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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 5 and 12-20 objected to because of the following informalities:
Claim 5, “weigh” should be “weight”
Claim 12, “selected the” should be “selected from the”
Claim 13, “tope” should be “top”
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1-4, 6-14, and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 12201881 B2 (hereinafter, “Olson”) in view of US 5718643 A (hereinafter, “Wright”).
Regarding claim 1, Olson discloses a stick weight comprising a rod sized for insertion into the shaft bore, the rod having a rod top end and a rod bottom end (Fig. 4, 15L- tip plug stem, Col. 6, Lines 35-45), wherein the rod top end defines an outer top end geometry; a disk coupled to the rod bottom end and sized to abut a tip end of the shaft (Fig. 4, 13L- tip plug head, Col. 6, Lines 35-45).
Olson does not disclose a stick weight support comprising: a first end; a second end; a first portion having an outer surface defining a dome wherein the dome is sized for insertion into the shaft; a second portion coupled to the first portion comprises an outer surface and a plurality of ridges projecting outward from the outer surface and sized to engage the shaft inner surface; wherein the stick weight support defines a cavity extending from the second end towards the first end, wherein the cavity is configured to receive the rod top end. Wright discloses a similar support insert for a shaft with a first end having a domed surface (Fig. 3, 24a) and a cavity extending to the second end (Fig. 6, 26, 30, and 24b). The disclosed insert also contains grooves and raised portions that can be considered ridges on its surface that facilitate insertion into the shaft (Fig. 5, 25, Col. 2, Lines 41-43). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to combine a support insert with a stick weight to minimize vibrations and displacement of internal components within a golf club shaft.
Regarding claims 2 and 13, modified Olson discloses that the top end of the rod defines an outer top end geometry; a cavity defines a cavity geometry complementary to the outer top end geometry. Both the cavity (Wright, Col. 2, Lines 50-52) and the rod (Olson, Fig. 4, 15L- tip plug stem) are of cylindrical geometry.
Regarding claim 3, modified Olson discloses the assembly that is configured to be positioned within a hollow graphite shaft (Olson, Col. 3, Lines 62-27).
Regarding claim 4, modified Olson discloses the assembly being positioned at the tip of the shaft (Olson, Fig. 4).
Regarding claim 12, Olson discloses a golf club (Fig. 4, 24) that has a club head (Fig. 4, 26), a shaft comprising a shaft bore (Fig. 4, 16), a grip (Col. 6, Line 8), a hosel comprising a hosel bore (Fig. 4, 32), a rod sized for insertion into the shaft bore, the rod having a rod top end and a rod bottom end, wherein the rod top end defines an outer top end geometry (Fig. 4, 15L- tip plug stem, Col. 6, Lines 35-45); a disk coupled to the rod bottom end and sized to abut a tip end of the shaft shaft (Fig. 4, 13L- tip plug head, Col. 6, Lines 35-45).
Olson does not disclose a stick weight support comprising: a first end; a second end; a first portion having an outer surface defining a dome wherein the dome is sized for insertion into the shaft; a second portion coupled to the first portion comprises an outer surface and a plurality of ridges projecting outward from the outer surface and sized to engage the shaft inner surface; wherein: the plurality of ridges comprise a ridge shape selected the group consisting of triangles, half circles, and ellipses; wherein the stick weight support defines a cavity extending from the second end towards the first end, wherein the cavity is configured to receive the top end of the rod. Wright discloses a similar support insert for a shaft with a first end having a domed surface (Fig. 3, 24a) and a cavity extending to the second end (Fig. 6, 26, 30, and 24b). The disclosed insert also contains grooves and raised portions that can be considered ridges on its surface that facilitate insertion into the shaft (Fig. 5, 25, Col. 2, Lines 41-43). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to combine a support insert with a stick weight to minimize vibrations and displacement of internal components within a golf club shaft. It is noted that the ridges on Wright’s insert are not defined as specifically triangle, half-circle, or ellipse shaped. It has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, Paragraph 0068) giving no criticality to the particular shape of the ridges, only for the necessity for their presence). Additionally, the ridge design of Wright can also provide space for air to escape.
Regarding claims 6 and 17, modified Olson discloses that the rod has a length below 2.70 inches (Olson, Fig. 4, 15L, Col. 4, Lines 11-13). 1.5-25 mm (0.06-0.98 in) is within this range.
Regarding claims 7 and 18, modified Olson discloses that the rod has a rod diameter between 0.20 inches and 0.40 inches (Olson, Fig. 4, 15L. Col. 4, Lines 29-33). 7.5 mm (0.30 in) is within this range.
Regarding claims 8 and 16, modified Olson discloses that the stick weight comprises a material selected from a group consisting of aluminium, aluminium alloy, stainless steel, stainless steel alloy, tungsten, or tungsten alloy in order to control heaviness and density of the stick weight. (Olson, Col. 9, Lines 60-63). It is noted that Olson does not specifically recite stainless. Additionally, See In re Leshin 277 F.2d 197, 125 USPQ 416 (CCPA 1960), selection of a known metal to make a metal weight is held to be obvious based on its suitability of intended use.
Regarding claims 9 and 19, modified Olson discloses that the disk has a thickness between 0.025 inches and 0.125 inches (Olson, Col. 5, Lines 20-24). “No less than 1.5 mm” (0.06 in) falls within this range.
Regarding claims 10 and 20, modified Olson discloses that the disk has a disk diameter between 0.20 inches and 0.40 inches (Olson, Col. 4, Lines 4-7). 7-7.6 mm (0.28-0.30 in) falls within this range.
Regarding claims 11 and 14, modified Olson discloses that the stick weight assembly is permanently positioned partially within a tip end of the shaft. Olson states that an adhesive may be to secure the tip plug (assembly) into place within the shaft (Col. 5, Lines 51-56). The examiner is interpreting this as permanent attachment.
Claims 5 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olson and Wright as applied to claims 1 and 12 above, and further in view of WO 2021016386 A1 (hereinafter, “Condez”).
Regarding claims 5 and 15, while modified Olson does disclose the support can be made using thermoplastic polyurethane, elastomers, or other materials (Olson, Col. 4, Lines 60-65), it does not specifically cite that the support comprises a material selected from the group consisting of Thermoplastic Styrene block copolymers (TPS or TPE-s), Thermoplastic polyolefinelastomers (TPO or TPE-o), and Thermoplastic Vulcanizates (TPV or TPE-v).
Condez discloses using thermoplastic styrene block copolymers (Paragraph 0047) as a dampening material for use in sports equipment, including golf clubs (Fig. 8). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to make the support out of a rubber such as TPS to modify or dampen impact and increase comfort of the user.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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/S.M.B./ Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711