DETAILED ACTION
1. This action is made non-final in response to applicant’s Request for Continued Examination filed 9/9/25. Claims 1 and 12 are amended; claims 21-24 are added. Claims 1-24 are pending.
Claim Objections
2. Claims 1 and 12 are objected to because of the following informalities: “one of the pair of sidewalls having” (claim 1, line 10; claim 12, line 10) should be amended to “one of the sidewalls from the pair of sidewalls having”. Appropriate correction is required.
Claims 23-24 are objected to because of the following informalities: “another of the pair of sidewalls includes” should be amended to “another sidewall [[of]]from the pair of sidewalls includes”. Appropriate correction is required.
Examiner notes these informalities do not rise to the level of a 112(b) indefinite rejection, but should be amended to improve clarity of the claim scope.
Claim Rejections - 35 USC § 112
3. 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 1-24 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.
The scope of an “undercut portion”, as required by each independent claim 1 and 12, is indefinite. A person ordinary skill in the art cannot properly ascertain the metes and bounds of these limitations. On page 1 of applicant’s Remarks, applicant cites to Figures 2B-2D, 3D and 4D as showing the undercuts. However, these Figures do not show an undercut portion as a person ordinary skill in the art would understand in view of the application as a whole. Paragraphs [0122]-[0137] and corresponding Figures 5B, 5E-5I description clearly show an undercut portion, which is not present in Figures 2B-2D, 3D and 4D. Moreover, the detailed description corresponding to Figures 2B-2D, 3D and 4D do not describe an undercut portion. A person ordinary skill in the art would understand an undercut to comprise an overhanging structure, as shown in Figures 5B, 5E-5I and not shown in Figures 2B-2D, 3D and 4D. This comports with the ordinary meaning of “undercut”. Since applicant points to Figures 2B-2D, 3D as allegedly showing an undercut, this creates substantial doubt as to the scope of an “undercut portion”. Applicant should provide clarity as to the scope of an “undercut”.
The following recitations in claims 1 and 12 also constitute indefinite language: “a first material forming the pair of sidewalls, the undercut sidewall, and the undercut base surface”. The undercut sidewall and undercut base surface are components of the undercut portion, which itself is part of the sidewall (“one of the pair of sidewalls having an undercut portion”). The indefinite claim language treats the undercut sidewall and undercut base surface as distinct elements from the sidewall(s) - - “the pair of sidewalls, the undercut sidewall, and the undercut base surface”. For examining purposes, when an undercut sidewall and undercut base surface of a sidewall are formed of a first material, that sidewall will also be construed as being formed by said first material, since the sidewall itself includes the undercut sidewall and undercut base surface. To overcome this interpretation, and also bring definitiveness to the claim language, it is recommended to amend to: “a first material forming the entire pair of sidewalls,
Claims 2-11 and 13-24 are rejected based on their dependency to claims 1 and 12, respectively.
Claim Rejections - 35 USC § 103
4. 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 of this title, 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.
5. Claims 1-7, 9-17 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Wallans et al. (US Pat. No. 7,794,333) in view of Nakamura (US Pub. No. 2010/0113180).
With respect to claims 1-6 and 11-16, Wallans et al. teaches a golf club head comprising: a toe portion; a heel portion opposite the toe portion; a sole portion; a top portion opposite the sole portion; a rear portion; a striking face 356b that defines a striking face plane and includes a plurality of grooves that extend substantially in a heel to toe direction, each of the grooves comprising: a pair of sidewalls that extends away from the striking face plane, one of the pair of sidewalls having an undercut portion distal to the striking face plane (Fig. 3E); the undercut portion including an undercut sidewall and an undercut base surface, the undercut base surface facing the striking face plane (See annotated Fig. 3E below) and a resilient member/insert 326b located at least partially in the undercut portion (Fig. 3E); wherein each of the sidewalls has an undercut portion, wherein the sidewalls substantially mirror each other Id.; wherein the resilient member 326b entirely fills the undercut portion Id. a plurality of final grooves each delimited by the sidewalls and the insert 326b of each of the grooves such that the final groove has a bottom surface formed by the insert Id.; wherein the undercut base surface is substantially parallel to the striking face 356b, wherein the undercut sidewall is a first undercut sidewall, another of the pair of sidewalls includes a second undercut sidewall; and the undercut base surface connects an end of the first undercut sidewall to an end of the second undercut sidewall Id.
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Wallans et al. inherently teaches a loft, but does not disclose this numeric value. However, analogous art reference Nakamura teaches that it is known for iron golf clubs with grooves to have a loft no less than 25 degrees (paragraph [0069]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a loft within the ranges taught by Nakamura. The rationale to combine is to provide high launch and apex of the ball. This will expectantly limit roll out of the ball on firm greens. The proposed modification has a reasonable expectation of success as it will not frustrate the intended the purpose of Wallans et al., which clearly teaches iron golf clubs.
Wallans et al. further teaches wherein the pair of sidewalls, the undercut sidewall and the undercut base surface are formed from the same first material (i.e. the material of the chassis 354b)(See examiner claim interpretation set forth above in Section 2), and wherein the resilient member 326b comprises a second material. Wallans et al., in an alternative embodiment shown in Fig. 1, teaches wherein the first material is metallic and the second material of the resilient member/insert 326b is softer/different, wherein the second material is selected from the group consisting of: a polymer, a foam, a rubber, and a resin, wherein the second material contrasts in appearance from the first material (column 3, lines 4-6 and 25-29). In view of the Wallan’s specification as a whole, the materials assigned to the first embodiment are considered to also apply to each of the alternative embodiments, including the embodiment of Fig. 3E. See e.g. Wallans’ claims 1 and 14 – “a metallic striking wall” (claim 1), “a metallic-striking-wall insert” (claim 14). Should applicant traverse this position, a person ordinary skill in the art would have found it obvious to select the materials contemplates for the golf club head body and resilient member in Fig. 1 for the chassis and resilient member 326b of Fig. 3E cites above. The motivation to combine is to promote beneficial mass properties of the club head, and reduce unwanted vibrations. See Wallans et al. at column 3, line 28. The modification would have a reasonable expectation of success as it will comport with a beneficial intended purpose of the reference.
With respect to claims 7, 10, 17 and 20 Wallans teaches wherein each of the grooves has a depth from the striking face plane to the resilient member “less than or equal to the maximum score-line depth allowed by the rules of golf” (column 3, lines 35-37). A person ordinary skill in the art would understand this to mean the USGA conforming limits, thus meeting the requirement that it is less than 0.020 in. Wallans inherently teaches wherein the grooves have a width, but fails to expressly disclose this numeric value. Wallans inherently teaches wherein the grooves have an effective radius, but fails to expressly disclose this numeric value. However, analogous art reference Nakamura. expressly teaches the following to be known in the art: groove depth less than 0.020in. and a width less than 0.035in (paragraphs [0048], [0063]-[0064]) and groove effective radius of between 0.009 inch and 0.011 inch (paragraph [0070]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select values for the groove’s width, depth and effective radius as taught by Nakamura. The motivation to combine is to increase spin to the ball, while complying with USGA standards. The proposed modification has a reasonable expectation of success as it will not frustrate the intended the purpose of Wallans et al. As stated above, Wallans expressly contemplates providing groove parameters than comply with the rules of golf, which the modification accomplishes.
With respect to claims 9 and 19, Wallans inherently teaches a thickness of the resilient member, but does not expressly disclose its numeric value. However, per MPEP 2144.05, 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). In the instant case, the golf club of Wallans would not operate different with a thickness within the claimed range. The effective groove depth from the groove opening to its planar bottom surface is inherently determined by the thickness of the resilient member. This effective groove depth is known to contribute to the spin applied the ball due to degree of debris/water present within the groove. See extrinsic reference Abe (US Pub. No. 2010/0317458) at paragraph [0064]. This effective depth is also regulated by USGA and must be below a maximum depth to comply with USGA groove depth rules. See extrinsic references Ban (US Pat. No. 9,011,268) at column 3, lines 42-45 and Fig. 2; Abe at paragraph [0064]; and Wallans et al. (US Pat. No. 7,794,333) at column 3, lines 29-39. Additionally, within the golf club face art, the thickness of resilient inserts is known to be result effective for both the feel and energy absorption/rebound factor. See extrinsic references Vrska, Jr (US Pub. No. 2003/0045372) paragraph [0032]; Dewanjee (US Pat. No. 6,273,831) at column 8, lines 16-22; Fisher (US Pat. No. 5,674,132) at column 8, lines 45-54; and Broadbridge et al. (US Pub. No. 6,217,460) at column 2, lines 55-57. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal insert thickness, including within the claimed range, via routine experimentation. The motivation to modify the thickness is to provide adequate space for debris/water to be positioned such that it does not negatively affect a hit ball. For thicknesses too large, there is no room for the groove to serve its functional purpose of mitigating interference between the face and ball when debris/water is present, and may not comply with USGA regulations on groove depth limits. Further, an optimal thickness will provide a desired feel to the golfer, and produce a desired energy absorption/rebound factor of the face. Further, the applicant does not place criticality to the claimed range, indicating simply that the thickness contributes to spin rates and durability. The thickness is taught to “preferably” be within the claimed range (See paragraph [0130]), which inherently permits values outside the claimed scope. No specific purpose for operability has been established in relation to the claimed range. The proposed modification has a reasonable expectation of success as it involves only adjusting a dimension of a component that is very conveniently adjusted using common manufacturing techniques, while maintaining compliance with USGA regulations.
6. Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wallans et al. (US Pat. No. 7,794,333) in view of Nakamura (US Pub. No. 2010/0113180) and further in view of Ban et al. (US Pub. No. 2013/0109498).
With respect to claim 8 and 18, Wallans et al. fails to teach wherein each of the grooves includes an entry hole. However, analogous art reference Ban et al. teaches this feature to be known in the art – Fig. 1B showing entry holes 13 for grooves 12; paragraphs [0034]-[0035]. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate the entry holes of Ban et al. into the iron golf club of Wallans et al. The motivation to combine is to facilitate easy forming of the groove cross-sectional shape, including the cut out portions. Ban et al. notes the entry holes are designed for allowing a drill bit to the form the grooves (paragraphs [0035]-[0038]). The combination utilizes a known groove formation technique to form the grooves. Ban et al. also recognizes the entry holes serve to improve the durability of the mill, which will lower manufacturing costs. The proposed modification has a reasonable expectation of success. Wallans et al. contemplates both face inserts and faces integrally formed with the body, and provides several embodiments of the insert construction. This suggests Wallans et al. is not limited in the formation of the golf club face or its grooves and inserts.
Response to Arguments
7. Applicant's arguments filed 9/9/25 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Knight et al. (US Pub. No. 2014/0274451).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711