DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 7/14/26. Claim 15 is cancelled; claims 1, 5, 11-12, 16, 21-24 are amended; claims 1-14 and 16-24 are pending.
Claim Rejections - 35 USC § 103
2. 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
3. Claims 1-6, 9, 12-14 rejected under 35 U.S.C. 103 as being unpatentable over Ban et al. (US Pub. No. 2009/0143166) in view of Cackett et al. (US Pat. No. 8,105,180) and further in view of Oldknow et al (US Pat. No. 7,841,952).
With respect to claims 1-4 and 12-14, Ban teaches a golf club head 1 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 10 that defines a striking face plane and includes a plurality of grooves 20 that extend substantially in a heel to toe direction, each of the grooves comprising: a pair of sidewalls 21 that extends away from the striking face plane, one of the pair of sidewalls having: a first sidewall portion having a first sidewall surface forming a draft angle α with a plane that is orthogonal to the striking face plane, the draft angle α being greater than 0 degrees and less than 35 degrees (paragraph [0026]; i.e. 90 minus theta A); and a loft no less than 25 degrees (paragraph [0022]); and a base surface 22: a first material forming the pair of sidewalls 21, and the base surface 22 (Fig.’s 1-2A).
Ban does not teach a second sidewall portion as claimed. However, analogous art reference Cackett et al. teaches the following to be known in the art: a second sidewall portion having a second sidewall surface that is orthogonal to a striking face plane (Fig. 13). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a second sidewall portion with a surface that is orthogonal to the striking face plane to Ban et al. The rationale to combine is to provide a desired surface contact area between the groove and the ball the promotes spin.
Ban does not expressly teach a resilient member/insert located at least partially in the groove, the resilient member comprising a second material different from the first material; wherein the second material is softer than the first material, wherein the first material is metallic and 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. However, analogous art reference Oldknow teaches these features to be known in the art – Fig’s 3-4, insert 202; column 6, lines 1-33. At time of applicant’s effective filing a person ordinary skill in the art would have found it obvious to add a resilient member into the groove of Ban. The rationale to combine is to improve the feel of the club.
With respect to claims 5-6, Ban teaches wherein the sidewalls substantially mirror each other (Fig. 2A). The combination of Ban and Cackett is considered to teach wherein each of the sidewalls has a second sidewall portion. Should applicant traverse this position, examiner notes a person ordinary skill in the art would find it obvious to provide the second sidewall portion to each sidewall for the same reasons stated above in the combination of Ban and Cackett.
With respect to claim 9, Ban as modified by Cackett 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 Ban as modified by Cackett 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.
4. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ban et al. (US Pub. No. 2009/0143166) in view of Cackett et al. (US Pat. No. 8,105,180) and further in view of Oldknow et al (US Pat. No. 7,841,952) and further in view of Nakamura (US Pub. No. 2010/0113180).
With respect to claim 7, Ban does not expressly teach wherein the width is less than 0.035in. However, analogous art reference Nakamura. expressly teaches the following to be known in the art: a width less than 0.035in (paragraphs [0048], [0063]-[0064]). 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. Cackett further teaches wherein the grooves has a depth from the striking face plane to the resilient member less than 0.020in. (Fig. 3A showing a portion of the resilient member being positioned at the striking face plane). The rationale to combine is the same as stated above.
5. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ban et al. (US Pub. No. 2009/0143166) in view of Cackett et al. (US Pat. No. 8,105,180) and further in view of Oldknow et al (US Pat. No. 7,841,952) and further in view of Ban et al. (US Pub. No. 2013/0109498)(“Ban 2013”).
With respect to claim 8, Ban et al. fails to teach wherein each of the grooves includes an entry hole. However, analogous art reference Ban 2013 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 2013 into the iron golf club of Ban et al. The motivation to combine is to facilitate easy forming of the groove cross-sectional shape, including the cut out portions. Ban 2013 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 2013 also recognizes the entry holes serve to improve the durability of the mill, which will lower manufacturing costs.
6. Claims 1-6, 9, 11-14, 16, 19 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ban et al. (US Pub. No. 2009/0143166) in view of Wallans et al. (US Pat. No. 7,794,333) and further in view of Oldknow et al (US Pat. No. 7,841,952).
With respect to claims 1-4, 12-14, Ban teaches a golf club head 1 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 10 that defines a striking face plane and includes a plurality of grooves 20 that extend substantially in a heel to toe direction, each of the grooves comprising: a pair of sidewalls 21 that extends away from the striking face plane, one of the pair of sidewalls having: a first sidewall portion having a first sidewall surface forming a draft angle α with a plane that is orthogonal to the striking face plane, the draft angle α being greater than 0 degrees and less than 35 degrees (paragraph [0026]; i.e. 90 minus theta A); and a loft no less than 25 degrees (paragraph [0022]); and a base surface 22: a first material forming the pair of sidewalls 21, and the base surface 22 (Fig.’s 1-2A).
Ban does not expressly teach a second sidewall portion having a second sidewall surface orthogonal to the striking face plane, or a resilient member/insert located at least partially in the groove. However, analogous art reference Wallans et al. teaches that it is known to provide a groove 316a comprising second sidewall orthogonal to the striking face plane with a member/insert 326a located at least partially within the groove – See annotated Fig. 3D. A person ordinary skill in the art would have found it obvious to incorporate the member/insert 326a and corresponding second wall portion into the groove of Ban. The rationale to combine is to provide a desired depth of the groove while also providing vibration absorption at impact. Wallans further teaches wherein the insert can comprise a lightweight material, for example a polymer, or resin, which are generally known to be resilient. Moreover, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) per MPEP 2144.07. Selecting a resilient polymer like nylon or rubber elastomers, or a polyurethan resin would have been obvious in the art to a person ordinary skill in the art. These materials are known to be suitable for mitigating unwanted vibrations in golf clubs. The combination of Ban and Wallan is considered to teach wherein a plurality of final grooves each delimited by the sidewalls and the insert of each of the grooves such that the final groove has a bottom surface formed by the insert.
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Ban does not expressly disclose the material of its groove, the material being softer and contrasting with a resilient member located therein. However, analogous art reference Oldknow teaches these features to be known in the art – Fig’s 3-4, insert 202; column 6, lines 1-33. At time of applicant’s effective filing a person ordinary skill in the art would have found it obvious to provide a hard material for the groove, and softer material for the insert. The rationale to combine is to improve the feel of the club.
With respect to claims 5-6, and 16, Ban teaches wherein the sidewalls substantially mirror each other (Fig. 2A). The combination of Ban and Wallan also teaches wherein each of the sidewalls has a second sidewall portion. The motivation to combine is the same as stated above.
With respect to claims 9 and 19, Ban as modified by 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 Ban as modified by 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.
With respect to claim 11, Wallans, cited above for the resilient member and second sidewall portion, further teaches wherein the resilient member 326a entirely covers the second sidewall portion and base surface (See annotated Fig 3D above). The rationale to combine is the same as stated above.
With respect to claims 21-22, Ban teaches wherein the base surface 22 is substantially parallel to the striking face plane (Fig. 2A).
With respect to claims 23-24, Wallans, cited above for the resilient member and second sidewall portion, further teaches herein: the second sidewall portion is a first second sidewall portion; another of a pair of sidewalls includes a second second sidewall portion; and a base surface connects an end of the first second sidewall portion to an end of the second second sidewall portion (See annotated Fig 3D above). The rationale to combine is the same as stated above.
7. Claims 7, 10, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ban et al. (US Pub. No. 2009/0143166) in view of Wallans et al. (US Pat. No. 7,794,333) and further in view of Oldknow et al (US Pat. No. 7,841,952) and even further in view of Nakamura (US Pub. No. 2010/0113180).
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. The motivation to combine is the same as stated above. Ban as modified by Wallans does not expressly disclose a groove width or effective radius as claimed. 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.
8. Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ban et al. (US Pub. No. 2009/0143166) in view of Wallans et al. (US Pat. No. 7,794,333) and further in view of Oldknow et al (US Pat. No. 7,841,952) and even further in view of Ban et al. (US Pub. No. 2013/0109498)(“Ban 2013”).
With respect to claims 8 and 18, Ban et al. fails to teach wherein each of the grooves includes an entry hole. However, analogous art reference Ban 2013 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 2013 into the iron golf club of Ban et al. The motivation to combine is to facilitate easy forming of the groove cross-sectional shape, including the cut out portions. Ban 2013 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 2013 also recognizes the entry holes serve to improve the durability of the mill, which will lower manufacturing costs.
Response to Arguments
9. 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
10. 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.
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.
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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
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