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 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. The same feature, “head face” is intended, consistent terminology must be used. 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.
Claim 26 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. In Claim 26, the limitation providing that the vertical weighting plate comprises a different material than the head face constitutes new matter which 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.
Claims 22-33 are 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 22 recites the broad recitation “the removable hosel being selectively interchangeable among onset, offset, and center set hosel configurations”, and the claim also recites “interchangeably replacing the removable hosel with one of and onset hosel, and offset hosel, or a center set hosel” which is the narrower statement of the range/limitation, because the narrower limitation excludes removal and reinsertion of a hosel in a different orientation to obtain a differing configuration.. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The scope of the claim is indefinite.
Claims 25 and 37 are 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 each claim, the first phrase provides a selection of materials for forming the vertical weighting plate, in the alternative. It is unclear whether the second phrase intends to expand the group of materials or to eliminate materials listed in the first phrase. The scope of the claim is indefinite.
Claim 33 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. It is unclear whether the one convex head face is intended to be a new feature or whether the one convex head face is the same feature as the horizontally curved convex head face of Claim 22, from which Claim 33 is intended to depend. The scope of the claim is indefinite.
Claim 39 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. The limitation providing that the vertical weighting plate extending vertically between the putter face and the back portion is unclear in that a direction extending between a putter face and a back portion is understood to be horizontal. The scope of the claim is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 30 and 31 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Limitations providing a face defining a convex radius greater than 12 inches and being interchangeable with a flat head face repeat limitations of Claim 21, which applicant has indicated is intended to be a parent case of Claims 30 and 31. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 22-25 and 29-33 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 Billings, U.S. Patent Application No. 2024/0033584, 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, and Shunde, U.S. Patent Application No. 2007/0207876. 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. One or more fasteners (13) may extend through the vertical weighting plate positioned between the head face and the back portion, paragraph 0031 and see Figure 2. The vertical weighting plate may be removed and replaced by removal of one or more fastener extending through the front portion, see Figures 2-5. The vertical weighting plate may be configured to modify a center of mass, by selection of plate material and thickness (width), paragraph 0032, noting different sizes, shapes, and materials of varied density. Kasai is silent as to a removable hosel. Billings teaches a putter head (100) comprising a hosel (120) having a shaft hole (126) displaced from the head engaging portion (122), paragraphs 0072, 0074 and 0079. The removable hosel may be selectively interchangeable among onset, offset, and center (no offset etc.) hosel configurations, by interchangeably replacing the removable hosel with one of an onset hosel, an offset hosel, or a center hosel, paragraph 0031, noting modular hosels. 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 Billings, 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, does not indicate that the convex head face may have a horizontal curvature with a radius greater than 12 inches. Schmidt teaches a putter head face (22) having a horizontally curved convex curve, Col. 2, ln. 19-21 and see Figure 2. 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 Kasai, as modified, with a head face having a horizontally curved striking surface of radius greater than 12 inches, as taught by Schmidt, to provide Kasai, as modified, with a known alternative selectable head face shape. The examiner finds that the interchangeable golf putter system of prior art possesses the structural features of the inventive system and is capable of performing in the same manner namely that the putter face may provide a substantially planar appearing yet functionally convex striking surface. “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. Kasai, as modified, discloses the claimed invention except for providing that the fasteners may extend through a back portion instead of a front portion. Shunde teaches a golf putter system (2) comprising a head face (12) and vertical weighting plates (14), paragraph 0027. One or more fasteners (18) may extend through a back portion (28) and removable vertical weighting plate, paragraph 0027 and see Figures 1 and 4. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the fasteners to extend through the back portion, as taught by Shunde, to provide Kasai, as modified, with a known substitute fastener configuration. As to Claim 23, Kasai teaches that the vertical weighting plate may be configured to have a selectable thickness from among a plurality of different thickness, paragraph 0032 and see Figures 2-5. 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 (cutaway), paragraph 0033 and see Figure 12 (part mis-labeled). The cutout may create a cavity in the weighting plate, Claim 16. It is inherent that the cavity represents an absence of weighting plate material in the area of the cutout and consequently, the center of mass changes. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai, as modified, with cutouts in the vertical weighting plate, as taught by Shende, to provide Kasai, as modified, with changed center of mass, to yield the predictable result of facilitating the process of customizing the performance of the club. 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. As to Claim 25, Kasai teaches that the vertical weighting plate may comprise stainless steel, paragraph 0032. Claim 25 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 29, Kasai teaches that the vertical weight (30) may be sandwiched between the putter face (10) and back (20), paragraph 0045. The examiner finds that the removable and replaceable vertical weighting plate positioned between the head face and back portion, according to Claim 22, may be considered to be sandwiched. As to Claims 30 and 31, Schmidt is applied as in Claim 22 with the same obviousness rationale being found applicable. As to Claim 32, Kasai teaches that the vertical weighting plate may be positioned vertically between the head face and back portion extending from heel to toe, 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. As to Claim 33, the examiner interprets the one convex head face as the horizontally curved convex head face of Claim 22. Lueders teaches interchanging a head face to provide a top to bottom convex curve, paragraph 0038. It is inherent that the top to bottom convex curve provides a variable loft convex head face. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Kasai, as modified, with interchanging a head face for a variable loft convex head face, as taught by Lueders, to provide Kasai, as modified, with and interchange of head faces to replace a convex head face with a variable loft convex head face to yield the predictable result of adding versatility to the putter system. Claim 33 is treated as best understood in view of the rejection under 35 USC §112(b).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Billings, Lueders, Schmidt, and Shunde, as applied to claim 22 above, and further in view of Helmstetter et al., U.S. Patent Application No. 2002/0065144. Kasai, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 26, Kasai, as modified, is silent as to the material forming the head face and vertical weighting plate. Helmstetter teaches a putter (30), see Abstract. A head face (36) may comprise forged or milled steel, with a polymer insert, paragraph 0019, noting carbon steel. A vertical weighting plate (50) may comprise a different material, see Abstract, noting tungsten. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a forged or milled steel face and a weighting plate of different material, as taught by Helmstetter, to provide Kasai, as modified, with a known combination of materials comprising a head face and vertical weighting plate.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai, in view of Billings, ‘584, Lueders, Schmidt, Shunde, and Helmstetter, as applied to claims 22 and 26 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, ‘950, teaches a putter head having a nickel based galvanic corrosion-resistant coating, paragraph 0051, suggesting that the coating may be applied to all parts of the putter system.. Kasai, as modified, teaches that the putter system may interchangeable dissimilar metal components, as discussed above, noting head face and weighting plate. 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, ‘950, to provide Kasai, as modified, with a protective coating applied to the putter system, including interchangeable dissimilar metal components, 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 Billings, ‘584,, Lueders, Schmidt, and Shende, 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, ‘238, 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, ‘238, 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. Further, Kasai teaches that the putter system may be disassembled, see Figure 2. It follows that the head face and vertical weighting plate may be retained when a back portion is exchanged.
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 Billings, and Schmidt. As to Claim 34, Kasai, Billings, 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. Claim 37 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 39, Kasai is applied as in Claim 29. Claim 39 is treated as best understood in view of the rejection under 35 USC §112(b). 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 Billings, and Schmidt, as applied to claim 34 above, and further in view of Shende. As to Claim 36, 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 Billings,’584, 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, ‘238, is applied as in Claim 28, with regard to the rear component being selected from blade back, wing back, and mallet, with the same obviousness rationale being found applicable Kasai is applied as in Claim 22 with regard to modifying the center of mass by removing and replacing the weighting plate. Further Kasai teaches that the weighting plate may be removed and replaced by removing fasteners, see Figure 2.
Response to Arguments
Applicant's arguments filed 1 July 2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the inventive putter combines a number of features, which function independently. The examiner maintains the position that a person of ordinary skill in the art would have considered the teaching of the references to motivate the inclusion of each feature, for the benefit that each provides.
In response to applicant’s argument that U.S. Patent No 5,213,332, to Fahy, teaches away from a convex putter face having a radius exceeding 12 inches, the examiner maintains the position that Lueders teaches advantages of a convex putter face and Schmidt teaches that a convex putter face may have a curvature radius greater than 12 inches. Kasai, together with Lueders and Schmidt do not teach away from the feature of a curvature radius greater than 12 inches. It follows that a person of ordinary skill in the art would not be dissuaded from modifying a putter face to exhibit the claimed degree of curvature. The fact that a reference not cited teaches away from the claimed feature does not overcome the rejection based on the combination of teaching of a primary reference modified by secondary references, leading to the claimed invention as a whole, see MPEP 2141,02 VI.
In response to applicant’s argument that the feature of a convex face having radius greater that 12 inches is a technological departure embedded in a modular system, the examiner maintains the position that the convex curvature having radius greater than 12 inches is disclosed by prior art of record and that a person of ordinary skill in the art would have considered the teaching of the feature in combination with teaching of the primary reference disclosing a modular putter system and putter head. The independent function of the claimed features would have suggested the inclusion of each feature into a modular putter head, in order to gain the advantage provided by each.
In response to applicant’s argument with regard to Claim 42, the examiner notes that Claim 42, as amended, is interpreted to provide a front head component defining a front striking surface as well as a rear component and a vertical weighting plate. The Billings, ‘238, reference is applied as set forth in the office action. Applicant argues that Billings, ‘238, does not teach a system in which both the front head component and the rear component are selectable from a group of named configurations. The examiner maintains the position that Claim 42, as interpreted, includes a rear component which forms a portion of the front head component such that a selection of a particular configuration for the rear component necessarily provides the same configuration within the front component.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner maintains the position that Kasai teaches a modular putter system and putter head, noting that the entire putter may be disassembled. It follows that the striking face, hosel, and shaft may be interchanged. Further, Kasai teaches that different vertical weight plates may be substituted to change the putter head type to form a blade or mallet type putter. Secondary references teach specific configurations for interchanging the hosel, face, and head type. It would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teaching of the references to add the disclosed features, as claimed, in order to obtain the benefit of each.
In response to applicant’s argument with regard to Claim 24, the examiner maintains the position that the cutout disclosed by Shende would necessarily have the effect of redistributing mass and altering the center of mass by virtue of the absence of mass resulting from the removal to provide the cutout. The record does not include evidence of criticality associated with the specific size placement or shape of the cutout or cutouts and the examiner maintains the position that it would have been an obvious matter of choice to configure the cutouts, as claimed.
In response to applicant’s argument with regard to Claims 28 and 38, the examiner maintains the position that the features forming a part of the modular inventive putter function independently. Kasai teaches that a mallet type putter head may be obtained by selecting a longer vertical weight plate while Billings, ‘238, teaches that the same object may be obtained by selecting a longer back portion. A person of ordinary skill in the art would have considered the teaching of the references in combination to suggest formation of a mallet type putter head by either method in the alternative without being bound to modify both the vertical weighting plate and the back portion.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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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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.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 4 August 2026
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