DETAILED ACTION
This Office action is responsive to communication received 10/02/2025 – Petition to Withdraw an Application from Issue After Payment of the Issue Fee; along with Request for Continued Examination (RCE) and Amendment.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 10/02/2025 has been entered.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Petition
The petition received 10/02/2025 to withdraw an application from issue after payment of the issue fee has been granted. See the ePetition Grant Letter, mailed 10/02/2025.
Status of Claims
Claims 1-6, 8, 10-15 and 17-22 remain pending.
Response to Arguments
The Remarks received 10/02/2025 contain no substantive arguments. Applicant has merely presented amendments to the claims in the current RCE filing for further consideration on the merits. Thus, no further response is deemed necessary here.
FOLLOWING IS AN ACTION ON THE MERITS:
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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claims 17-21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over USPN 7,396,295 to Frame et al (hereinafter referred to as “Frame”) in view of USPN 6,984,181 to Hettinger et al (hereinafter referred to as “Hettinger”), which incorporates USPN 6,425,832 to Cackett et al by reference in its entirety.
As to claim 17, Frame shows a golf club head (10) comprising: a front portion (26), a rear portion (22), a sole portion (i.e., bottom surface 66), a toe portion (20), and a heel portion (18); a face center (i.e., front striking surface 32 includes a face center), wherein a projection of the face center downward along a face portion plane intersects a horizontal ground plane to define a ground center location and a ground center Y-axis; a weight (44) attached to the rear portion (22) of the golf club head; and a center of gravity (CG) having a CG x-axis, a CG z-axis, and a CG y-axis, and located a CGy distance behind the ground center location in the direction of the ground center Y-axis, wherein the CG y-axis extends in a direction from the front portion toward the rear portion (i.e., note the location of the CG in FIG. 4); and wherein: the weight (44) is located rearward of the CG x-axis (i.e., see FIG. 4) and at least a portion of the weight (44) is located below the CG y-axis (i.e., see annotated FIG. 4, herein below); the CGy distance is at least 30 mm and no more than 50 mm (i.e., col. 5, lines 39-41); and a moment of inertia of the golf club head about the CG z-axis (Izz) is between 400 kg-mm2 and 1,400 kg-mm2 (i.e., col. 5, lines 6-8 and lines 38-39).
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Frame differs from the claimed invention in that Frame does not explicitly detail a moment of inertia of the golf club head about the CG y-axis (Iyy) is no less than 1,000 g-cm2 and no more than 3,500 g-cm2. Hettinger makes reference to a center of gravity about an x-axis that extends in a front-to-rear direction and which includes an Ixx of about 2700 g-cm2 (i.e., Hettinger incorporates USPN 6,425,832 to Cackett et al by reference in its entirety, which details an Ixx of 2700 g-cm2 about an axis that extends in a front-to-rear direction, as noted in TABLE THREE located in Col. 12 of Cackett et al; the Ixx in Cackett et al equates to the now-claimed Iyy, as evidenced by FIG. 10 in Cackett et al). Here, Cackett et al notes that the disclosed moment of inertia values promote more consistent golf ball flights and improved accuracy for the golfer (i.e., col. 2, lines 38-47 in Cackett et al). In view of the teachings in Hettinger, which incorporates the subject matter of Cackett et al, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the club head in Frame by providing a moment of inertia of the golf club head about the CG y-axis (Iyy) is no less than 1,000 g-cm2 and no more than 3,500 g-cm2, the motivation being to reduce the tendency for club head twisting during off-center impacts and to provide a more stable swing.
As to claim 18, the weight (44) in Frame is threadably and removably attached to the golf club head and the weight forms an exterior portion of the golf club head (i.e., see FIG. 2).
As to claim 19, the weight (44) in Frame is movable from a toe side of the CG y-axis to a heel side of the CG y-axis (i.e., again, FIG. 2 shows how the weight (44) is movable from the toe side to the heel side).
As to claim 20, Frame shows that the CGy distance is at least 36.2 mm, but does not explicitly detail that the lyy value is at least 2,804 g-cm2 and no more than 3,500 g-cm2. Again, Hettinger makes reference to a center of gravity about an x-axis that extends in a front-to-rear direction and which includes an Ixx of about 2700 g-cm2 (i.e., Hettinger incorporates USPN 6,425,832 to Cackett et al by reference in its entirety, which details an Ixx of 2700 g-cm2 about an axis that extends in a front-to-rear direction, as noted in TABLE THREE located in Col. 12 of Cackett et al; the Ixx in Cackett et al equates to the now-claimed Iyy, as evidenced by FIG. 10 in Cackett et al). Here, Cackett et al notes that the disclosed moment of inertia values promote more consistent golf ball flights and improved accuracy for the golfer (i.e., col. 2, lines 38-47 in Cackett et al). Even though the moment of inertia value disclosed by Hettinger (with reference to Cackett et al) does not include a moment of inertia value of at least 2,804 g-cm2, one of ordinary skill in the art at the time of the invention would have found it obvious, through routine experimentation, to have fine-tuned the moment of inertia of the club head in Frame for improved stability and accuracy while executing a putting stroke. "[W]here 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). See MPEP 2144.05.
As to claim 21, at least a portion of the golf club head (10) in Frame located forward of the CG z-axis and rearward of the CG z-axis is formed of a thermoplastic material (i.e., col. 6, lines 4-6).
Allowable Subject Matter
Claims 1-6, 8, 10-15 and 22 are allowable over the prior art references of record in view of the timely-submitted and properly-filed terminal disclaimer, received 05/13/2025.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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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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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711