DETAILED ACTION
Election/Restrictions
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/25. The claims are considered withdrawn “without traverse” because applicant did not “distinctly and specifically point out supposed errors in the election of species requirement”; as is required.
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.
Claim 4 is 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 4 compares the “width” of the weight to the “width” of the flange. However, the direction of the “width” (i.e. the direction in which it is measured) is never properly defined within the claim. As such, the claim is indefinite. Furthermore, claim 4 uses the term “about” in line 2 which is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention (see applicant’s spec, par. [0061]; never definitively stating what “about” means).
Claim 5 is 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 5 compares the “width” of the body portion to the “width” of the cover portion. However, the direction of the “width” (i.e. the direction in which it is measured) is never properly defined within the claim. As such, the claim is indefinite.
Claims 6 and 8 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 6 compares the “width” of the body portion to the “width” of the cover portion. However, the direction of the “width” (i.e. the direction in which it is measured) is never properly defined within the claim. As such, the claim is indefinite. Furthermore, claim 6 uses the term “about” in line 1 which is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention (see applicant’s spec, par. [0061]; never definitively stating what “about” means).
Claim 7 is 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 7 compares the “height” of the body portion to the “height” of the cover portion. However, the direction of the “height” (i.e. the direction in which it is measured) is never properly defined within the claim. As such, the claim is indefinite.
Claim 8 is 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 8 compares the “depth” of the body portion to the “depth” of the cover portion. However, the direction of the “depth” (i.e. the direction in which it is measured) is never properly defined within the claim. As such, the claim is indefinite.
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 1-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Greer (US Pub. No. 2016/0193511 A1) in view of Jorgensen et al. (herein “Jorgensen”; US Pat. No. 8,491,405 B2).
Regarding claim 1, Greer discloses a golf club head (Fig. 11 below), comprising: a striking face portion (Fig. 10); a back portion comprise (Fig. 11 below); an upper blade portion (see Fig. 11 below, and see Fig. 10 showing in side profile that this upper portion may be considered a “blade”); a gutter extending downward from the upper blade portion (Fig. 11 below); and a lower muscle portion extending downward from the gutter (Fig. 11 below; see Fig. 10 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. 11 below), wherein the back flange comprises a weight recess (Fig. 11, where item 924 is located, as clearly seen in Fig. 2, proximate item 224, and described in par. [0086]); and a sole extending backward from a lower portion of the striking face portion to the back flange (Fig. 11 below), wherein the sole comprises a toeward sole portion (Fig. 11 below), wherein the a removable weight to fit into the weight recess (par. [0086]), comprising: a body portion covered by the sole in an installed position (Fig. 11 and par. [0086]; noting this is obvious as only the top/cover of the weight is visible), wherein the body portion fits into a portion of the weight recess (par. [0086]); and a cover portion to cover the weight recess in the installed position (Fig. 11, item 924 being the cover). It is noted that Greer does not specifically disclose a toeward sole portion comprises a fastener through hole accessible to the weight recess, and a fastener to 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, Jorgensen discloses the use of a similar iron with a similar rear weight wherein a toeward sole portion comprises a fastener through hole accessible to the weight recess (Fig. 136), and a fastener to 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 (Fig. 11 and col. 6, lines 30-36). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Greer to make a toeward sole portion comprises a fastener through hole accessible to the weight recess, and a fastener to 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 Jorgensen 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 Greer and Jorgensen disclose that the removable weight comprises a metal (Greer: par. [0086]; noting Greer specifically refers to it as a “custom tuning port weight”, and par. [0059] making obvious that other “metals” may be used on the golf club as specifically “attachments”, which par. [0086] makes obvious that the CTP weight is and used to affect “weight and mass distribution”; so the use of these listed metals as the attachment “weight” for the CTP is obvious).
Regarding claim 3, the combined Greer and Jorgensen disclose that the metal comprises one of tungsten, steel, titanium, aluminum, scandium, zinc, nickel, copper, and iron (Greer: par. [0059] see also rationale above for claim 2 rejection; specifically listing attachment materials in the form of “aluminum, stainless steel, carbon steel, titanium, magnesium, lead, tungsten, gold, and silver”; emphasis added).
Regarding claim 4, the combined Greer and Jorgensen disclose that a width of the removable weight is more than about 80% of a width of the back flange (Greer: Fig. 11 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 Greer: par. [0058]). 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 9, the combined Greer and Jorgensen disclose that the fastener comprises a fastener axis running along a heel-to-toe direction (Jorgensen: Fig. 11 and col. 6, lines 30-36).
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Greer (US Pub. No. 2016/0193511 A1) in view of Jorgensen et al. (herein “Jorgensen”; US Pat. No. 8,491,405 B2) and in further view of Shimazaki (US Pub. No. 2011/0021285 A1).
Regarding claim 5, it is noted that the combined Greer and Jorgensen do not specifically disclose that a width of the body portion is less than a width of the cover portion. However, Greer would have some inherent cover width as compared to body portion width (see Fig. 2 vs. Fig. 11, item 924 and par. [0086]). In addition, Shimazaki discloses a similar rear cavity insert wherein a width of the body portion is less than a width of the cover portion (Fig. 14 below). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Greer and Jorgensen to make the width of the body portion less than a width of the cover portion as taught by Shimazaki because doing so would be combining prior art elements (a rear weight element with a cover and a rear element having a cover wider than the body portion) according to known methods (using the relative width of the cover as compared to the body portion) to yield predictable results (the continued ability to have a rear weighting element with a cover and a body portion, the cover having a width greater than the body portion).
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Regarding claim 6, it is noted that the combined Greer and Jorgensen do not specifically disclose that a width of the body portion is about 25% of a width of the cover portion. However, Greer would have some inherent cover width as compared to body portion width (see Fig. 2 vs. Fig. 11, item 924 and par. [0086]). In addition, Shimazaki discloses a similar rear cavity insert wherein a width of the body portion is some percentage of the width of the cover portion (Fig. 14 above). 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). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Greer and Jorgensen to make the width of the body portion less than a width of the cover portion as taught by Shimazaki because doing so would be combining prior art elements (a rear weight element with a cover and a rear element having a cover wider than the body portion) according to known methods (using the relative width of the cover as compared to the body portion) to yield predictable results (the continued ability to have a rear weighting element with a cover and a body portion, the cover having a width greater than the body portion). In addition, 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 Greer: par. [0058], see also specifically Shimazaki: Fig. 11 vs. 14 vs. Fig. 17; clearly showing different cover widths as compared to the body width). 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, it is noted that the combined Greer and Jorgensen do not specifically disclose that a height of the body portion is greater than a height of the cover portion. However, Greer would have some inherent cover height as compared to body portion height (see Fig. 2 vs. Fig. 11, item 924 and par. [0086]). In addition, Shimazaki discloses a similar rear cavity insert wherein a height of the body portion is greater than a height of the cover portion (Fig. 14 above). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Greer and Jorgensen to make the height of the body portion greater than a height of the cover portion as taught by Shimazaki because doing so would be combining prior art elements (a rear weight element with a cover and a rear element having a cover height shorter than the body portion) according to known methods (using the relative height of the cover as compared to the body portion) to yield predictable results (the continued ability to have a rear weighting element with a cover and a body portion, the cover having a height less than the body portion).
Regarding claim 8, the combined Greer, Jorgensen, and Shimazaki disclose that a depth of the body portion is less than a depth of the cover portion (Fig. 14 above).
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, 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
1/27/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711