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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14 and 20 in the reply filed on March 18, 2020 is acknowledged.
Claim Rejections - 35 USC § 102
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 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.
Claims 20-22, 24 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roy (U.S. Patent No. 4,319,750).
Regarding claim 20, Roy ‘750 discloses a method of manufacturing a tubular member (FIG. 21, 4:35-37 of Roy, layup rolled onto mandrel on a rolling table to form a tube), the method comprising: providing a first sheet of a first material (FIGS. 18-20 of Roy ‘750, first layer comprising material #71), the first sheet having a first shape, the first sheet having a first material property (FIGS. 17-18 of Roy ‘750, first layer comprising material #71 which also comprises material #72 has trapezoidal shape and necessarily has a material property such as stiffness); providing a second sheet of a second material, the second sheet having a second shape different than the first shape, the second material having a second material property different than the first material property (FIGS. 18-20 of Roy ‘750, second layer comprising material #62 also comprises material #64, has trapezoidal shape and necessarily has a material property such as stiffness; FIGS. 17, 18 and 20 of Roy ‘750, second layer comprising materials #62 #64 includes material #76 and therefore has a different shape than layer comprising material #62); providing a third sheet of a third material, the third sheet having a third shape different than the first shape and the second shape (FIGS. 17-20 of Roy ‘750, third layer comprising material #78, which has a different shape than first and second layers), the third material having a third material property different than the first material property and the second material property (FIG. 17 of Roy ‘750, third layer includes unidirectional fibers aligned at 0° whereas first and second layers have a different orientation); stacking the first sheet, the second sheet, and the third sheet on a rolling table (FIG. 18, 4:26-29 of Roy ‘750, plies assembled to form layup; FIG. 21 of Roy ‘750, layup placed on rolling table); and rolling the first sheet, the second sheet, and the third sheet around a mandrel to form the tubular member (FIG. 21, 4:35-37 of Roy ‘750, layup of FIG. 19 rolled onto a mandrel on a rolling table to form a hollow tapered tube).
Regarding claim 21, Roy ‘750 discloses that the first material has a modulus that is less than a modulus of the second material (10:68-11:5 of Roy ‘750, second layer includes glass and carbon fibers; 11:15-20 of Roy ‘750, first layer includes the same materials as the second layer; each of the first and second layers includes a glass ply and a carbon fiber ply; glass fibers in first layer would necessarily have a lower modulus than carbon fibers in second layer).
Regarding claim 22, Roy ‘750 discloses that at least one of the first sheet or the second sheet include a plurality of fibers that extend in a lengthwise direction of the mandrel (FIGS. 18-20 of Roy ‘750, second layer includes ply #76 which includes lengthwise extending fibers).
Regarding claim 24, Roy ‘750 discloses curing, in an oven, epoxy of at least one of the first sheet, the second sheet, or the third sheet (14:17-24 of Roy ‘750, layup wrapped around mandrel and placed in an oven to cure epoxy resin in the layup).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over VanAuken (U.S. Patent No. 4,023,801) in view of Roy ‘750.
Regarding claim 1, VanAuken discloses a method of manufacturing a tubular member (Abstract of VanAuken, method of making a golf shaft; 2:46-47 of VanAuken, shaft is a tube of material), the method comprising: stacking a plurality of materials, the plurality of materials including one or more bottom layers and an upper layer stacked on top of the one or more bottom layers (FIGS. 1-2 of VanAuken, layup comprising layer #11 #12 #14 #15; either layer #10 or layer #15 can be considered an “upper” layer since no frame of reference is provided), the upper layer comprising a fibrous material including (a) a first plurality of fibers that extend in a positive direction relative to a lengthwise direction of the upper layer and (b) a second plurality of fibers that extend in a negative direction relative to the lengthwise direction of the upper layer (FIGS. 1-2, 3:59-61 of VanAuken, woven glass fabric layer #15), the first plurality of fibers and the second plurality of fibers forming an X- pattern (FIGS. 1-2, 3:59-61 of VanAuken, fiber of woven glass fabric layer #15 form an “X” pattern); and rolling the plurality of materials around a mandrel to form the tubular member (FIG. 2 of VanAuken, layers rolled or wrapped around mandrel #25).
VanAuken does not specifically disclose stacking the plurality of materials on a rolling table. Roy ‘750, however, discloses a method of making a golf club shaft comprising stacking a plurality of layers of composite material on a rolling table and rolling the layers to form a hollow tube (FIGS. 18, 20-21, 4:26-29 and 4:35-37 of Roy ‘750). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to stack the plurality of materials in the method of VanAuken on a rolling table and roll the plurality of materials around a mandrel to form the tubular member since Roy ‘750 establishes that such methods of forming golf club shafts were known (FIGS. 18, 20-21, 4:26-29 and 4:35-37 of Roy ‘750). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable. It is noted that modifying VanAuken as proposed would result in the layers of materials being reversed with layer #10 on the bottom (i.e., in contact with the table) and layer #15 on top (i.e., in facing the mandrel (FIG. 21 of Roy ‘750, mandrel facing top of composite layup).
Regarding claim 2, VanAuken discloses that the one or more bottom layers include a first layer comprising a first material (FIG. 1 of VanAuken, one of layers #10 or #14) and a second layer comprising a second material, the second layer stacked on top of the first layer (FIG. 1 of VanAuken, one of layers #14 or #12), wherein the upper layer is a third layer comprising a third material (FIG. 1 of VanAuken, layer #15 stacked on layers #12 #14 and #10).
Regarding claim 3, VanAuken discloses that the first material has a modulus that is less than a modulus of the second material (FIG. 1 of VanAuken, carbon fiber reinforced layer #12 stacked on glass fiber reinforced layer #14).
Regarding claim 4, VanAuken discloses that the first material and the second material include fibers that extend in a lengthwise direction of the mandrel and the lengthwise direction of the third material (FIG. 1 of VanAuken, layers #10 #12 and #14 include fibers that extend at an angle < ±90 degrees with respect to the major axis of the shaft or in a lengthwise direction).
Regarding claim 5, VanAuken discloses that the first layer has a width at an end thereof that is greater than three times a circumference of the mandrel at a butt thereof (4:2-9 of VanAuken, material sized to allow about 4 convolutions around mandrel; first layer would have to be about four times a circumference of the mandrel at a butt thereof to allow 4 convolutions).
Regarding claim 6, VanAuken suggests that the second layer has a width at an end thereof that is greater than a circumference of the mandrel at a butt end thereof (4:2-9 of VanAuken, material sized to allow from 1 to 4 convolutions around mandrel; first layer would have to be greater than a circumference of the mandrel at a butt thereof to allow 4 convolutions).
Regarding claim 7, VanAuken suggests that the width at the end of the second layer is less than twice the circumference of the mandrel at the butt end thereof (4:2-9 of VanAuken, material sized to allow from 1 to 4 convolutions around mandrel; first layer would have to be less than twice the circumference of the mandrel at a butt thereof to allow for 1-2 convolutions).
Regarding claim 12, VanAuken discloses that the mandrel has a tapered shape (FIG. 2 of VanAuken, mandrel #25).
Regarding claim 13, VanAuken discloses that the plurality of materials that are stacked on the rolling table and rolled around the mandrel to produce the tubular member does not include a scrim material (3:59-63 of VanAuken, woven glass fabric layers #14 #15 may optionally be a scrim material; VanAuken therefore encompasses the use of woven glass fabrics that are not scrims).
Regarding claim 14, VanAuken discloses curing the tubular member (3:22-25 of VanAuken, resin may be a thermosetting epoxy; 4:63-5:5 of VanAuken, wrapped assembly placed in oven at a temperature sufficient for bonding of layers; thermosetting epoxy resins bond by crosslinking or curing).
Claim 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over VanAuken in view of Roy ‘750 as applied to claim 1 above and further in view of Roy ‘529 (U.S. Patent No. 5,626,529).
Regarding claim 10, VanAuken does not specifically disclose that the positive direction is a positive 45 degree angle relative to the lengthwise direction of the upper layer, and wherein the negative direction is a negative 45 degree angle relative to the lengthwise direction of the upper layer. Roy ‘529, however, discloses a golf club shaft wherein the inner plies are oriented at an angle of 15 to 45 degrees with respect to the longitudinal axis of the shaft (4:11-12 of Roy ‘529). According to Roy ‘529, the angle can be varied to achieve desired torsional and flexural stiffness (3:64-66 of Roy ‘529). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to orient the unidirectional fibers in the layup at an angle of ±15 to ±45 degrees. One of skill in the art would have been motivated to do so in order to achieve desired torsional and flexural stiffness as taught by Roy ‘529 (3:64-66 of Roy ‘529). Roy ‘529 clearly teaches a bias angle range (i.e., ±15 to ±45 degrees) that overlaps with that bias angles recited in claim 10 (i.e., ±45 degrees) which would render the claimed bias angles obvious to one of ordinary skill in the art. Moreover, the courts have held that where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (See MPEP 2144.05(I)).
Regarding claim 11, Roy ‘529 suggests that the first plurality of fibers extend helically along a length of the tubular member at the positive 45 degree angle, and wherein the second plurality of fibers extend helically along the length of the tubular member at the negative 45 degree angle (4:11-12 of Roy ‘529, bias angle range of ±45 degrees; wrapping ±45 degree layers around mandrel would result in fibers extending helically along the length of the tubular member at ±45 degrees).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Roy ‘750 in view of VanAuken.
Regarding claim 23, Roy ‘750 does not specifically disclose that the third sheet has a plurality of fibers arranged in an X-weave. VanAuken, however, discloses golf club shafts having alternating layers of unidirectional carbon fiber and woven glass fabric (Abstract, FIGS. 1-2 of VanAuken, shaft comprises woven glass fabric layers #14 #15). According to Van Auken, the second layer of glass fabric #15 can be placed adjacent to one of the graphite fiber layers #11 #12 (FIGS. 1-2, 2:29-32 and 4:35-40 of VanAuken). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to provide the layup of Roy ‘750 with a top (i.e., outer) layer of woven glass fabric since VanAuken establishes that it was known to provide golf clubs with such layers (FIGS. 1-2, 2:29-32 and 4:35-40 of VanAuken). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Roy ‘750 in view of Roy ‘529.
Regarding claim 25, Roy ‘750 discloses a method of manufacturing a tubular member (FIG. 21, 4:35-37 of Roy ‘750, layup rolled onto mandrel on a rolling table to form a tube), the method comprising: providing a first layer of a first material, the first layer having a first shape, the first layer having a first tensile modulus (FIGS. 17-18 of Roy ‘750, first layer comprising material #71 which also comprises material #72 has trapezoidal shape and necessarily has a material property such as stiffness); providing a second layer of a second material, the second layer having a second shape different than the first shape, the second material having a second tensile modulus greater than the first tensile modulus (FIGS. 18-20 of Roy ‘750, second layer comprising material #62 also comprises material #64, has trapezoidal shape and necessarily has a material property such as stiffness; FIGS. 17, 18 and 20 of Roy ‘750, second layer comprising materials #62 #64 includes material #76 and therefore has a different shape than layer comprising material #62); providing a third layer of a third material, the third layer having a third shape different than the first shape and the second shape (FIGS. 17-20 of Roy ‘750, third layer comprising material #78, which has a different shape than first and second layers); stacking the first layer, the second layer, and the third layer on a rolling table (FIG. 18, 4:26-29 of Roy ‘750, plies assembled to form layup; FIG. 21 of Roy ‘750, layup placed on rolling table); and rolling the first layer, the second layer, and the third layer around a mandrel to form the tubular member (FIG. 21, 4:35-37 of Roy ‘750, layup of FIG. 19 rolled onto a mandrel on a rolling table to form a hollow tapered tube).
Roy ‘750 does not specifically disclose the third layer having a third tensile modulus that is less than the first tensile modulus. Moreover, Roy ‘750 discloses that the third or outer layer #78 comprises graphite filaments (11:34-39 of Roy). Roy ‘529, however, discloses a golf club shaft comprising a first outer layer of unidirectional high modulus material (6:9-13, FIG. 2 of Roy ‘529, 4th ply #44) and a second outer layer comprising a relatively low modulus of elasticity material (FIG. 2 of Roy ‘529, fifth ply #54; claim 12 of Roy ‘529, fifth layer has relatively low modulus of elasticity). Roy ‘529 also discloses that a final layer of high or low modulus material may be wrapped around the shaft depending on the desired flexural stiffness of the shaft (4:42-45 of Roy ‘529). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to add an additional layer to the top of the layup of Roy ‘750. One of skill in the art would have been motivated to do so in order to provide a golf club with desired flexural modulus as taught by Roy ‘529 (Claim 12, 4:42-45 of Roy ‘529).
Allowable Subject Matter
Claims 8 and 9 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.
Regarding claims 8 and 9, the closest prior art is to VanAuken. VanAuken discloses a method of manufacturing a tubular member (Abstract of VanAuken, method of making a golf shaft; 2:46-47 of VanAuken, shaft is a tube of material), the method comprising: stacking a plurality of materials, the plurality of materials including one or more bottom layers and an upper layer stacked on top of the one or more bottom layers (FIGS. 1-2 of VanAuken, layup comprising layer #11 #12 #14 #15; either layer #10 or layer #15 can be considered an “upper” layer since no frame of reference is provided), the upper layer comprising a fibrous material including (a) a first plurality of fibers that extend in a positive direction relative to a lengthwise direction of the upper layer and (b) a second plurality of fibers that extend in a negative direction relative to the lengthwise direction of the upper layer (FIGS. 1-2, 3:59-61 of VanAuken, woven glass fabric layer #15), the first plurality of fibers and the second plurality of fibers forming an X- pattern (FIGS. 1-2, 3:59-61 of VanAuken, fiber of woven glass fabric layer #15 form an “X” pattern); and rolling the plurality of materials around a mandrel to form the tubular member (FIG. 2 of VanAuken, layers rolled or wrapped around mandrel #25). While Roy ‘750 provides motivation to stack the plurality of materials on a rolling table (FIGS. 18, 20-21, 4:26-29 and 4:35-37 of Roy ‘750), neither VanAuken, Roy ‘750 nor any of the other prior art references of record teach or reasonably suggest a method as recited in claim 8 wherein the second layer is stacked on the first layer and offset from a leading edge of the first layer such that the mandrel completes a first roll before contacting and rolling the second material or a method as recited in claim 9 wherein the third material defines an interior surface along an angular portion of the tubular member at a butt end of the tubular member, and wherein the third material is sandwiched between the first material and the second material at a plurality of angular locations at the butt end of the tubular member.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746
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