DETAILED ACTION
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, and 6 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Nakamura (US Patent No. 10,265,592).
In Reference to Claims 1, 4, and 6
Nakamura teaches (Claim 1) A golf club, comprising: a golf club head (item 4, fig. 1); a shaft (item 6, fig. 1) comprising a tip end (Tp, fig. 2), an opposite butt end (Bt, fig. 2), and a reinforced section extending in a tip-to-butt direction from the tip end to 550 mm from the tip end (section Ft2, fig. 2; column 8 lines 18-23 and column 15 lines 14-27), the golf club head being coupled to the shaft at the tip end (fig. 1), and comprising a pitch-based carbon fiber ply that is in only the reinforced section (s4, fig. 2; column 8 lines 23-26); and a grip being coupled to the shaft at the butt end (item 8, fig. 1).
(Claim 4) wherein the pitch-based carbon fiber ply is a substantially 0 degree ply (fig. 2).
(Claim 6) wherein the shaft further comprises another pitch-based carbon fiber ply that extends substantially along the full length of the shaft (any of plies s2, s3, s5, s6, and s7, fig. 2).
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, 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.
Claims 2, 8-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Sato (US Patent No. 8,128,508 B2).
In Reference to Claim 2
Nakamura teaches all of claim 1 as discussed above.
Nakamura fails to teach the stiffness ratio claimed.
Sato teaches (Claim 2) wherein an average bending stiffness of a butt end portion of [a] shaft is at least 3.70 times an average bending stiffness of a tip end portion of [a] shaft, the butt end portion extending in a butt-to-tip direction from the butt end to 150 mm from the butt end, and the tip end portion extending in a tip-to-butt direction from the tip end to 300 mm from the tip end (fig’s 2 and 3, and Tables 1 and 2, e.g. FW#11 shows tip stiffness of 1.08 and butt stiffness of 6.05 which is over 3.7 times greater, note many tip and end and butt end stiffnesses disclosed would also meet this ratio).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the reenforced golf club shaft of Nakamura with the feature of the stiffness ratios claimed as taught by the reenforced golf club shaft of Sato for the purpose of optimizing the swing feel of a particular length golf club as taught by Sato (column 2 lines 37 - 52), making the club easier to use, and more attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the ratio of bending stiffness claimed simply as a matter of engineering design choice, since, it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of a shaft with stiffness significantly greater at the butt end than at the tip end are taught in both Nakamura and Sato, merely claiming a particular ratio that is within or close to the disclosed ratios / stiffnesses is simply a matter of discovering an optimum or workable range by routine experimentation, and is not a patentable advance.
In Reference to Claims 8-10
Nakamura teaches (Claim 8) A golf club shaft, the shaft comprising: a tip end (Tp, fig. 2); an opposite butt end (Bt, fig. 2); a tip end portion extending in a tip-to-butt direction from the tip end to 300 mm from the tip end (a 300mm section at tip end, fig’s 1 and 2); a butt end portion extending in a butt-to-tip direction from the butt end to 150 mm from the butt end (a 150 mm section at butt end, fig’s 1 and 2); and a pitch-based carbon fiber ply (item s4, fig. 2, column 8 lines 23-26), [];
(Claim 10) wherein the pitch-based carbon fiber ply is in only the tip end portion of the shaft (column 8 line 22, 300mm embodiment).
Nakamura fails to specifically teach the bending stiffness ratio claimed in claims 8 and 9.
Sato teaches (Claim 8) wherein an average bending stiffness of the butt end portion of the shaft is at least 3.70 times an average bending stiffness of the tip end portion of the shaft (fig’s 2 and 3, and Tables 1 and 2, e.g. FW#11 shows tip stiffness of 1.08 and butt stiffness of 6.05 which is over 3.7 times greater, note many tip and end and butt end stiffnesses disclosed would also meet this ratio);
(Claim 9) wherein the average bending stiffness of the butt end portion of the shaft is at least 4.20 times the average bending stiffness of the tip end portion of the shaft (fig’s 2 and 3, and Tables 1 and 2, e.g. FW#11 shows tip stiffness of 1.08 and butt stiffness of 6.05 which is over 3.7 times greater, note many tip and end and butt end stiffnesses disclosed would also meet this ratio).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the reenforced golf club shaft of Nakamura with the feature of the stiffness ratios claimed as taught by the reenforced golf club shaft of Sato for the purpose of optimizing the swing feel of a particular length golf club as taught by Sato (column 2 lines 37 - 52), making the club easier to use, and more attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the ratio of bending stiffness claimed simply as a matter of engineering design choice, since, it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of a shaft with stiffness significantly greater at the butt end than at the tip end are taught in both Nakamura and Sato, merely claiming a particular ratio that is within or close to the disclosed ratios / stiffnesses is simply a matter of discovering an optimum or workable range by routine experimentation, and is not a patentable advance.
In Reference to Claim 12
The modified device of Nakamura teaches all of claim 8 as discussed above.
Nakamura fails to teach the feature of claim 12.
Sato teaches teaches (Claim 12) wherein a maximum rate of change of bending stiffness in the tip-to-butt direction in the shaft between the tip end portion and the butt end portion is at least [1.6] kg/(in*mm) (column 1 lines 58-60).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the reenforced golf club shaft of Nakamura with the feature of the stiffness rate of change claimed as taught by the reenforced golf club shaft of Sato for the purpose of optimizing the swing feel of a particular length golf club as taught by Sato (column 2 lines 37 - 52), making the club easier to use, and more attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific rate of change maximum claimed simply as a matter of engineering design choice, since, it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of a shaft with stiffness significantly greater at the butt end than at the tip end are taught in both Nakamura and Sato, merely claiming a particular rate of change maximum that is within or close to the disclosed rate of change is simply a matter of discovering an optimum or workable range by routine experimentation, and is not a patentable advance.
Claims 3, 13-17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Kultala (US PGPub. No. 2018/0117431 A1).
In Reference to Claim 3
Nakamura teaches all of claim 1 as discussed above.
Nakamura is silent as to the diameter of the shaft.
Kultala teaches (Claim 3) wherein a smallest diameter of [a] shaft is less than 0.310 inches (paragraph 0034).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club shaft of Nakamura with the feature of a small diameter shaft as taught by the golf club shaft of Kultala for the purpose of improving the aerodynamic properties of the shaft, reducing drag as taught by Kultala (paragraph 0014), making the shaft more efficient, easier to use, and more attractive to the users.
In Reference to Claims 13-17 and 19
Nakamura teaches (Claim 13) A golf club shaft, the shaft comprising: a tip end (Tp, fig. 2); an opposite butt end (Bt, fig. 2); a tip end portion extending in a tip-to-butt direction from the tip end to 300 mm from the tip end (a 300mm section at the tip end, fig’s 1 and 2); a butt end portion extending in a butt-to-tip direction from the butt end to 150 mm from the butt end (a 150mm section at the butt end, fig’s 1 and 2); and a pitch-based carbon fiber ply that is at least partially in the tip end portion (item s4, fig. 2, column 8 lines 16-26), [];
(Claim 17) wherein the pitch-based carbon fiber ply is in only the tip end portion of the shaft (column 8 line 22, 300mm embodiment).
(Claim 19) wherein the pitch-based carbon fiber ply is a substantially 0 degree ply (fig. 2).
Nakamura fails to specifically disclose the shaft diameter.
Kultala teaches (Claim 13) wherein a smallest diameter of the shaft in the tip end portion is less than 0.330 inches (paragraph 0034);
(Claim 14) wherein the tip end portion is less than 0.315 inches (paragraph 0034);
(Claim 15) wherein the tip end portion is less than 0.300 inches (paragraph 0034);
(Claim 16) wherein the tip end portion is less than 0.290 inches (paragraph 0034).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club shaft of Nakamura with the feature of a small diameter shaft as taught by the golf club shaft of Kultala for the purpose of improving the aerodynamic properties of the shaft, reducing drag as taught by Kultala (paragraph 0014), making the shaft more efficient, easier to use, and more attractive to the users.
In Reference to Claim 20
Nakamura teaches all of claim 13 as discussed above.
Nakamura further teaches (Claim 20) wherein an average bending stiffness in the tip end portion is greater than [x] kg/in (column 1 lines 53 - 67).
Nakamura fails to specifically disclose the bending stiffness claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the average bending stiffness claimed simply as a matter of engineering design choice, since, it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of a shaft with increased stiffness at the tip end due to reinforcing plies at the tip end only, merely claiming a particular average stiffness that similar to the disclosed stiffnesses is simply a matter of discovering an optimum or workable range by routine experimentation, and is not a patentable advance.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Yashiki (US Patent No. 8,936,516).
In Reference to Claim 5
Nakamura teaches all of claim 1 as discussed above.
Nakamura fails to teach the feature of claim 5.
Yashiki teaches (Claim 5) wherein [a] pitch-based carbon fiber ply is a substantially 45 degree ply, and the shaft further comprises another pitch-based carbon fiber ply that is a substantially negative 45 degree ply (items s4 and s5, fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the reinforced golf shaft of Nakamura with the feature of two 45 degree angled plies as taught by the reinforced golf shaft of Yashiki for the purpose of providing better torsional rigidity distribution, improving the feel for a user as taught by Yashiki (summary), making the golf club shaft more attractive to the users.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Nakamura2 (US PGPub. No. 2013/0095951 A1).
In Reference to Claim 7
Nakamura teaches all of claim 1 as discussed above.
Nakamura further teaches (Claim 7) wherein a mass of the shaft is less than 50 g (column 16 lines 18-31).
Nakamura fails to teach the grip weight / ratio of claim 7.
Nakamura2 teaches (Claim 7) [], a mass of the grip is less than 40 g (paragraph 0042), and a mass ratio of the mass of the shaft to the mass of the grip is within a range of 1.1 to 1.3 (paragraph 0018 and 0042, selecting values within the disclosed ranges would produce this ratio).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club of Nakamura with the feature of the grip weight and ratio claimed as taught by the golf club of Nakamura2 for the purpose of optimizing the weight and balance characteristics of the golf club, making the club more reliable, easier to use, and more attractive to the users.
Further, the examiner notes that it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since the general conditions of shaft and grip weights that meet the claimed values are taught in the references, merely claiming a particular ratio that is within or close to the disclosed ratios is simply a matter of discovering an optimum or workable range by routine experimentation, and is not a patentable advance.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Sato and further in view of Kultala.
In Reference to Claim 11
The modified device of Nakamura teaches all of claims 8 and 10 as discussed above.
Nakamura fails to teach the feature of claim 11.
Kultala teaches (Claim 11) wherein a smallest diameter of the shaft along the tip end portion is less than 0.315 inches (paragraph 0034).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club shaft of Nakamura with the feature of a small diameter shaft as taught by the golf club shaft of Kultala for the purpose of improving the aerodynamic properties of the shaft, reducing drag as taught by Kultala (paragraph 0014), making the shaft more efficient, easier to use, and more attractive to the users.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Kultala and further in view of Yashiki.
In Reference to Claim 18
The modified device of Nakamura teaches all of claim 13 as discussed above.
Nakamura fails to teach the feature of claim 18.
Yashiki teaches (Claim 18) wherein the pitch-based carbon fiber ply is a substantially 45 degree ply (item s4 or s5, fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the reinforced golf shaft of Nakamura with the feature of a 45 degree angled ply as taught by the reinforced golf shaft of Yashiki for the purpose of providing better torsional rigidity distribution, improving the feel for a user as taught by Yashiki (summary), making the golf club shaft more attractive to the users.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/ Primary Examiner, Art Unit 3711
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