DETAILED ACTION
This Office action is responsive to communication received 12/16/2025 – Power of Attorney and Statement Under 37 CFR 3.73; 12/22/2025 – 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 12/22/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPNs 7927230; 9272374; 10039962; and 11857850 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Status of Claims
Claims 1-19 remain pending.
Response to Arguments
In the arguments received 12/22/2025, the applicant contends that the primary prior art reference to Franklin (USPN 7,717,801) does not teach or suggest that the groove inserts do not form a portion of the strike face and further contends that modifying the Franklin device such that the groove inserts do not form a portion of the strike face teaches away from the principles in Franklin, as Franklin allegedly teaches that the presence of the polymeric material at the striking surface influences golf ball spin upon impact. The applicant includes further, general arguments with respect to the remaining prior art references applied, noting that none of the remaining prior art references applied in the rejections cure the deficiencies in Franklin and do not teach or otherwise render obvious the inclusion of groove inserts that do not form a portion of the strike face.
IN RESPONSE:
Applicant’s arguments with respect to the primary prior art reference to Franklin have been noted. Here, applicant’s further amendments to independent claims 1 and 9 to further require that “at least one insert does not form a portion of the strike face” has necessitated a new grounds of rejection. While Franklin discloses that at least one insert is located entirely within at least one channel of the plurality of channels, Franklin does not explicitly disclose that “the at least one insert does not form a portion of the strike face”. Note, Franklin teaches that the insert material identified herein may rest flush with the striking surface (i.e., FIG. 2B) or that the insert may include only a portion that partially rests flush with the striking surface (i.e., see FIG. 3). It is clear that Franklin recognizes that it is not wholly necessary for an entirety of the insert material to rest flush with the striking surface and present a striking surface for a golf ball. Here, Wallans (US PUBS 2008/0207351) is cited in a new rejection provided hereinbelow to teach that an insert within the striking face may be recessed from the front striking surface plane or may extend flush with the striking surface (i.e., see paragraphs [0008], [0031], wherein Wallans indicates that having the auxiliary projection or insert 124 flush with the striking surface adds an element of an alignment feature to the golf club head, while introducing the auxiliary projection 124 within only a portion of the opening at the striking surface helps to determine the groove depth). Note that the setup in Wallans may be applied to putter-type club heads (i.e., see paragraph [0041]). With the contrast noted in Franklin with respect to a partial portion or a whole portion of the insert engaging the striking surface combined with the teaching in Wallans, 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 Franklin by having at least one of the inserts not form a portion of the striking surface, with there being a reasonable expectation of success that a change in the makeup of the striking surface would have altered the ball striking response of the strike face.
With respect to the applicant’s arguments that the operational functions of Franklin would be lost if the polymeric material in Franklin does not form a portion of the striking surface, these arguments are not agreed with. While the spin, sound and “feel” of the putter head when striking a golf ball would effectively change with a change in the setup of the insert within the grooves of the striking face in Franklin, such characteristics of spin, sound and “feel” would only be altered, not lost. Again, Franklin recognizes that it is not wholly necessary for an entirety of the insert material to rest flush with the striking surface in order to present a striking surface for a golf ball, as argued hereinabove. Even with the proposed modification, the putter head in Franklin would include a striking surface fully capable of making contact with a golf ball. With the claims requiring that “at least one insert…does not form a portion of the strike face” (i.e., the claims do not require that none of the inserts form a portion of the strike face), there is clearly some latitude in arranging the inserts such that some portions of the insert material may rest flush with the striking surface while other portions of the insert material may be recessed away from the plane of the strike face.
The applicant’s arguments directed towards the remaining prior art references applied in the rejections are of a general nature, summarizing the teachings of each prior art reference and alleging that none of the remaining prior art references applied in the outstanding rejections cure the deficiencies of Franklin. As such, 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.
"[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.
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.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(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;
(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 1-2, 4-5, 7-13 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,717,801 to Franklin et al (hereinafter referred to as “Franklin”) in view of US PUBS 2005/0209020 to Burrows and also in view of US PUBS 2006/0223648 to Kennedy and also in view of US PUBS 2008/0207351 to Wallans et al (hereinafter referred to as “Wallans”).
As to claims 1 and 9, Franklin shows a golf club head (100) comprising: a body (102) having a strike face (104) with a plurality of channels (i.e., FIGS. 1A, 2A, 2C); wherein the strike face (104) comprises a first material (i.e., col. 5, line 67 through col. 6, line 4); wherein the channels are formed within the first material such that each channel is separated from other channels by the first material; and at least one insert (104b, 204b) located within at least one of the channels; wherein the at least one of the channels comprises a single groove; the at least one insert forms at least a portion of the single groove (i.e., FIGS. 2C and 4 show that the groove is formed partly by the face material and partly by the material of the insert. More specific to claim 9, the at least one channel forms at least a portion of the single groove (i.e., see FIG. 2C in Franklin). The insert (i.e., polymer filler) is entirely located within the channel (i.e., see at least FIG. 9 in Franklin).
Even if one were to argue that the polymer filling disclosed in Franklin within each channel is not an “insert” contained entirely within the channel, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to separately form a filler and insert this filler within a channel in the front of the striking face such that the insert is entirely within the channel, as such a construction method is known in the art as taught by Burrows (i.e., see FIG. 3, with polymer inserts 32 situated within channels 30).
As for the claimed requirements that “each channel of the plurality of channels is asymmetrical about a first axis; wherein the first axis of each channel of the plurality of channels is substantially perpendicular to a width of each channel, respectively” along with “the single groove is symmetrical about the first axis”, note that the claimed “first axis” is simply an axis that may be identified perpendicular to the width dimension of any one of the channels and extending through a center of the polymer filler material in Franklin. Moreover, Franklin teaches that the number, size and arrangement of the openings in the strike face may be customized to affect ball spin and distribution of club head weight. See col. 2, lines 41-50 and col. 4, line 28 through col. 5, line 24. Franklin contemplates an asymmetrical channel arrangement with a teaching of openings that may extend rearward in a curved or other non-linear or irregular manner, as stated in col. 5, lines 21-23. Moreover, a symmetrical arrangement of the grooves would have been an obvious design choice for providing more uniform spin characteristics across the strike face upon impact with a golf ball.
Franklin differs from the claimed invention in that Franklin does not explicitly disclose a “V-shaped” for the groove within each channel and insert. Here, Kennedy shows it to be old in the art to provide a strike face with either U-shaped or V-shaped grooves (i.e., Abstract; paragraph [0013] and FIGS. 4 and 6 in Kennedy). The shape of the groove influences the amount of spin on a struck ball as well as how the face reacts to an accumulation of water and/or dirt on the face. In general, V-shaped grooves have been accepted as conforming to USGA standards. In view of the teaching in Kennedy and the above reasoning, 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 Franklin by incorporating a V-shape groove as part of the insert and channel arrangement, as this shape of groove is commonly-used on the strike face to provide a groove that conforms to USGA standards.
While Franklin discloses that at least one insert is located entirely within at least one channel of the plurality of channels, Franklin does not explicitly disclose that “the at least one insert does not form a portion of the strike face”. Note, Franklin teaches that the insert material identified herein may rest flush with the striking surface (i.e., FIG. 2B) or that the insert may include only a portion that partially rests flush with the striking surface (i.e., see FIG. 3). As shown below from the reproduction of FIGS. 2B and 3, it is clear that Franklin recognizes that it is not wholly necessary for an entirety of the insert material to rest flush with the striking surface in order to present a striking surface for a golf ball.
PNG
media_image1.png
444
1040
media_image1.png
Greyscale
Here, Wallans is cited to teach that an insert within the striking face may be recessed from the front striking surface plane or may extend flush with the striking surface (i.e., see paragraphs [0008], [0031], wherein Wallans indicates that having the auxiliary projection or insert 124 flush with the striking surface adds an element of an alignment feature to the golf club head, while introducing the auxiliary projection 124 within only a portion of the opening at the striking surface helps to determine the groove depth). Note that the setup in Wallans may be applied to putter-type club heads (i.e., see paragraph [0041]). With the contrast noted in Franklin with respect to a partial portion or a whole portion of the insert engaging the striking surface combined with the teaching in Wallans, 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 Franklin by having at least one of the inserts not form a portion of the striking surface, with there being a reasonable expectation of success that a change in the makeup of the striking surface would have altered the ball striking response of the strike face.
As to claims 2, 4-5, 13 and 16-17, Franklin uses a polymer material for the material of the insert and thus the second material that makes up a portion if not all of the insert (i.e., col. 6, lines 9-26; and col. 11, lines 46-51). More specific to claim 2, the polymeric material in Franklin takes up an upper portion of the channel nearer an opening of the channel, as shown in FIGS. 3 and 5-9. More specific to claims 2 and 13, note that Franklin discloses that the polymeric material is distinguished as being softer than the remaining head material. More specific to clams 4-5 and 16, Franklin does note the incorporation of metals and metal alloys for the strike face (i.e., metals or metal alloys for the “first material”) as well as polymeric materials for the insert (i.e., polymeric materials for the “second material”). Also, see col. 5, line 67 through col. 6, line 8 for a disclosure by Franklin insofar as the materials for the first material (of the strike face and body). For at least claims 5 and 17, note that Franklin’s use of polymeric material satisfies the claim requirement for plastic material for the second material.
Even if one were to argue that the exact, claimed first and second materials are not disclosed by Franklin, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to select suitable materials for each of the strike face and the insert or filler material within the channel. Here, Franklin already acknowledges the use of a harder material (i.e., a first material) for the strike face and a softer material (i.e., a second material) for the groove inserts. Moreover, the selection of a known material by the skilled artisan to take advantage of the properties of the known material has been determined to be obvious. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). See MPEP 2144.07.
As to claims 7 and 18, although Franklin, as modified by Burrows and Kennedy, does not explicitly disclose adhesive, the teaching reference to Wallans shows it to be old in the golf club head art to hold an insert within an opening within the strike face using adhesive material, wherein the strike face material is diverse from the insert material. See paragraph [0034] in Wallans. With the teaching in Wallans, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Franklin by taking advantage of an adhesive to secure the insert material within the strike face openings, as this would have been an obvious way of securing a pre-formed insert, for example, as opposed to an insert that is formed through a molding operation.
More specific to claim 8, having shaped the insert in Franklin to be asymmetrical about the first axis in order to provide for a conforming fit within an asymmetrical channel arrangement would have involved an obvious matter of design choice in the shape of the insert for one of ordinary skill in the art and before the effective filing date of the claimed invention. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See MPEP 2144.04.
As to claims 10-12, Franklin includes a top rail (uppermost portion of the club head) as well as a sole (lowermost portion of the club head). With an imaginary first axis oriented perpendicular to the width dimension of the channel, and extending through a middle of the insert it is clear that the insert (i.e., polymer filler in Franklin), which is contained within each channel and which is located on each side of the axis, is positioned on one side of the first axis, as required by claim 10, as well as on a sole side of the first axis, as required by claim 11, and also on a top rail side of the first axis, as required by claim 12. See annotated FIG. 8, below:
PNG
media_image2.png
494
794
media_image2.png
Greyscale
Claim 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,717,801 to Franklin et al (hereinafter referred to as “Franklin”) in view of US PUBS 2005/0209020 to Burrows and also in view of US PUBS 2006/0223648 to Kennedy and also in view of US PUBS 2008/0207351 to Wallans et al (hereinafter referred to as “Wallans”) and also in view of either USPN 5,358,249 to Mendralla or US PUBS 2005/0037859 to Gilbert et al (hereinafter referred to as “Gilbert”).
As to claims 3 and 14, Franklin, as modified by Burrows, Kennedy and Wallans, lacks an explicit disclosure of “wherein the second material is harder than the first material”. In the instant claims, the material of the insert comprises the second material. Here, Mendralla teaches that the material of a striking face insert may comprise material that is either softer or harder than the material of the remainder of the striking face. See col. 2, lines 40-45 in Mendralla. Here, Gilbert teaches that the striking face may include an insert that comprises a harder material for added wear resistance (i.e., paragraphs [0020], [0022] and [0035]). In view of the teachings to either Mendralla or Gilbert, 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 further modified the striking face and channel arrangement in Franklin by providing a harder second material (for the insert) as compared to the first material (of the strike face), the motivation being to provide a more wear-resistant striking surface for providing more uniform impacts between the strike face and a golf ball after repeated use.
Claims 6 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,717,801 to Franklin et al (hereinafter referred to as “Franklin”) in view of US PUBS 2005/0209020 to Burrows and also in view of US PUBS 2006/0223648 to Kennedy and also in view of US PUBS 2008/0207351 to Wallans et al (hereinafter referred to as “Wallans”) and also in view of US PUBS 2007/0243949 to Solari.
As to claims 6 and 19, note that at least Solari teaches that it is known in the art to form a channel and insert arrangement such that an insert within a respective channel may be replaced or changed with different inserts comprising different materials so as to alter the surface aspects of the strike face of the golf club in order to accommodate a golfer’s swing (i.e., see paragraphs [0046], [0059], [0066], [0069] and [0074] – [0076]). In view of the teaching in Solari, 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 further modified the club head in Franklin by constructing the inserts (i.e., the polymer filler material) to be replaceable so that the characteristics of the striking face, such as traction and control, may be altered to suit a player’s swing needs.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,717,801 to Franklin et al (hereinafter referred to as “Franklin”) in view of US PUBS 2005/0209020 to Burrows and also in view of US PUBS 2006/0223648 to Kennedy and also in view of US PUBS 2008/0207351 to Wallans et al (hereinafter referred to as “Wallans”) and also in view of the combined teachings to USPN 5,358,249 to Mendralla and US PUBS 2005/0037859 to Gilbert et al (hereinafter referred to as “Gilbert”) and also in view of US PUBS 2007/0243949 to Solari.
As to claim 15, Franklin, as modified by Burrows, Kennedy and Wallans, does not explicitly disclose “wherein the at least one insert comprises a harder material in the plurality of channels nearer the sole and a softer material in the plurality of channels nearer the top rail”. Here, Mendralla teaches that the material of a striking face insert may comprise material that is either softer or harder than the material of the remainder of the striking face. See col. 2, lines 40-45 in Mendralla. Here, Gilbert teaches that the striking face may include an insert that comprises a harder material for added wear resistance (i.e., paragraphs [0020], [0022] and [0035]). In addition, Solari teaches that a variety of materials may be used to fill the channels in the strike face to alter the ball striking characteristics of the strike face. See paragraphs [0046], [0059], [0066], [0069] and [0074] – [0076] in Solari. With the guidance in Mendralla and Gilbert regarding the use of softer and/or harder materials for inserts within the strike face and the added teachings in Solari, it is clear that using a combination of materials within the same channel (i.e., harder and softer, as now claimed) would simply have enabled the golfer to more specifically tailor the strike face according to the golfer’s particular swing needs. Thus, 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 further modified the club head in Franklin by including that the at least one insert comprise a harder material in the plurality of channels nearer the sole and a softer material in the plurality of channels nearer the top rail, the motivation being to provide more options to a golfer to further customize the ball striking response of the club head by changing the material makeup of the polymer filling in the channel. Moreover, the selection of a known material by the skilled artisan to take advantage of the properties of the known material has been determined to be obvious. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). See MPEP 2144.07.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sandoval shows that an insert may be flush with, or recessed away from, the striking face. Moreover, Sandoval teaches that the insert may be raised to extend beyond the plane of the striking face.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the language added to each of independent claims 1 and 9 and further specifying that “the at least one insert does not form a portion of the strike face” 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711