DETAILED ACTION
Priority
Claim 1 of the current application receives a priority date of 3/7/22 based on the filing of parent application 17/688,3267 (emphasis added). This is the first time that Figs. 45-54 are introduced which show the claimed subject matter of claim 1. That is, Figs. 45-54 show both the first lower cavity and a second upper cavity separated by a rib; the rib connected to a transitional region having a variable thickness.
35 USC § 112
The Examiner construes the term "about" with the claims to mean the claimed value within the "errors necessarily resulting from the standard deviation found in their respective testing measurements"; consistent with applicant's spec, pars. [00216]-[00217].
Claim Rejections - 35 USC § 112
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 1-6, 9, and 10 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. Claim 1 now claims “various thicknesses” in line 17. The term “various” as defined by merriam-webster.com means “of an indefinite number greater than one” (emphasis added). Based on the plain definition alone, the word can be construed as “indefinite” under 112(b). For purposes of the examination on the merits, the Examiner construes “various” as “more than one”.
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 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.
Claims 1-3, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tassistro et al. (herein “Tassistro”; US Pub. No. 2019/0118049 A1) in view of Stites et al. (herein “Stites”; US Pub. No. 2010/0273565 A1).
Regarding claim 1, Tassistro discloses a golf club head (Fig. 26, reproduced below) comprising: a body portion (Fig. 26; noting the main head); a first cavity defined within the body portion located in a lower portion of the golf club head (Fig. 26, lower item 2616); and a second cavity defined within the body portion located in an upper portion of the golf club head (Fig. 26, upper item 2616); and a striking face insert adapted to cover the first cavity and the second cavity (Fig. 26, item 2618), and wherein the first cavity and the second cavity are separated by a rib (Fig. 26, noting the portion between upper item 2616 and lower item 2616 can be considered a “rib”, see annotated Fig. 26 below); wherein the striking face insert further comprises: a first portion, having a first face thickness measured perpendicular to the face plane (Fig. 26 below, as annotated, noting a face thickness would be inherent and/or obvious), engaged with the first cavity (Fig. 26 below; noting this would be obvious when the face is attached to the body portion); a second portion, having a second face thickness measured perpendicular to the face plane (Fig. 26 below, as annotated, noting a face thickness would be inherent and/or obvious), engaged with the second cavity (Fig. 26 below; noting this would be obvious when the face is attached to the body portion); and a transition portion (Fig. 26 below; noting the “transition portion” corresponds to the “rib” on the main body), having a thickness measured perpendicular to the face plane (Fig. 26 below; noting some thickness is inherent and/or obvious), separating the first portion and the second portion (Fig. 26 below), wherein the rib engages the transition portion at a thickness of the transition portion (Fib. 26 below; noting obvious once the face is assembled to the body portion). It is noted that Tassistro does not specifically disclose a face insert with a transition portion having a variable thickness, wherein the rib engages the transition portion at various thicknesses of the transition portion. However, Stites discloses a face insert (par. [0059]) with a transition portion having a variable thickness (Fig. 5B below; noting the face thickness varies within the “transition portion”; the transition portion “transitioning” between the first portion and the second portion), wherein the rib engages the transition portion at various thicknesses of the transition portion (Fig. 5B below; noting “various” is defined as “an indefinite number greater than one”, and the rib engages two different thicknesses which meets the claimed limitation of “greater than one”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Tassistro to use a transition portion having a variable thickness, wherein the rib engages the transition portion at various thicknesses of the transition portion as taught and suggested by Stites because doing so would be combining prior art elements (an golf club with a rib in contact with a transition portion of a face and a golf club with a rib in contact with a variable thickness of a transition portion of a face) according to known methods (using the rib in contact with a variable thickness of a transition portion of a face in the former club) to yield predictable results (the continued ability to use a rib in contact with a transition portion of a face, the rib in contact with a variable thickness in the transition portion to provide a mechanical joining and location matching of the rib to the face - see Stites: par. [0061] and [0064]).
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Regarding claim 2, the combined Tassistro and Stites disclose further comprising a rod extending from within the second cavity toward the striking face insert, wherein the rod has a rod diameter (Tassistro: Fig. 30, item 3042 and Fig. 16, item 1630). The Examiner notes that Fig. 16 is a different embodiment than Fig. 26, however a POSA would understand that rods could be used within the second cavity in order to “further provide structural support to the striking face” (see Tassistro: par. [0111]).
Regarding claim 3, it is noted that the combined Tassistro and Stites do not specifically disclose that the striking face insert includes a holes located proximate to the rod, wherein the hole has a hole diameter. However, Tassistro discloses rods that extend toward the front striking face insert (Figs. 16, items 1630 and 17, items 1730). In addition, in a different embodiment, Tassistro discloses that the rear face surface includes a holes located proximate to the rod, wherein the hole has a hole diameter (par. [0133] and Fig. 29, item 2942; noting a hole diameter would be inherent). The Examiner also notes that Stites makes obvious using a hole in the front face insert (pars. [0059]-[0060]) of the club head to accommodate what can be considered as a rod (Figs. 4A-4C). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Tassistro and Stites to make the striking face insert include a holes located proximate to the rod, wherein the hole has a hole diameter as taught and suggested by Tassistro and Stites because doing so would be use of a known technique (using holes in a surface, the holes used to weld the surface to an underlying post/rod structure) to improve a similar product (a golf club with a striking face and rods that extend to it) in the same way (using holes in the striking face to weld to underlying supports in the form of a rod/post, the welding of the holes to the underlying support "creating even more structural rigidity between all the components" - see Tassistro: par. [0133]).
Regarding claim 9, the combined Tassistro and Stites disclose that the first face thickness is between about 1.0 mm and about 5.0 mm, and wherein the second face thickness is between about 1.0 mm and about 3.0 mm (Stites: par. [0039]; noting “2.5 mm or less” makes obvious the claimed range for both the first and second portions).
Regarding claim 10, the combined Tassistro and Stites disclose that the first cavity has a first cavity thickness measure perpendicular to a face plane of the striking insert, wherein the second cavity has a second cavity thickness measure perpendicular to the face plane (Tassistro: Fig. 26; noting a thickness is inherent and/or obvious). It is noted that the combined Tassistro and Stites do not specifically disclose wherein the first cavity thickness is between about 2.0 mm and about 14.0 mm, and wherein the second cavity thickness is between about 0.5 mm and about 2.5 mm. However, Tassistro discloses that both the first cavity and the second cavity would inherently have some thickness (Fig. 26). In addition, 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). Furthermore, to support the Examiner’s assertion that the cavity thickness or depth is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Tassistro which states that cavity depth is a result-effective variable used to optimize the “mass properties” of the club head (par. [0150]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact depth of each cavity could be found through routine experimentation in order to optimize the “mass properties” of the club head.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tassistro et al. (herein “Tassistro”; US Pub. No. 2019/0118049 A1) in view Stites et al. (herein “Stites”; US Pub. No. 2010/0273565 A1) and in further view of Aramaki (US Pub. No. 2021/0086039 A1).
Regarding claim 4, it is noted that the combined Tassistro and Stites do not specifically disclose that the rod diameter is greater than the hole diameter. However, Tassistro makes obvious the use of holes located proximate to the rod (par. [0133] and Fig. 29, item 2942; see claim 3 rejection above). In addition, Stites makes obvious holes in the front face that can accommodate what can be considered as protruding rods (Figs. 4A-4C) and the ability to weld those rods (par. [0061]). Furthermore, Aramaki discloses rods that are the larger than the holes in order to weld a part to the rods (Fig. 7 and 4 and par. [0127], item 30 being the “rod”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Tassistro and Stites to make the rod diameter greater the hold diameter as taught by Aramaki because doing so would be combining prior art elements (a face insert that can be welded using holes to underlying rods, and a weight insert that can be welded using holes to underlying rods) according to known methods (utilizing the welding techniques in Aramaki) to yield predictable results (the continued ability to use holes to weld a part to underlying rods, the part being a face insert and the rods having a diameter larger than the holes).
Regarding claim 5, the combined Tassistro, Stites, and Aramaki disclose that the rod diameter is between about 10% and about 100% greater than the hole diameter (Aramaki: Fig. 8; noting this is obvious as it is at least about 20-30% greater; the rod diameter defined by outer diameter 30, the hole diameter being the solid second inner line for item 22; emphasis added).
Regarding claim 6, the combined Tassistro, Stites, and Aramaki disclose that the striking face insert is welded through the hole to the rod to define a rosette weld (Aramaki: pars. [0127], [0131]-[0132], and Fig. 10, item B; noting this is obvious as a rosette weld, aka a plug weld, is simply a weld that fills a circular hole, and it is specifically disclosed by Aramaki).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,918,867 B2 in view of Stites et al. (herein “Stites”; US Pub. No. 2010/0273565 A1). Claim 1 of the current application claims:
(Currently Amended) A golf club head comprising:
a body portion;
a first cavity defined within said body portion located in a lower portion of said golf club
head;
a second cavity defined within said body portion located in an upper portion of said golf
club head; and
a striking face insert adapted to cover said first cavity and said second cavity,
wherein said first cavity and said second cavity are separated by a rib,
wherein said striking face insert further comprises:
a first portion, having a first face thickness measured perpendicular to said face
plane, engaged with said first cavity;
a second portion, having a second face thickness measured perpendicular to said face
plane, engaged with said second cavity; and
a transition portion, having a variable thickness measured perpendicular to said face
plane, separating said first portion and said second portion,
wherein said rib engages said transition portion at various thicknesses of said transition
portion.
Claim 1 of the ‘867 patent claims:
1. A golf club head comprising: a forged body portion; a first cavity, having a first cavity thickness measured perpendicular to a face plane of a striking face insert, defined within a blade portion of said body portion; a second cavity, having a second cavity thickness measured perpendicular to said face plane of said striking face insert, defined within a muscle portion of said body portion; a rib at least partially separating said first cavity and said second cavity; and said striking face insert further comprising: a first portion, having a first face thickness measured perpendicular to said face plane of said striking face insert, engaged with said first cavity; a second portion, having a second face thickness measured perpendicular to said face plane of said striking face insert, engaged with said second cavity; and a transition portion, having a variable thickness measured perpendicular to said face plane of said striking face insert, separating said first portion and said second portion, wherein said second face thickness is greater than said first face thickness, wherein a ratio of said first face thickness to said first cavity thickness is between about 0.2 and about 4.0, wherein a ratio of said second face thickness to said second cavity thickness is between about 0.1 and about 0.8, wherein said golf club head further comprises a rod extending from within said first cavity toward a front of said golf club head, wherein said striking face insert includes a hole located proximate to said rod, wherein said rod has a rod diameter, wherein said hole has a hole diameter, wherein said rod diameter is between about 10% and about 100% greater than said hole diameter, and wherein said striking face insert is welded to said body portion around a perimeter of said striking face insert and welded through said hole to said rod to define a rosette weld.
As can be seen, the current claim 1 is much broader in scope and claim 1 of the ‘867 makes obvious the majority of the claim. In addition, as recited in the 103 rejection above, Stites makes obvious the use of a face insert with a transition region having a variable thickness and a rib engaging the variable thickness of the transition region.
Response to Arguments
Applicant's arguments filed 5/22/26 have been fully considered but they are not generally persuasive.
112(a)
The previous 112(a) has been removed based on the amendment.
103
The Matsunaga reference is removed because it is no longer needed based on the amendment. Stites has been added based on the amendment.
Double Patenting
The double patenting rejection remains based on the inclusion of Stites.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on (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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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
8/10/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
Prosecution Insights