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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 February 2026 has been entered.
Claim Objections
Claims 23-33 are objected to because of the following informalities: The claims depend from a cancelled base claim. Appropriate correction is required.
Claims 29 and 39 are objected to because of the following informalities: The feature, “putter face” lacks an antecedent basis. Appropriate correction is required.
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 23 and 35 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. The limitation providing that the vertical weighting plate may be configured to have an adjustable thickness was not disclosed in the originally filed specification and cannot be added.
Claims 24 and 36 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. The limitation providing that the vertical weighting plate may have non-uniform cutouts configured to change either a center of mass or a moment of inertia was not disclosed in the originally filed specification and cannot be added.
Claim 33 is 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. The limitation providing that the convex head face may be configured to change the loft via interchanging head faces was not disclosed in the originally filed specification and cannot be added.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 42 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In line 6, the limitation indicating that the rear component may be selected from a blade back, a half mallet back, or a full mallet back is unclear in that a previous limitation, in line 2, provides for the same shapes in a front head component. The limitations are incompatible. The scope of the claim is indefinite.
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.
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.
Claim(s) 22, 23, 25, 26, and 29-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai et al., U.S. Patent Application No. 2023/0001274, in view of Pellew, U.S. Patent Application No. 2016/0263447, and in further view of Lueders, U.S. Patent Application No. 2010/0255922 and in further view of Schmidt, U.S. Patent No 6,155,933. As to Claim 22, Kasai teaches an interchangeable golf putter system (1) comprising a putter head (10, 20,30), comprising a head face (10), a back portion (20), the head face being removably attachable to the back portion, paragraphs 0030 and 0034 and see Figure 2, noting replaceable intermediate member (30). A hosel (14) may be coupled to the head face and configured to receive a shaft, paragraph 0043. A removable and replaceable vertical weighting plate (30) may be positioned between the head face and back portion, paragraph 0032. Given that the weighting plate is replaceable it is inherent that it is removable. The vertical weighting plate may be configured to modify a center of mass, paragraph 0032, noting different sizes, shapes, and materials of varied density. Kasai is silent as to a removable hosel. Pellew teaches a putter head (19) comprising a hosel having (15) having a shaft hole (08) displaced from the head engaging portion (12), paragraphs 0100 and 0101 and see Figure 7. The removable hosel may rotate through 360 degrees, paragraphs 0017 and 0069. It follows that onset, offset and center configurations are provided. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai with a removable and adjustable hosel configured as claimed and as taught by Pellew, to provide Kasai with an adjustable address position to yield the predictable result of facilitating the process of customizing the putter. Kasai teaches that the head face may be interchangeable, paragraph 0031 and see Figure 2, noting that the head face may be freed from other components, but Kasai does not disclose that convex and flat faces may be selected. Lueders teaches that a putter may have interchangeable face inserts interchangeable among convex and flat faces, paragraphs 0013 and 0038. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai, as modified, with convex and flat face configurations, as taught by Lueders, to provide Kasai, as modified, with differing face shape options, to yield the predictable result of facilitating the process of customizing the putter performance. Kasai, as modified, discloses the claimed invention except for indicating that the convex head face may have a horizontal curvature. Schmidt teaches a putter head face (22) having a horizontally curved convex curve, Col. 2, ln. 19-21 and see Figure 2. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai, as modified, with a head face having a horizontally curved striking surface, as taught by Schmidt, to provide Kasai, as modified, with a known alternative selectable head face shape. As to Claim 23, Kasai teaches that the vertical weighting plate may be configured to have an adjustable thickness, paragraph 0032 and see Figures 2 and 3. As to Claim 25, Kasai teaches that the vertical weighting plate may comprise stainless steel, paragraph 0032. As to Claim 26, Kasai, as modified, discloses the claimed invention except for disclosing the head face material. It would have been obvious to one of ordinary skill in the art before the effective filing date to form the head face from a material as claimed, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 146 (CCPA 1960). As to Claim 29, Kasai teaches that the vertical weight (30) may be sandwiched between the putter face (10) and back (20), paragraph 0045. As to Claim 30, Schmidt teaches that the convex face head may have a curve radius of at least 12 inches (approximately 12 inches), Col. 2, ln. 44-48. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a convex curve radius of at least 12.01 inches, as taught by Schmidt, to provide Kasai, as modified with a known substitute convex face shape. As to Claim 31, Schmidt teaches a horizontally convex surface, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai, as modified, with a horizontally convex surface, as taught by Schmidt, to provide Kasai, as modified, with a known substitute face shape. As to Claim 32, Kasai teaches that the vertical weighting plate may be positioned vertically between the head face and back portion, see Figure 1. The examiner finds that the putter head of prior art possesses the structural features of the inventive putter head and is capable of exhibiting the claimed characteristic, namely that the weighting may be distributed along a horizontal plane. "The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977), MPEP 2112.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Pellew, Lueders, and Schmidt, as applied to claim 22 above, and further in view of Shende, U.S. Patent Application No. 2007/0207876. Kasai, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 24, Kasai, as modified, is silent as to non-uniform cutouts in the weight plate. Shende teaches a reconfigurable golf putter comprising a head face (12) and a back portion (rearwardmost 28), paragraph 0029. A weighting plate (24) may be positioned between the head face and back portion, paragraph 0029 and see Figure 4. The weighting plate may have a cutout, paragraph 0033 and see Figure 12 (part mis-labeled). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai, as modified, with a cutout in the weighting plate, as taught by Shende, to provide Kasai, as modified, with weighting plate of lesser weight, to yield the predictable result of facilitating the process of effectively distributing head weight. Kasai, as modified, does not disclose that the cutout may be non-uniform and that plural cutouts may be present. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the cutout with a non-uniform shape since it has been held that configuration of parts of an invention is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, 149 USPQ 47 (CCPA 1966). Further, it would have been obvious to one of ordinary skill in the art before the effective filing date to provide duplicate plural cutouts, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Pellew, Lueders, and Schmidt, as applied to claim 22 above, and further in view of Billings, U.S. Patent Application No. 2007/0243950. Kasai, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 27, Kasai, as modified, is silent as to a protective galvanic corrosion-resistant coating. Billings teaches a putter head having a nickel based galvanic corrosion-resistant coating, paragraph 0051. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai, as modified, with a protective coating as claimed and as taught by Billings, to provide Kasai, as modified, with a protective coating to yield the predictable result of extending the useful life of the putter.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Pellew, Lueders, and Schmidt, as applied to claim 22 above, and further in view of Billings, U.S. Patent Application No. 2014/0323238. Kasai, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 28, Kasai teaches reconfiguring the putter head to a mallet type by inserting weighting plates of varied length between the head face and back portion, see Figures 2 and 3, but Kasai, as modified, does not specify reconfiguring the putter head by exchanging the back portion. Billings teaches that a putter head may be fabricated as a traditional blade type and a rearwardly extending back portion can be added to extend the length, paragraph 0022. Rear portions of various design may be used to provide half mallet or mallet head design, paragraph 0061 and see Figure 6. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai, as modified, with exchangeable back portions as taught by Billings, to provide Kasai, as modified, with capability of conversion among, blade, half mallet and mallet head design to yield the predictable result of added versatility.
Claim(s) 34, 35, 37, and 39-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Pellew and Schmidt. As to Claim 34, Kasai, Pellew, and Schmidt are applied as in Claim 22 with the same obviousness rationales being found applicable. The examiner finds that the putter head comprising a body having a front striking face may be considered a counterpart to the putter head comprising a head face of Claim 22. As to Claim 35, Kasai is applied as in Claim 23. As to Claim 37, Kasai is applied as in Claim 25. As to Claim 39, Kasai is applied as in Claim 29. As to Claim 40, Schmidt is applied as in Claim 31, with the same obviousness rationale being found applicable. As to Claim 41, Kasai, together with the cited rationale is applied as in Claim 32.
Claim(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Pellew and Schmidt, as applied to claim 34 above, and further in view of Shende. As to Claim 35, Shende, together with cited case law, is applied as in Claim 24 with the same obviousness rationale being found applicable.
Claim(s) 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Pellew and Schmidt, as applied to claim 34 above, and further in view of Billings, U.S. Patent Application No. 2014/0323238. As to Claim 38, Billings is applied as in Claim 28, with the same obviousness rationale being found applicable.
Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Schmidt and Billings, U.S. Patent Application No. 2014/0323238. As to Claim 42, Kasai is applied as in Claim 22 with regard to an interchangeable putter head assembly comprising a front head component and a vertical weighting plate positioned between the front head component and a rear component of the putter head with the vertical weighting plate being removable and replaceable. The examiner finds that the rear component may be considered a counterpart to the back portion and the front head may be considered a counterpart to the head face. Kasai teaches two fasteners (13) extending through the rear component to secure the rear component, the vertical weighting plant and the front head component together, paragraph 0031 and see Figure 2. Schmidt is applied as in Claim 30, with the same obviousness rationale being found applicable. Billings is applied as in Claim 28, with regard to the rear component being selected from blade, half mallet, and mallet, with the same obviousness rationale being found applicable. Kasai, as modified, discloses the claimed invention except for providing that the front head may comprise a duplicate shape configuration as a blade, half mallet, or full mallet. It would have been obvious to one of ordinary skill in the art before the effective filing date to duplicate the blade, half mallet, or full mallet configuration at the front head, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, St Regis Paper Co. v. Bemis Co., supra. Claim 42 is treated as best understood in view of the rejection under 35 USC §112(b).
Response to Arguments
Applicant’s arguments submitted 16 February 2026 have been considered but are moot in view of the new ground of rejection.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 27 March 2026