DETAILED ACTION
This Office action is responsive to communication received 12/19/2025 – Amendment and Terminal Disclaimer.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 12/19/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPN 11779815 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Drawings
The replacement drawings (FIGS. 8A-8E) were received on 12/19/2025. These drawings are acceptable.
As was mentioned in the last Office action, mailed 08/20/2025, it is again noted that the originally-filed drawings, received 10/10/2023, have been labeled “REPLACEMENT SHEET”. The reason for the labelling of originally-filed drawings in this manner by the applicant is not understood. An explanation is sincerely requested.
Specification
The amendment to the specification, received 12/19/2025, has been entered.
Abstract
The amendment to the abstract, received 12/19/2025, has been entered.
Status of Claims
Claims 1-11 remain pending.
Response to Arguments
In the arguments, received 12/19/2025, the applicant addresses the outstanding objections to all of the specification, the drawings and the abstract. Further, the applicant addresses the outstanding rejections of the claims under 35 U.S.C. §112(b). The applicant acknowledges a broadening of independent claim 1, arguing that the applicant never intended for claim 1 to require the second discrete lower hosel adjustment spacer portion.
IN RESPONSE:
In view of the amendments to the claims, which specifically broaden the scope of independent claim 1, a new prior art rejection of record is being presented hereinbelow, with consideration of the prior art references to USPN 7,077,760 to Gray, newly-cited, and US PUBS 2018/0361206 to Becktor et al (hereinafter referred to as “Becktor”, already of record). No further comments are 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 1, 5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,077,760 to Gray in view of US PUBS 2018/0361206 to Becktor et al (hereinafter referred to as “Becktor”).
As to claim 1, Gray shows a golf club assembly (10; Figs. 3A, 3B), comprising, in combination: a discrete head portion (14; Fig. 1) having a hosel port (20); an interchangeable modular hosel portion (30) having an upper hosel section (40); a shaft (44; Fig. 3B) and grip portion (46; Fig. 3B) having an axis.
Gray lacks “a first discrete upper hosel adjustment spacer portion positioned along the axis between the upper hosel section and the shaft and grip portion, wherein the first discrete hosel adjustment portion has a top female mortised recess, the top female mortised recess having an opening along a first plane, and a male tenon section, the male tenon section having an opening along a second plane; the interchangeable modular hosel portion adapted to receive and retain accessibly and adjustably at least the first discrete hosel adjustment spacer portion”.
Becktor shows it to be old in the art to provide an upper hosel adjustment spacer portion (102; FIG. 1C), having a top female mortised recess having an opening along a first plane, and a male tenon section having an opening along a second plane (i.e., see annotated FIGS. 1C and 2B, below). The spacer (102) is interchangeable (i.e., see paragraph [0036]) and situated to be received within a cup portion of an upper hosel portion (12), as shown in FIG. 1C.
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In Becktor, the spacer (102) serves to dampen vibrations by providing a space between the hosel (12) and the shaft (20). See paragraph [0037] in Becktor. In view of the teaching in Becktor, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Gray by providing a first discrete upper hosel adjustment spacer portion positioned along the axis between the upper hosel section and the shaft and grip portion, wherein the first discrete hosel adjustment portion has a top female mortised recess, the top female mortised recess having an opening along a first plane, and a male tenon section, the male tenon section having an opening along a second plane; the interchangeable modular hosel portion adapted to receive and retain accessibly and adjustably at least the first discrete hosel adjustment spacer portion, with there being a reasonable expectation of success that including a hosel adjustment spacer as part of the upper portion of the hosel in Gray would have cushioned the area between the hosel and the shaft, thus leading to reduced vibration during impact between the club head with a golf ball. Here, the proposed modification amounts to the use of a known technique (i.e., using a spacer in an upper hosel portion between a hosel portion and a shaft, as taught by Becktor) to improve similar devices (i.e., each of Becktor and Gray disclose putter type club heads with similarly-shaped hosel portions, which include similarly-shaped upper hosel sections) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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As to claim 5, Gray discloses a putter type club head (i.e., see Title as well as Abstract).
As to claim 9, the first plane and the second plane are parallel (i.e., see the first plane and the second plane, as identified in the annotated FIG. 2B, under claim 1, supra).
As to claim 10, Gray provides a kit with multiple interchangeable shafts and grips (i.e., col. 2, lines 39-46).
As to claim 11, the upper hosel section in Gray is clearly shown as a cup (i.e., see receptacle 40; Fig. 2D).
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Allowable Subject Matter
Claims 2-4 and 6-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Figs. 1-5 in Holtsman;
Figs. 46-49 in Parsons;
Figs. 6-7 and 19-20 in Sato; and
Fig. 2 in Halleck.
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, Nicholas Weiss can be reached at (571)-270-1775. 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