DETAILED ACTION
Priority
For purposes of prosecution, the Examiner reluctantly gives applicant 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 apparently 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. However, the first lower cavity being “entirely hollow” is never used in the discussion of the embodiment as shown in Figs. 45-54 and it is completely unclear if this is actually shown in Figs. 45-54 (see 112(a) below).
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 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.
Claims 1-10 are 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. The discussion of Figs. 45-54 never mentions the first lower cavity being “entirely hollow” and thus fails the written description requirement. Applicant appears to take support for this limitation from a separate and distinct embodiment in the form of Figs. 15-17 and its corresponding discussion. However, Figs. 15-17 and Figs. 45-54 are two distinct and separate embodiments and there is no teaching within the written description that these two embodiments can be combined. Should the Examiner have reached this rejection in error, then the phrase “entirely hollow” must at least be added to the written description describing Figs. 45-54.
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, 7, 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 Matsunaga et al. (herein “Matsunaga”; US Pub. No. 2007/0129168 A1).
Regarding claim 1, Tassistro discloses a golf club head (Fig. 26) 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”). It is noted that Tassistro does not specifically disclose that the first cavity is entirely hollow. However, Tassistro discloses the use of a weight within the lower cavity (Fig. 26). In addition, Matsuanga discloses a similar type of iron wherein cavity may be completely empty or hollow to reduce club head weight or filled with weight in order to change the center of gravity (Fig. 3 and par. [0022]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the Tassistro to make the first cavity entirely hollow as taught by Matsunaga because doing so would be combining prior art elements (a golf club with cavities behind a face, the cavity having a weight insert and a golf club with cavities behind the face, the cavity being hollow) according to known methods (leaving the cavity hollow) to obtain predictable results (a golf club with cavities behind the face, a lower cavity left hollow to decrease the weight of the golf club – see Matsunaga: par. [0022]).
Regarding claim 2, the combined Tassistro and Matsunaga 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 Matsuanga 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). 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 Matsunaga 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 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 7, the combined Tassistro and Matsuanga disclose that the striking face insert further comprises: a first portion, having a first face thickness measured perpendicular to the face plane, engaged with the first cavity; and a second portion, having a second face thickness measured perpendicular to the face plane, engaged with the second cavity (Tassistro: Fig. 26; noting a face thickness would be inherent).
Regarding claim 10, the combined Tassistro and Matsuanga 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). It is noted that the combined Tassistro and Matsuanga 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). In addition, 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 of Matsunaga et al. (herein “Matsunaga”; US Pub. No. 2007/0129168 A1) and in further view of Aramaki (US Pub. No. 2021/0086039 A1).
Regarding claim 4, it is noted that the combined Tassistro and Matsuanga 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, 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 Matsunaga 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 Kim) 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, Matsuanga, and Kim disclose that the rod diameter is between about 10% and about 100% greater than the hole diameter (Kim: 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, Matsuanga, and Kim disclose that the striking face insert is welded through the hole to the rod to define a rosette weld (Kim: 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 Kim).
Claims 8 and 9 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 Matsunaga et al. (herein “Matsunaga”; US Pub. No. 2007/0129168 A1) and in further view of Imamoto (US Pub No. 2005/0192116 A1)
Regarding claim 8, it is noted that the combined Tassistro and Matsuanga do not specifically disclose that the striking face insert further comprises a transition portion, having a variable thickness measured perpendicular to the face plane of the striking face insert, separating the first portion and the second portion, and wherein the rib engages the transition portion. However, Tassistro does disclose the use of what appears to be a constant face thickness (Fig. 40, item 4018). In addition, Imamoto discloses a golf club having a striking face insert with a transition portion, having a variable thickness measured perpendicular to the face plane of the striking face insert, separating the first portion and the second portion, wherein the rib engage the transition portion (Fig. 1B, reproduced below). 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 Matsuanga to use a transition portion, having a variable thickness, separating the first portion and the second portion, and wherein the rib engages the transition portion as taught by Imamoto because doing so would be combining prior art elements (an iron club with a rib having an upper and lower cavity and an iron club with a variable face thickness, the variable face thickness in contact with a rear support rib) according to known methods (using the variable face as supported by the rear rib) to yield predictable results (the continued ability to use a face insert in contact with a rear rib, the face insert being variable in thickness and the variable portion in contact with a rear rib).
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Regarding claim 9, it is noted that the combined the combined Tassistro and Matsunaga do not specifically 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. However, Imamoto discloses a similar iron club wherein 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 (par. [0041]; the disclosed range of 1.5 to 3.5 making obvious the claimed range). 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 Matsuanga to use the above claimed face thicknesses as taught by Imamoto because doing so would be combining prior art elements (an iron club with a rib having an upper and lower cavity and an iron club with a variable face thickness, the variable face thickness having a specific range of thicknesses) according to known methods (using the variable face as supported by the rear rib and the corresponding thicknesses) to yield predictable results (the continued ability to use a face insert in contact with a rear rib, the face insert being variable in thickness and the variable portion in contact with a rear rib with explicitly disclosed thicknesses).
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. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the current application anticipates claim 1 of the ‘867 patent and is broader in scope.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10 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
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 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
2/23/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711