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 § 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 1-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Golden (US Patent No. 6,551,200 B1) in view of Antonious (US Patent No. 5,328,184).
In Reference to Claims 1-3, 9, and 11
Golden teaches (Claim 1) An iron type golf club head comprising: a hitting face that includes a plurality of score lines (fig. 1, column 3 lines 40-44) and a face center (intersection of B and CA, fig. 5); a back surface; a sole surface; a top blade (back, sole, and top, fig’s 1-5); and a face thickness that is defined as a distance between the hitting face and the back surface (thickness, fig’s 1-5), wherein on the back surface, a thick wall portion is formed over a region including a score line center position (fig. 5, central thickened region, item S is centered in this region, not separately labeled), the thick wall portion having a face thickness of greater than the face thickness of a part on a toe side of the thick wall portion and greater than the face thickness of a part on a heel side of the thick wall portion (items 16h and 16t, fig’s 5, 5A, and 5C), [], and the golf club head has a loft angle of greater than or equal to 46° (table 1);
(Claim 2) wherein the face thickness of the thick wall portion decreases toward the blade side (fig’s 2, 5, and 5B);
(Claim 3) wherein the thick wall portion is disposed over a region that includes the face center (center along CA, fig. 5, at section S);
(Claim 9) wherein the golf club head is produced by forging (fig’s 5A-5C, column 5 lines 26-36, head is one uniform material, which could be formed by forging; note this is a product by process claim, see MPEP 2113, apparatus claims are not limited to the recitation of production steps);
(Claim 11) A golf club set comprising two or more golf clubs according to claim 10, wherein the greater the loft angle is, the larger an area of the thick wall portion is (table I, increasing height of thick wall region inherently increases its area).
Golden fails to teach the feature of extending towards the toe side of claim 1.
Antonious teaches (Claim 1) [a] thick wall portion is formed such that it extends toward [a] toe side as it goes toward a blade side from a sole side (item 30, fig’s 2 and 3).
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 back face reinforced iron of Golden with the feature of angling the thick wall portion towards the toe as taught by the back face reinforced iron of Antonious for the purpose of orienting the structure that will provide assistance to a golfer in correctly closing the face of the club at the pint of impact, when the ball is struck as taught by Antonious (column 3 lines 55-62), making the club easier to use, and more attractive to the users.
In Reference to Claim 4
The modified device of Golden teaches all of claim 1 as discussed above.
Golden fails to teach the feature of claim 4.
Antonious teaches (Claim 4) further includes an upper thick wall portion that is thicker than an upper end of [a] thick wall portion and is located on the blade side of the thick wall portion (top section of item 26, fig’s 1-20).
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 back face reinforced iron of Golden with the feature of providing a thick upper wall portion as taught by the back face reinforced iron of Antonious for the purpose of additionally providing perimeter weighting to the club as taught by Antonious (column 8 lines 28-33), making the club more stable, easier to use, and more attractive to the users.
In Reference to Claims 5-8
The modified device of Golden teaches all of claim 1 as discussed above.
Golden further teaches (Claim 5) wherein when a thick wall portion region obtained by projecting the thick wall portion onto the hitting face is divided into the following four parts: a heel upper part that is located on the heel side and blade side with respect to the face center; a toe upper part that is located on the toe side and blade side with respect to the face center; a toe lower part that is located on the toe side and sole side with respect to the face center; and a heel lower part that is located on the heel side and sole side with respect to the face center (fig. 5, the four quadrants shown around intersecting lines B and CA; also note there does not appear to be any structure here, only a definition of regions which seem to simply be quadrants formed by two center lines), [];
(Claim 6) wherein when a thick wall portion region obtained by projecting the thick wall portion onto the hitting face includes a heel upper part that is located on the heel side and blade side with respect to the face center, and a toe upper part that is located on the toe side and blade side with respect to the face center (fig. 5, the upper two quadrants shown around intersecting lines B and CA; also note there does not appear to be any structure here, only a definition of regions which seem to simply be quadrants formed by two center lines), [];
(Claim 7) wherein when a thick wall portion region obtained by projecting the thick wall portion onto the hitting face is divided into the following two parts: an upper part that is located on the blade side with respect to the face center; and a lower part that is located on the sole side with respect to the face center (fig. 5, the upper and lower halves shown above and below line CA; also note there does not appear to be any structure here, only a definition of upper and lower regions),
(Claim 8) wherein when a thick wall portion region obtained by projecting the thick wall portion onto the hitting face is divided into the following two parts: a toe part that is located on the toe side with respect to the face center; and a heel part that is located on the heel side with respect to the face center (fig. 5, the right and left halves shown right and left of line B; also note there does not appear to be any structure here, only a definition of heel and toe regions),
Golden fails to teach the specific area ratios of claims 5-8.
Antonious teaches embodiments where the largest area of a thick wall region is in the toe upper part; which is also greater than two times an area of a heel part; the upper part area is greater than the lower part, and the toe part area is greater than the heel part (fig’s 9, 10, and 13).
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 back face reinforced iron of Golden with the feature of providing a largest area of thick wall region in the toe upper part / toe part / upper part as taught by the back face reinforced iron of Antonious for the purpose of customizing the club to be more effective for a golfer who hits fully down and through a ball as taught by Antonious (column 8 lines 28-33), making the club more reliable and more attractive to a particular type of user.
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 Golden and Antonious both teach a backwall thickened portions in the general shape and location claimed, as well as teach that these regions can be in a variety of locations and orientations on the back face (Golden, fig’s 6 and 10-12; Antonious, fig’s 3-20), for the purpose of optimizing the hitting characteristics and stiffnesses of the club as desired, merely claiming a location that is optimum for a particular characteristic or for a particular type of golfer is an obvious matter of engineering design choice, and it not a patentable distinction.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Golden in view of Antonious, and further in view of Oldknow et al. (US Patent No. 8,435,132).
In Reference to Claim 10
The modified device of Golden teaches all of claim 1 as discussed above.
Golden is silent as to a shaft and grip.
However, the examiner notes that to be used as a golf club, one of ordinary skill in the art would provide both a shaft and a grip to the iron head of Golden in order to be able to use the head as a golf club.
Regardless, Oldknow teaches (Claim 10) a shaft and a grip (column 2 lines 22-29).
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 a shaft and a grip to the golf club head of Golden as taught by the golf club head of Oldknow for the purpose of providing the remaining required parts of the club for use.
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.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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