DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Internet/E-mail Communication
In order to permit communication regarding the instant application via email, Applicant is invited to file form PTO/SB/439 (Authorization for Internet Communications) or include the following statement in a separately filed document (see MPEP 502.03 II):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
If such authorization is provided, please include an email address in the remarks of a filed response. The examiner’s e-mail address is Christopher.Legendre@uspto.gov.
Restriction
Applicant's election without traverse of Species 1 in the reply filed on 24 February 2026 is acknowledged. Claims 15 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 30 September 2025 was filed before the mailing date of the first action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is hereby considered.
Claim Objections
Claim 10 is objected to because of the following informalities:
In claim 10, line 2, “upto” should be changed to --up to--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action.
There are no limitations deemed to invoke 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 19 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 19, the limitation recited as “a toe end and a heel end having values x>0 and x<0” renders the claim indefinite. According to MPEP 2173.03, a claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In this instance, the disclosed coordinate system orients “toe end” and “heel end” along the y-axis, not the x-axis. Alternatively/relatedly, the instant limitation is contradictory to the limitation “the putter face having an x<0” since “toe end” and “heel end” are orthogonal to “putter face”. To permit proper examination, the instant “x>0 and x<0” is considered as --y>0 and y<0--.
In claim 20, the limitation(s) recited as “such that a bottom end of the shaft is coupled to the putter head… and a top end of the shaft is inclined towards the vertical plane” renders the claim indefinite. According to MPEP 2173.04, a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. In this instance, “shaft” is established/defined as outside the scope of the claimed invention characterized as “A putter head for a golf putter, the golf putter comprising a shaft adapted to be coupled to the putter head” (i.e., “adapted to be coupled to the putter head” establishes that “shaft” is separate/distinct from “putter head”; the disclosure defines “putter head” as separate/distinct from “shaft”) - the instant limitation(s) amount to a positive limitation(s) of a component that is necessarily outside the scope of the claimed invention.
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 of this title, 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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Pranio (US 5,494,282) in view of Stubbs et al. (US 5,390,919 - hereafter referred to as Stubbs).
In reference to claim 19 (as far as it is clear and definite)
Pranio discloses:
A golf putter, comprising:
a putter head, comprising a center of gravity (inherent) defined on an origin of a cartesian coordinate system, where the origin corresponds to x=0, y=0, z=0;
a toe end (inherent) and a heel end having values x>0 and x<0 (note: the limitation recited as x > 0 and x<0 is considered as --y>0 and y<0-- - see corresponding indefiniteness rejection), respectively;
a putter face (282) adapted to strike a golf ball, the putter face having an x<0;
a first part (284) made of a first material (i.e., the physical material corresponding with first part) and having a first mass (inherent);
a second part (214) made of a second material (i.e., the physical material corresponding with second part) and having a second mass (inherent); and
a shaft (232) having a top end and a bottom end, wherein,
the bottom end of the shaft is coupled (see Figure 6) to the second part of the putter head at a contact point such that the contact point has a value x>0 (see Figure 6 showing a mass distribution that clearly meets the claimed relative locations of contact point and center of gravity), and the top end of the shaft has a value x<0 (i.e., the shaft 232 can have a length of 37 inches and can extend in the forward direction at a minimum angle of 10 degrees, and the putter head can have a front-to-back length of 2.17 inches + 0.6 inches = 2.77 inches; since 37*sin(10degrees) = 6.42 inches, then the shaft 282 extends forward of the entire putter head; see col.8:ll.57-60, col.9:ll.15-17, col.9:ll.30-31, and col.9:ll.36-40).
Pranio does not disclose:
a pair of connecting pins made of the first material;
wherein the second part is coupled to the first part via the pair of connecting pins such that the putter head defines the center of gravity of the putter head.
Stubbs discloses:
a golf club putter head comprising metal dowel pins (30) for connecting distinct parts of the putter head.
Pranio further discloses that the first part is formed of a metal material.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the putter of Pranio to including attaching the first part to the second part via metal dowel pins, as disclosed by Stubbs, for the purpose of ensuring a secure attachment therebetween.
Pranio in view of Stubbs therefore addresses:
a pair of connecting pins (Stubbs - 30) made of the first material (i.e., a metal material);
wherein the second part is coupled to the first part via the pair of connecting pins such that the putter head defines the center of gravity of the putter head (note: any/every mass contributes to defining a center of gravity).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Hettinger et al. (US 6,095,931 - hereafter referred to as Hettinger) in view of Stubbs.
In reference to claim 20 (as far as it is clear and definite)
Hettinger discloses:
A putter head for a golf putter, the golf putter comprising a shaft adapted to be coupled to the putter head, the putter head comprising:
a toe end and a heel end; a putter face adapted to strike a golf ball;
a first part (12) made of a first material (i.e., stainless steel - see col.4:ll.11-15) and having a first mass;
a second part (16) made of a second material (i.e., tungsten alloy - see col.4:ll.11-17) and having a second mass; and
a pair of connecting pins (42 and 43), wherein the second part is coupled to the first part via the pair of connecting pins such that the putter head defines a center of gravity of the putter head in a central plane that is parallel to a vertical plane containing the putter face and that passes through the pair of connecting pins (see col.3:ll.25-26 stating “The center facet is located directly below the center of gravity of the putter head”, and see Figure 9 showing the extent of pins 42 and 43 relative to center facet 36), and
wherein the second part of the putter head is couplable to the shaft (note: the term couplable is broad/non-specific and/or does not imbue any structure; furthermore, the limitation recited as shaft is necessarily outside the scope of the claimed invention characterized as A putter head for a golf putter, the golf putter comprising a shaft adapted to be coupled to the putter - accordingly, there is no structure imbued by couplable to the shaft) of the golf putter such that a bottom end of the shaft is coupled to the putter head (note: the limitation recited as shaft is necessarily outside the scope of the claimed invention characterized as A putter head for a golf putter, the golf putter comprising a shaft adapted to be coupled to the putter - accordingly, there is no structure imbued to A putter head by a bottom end of the shaft is coupled to the putter head) at a contact point (i.e., any point that meets the subsequently claimed conditions)(note: contact point does not imbue any structure) that lies between the toe end and the heel end of the putter head and that lies behind the center of gravity of the putter head with reference to the putter face, and a top end of the shaft is inclined towards the vertical plane (note: the limitation recited as shaft is necessarily outside the scope of the claimed invention characterized as A putter head for a golf putter, the golf putter comprising a shaft adapted to be coupled to the putter - accordingly, there is no structure imbued to A putter head by a top end of the shaft is inclined towards the vertical plane).
Hettinger does not disclose:
the pins are made of the first material
Stubbs discloses:
a golf club putter head comprising dowel pins (30) that are formed of stainless steel.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the putter head of Hettinger to make the pins from stainless steel, as disclosed by Stubbs, for the purpose of ensuring durability thereof and/or limiting cost thereof.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Applicant is advised that a terminal disclaimer may not be used to overcome a "same invention" type double patenting rejection. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); MPEP § 804.02.
Claims 1-14 and 17-20 are provisionally rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claims 1-14 and 17-20, respectively, of co-pending Application No. 19/029,523 (hereafter referred to as Sood). See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969). This is a provisional double patenting rejection because the claims have not in fact been patented. The Sood claims 1-14 and 17-20 are identical to the application claims 1-14 and 17-20, respectively.
Claims 1-14 and 17-20 are provisionally rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claims 1-14 and 17-20, respectively, of co-pending Application No. 19/344,446 (hereafter referred to as Sood ‘446). See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969). This is a provisional double patenting rejection because the claims have not in fact been patented. The Sood ‘446 claims 1-14 and 17-20 are identical to the application claims 1-14 and 17-20, respectively.
Citations of Pertinent Art
The following art is considered pertinent to Applicant’s disclosure.
Solomon (US 4,702,477) discloses a putter head having a center of gravity that is forward of the shaft connection point.
Galliers (US 6,435,976) discloses putter head comprising parts that are attached via pins (176,179).
Demkowski et al. (US 12,496,500) discloses a putter head having a center of gravity that is forward of the shaft connection point.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER RYAN LEGENDRE whose telephone number is (571)270-3364. The examiner can normally be reached on M-F: 9-5 PM ET.
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/CHRISTOPHER R LEGENDRE/Primary Examiner, Art Unit 3711