DETAILED ACTION
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 1-9 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. Claim 1 now claims “a fastener to exclusively secure the removable weight in the installed position” (emphasis added). The Examiner does not believe that “exclusively” has support and considers it new matter. Restated, it is both the weight recess and the fastener that act in concert to “secure the removable weight in the installed position” (emphasis added). By way of amendment and the use of “exclusively”, applicant is claiming that only the fastener secures the weight. This is not true. Assuming arguendo that this rejection is reached in error, the Examiner gives a specification objection because the language “exclusively” is not present in the original specification. As well as amending the specification, applicant should also go on record as to why this limitation has support and why the Examiner has reached this 112(a) rejection in error.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Petersen et al. (herein “Petersen”; US Pat. No. 9,545,548 B2) in view of Gorman (US Pat. No. 3,606,327).
Regarding claim 1, Petersen discloses a golf club head (Fig. 1), comprising: a striking face portion (Fig. 5; noting this is obvious); a back portion comprise (Fig. 3, proximate item 113); an upper blade portion (Fig. 4; noting in side profile that this upper portion may be considered a “blade”); a gutter extending downward from the upper blade portion (Fig. 3, proximate item 12); and a lower muscle portion extending downward from the gutter (Fig. 4, proximate item 121; showing in side profile that this lower portion may be considered a “muscle portion”; i.e. a solid, non-cavity back, structure), wherein the lower muscle portion comprises: a back flange (Fig. 4, proximate item 121 up to approximately item 335), wherein the back flange comprises a weight recess (Fig. 4, item 331/332); wherein the weight recess is asymmetric along a heel-to-toe direction (Fig. 4; noting asymmetric because the recess is not mirror symmetric about a plane extending along the heel-to-toe direction, see Fig. 4 below), and a sole extending backward from a lower portion of the striking face portion to the back flange (Fig. 4, proximate item 120 at the bottom), wherein the sole comprises a toeward sole portion (Fig. 1; noting this is obvious), wherein an asymmetric removable weight to fit into the weight recess (Fig. 6 and col. 19, lines 55-59), comprising: a body portion covered by the sole in an installed position (Fig. 9; proximate item 651 being the body), wherein the body portion fits into a portion of the weight recess (Fig. 9); wherein the asymmetric removable weight is asymmetric along a heel-to-toe direction (Fig. 6; noting it fits in the recess, which is asymmetric, so it is also asymmetric; see also Fig. 8, showing the weight in the top view and clearly showing the asymmetry along a heel-to-toe direction) and a cover portion to cover the weight recess in the installed position (Fig. 6, proximate item 668). It is noted that Greer does not specifically disclose a toeward sole portion consists of a fastener through hole accessible to the weight recess, and a fastener to exclusively secure the removable weight in the installed position, and wherein a portion of the fastener engages a toeward portion of the body portion in the installed position. However, Petersen specifically envisions that the weight may be removable and secured in the port by a fastener (col. 19, lines 43-59). In addition, Gorman discloses an iron wherein a toeward sole portion consists of a fastener through hole accessible to the weight recess (Figs. 2 and 6), and a fastener to exclusively secure the removable weight in the installed position (Figs. 2 and 6), and wherein a portion of the fastener engages a toeward portion of the body portion in the installed position (Figs. 2 and 6). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Petersen to make a toeward sole portion consist of a fastener through hole accessible to the weight recess, and a fastener to exclusively secure the removable weight in the installed position, and wherein a portion of the fastener engages a toeward portion of the body portion in the installed position as taught and suggested by Gorman because doing so would be use of a known technique (using a fastener on the toe side of an iron head) to improve a similar product (a golf club iron with a rear weight/cover) in the same way (using a fastener on the toe side of an iron head, the fastener used to releasably secure the weight/cover in position on the iron).
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Regarding claim 2, the combined Petersen and Gorman disclose that the removable weight comprises a metal (Petersen: col. 11, lines 18-21).
Regarding claim 3, the combined Greer and Gorman disclose that the metal comprises one of tungsten, steel, titanium, aluminum, scandium, zinc, nickel, copper, and iron (Petersen: col. 11, lines 18-21, listing aluminum, steel, and tungsten).
Regarding claim 4, the combined Petersen and Jorgensen disclose that a width of the removable weight, defined as a distance along a heel-to-toe direction, is more than about 80% of a width of the back flange, defined as a distance along the heel-to-toe direction (Petersen: Fig. 3 above; noting this is obvious to a POSA based on the relative dimensions of the drawings; see MPEP 2125; emphasis added; the Examiner construing width to run in the heel-to-toe direction). In the alternative, regarding the relative width of the weight as compared to the flange, it has been held that if a change in the relative dimensions over the prior does not make the claimed invention perform differently, the claimed device is not patentably distinct from the prior art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)(see applicant’s spec, par. [0018]; applicant giving no criticality to the exact percentage). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact relative percentage of the width of the weight to the flange would not make the invention perform differently: that is, the weight would still allow for a change in weight distribution within the flange recess regardless of its exact comparable width. Finally, in a second alternative, the Examiner notes that a POSA would understand that the exact width of the weight as compared to the width of the flange would change not only the overall weight of the club head, but the mass distribution of the club head (see Petersen: col. 11, lines 22-39). As such, a POSA would understand that this relative percentage of the width of flange as compared to the width of the weight could be optimized to achieve not only the desired overall weight of the head, but also the relative mass distribution within the head and desired cg location.
Regarding claim 5, the combined Petersen and Gorman disclose that a width of the body portion, defined as a distance along a heel-to-toe direction, is less than a width of the cover portion, defined as a distance along a heel-to-toe direction (Petersen: Fig. 7, item 668 being the cover and item 655 being the body).
Regarding claim 6, it is noted that the combined Petersen and Gorman do not specifically disclose that a width of the body portion, defined as a distance along a heel-to-toe direction, is about 25% of a width of the cover portion, defined as a distance along the heel-to-toe direction. However, Petersen discloses a body portion that is clearly some percentage less than the width of the cover portion in the heel-to-toe direction (Fig. 7). Furthermore, regarding making the width of the body portion 25% of the cover portion, it has been held that if a change in the relative dimensions over the prior does not make the claimed invention perform differently, the claimed device is not patentably distinct from the prior art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)(see applicant’s spec, par. [0049]; applicant giving no criticality to the exact percentage). As such, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact relative percentage of the width of the body portion as compared to the cover portion would not make the invention perform differently: that is, the cover would still enclose the weight regardless of its exact relative width. Finally, in a second alternative, the Examiner notes that a POSA would understand that the exact width of the cover as compared to the width of the body portion would change not only the overall weight of the club head, but the mass distribution of the club head (see Petersen: col. 11, lines 22-39). As such, a POSA would understand that this relative percentage of the cover width as compared to the body width could be optimized to achieve not only the desired overall weight of the head, but also the relative mass distribution within the head and desired cg location.
Regarding claim 7, the combined Petersen and Gorman disclose that a height of the body portion, defined as a distance along a bottom-to-top direction, is larger than a height of the cover portion, defined as a distance along the bottom-to-top direction (Petersen: Fig. 7, item 655 being the body, and item 665/668 being the cover; clearly showing this relative distance).
Regarding claim 8, the Petersen and Gorman disclose that a depth of the body portion, defined as a distance along a back-to-front direction, is less than a depth of the cover portion, defined as a distance along the back-to-front portion (Petersen: Fig. 9; noting the depth at roughly item 340 is greater for the cover than the body; the Examiner taking the broadest reasonable interpretation of the language; also noting this limitation does not require the weight to actually be installed in the recess, but the Examiner assumes that it is).
Regarding claim 9, the combined Petersen and Gorman disclose that the fastener comprises a fastener axis running along a heel-to-toe direction (Gorman: Figs. 2 and 6).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 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.
112(b) Rejection
Applicant has gone on record that par. [0061] defines the metes and bounds of the word “about”. The Examiner does not necessarily agree. Nonetheless, applicant has gone on record that they interpret “about” to mean that “each numerical parameter should at least be construed in light of the number of reported significant digits and by applying ordinary rounding techniques” (see Remarks, page 7). As such, the previous 112(b) rejection is removed.
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, Nicholas Weiss can be reached on (571)270-1775. 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
7/13/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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