylonitrile-butadiene rubber, thereby expressly teaching the claimed porous inner layer in the context of the claimed grip structure.
Regarding claim 4, the combination of Mikura in view of Sheridan teaches the golf club grip of claim 1, wherein the porous inner layer is formed by heating a rubber composition containing microballoons. Mikura expressly discloses that the cylindrical inner layer of a golf club grip may be formed as a porous layer using a balloon foaming method in which microballoons are incorporated into a rubber composition and subsequently expanding by heating to form a cellular structure. Specifically, Mikura teaches that microballoons are allowed to be contained in the rubber composition and expanded during heating to perform foaming, and that the expanded microballoons may be blended with the rubber composition prior to molding to form fine pores within the inner layer (Col. 5, lines 1-14).
Mikura further discloses additional exemplary methods for forming porous rubber layers suitable for the cylindrical inner layer of a golf club grip, including chemical foaming methods, supercritical carbon dioxide injection molding methods, salt extraction methods, and solvent removing methods, each of which produces a porous rubber structure through well-known foaming mechanisms (Col. 5, lines 1-29). These disclosures confirm that forming a porous inner layer by heating a rubber composition containing microballoons is one of several expressly taught and routine techniques for achieving a lightweight, mechanically functional inner layer.
Mikura additionally teaches that microballoons may be used not only in the inner layer but also the outer layer rubber composition, further demonstrating that the use of microballoons is broadly applicable within the grip structure and not limited to a particular layer (Col. 5, lines 57-67). Mikura also discloses preferred microballoon contents expressed in parts by mass relative to the rubber component (Col. 6, lines 36-48), and teaches that the microballoons may be either organic or inorganic (Col. 5, lines 39-51), confirming the routine and conventional nature of this foaming approach.
Regarding claim 5, the combination of Mikura in view of Sheridan teaches the golf club grip of claim 1, wherein the cylindrical inner layer has an elongation at break of 730% or less.
However, Mikura does not expressly disclose a numerical elongation-at-break limitation for the inner rubber layer.
Sheridan teaches that typical properties of nitrile-based rubber compounds exhibit elongation-at-break values spanning approximately 100% to 700% (pg. 249, Table 7). Sheridan discloses many NBR, XNBR, and HNBR formulations routinely exhibit elongation-at-break values that overlap and encompass the claimed limitation, including elongation values at or below 730% depending on cure conditions (Pg. 244-247, Tables 2, 4, 5). Sheridan further establishes that increasing crosslink density reduces elongation while improving dimensional stability and resistance to collapse, whereas excessively high elongation is associated with under-crosslinked materials.
Accordingly, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to select an elongation-at-break value of 730% or less when formulating the nitrile-based inner layer of Mikura’s golf club grip, because Sheridan teaches that elongation-at-break values spanning up to approximately 700% are routinely achievable and that such values are adjusted to balance elasticity, durability, dimensional stability, and resistance to collapse. Selecting an upper bound near the disclosed values represents routine optimization of a result-effective variable, where the general conditions and performance tradeoffs are already known in the art, consistent with In re Aller. Further, to the extent applicant asserts that the claimed upper limit produces unexpected results, the specification does not provide comparative data or evidence establishing criticality or unexpected performance at or near 730% and the burden remains on applicant to rebut the prima facie case of obviousness with evidence commensurate in scope with the claim, consistent with In re Boesch.
Regarding claim 6, the combination of Mikura in view of Sheridan teaches the golf club grip of claim 1, wherein the cylindrical inner layer has a toluene swollen ratio of 200% or less.
However, Mikura does not expressly teach a numerical limitation on toluene swelling for the inner rubber layer.
Sheridan teaches that nitrile-based rubber compositions, including NBR and HNBR, routinely exhibit limited solvent swelling behavior as a function of crosslink density, acrylonitrile content, and formulation. Specifically, Sheridan discloses oil, fuel and water swelling values for nitrile elastomers that are generally well below 100% volume swell, including less than 30% swell for typical HNBR compounds (pg. 245, 259-260). Although Sheridan does not expressly disclose toluene swelling, toluene is a non-polar solvent commonly used to assess solvent resistance and crosslink density, and swelling behavior of toluene is predictably correlated with swelling behavior in oils, fuels, and water for nitrile elastomers.
Further, the claimed limitation of a toluene swollen ratio of 200% or less is not shown to be critical. As reflected in the applicant’s own experimental data, the majority of tested compositions fall within or near the claimed range while exhibiting comparable mechanical properties, and no discontinuity, inflection point, or unexpected result is demonstrated at the 200% threshold. The written description likewise characterizes swelling as a proxy for crosslink density using conventional rubber-engineering principles and does not explain why values marginally above or below 200% would materially alter performance. Accordingly, the claimed swollen-ratio limit represents a routine, result-effective variable selected through ordinary experimentation rather than an invention-defining boundary.
Accordingly, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to select a toluene swollen ratio of 200% or less for the nitrile-based inner rubber layer of Mikura’s golf club grip, because Sheridan teaches that solvent swelling behavior of NBR and HNBR compositions is predictably correlated with crosslink density and formulation and is routinely adjusted to balance solvent resistance, mechanical durability, and long-term performance under environmental exposure. Selecting an upper limit within the routinely achievable and expected swelling behavior taught by Sheridan represents routine optimization of a result-effective variable, where the general conditions and performance tradeoffs are known in the art, consistent with In re Aller. Further, the specification does not demonstrate that the claimed 200% threshold is critical or that unexpected results occur at or near this value, and the burden remains on applicant to rebut the prima facie case of obviousness with evidence commensurate in scope with the claim, consistent with In re Boesch.
Regarding claim 7, the combination of Mikura in view of Sheridan teaches the golf club grip of claim 1, wherein the acrylonitrile-butadiene based rubber includes NBR and HNBR. Mikura expressly discloses that acrylonitrile-butadiene based rubbers suitable for use in golf club grips include acrylonitrile-butadiene rubber (NBR) and hydrogenated acrylonitrile-butadiene rubber (HNBR) (Col. 2, lines 26-35). Thus, Mikura explicitly identifies both NBR and HNBR as members of the same rubber family suitable for forming grip components and represents routine selection of disclosed alternative materials.
Regarding claim 9, the combination of Mikura in view of Sheridan teaches the golf club grip of claim 1, wherein the outer layer contains XNBR, HNBR, or XHNBR. Mikura expressly discloses that acrylonitrile-butadiene based rubbers suitable for use in golf club grips include acrylonitrile-butadiene rubber (NBR), carboxyl-modified acrylonitrile-butadiene rubber (XNBR), hydrogenated acrylonitrile-butadiene rubber (HNBR), and carboxyl-modified hydrogenated acrylonitrile-butadiene rubber (HXNBR) (Col. 2, lines 26-35). Mikura further teaches that these materials are suitable for use as the base rubber in the outer layer of a golf club grip and that the outer layer may be formed entirely from an acrylonitrile-butadiene based rubber selected to balance abrasion resistance, oil resistance, and low-temperature tactile performance (Col. 17, lines 20-21, 57-67; Col. 18, lines 1-5). Mikura also provides comparative data demonstrating that use of NBR-based outer layers improves tensile strength relative to without an outer layer and that use of HNBR, XNBR, or XHNBR provides further improvements in tensile strength and abrasion resistance.
Regarding claim 10, the combination of Mikura in view of Sheridan teaches the golf club grip of claim 1, wherein the maximum torque value ranges from 0.5 N-m to 1.3 N-m.
However, Mikura does not expressly disclose vulcanization torque measurements, nor does Mikura disclose any numerical range for a maximum torque value including an upper limit of 1.3 N-m recited in claim 10.
Sheridan teaches that nitrile-based rubber compounds, including NBR and HNBR formulations, routinely and predictably exhibit maximum torque values across a broad range depending on formulation variables such as acrylonitrile content, crosslink density, cure system, test temperature, amplitude, and rheometer type. In particular, Sheridan discloses that NBR compounds measured using MDR and ODR rheometers, amplitudes between 0.5° to 3°, temperatures between 160° C and 177° C and cure times ranging from 20-30 minutes. Sheridan further teaches that torque values ranging from approximately 0.8 N·m to well above 1.3 N·m are routinely observed depending on formulation and testing configuration, and that lower torque values correspond to softer compounds or lower crosslink density, while higher torque values correspond to stiffer, more highly crosslinked compounds.
Further, the claimed torque range of 0.5 - 1.3 N·m has not been shown to be critical. The specification characterizes this range as preferred and process-driven, stating that values above 0.5 N·m improve collapse resistance while values below 1.3 N·m reduces likelihood of ‘bad’ foaming behavior but it does not explain why the values immediately outside the claimed range would fail to achieve these objectives. The Applicant’s test data show that samples exhibiting maximum torque values both within and outside the claimed range display overlapping performance with respect to elongation, swelling, and durability, and do not demonstrate an inflection point or unexpected result occurring at either the 0.5 N·m or 1.3 N·m boundary. Accordingly, the claimed torque range represents a routine optimization of a known rheological parameter rather than a patentably distinct limitation.
Accordingly, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the golf club grip of Mikura to employ a nitrile-based rubber composition having a maximum torque value within the range of 0.5 to 1.3 N·m, as taught by Sheridan, because Sheridan establishes that maximum torque values across this range are routinely and predictably achieved by adjusting formulation variables, curing conditions, and crosslink density in order to balance stiffness, collapse resistance, and processability. Selection of a torque value within this sub-range therefore would have been motivated by the desire to achieve predictable grip performance characteristics using known materials and known curing techniques, and represents routine optimization rather than a patentably distinct limitation.
Further, the claimed torque range of 0.5 to 1.3 N·m has not been shown to be critical. The specification does not characterize this range as producing a new or unexpected result, nor does it explain why torque values marginally outside the claimed range would fail to achieve the stated objectives. As reflected in the applicant’s own test data, samples exhibiting maximum torque values within and outside the claimed range display overlapping performance with respect to elongation, swelling, and durability, and no inflection point, discontinuity, or unexpected result is demonstrated at either the 0.5 N·m or 1.3 N·m boundary. Therefore, the claimed torque range represents routine optimization of a known rheological, result-effective variable, and where the general conditions are disclosed in the prior art, discovering an optimum or workable range involves only routine experimentation (In re Aller). Moreover, absent persuasive evidence demonstrating criticality or unexpected results commensurate in scope with the claim, the burden remains on applicant to rebut the prima facie case of obviousness (In re Boesch).
Regarding claim 11, the combination of Mikura in view of Sheridan teaches the golf club grip of claim 1, wherein the cylindrical inner layer has an elongation at break ranging between 300% and 700% in a tensile test.
However, Mikura does not expressly disclose numerical elongation-at-break values for the inner rubber layer, nor does Mikura identify any specific elongation range.
Sheridan teaches that nitrile rubber compounds, including NBR, XNBR, and HNBR compositions routinely exhibit elongation-at-break values spanning broad ranges that encompass the claimed sub-range. Specifically, Sheridan discloses elongation-at-break values of approximately 206%-470% for a range of nitrile elastomer compositions (pg. 244, Table 2), and 415%-500% for XNBR blends (Pg. 246, Table 4). Sheridan further teaches that typical nitrile rubber “lends itself to a virtually infinite number of approaches to compounding,” resulting in a wide range of mechanical properties (pg. 248-24, Table 7). These disclosures encompass and overlap the claimed elongation range of 300%-730%.
Accordingly, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the golf club grip of claim 1 to employ a nitrile-based rubber composition having an elongation-at-break within the range of 300% to 730%, as taught by Sheridan, because Sheridan establishes that nitrile rubber compositions, including NBR, XNBR, and HNBR blends, routinely and predictably exhibit elongation-at-break values spanning broad ranges that encompass the claimed sub-range, depending on formulation and curing conditions. Selecting a particular elongation-at-break value or sub-range within these known ranges represents routine optimization of a result-effective variable, where the general conditions and performance tradeoffs are already known in the art, consistent with In re Aller. Further, the specification does not demonstrate that the claimed elongation sub-range is critical or that values outside the claimed range would fail to achieve the intended function, and the applicant’s data do not establish an inflection point or unexpected result at the claimed boundaries. Absent evidence of unexpected results commensurate in scope with the claim, the burden remains on applicant to rebut the prima facie case of obviousness, consistent with In re Boesch.
Regarding claim 12, the combination of Mikura in view of Sheridan teaches the golf club grip of claim 1, wherein the cylindrical inner layer has a swollen ratio ranging from 100% to 200% in a toluene swollen test.
However, Mikura does not expressly disclose solvent swelling measurements, nor does Mikura disclose a numerical swollen ratio range, including a range of 100% to 200% in a toluene swollen test.
Sheridan teaches that nitrile-based rubber compositions, including NBR and HNBR materials exhibit predictable and formulation-dependent solvent swelling behavior that serves as a proxy for crosslink density. Sheridan discloses welling data for nitril elastomers in a variety of non-polar and semi-polar liquids including oils, fuels and water, showing that swelling is routinely controlled through acrylonitrile content, crosslink density, and compounding techniques (pg. 245, Table 2, pg. 259-260). Sheridan further teaches that such swelling behavior is a routine parameter used to balance elasticity, durability, moisture resistance, and deformation. A person of ordinary skill in the art would understand that swelling behavior measured in toluene is predictably correlated with swelling behavior measured in oils, fuels, and water for nitrile elastomers.
Regarding claim 13, Mikura teaches a golf club comprising a shaft, a head attached to one end of the shaft, and a grip attached to the shaft. Specifically, Mikura discloses a golf club having a shaft (5), a head attached at one end of the shaft (4), and a grip attached to the shaft (1), wherein the grip includes a cylindrical inner layer (2a) and a cylindrical outer layer provided outside the inner layer (2b), as shown in figures 1-3. Mikura further teaches that the inner layer is formed from a rubber composition suitable for grip applications, including acrylonitrile-butadiene based rubber compositions.
As explained with respect to claim 1, Sheridan teaches that nitrile-based rubber compositions, including NBR and HNBR formulations, exhibit predictable rheological behavior during vulcanization, including maximum torque values measured using MDR or ODR rheometers under standard test conditions. Sheridan further teaches that such maximum torque values vary predictably with formulation variables, crosslink density, curing temperature, and cure time, and that adjusting these parameters is routinely performed to balance stiffness, elasticity, and durability in rubber products.
However, Mikura does not expressly disclose a numerical maximum torque value for the rubber composition forming the inner layer of the grip.
As explained above with respect to claim 1, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the golf club grip of Mikura such that the rubber composition forming the cylindrical inner layer exhibits a maximum torque value of 0.5 N·m or more when measured under standard vulcanization conditions, as taught by Sheridan, in order to achieve predictable mechanical performance and durability of the grip. Selecting such a torque value represents routine optimization of a result-effective rheological parameter, where the general conditions and performance tradeoffs are already known in the art, consistent with In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, absent evidence demonstrating that the claimed torque threshold is critical or yields unexpected results, the burden remains on applicant to rebut the prima facie case of obviousness with evidence commensurate in scope with the claim, consistent with In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 14, the combination of Mikura in view of Sheridan teaches the golf club of claim 13, wherein the cylindrical layer of the grip is porous. As explained with respect to claim 2, Mikura expressly discloses porous (foamed) inner layers formed from rubber compositions to reduce weight while maintaining grip performance. Incorporation of such a grip into a golf club does not alter the porosity or its function. Accordingly, claim 14 is unpatentable for the same reason as claim 2.
Regarding claim 15, the combination of Mikura in view of Sheridan teaches the golf club of claim 13, wherein the cylindrical inner layer has an elongation at break of 730% or less. As explained with respect to claim 5, Sheridan teaches that nitrile-based rubber compounds routinely exhibit elongation-at-break values well below 730% and elongation is controlled through conventional compounding and curing. The presence of a shaft and head does not affect elongation behavior of the grip. Accordingly, claim 15 is unpatentable for the same reasons as claim 5.
Regarding claim 16, the combination of Mikura is view of Sheridan teaches the golf club of claim 13, wherein the cylindrical inner layer has a toluene swollen ratio of 200% or less. As explained with respect to claim 6, Sheridan teaches that nitrile-based rubber compositions exhibit predictable and limited solvent swelling behavior correlated with crosslink density, and a swollen ratio of 200% or less represents a non-critical and routine threshold. The presence of a shaft and head does not affect solvent diffusion into the grip. Accordingly, claim 16 is unpatentable for the same reasons as claim 6.
Regarding claim 17, the combination of Mikura is view of Sheridan teaches the golf club of claim 13, wherein the acrylonitrile-butadiene based rubber includes NBR and HNBR. As explained with respect to claim 7, Mikura expressly discloses both NBR and HNBR as suitable rubbers for forming golf club grips. Incorporating such a grip into a golf club does not change the rubber selection. Accordingly, claim 17 is unpatentable for the same reasons as claim 7.
Regarding claim 19, the combination of Mikura in view of Sheridan teaches the golf club of claim 13, wherein the outer layer contains XNBR, HNBR, or XHNBR. As explained with respect to claim 9, Mikura expressly discloses each of these rubbers as suitable materials for the outer layer of a golf club grip. The shaft and head do not affect outer layer material selection. Accordingly, claim 19 is unpatentable for the same reason as claim 9.
Regarding claim 20, the combination of Mikura in view of Sheridan teaches the golf club of claim 13, wherein the grip exhibits a maximum torque value range of 0.5 to 1.3 N·m, and elongation at break of 300-730%, and a toluene swollen ratio of 100-200%. As explained with respect to claims 10-12, Sheridan teaches each of these properties as routine manifestations of nitril rubber formulation and crosslink density, and the claimed sub-ranges represent non-critical selections from broader, predictable ranges. Incorporation of such a grip into a golf club does not introduce any new functional interaction or unexpected result. Accordingly, claim 20 is unpatentable for the same reasons as claims 10-12.
Claims 3, 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Mikura et al. (U.S. 9,630,077) in view of Sheridan (The Vanderbilt Rubber Handbook, 14th ed., 2010) and further in view of Inoue et al. (U.S. 10,286,269 B2).
Regarding claim 3, the combination of Mikura and view of Sheridan and further in view of Inoue teaches the golf club grip of claims 1 and 2, wherein the porous inner layer has a density from 0.2
g
/
c
m
3
to 0.60
g
/
c
m
3
. As discussed in claims 1 and 2, Mikura teaches a golf club grip having inner and outer cylindrical layers formed from rubber compositions suitable for grip applications and expressly discloses that the cylindrical inner layer may be a porous (foamed) rubber layer provided to reduce weight while maintaining grip performance. However, Mikura does not disclose any numerical density range for the porous inner layer.
As explained in claim 1, Sheridan is relied upon to establish the predictable material behavior of nitrile-based rubber compositions used in in the grip and is not relied upon to teach porous structures or density values for porous structures.
Inoue, however, however expressly teaches porous inner layers for golf club grips having densities that overlap the claimed range, specifically disclosing that the density of a porous inner layer is preferably 0.2
g
/
c
m
3
to 0.50
g
/
c
m
3
with narrower preferred sub-ranges therewithin (Col. 13, lines 8-18). Inoue further teaches that selection of porous-layer density is related to balancing weight reduction and deformation resistance in a golf club grip.
Accordingly, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to modify the porous inner layer of Mikura’s golf club grip in claim 2, to have a density within the overlapping range taught by Inoue, because Inoue expressly discloses that porous inner layers for golf club grips having densities within the overlapping range are suitable for achieving a balance between weight reduction and deformation resistance. Further, is appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the porous inner layer of Mikura’s golf club grip to have a density within the claimed range, as it involves only adjusting the density of a component already disclosed in the prior art to require adjustment in order to achieve predictable improvements in weight and mechanical performance. Therefore, it would have been obvious to select a density within the claimed range as a matter of routine optimization, since it has been held 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)).
Regarding claim 8, the combination of Mikura and view of Sheridan and further in view of Inoue teaches the golf club grip of claims 1 and 7, wherein the NBR is present in an amount from 10 to 90 mass %. Claim 8 depends from claim 7, which depends from claim 1, and therefore incorporates the golf club grip structure, the acrylonitrile-butadiene based rubber composition including NBR and HNBR, and the maximum torque limitation discussed with respect to claim 1. As further explained with respect to claim 1, Sheridan is relied upon to establish the predictable material behavior of nitrile-based rubber compositions, including torque characteristic.
However, neither Mikura nor Sheridan disclose any specific mass-percentage range for NBR when combined with HNBR.
Inoue expressly teaches that the base rubber used in a golf club grip preferably contains substantial proportions of acrylonitrile-butadiene based rubber, including amounts of 50 mass % or more, more preferably 60 mass %, and even more preferably 70 mass % or more (Col. 2, lines 36-44). This disclosure demonstrates that the proportion of nitrile-based rubber in the base rubber is routinely adjusted across broad ranges to achieve desired performance characteristics. Inoue’s teaching overlaps the claimed range of 10 to 90 % mass.
Accordingly, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the NBR/HNBR rubber composition taught by Mikura to include NBR in an amount within the claimed range as a matter of routine optimization, relying on the predictable material behavior of nitrile-based rubber compositions as taught by Sheridan and Inoue. Adjusting the relative proportions of NBR and HNBR to balance oil resistance, heat resistance, elasticity, and durability represents selection of an optimum value of a result-effective variable, which involves only ordinary skill in the art, consistent with In re Aller. Further, to the extent applicant may assert that the claimed NBR mass-percentage range produces unexpected results, the burden is on the applicant to demonstrate that such results are significant and commensurate in scope with the claims, consistent with In re Boesch. Additionally, the selection of a particular NBR content with a known range for use in a golf club grip inner layer based on its recognized suitability for achieving known performance attributes constitutes an obvious design choice, consistent with In re Leshin.
Regarding claim 18, the combination of Mikura in view of Sheridan and further in view of Inoue teaches the golf club of claim 13, wherein the amount of NBR ranges from 10 to 90 mass %. As explained with respect to claim 8, the proportion of NBR in nitrile rubber blends is routinely optimized across broad ranges to balance durability and elasticity. Applying such a grip to a golf club does not alter this analysis. Accordingly, claim 18 is unpatentable for the same reasons as claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes:
US 2012/0129624 A1 (Ito et al.) discloses a golf club grip having cylindrical inner rubber layer and a cylindrical outer rubber layer formed from different rubber compositions with differing hardness and material properties.
US 9,717,965 B2 (Mikura et al.) further demonstrates that golf club grips incorporating nitrile-based rubber compositions and multilayer constructions were known prior to the effective filing date.
US 2005/0020374 A1 (Wang) teaches hand grips formed from elastomeric materials or composite configurations, reinforcing that the structural arrangement of inner and outer grip layers is conventional and does not impart patentable distinction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JAMES ELLIOTT whose telephone number is (571)272-5496. The examiner can normally be reached Mon - Fri 7:30 -5:00.
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ANDREW JAMES ELLIOTT
Examiner
Art Unit 3711
/ANDREW JAMES ELLIOTT/ Examiner,
Art Unit 3711
/ALEXANDER R NICONOVICH/ Primary Examiner, Art Unit 3711
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