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 .
Response to Amendment
The amendments filed April 10, 2026 have been entered. Claims 1-3 and 5-20 remain pending in the application. Applicant’s amendments to the claims have overcome each and every objection and previously set forth in the Non-Final Office Action mailed December 11, 2025.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 and 6-14 and 16-20 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 (Fig. 4, 12L) for use within a shaft of a golf club (Fig. 4, 16), wherein the shaft includes a shaft inner surface defining a shaft bore extending to a shaft tip end having a shaft internal diameter (Fig. 4, 19L), the stick weight comprising:
a rod sized for insertion into the shaft bore at the shaft tip end, the rod having a rod top end disposed within the shaft bore at the shaft tip end and a rod bottom end opposite the rod top 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 disposed outside the shaft bore and sized to abut the shaft tip end (Fig. 4, 13L- tip plug head, Col. 6, Lines 35-45);
Olson does not disclose a stick weight support formed of a resilient material, comprising:
a first portion having a first end and an outer surface defining a dome having a diameter smaller than the shaft internal diameter at the shaft tip end;
a second portion coupled to the first portion including a second end opposite the first end and spaced from the rod bottom end, the second portion comprising a cylindrical body with an outer surface with a diameter smaller than the shaft internal diameter at the shaft tip end and a plurality of ridges projecting outward from the outer surface and sized to engage the shaft inner surface at the shaft tip end; and
a cavity extending from the second end towards the first end, configured to receive the rod top end.
However, Wright discloses a similar support insert for a golf club shaft made from elastomeric dampening material (Col. 2, lines 39-41 – rubber is a resilient, energy absorbing material) with a first portion having a domed surface (Fig. 3, 24a) and a cavity extending to the cylindrical second portion (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. Further, as the support is combined with the rod of the stick weight of Olson, it would be obvious that it is sized for insertion where the stick weight is inserted (i.e. shaft tip).
Regarding claim 12 Olson discloses A golf club (Fig. 4, 24) comprising: a club head (Fig. 4, 26) having a hosel (Fig. 4, 32):
a shaft (Fig. 4, 16) comprising a shaft bore extending to a shaft tip end having a shaft internal diameter (Fig. 4, 19L), wherein the shaft tip end is disposed within the hosel;
a grip coupled to the shaft opposite the club head (Col. 6, Line 8):
a stick weight (Fig. 4, 12L) comprising:
a rod sized for insertion into the shaft bore at the shaft tip end, the rod having a rod top end disposed within the shaft bore at the shaft tip end and a rod bottom end opposite the rod top 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 disposed outside the shaft bore and sized to abut the shaft tip end (Fig. 4, 13L- tip plug head, Col. 6, Lines 35-45);
Olson does not disclose a stick weight support formed of a resilient material, comprising:
a first portion having a first end and an outer surface defining a dome having a diameter smaller than the shaft internal diameter at the shaft tip end;
a second portion coupled to the first portion including a second end opposite the first end and spaced from the rod bottom end, the second portion comprising a cylindrical body with an outer surface with a diameter smaller than the shaft internal diameter at the shaft tip end:
and wherein the plurality of ridges comprise a ridge shape selected from the group consisting of triangles, half circles, and ellipses; and
a cavity extending from the second end towards the first end, configured to receive the rod top end.
However, Wright discloses a similar support insert for a golf club shaft made from elastomeric dampening material (Col. 2, lines 39-41 – rubber is a resilient, energy absorbing material) with a first portion having a domed surface (Fig. 3, 24a) and a cavity extending to the cylindrical second portion (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. Further, as the support is combined with the rod of the stick weight of Olson, it would be obvious that it is sized for insertion where the stick weight is inserted (i.e. shaft tip). 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 2 and 13, modified Olson discloses that the top end of the rod defines an outer top end geometry; and the 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 shaft comprises a hollow graphite shaft (Olson, Col. 4, lines 26-27).
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 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 and Wright, Col. 2, lines 39-41), 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.
Response to Arguments
Applicant's arguments filed April 10, 2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references Olson and Wright (as applied to claims 1 and 12) individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s disclosure (paragraph 4) discloses that fig 2 shows a known method to dampen undesirable vibrations at the end of a steel shaft stick weight so it is the examiner’s position that modifying Olson’s stick weight with Wright’s dampening support means would be within the realm of a POSITA to minimize undesirable vibrations at the end of the shaft. The claimed novelty of adding the support to the stick weight portion to prevent rattling/breakage within the club shaft could be realized through the combination. Stick weights are a known accessory in the golf art, and dampening inserts such as Olson’s are known to prevent harsh vibrations (i.e. prevent “rattling”). Specifically, in regards to the reference Wright, while the reference itself teaches the insert is placed at the fulcrum, this is viewed in light of the primary reference Olson who shows the stick weight assembly is placed at the tip of the shaft (Fig. 4, 12L).
In response to the argument that modified Olson does not teach ridges projecting from the outer surface, a normal and ordinary definition of ridge is “an elevated body part or structure” (See Merriam-Webster.com). The portions indicated with arrows below in annotated Fig. 5 of Wright can be considered ridges, as they are elevated regions relative to the grooves. Further, the structure serves the same purpose as Applicant’s claimed criticality of facilitating entry into the shaft, thus showing a lack of novelty (Wright: Col. 2, Lines 41-43 | Applicant’s Specification: Para. 0061).
PNG
media_image1.png
230
172
media_image1.png
Greyscale
In response to applicant's argument that the insert of Wright contains spherical members (not a rod), a recitation of the intended use/functional limitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or meeting the functional limitation, then it meets the claim. Wright specifically states that cavity is cylindrical and make accustom cylindrical weight members (Wright: Col. 2, lines 50-52, Col. 3, lines 13-16). Thus, the support structure is entirely capable of or “configured to” receiving a cylindrical weight, such as the rod/stem of Olson’s stick weight (Olson: Fig. 4, 15L).
In response to applicant's arguments against the references individually regarding claims 5 and 15, again, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In combination, Olson and Wright teach the structure of the claim as recited, along with the use of elastomers, but they do not cite the specific material types (Thermoplastic Styrene block copolymers, Thermoplastic polyolefinelastomers, and Thermoplastic Vulcanizates) claimed by Applicant. Condez solves a similar problem as the Applicant through material choice to absorb vibration/impact in sports equipment, including golf clubs (Condez, Abstact and Para. 0026). Thus, it would be obvious to make the stick weight support (which acts as a dampener) out of a known dampener material as disclosed by Condez.
Conclusion
THIS ACTION IS MADE FINAL. 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 SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.M.B./Examiner, Art Unit 3711
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
Prosecution Insights