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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6, 7, 25, 26, 32, and 33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
While a third set of mass portions on the body such as 440 are disclosed, such are directed to a separate embodiment and not the claimed invention having back cover secured to a flange. In such disclosed embodiments that appear to start with fig. 30, no such weights appear disclosed in the body as recited in the claims listed above.
Claim Rejections - 35 USC § 102
Claim(s) 1-5, 21, 24, and 27-31 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Tavares 2007/0207878.
As to claims 1, 21, 24 and 27, Tavares shows a golf club head comprising a hollow body portion 236, a front portion with a face portion 220, a back portion with a back opening 222. A first flange portion between the back opening and the face portion and a second flange portion between the back opening is shown in fig. 3;
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224 is considered a back cover portion coupled to the hollow body portion to close the back opening having a first port extending through the back cover portion and axially aligned with the first flange bore to accept the threads of the fastening first and second mass portions 226 where a distance between the first port and a toe portion edge of the hollow body portion being less than a distance between the first port and a heel portion edge of the hollow body portion and a distance between the second port and the heel portion edge being less than a distance between the first port and the heel portion edge. The first mass portion 226 is configured to engage the first port and the first flange bore to secure the back cover portion to the first flange portion and the second mass portion configured to engage the second port and the second flange bore to secure the back cover portion to the second flange portion. Wherein the first and second mass portion comprises a material having a greater density when made such metal “screws” [0042] than a material of the hollow body portion and a material of the back cover when comprised of composites [0040]. At least a portion of the interior cavity is between the first flange portion and the face portion, wherein at least a portion of the interior cavity is between the second flange portion and the face portion as considered shown in fig. 4. Where typical total volumes of an iron club head are inherently less than 100cc as taught by 2017/0173411 at [0018]. The back cover being at least 50% of a total area of the back opening is considered fairly suggested by fig. 3. (“The description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977).)
As to claims 2, 22 and 28, 232 is considered a filler material.
As to claims 3, 4, 23, 24, 29 and 30, where the back cover may be made of different materials [0044] such as composites and the body of titanium, a back cover portion of a material having a lower density than the material of the hollow body portion is considered fairly suggested.
Where 226 are considered interchangeable, claims 5 and 31 is considered met.
Claim Rejections - 35 USC § 103
Claim(s) 6, 7, 25, 26, 32 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tavares in view of Nishino 7,588,502.
While Tavares does not appear to use an additional body weight, the use of such to adjust the weight of the club head is old and well-known in the art. By way of example Nishino is applied. To have place such a weight on the body between a first and second mass would have been obvious in order place more weight in the center of the club between the first and second mass.
Conclusion
Applicant’s arguments with respect to claim(s) 8/13/25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Melba Bumgarner at (571)272-4709.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711