DETAILED ACTION
This Office action is responsive to communication received 06/30/2026 – Amendment.
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 .
Status of Claims
Claims 1-11 remain pending.
Response to Arguments
In the arguments received 06/30/2026, the applicant contends that the combination of USPN 7,077,760 to Gray and US PUBS 2018/0361206 to Becktor et al fails to disclose or suggest a “sub-assembly” comprising the further limitations of “a hosel shaft connector piece connected through the first discrete upper hosel adjustment spacer portion and fitted with the shaft and grip portion; a fastener detachably coupling and retaining the upper hosel section of the interchangeable modular hosel portion to the hosel shaft connector piece of the sub- assembly” in combination with the remaining elements set forth in independent claim 1. The applicant further notes that the shaft engagement element 104 identified by the Office in the prior art to Becktor et al has no structure capable of receiving a fastener and that the spacer portion 102 identified by the Office is fixed by epoxy or is press-fitted within the overall assembly.
IN RESPONSE:
Applicant’s arguments, see scanned page 3, lines 5-24, filed with the Remarks of 06/30/2026, with respect to the rejection of claims 1, 5 and 9-11 under 35 U.S.C. §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, and in view of the amendments to independent claim 1, a new ground(s) of rejection is being made with consideration of USPN 10,716,972 to Holtzman in view of US PUBS 2015/0238824 to Jertson et al and also in view of US PUBS 2016/0303437 to Zimmerman et al.
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 10,716,972 to Holtzman in view of US PUBS 2015/0238824 to Jertson et al (hereinafter referred to as “Jertson”) and also in view of US PUBS 2016/0303437 to Zimmerman et al (hereinafter referred to as “Zimmerman”).
Reference is made to the annotated version of FIG. 6 of Holtzman, below:
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As to independent claim 1, Holtzman shows a golf club assembly (FIG. 6), comprising, in combination: a discrete head portion (110) having a hosel port (150); a modular hosel portion (131) having an upper hosel section (i.e. portion 131 is configured to mate with indexing structure 152 of the neck 116 and is thus considered to be a hosel portion having an upper hosel section); a shaft (122) having an axis; and a sub-assembly comprising: a first discrete upper hosel adjustment spacer portion (32) positioned along the axis between the upper hosel section (131) and the shaft (122), wherein the first discrete hosel adjustment portion (32) 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 (i.e., the lower portion of adjustment portion (32) includes a plurality of projections that are arranged to form an opening along a second plane, with a tenon being formed by these multiple projections; see the expanded explanation under the rejection of claim 9, hereinbelow); and a hosel shaft connector piece (123) connected through the first discrete upper hosel adjustment spacer portion and fitted with the shaft portion; a fastener (60) detachably coupling and retaining the upper hosel section of the interchangeable modular hosel portion to the hosel shaft connector piece of the sub-assembly; the modular hosel portion (131) adapted to receive and retain accessibly and adjustably at least the first discrete hosel adjustment spacer portion (32). Here, the modular hosel portion (131) includes an indexing structure that receives and retains accessibly and adjustably the indexing structure of the hosel adjustment spacer portion (32).
Holtzman does not explicitly disclose that the modular hosel portion identified herein as part (131) is necessarily “interchangeable”. Clearly, part (131) may be removed, rotated to a different orientation and reinstalled, but Holtzman does not disclose, for example, that part (131) may be exchanged for another part (131). Zimmerman shows it to be old in the art to provide a shaft system for a golf club in which a plurality of wedge member (756) are interchangeable with one another in order to change the length and/or orientation of the shaft (i.e., see FIGS. 86-87 and paragraphs [0285] – [0293]). The arrangement in Zimmerman offers the skilled artisan more options for varying the orientation between the shaft and the club head. In view of the teaching in Zimmerman, 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 in Holtzman by providing that the modular hosel portion identified herein as part (131) includes an interchangeable feature, the motivation being to provide greater versatility in arranging the angular position of the head with respect to the shaft for enhanced performance.
Holtzman also does not explicitly show a “grip portion” along with the shaft (122). Grips are routinely provided at an upper end of a club shaft to enhance comfort and provide added control while gripping and swinging the golf club. Jertson is cited to show the commonness of equipping a shaft with a grip, with Jertson further elaborating that the shaft and grip combination may be interchangeable with other grip and shaft arrangements (i.e., see FIG. 5, shaft 510, grip 530; paragraphs [0052] – [0052]). In view of the teaching in Jertson, 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 in Holtzman by including a shaft and grip portion having an axis, the motivation being to enable a golfer to have a firm grip on the club and to promote player comfort.
As to claim 5, the club head in Holtzman appears to resemble a wood type club head.
As to claim 9, the first and second planes identified in Holtzman are arranged in a parallel fashion. Note that a first plane containing the top opening in the female mortised section is parallel to a second plane containing a bottom opening, with the projections forming the tenon structure extending from the second plane. See the annotated version of the first discrete upper hosel adjustment spacer portion (32), below:
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As to claim 10, Jertson notes that the shaft and grip combination may be interchangeable with other grip and shaft arrangements (i.e., see FIG. 5, shaft 510, grip 530; paragraphs [0052] – [0052]). In view of the teaching in Jertson, 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 in Holtzman by arranging for the shaft and grip combination that is provided through the modification with Jertson to ne interchangeable with other grip and shaft arrangements in order to customize the characteristics of the shaft and/or grip to the particular swing needs of a golfer.
As to claim 11, the upper hosel section (131) in Holtzman resembles a cup.
Claim Objections - Minor
Claims 5-7 and 11 are objected to because of the following minor informalities:
As to claim 5, line 3, “and” should read --or-- for proper grammatical consistency.
As to claim 6, line 3, “and” should read --or-- for proper grammatical consistency.
As to claim 7, line 4, “and” should read --or-- for proper grammatical consistency.
As to claim 11, line 2, “and” should read --or-- for proper grammatical consistency.
Appropriate correction is required.
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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendments to independent claim 1 to now include the further limitations “a sub-assembly comprising” along with “a hosel shaft connector piece connected through the first discrete upper hosel adjustment spacer portion and fitted with the shaft and grip portion; a fastener detachably coupling and retaining the upper hosel section of the interchangeable modular hosel portion to the hosel shaft connector piece of the sub-assembly” necessitated the new grounds of rejection.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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
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