DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The pre-appeal brief filed 5/1/2026 is being treated as a request for reconsideration of the finality of the 2/4/26 office action and has been found persuasive.
Applicant argues that the final rejection is premature as his amendment only incorporated previously presented dependent claims 2 and 13 into their independent claims.
The USPTO defines a ‘new ground of rejection’ based on whether the applicant has had a fair opportunity to react to the thrust of the rejection. According to MPEP 1207.03:
“A position or rationale that changes the “basic thrust of the rejection” will also give rise to a new ground of rejection. A rejection relying on the same statutory basis and same prior art references, may nevertheless raise a new ground of rejection, when the rejection relies on new facts or rationales not previously raised.”
While the basic thrust of the rejection has not been changed, the references newly with respect to what is known about the variables and the results expected of an adhesive layer used to vary vibrations in bodies are new facts open for disagreement. In In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973) ("[W]e reject the notion that judicial or administrative notice may be taken of the state of the art. The facts constituting the state of the art are normally subject to the possibility of rational disagreement among reasonable men and are not amenable to the taking of such notice."
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 and 3-10 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.
In the previous office action it recites;
“Claim 1 now recites a thickness of adhesive greater than 1mm with no upper range. Yet the specification is not considered enabled for the full range up to an infinite thickness of adhesive. Here there the scope of the claim is not commensurate to the scope of the specification that fails to disclose how such a very thick adhesive would be workable.”
Applicant argues that such was previously recited and set forth at [0065]. More specifically the specification states “at least 1.0mm thick…most preferred…2.0mm thick”. Nothing in the specification supports the unworkable infinite open-ended upper range being recited or how such huge thicknesses would be accomplished. Here the scope of the claim is not commensurate with the scope of the specification.
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 11 and 14-20 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.
Claims 1 and 11 are ambiguous and unclear in that one cannot determine if the recitation of “a face center of said striking face” in the last line is the same as the previously recited “striking face having a geometric center”. Whether such are different elements or the same and the lack of any clear structural relationship between them to distinguish one from the other same renders the scope of the claim unclear.
Applicant merely asserts in his pre-appeal brief that such relationships are clear from the claims without showing how the rejection is in error.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3, 5-11, 14-17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roach in view of The Journal of the Acoustical Society of America (JASA) and further in view of National Library of Medicine (NLM), Experimental Study on the Effectiveness of Polyurethane Flexible Adhesive in Reduction of Structural Vibrations.
As set forth in the previous office action with respect to claims 1, 10, and 11;
“Roach shows a golf club head considered to clearly anticipate the common recited structures found in a club head with a first spring mass 222a and second spring mass 222c located toeward and heelward of said face center of said striking face.”
“As to claims 2 and 12, the use of adhesive for his dampening elements is shown at col. 16, ln. 16 and col. 22, In. 58.
. As to claims 2, 5-9 and 13-16 with respect to the selections of size, thickness and location of the dampening elements, while Roach does not discuss such variables thickness of his elements, such changes in size and arrangement of elements have been found obvious. To have made the elements greater than 1mm would have been obvious in order to optimize their size for the amount of vibration dampening desired by the design of the club. 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). Under KSR International Co. v. Teleflex Inc. the Supreme Court case highlighted that a combination of known elements where the primary difference is a predictable rearrangement would have been obvious. Similarly, the selection of the amount of discretionary mass to determine the moments and location of the center of gravity in a club is fairly well understood in the art. See also See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art’). Here applicant has not disclosed where such selected size, thickness and locations are critical or any part of any discovery.
The use of silicone as called for by claims 3 and 17 is considered shown at col. 3, ln. 24.
As to claims 4 and 18, while the use of an aluminum material is not discussed for his dampening weights, the selection of a known material to take advantage of its known properties has been found obvious. 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)To have used aluminum in Roach would have been obvious to have selected a heavier more ridged material as desired by the design of the club head vibrations.
As to claim 19, Roach teaches that the size and position of the dampening member will affect the vibrations of the striking face base on the size and position of the area covered by it. To have adjusted the size of each element in order to obtain the desired amounts of vibration would have been obvious in order to optimize them for the desired design of the club head.
Claim 1 has been amended to recite the first and second mass each have, “a thickness greater than 1 mm measured in a direction orthogonal to said striking face".
Claim 11 has been amended to recite, “said geometric center of said first spring mass damping element is located at least 5 mm toeward of a face center of said striking face, wherein said geometric center of said second spring mass damping element is located at least 5 mm heelward of said face center of said striking face, and wherein said first adhesive element and said second adhesive element each have a thickness of about 2 mm measured in a direction orthogonal to said striking face".
Applicant argues that Roach teaches constrained layer damping which is a different mechanism than the spring mass damping claimed by Applicant as it lacks an adhesive thickness greater than 1 mm. He argues that 1 mm is critical in Applicant's invention for allowing the mass element to move relative to the striking face to achieve a sufficient spring effect for damping vibrations.
In consideration of the art, it is clear that applicant’s invention is the application of constrained dampening layer [0004] to a golf club head in order to obtain desired sound and vibrational dampening. In the art, the general concept of a constrained dampening layer being a viscoelastic material between two elements for the purposes of reducing vibrations is known. Applicant appears to apply this known principle by applying self-adhesive elements or weights and specifying that the adhesive layer is greater than 1mm. In this context, applicant’s adhesive layer is acting as the constrained dampening layer between the rear of the club face and attached element. The newly applied prior art shows that applicant is not the inventor of using adhesive layers as a viscoelastic constrained layer to manage vibrations. In the broader teachings in the are, Vibration dampening glues and adhesive appear to be well known. Turning to the applied art, The Journal of the Acoustical Society of America states,
“It is well known that the attachment of a stiff elastic (con- straining) layer to a beam by using a viscoelastic damping adhesive can be a highly weight efficient means of reducing the beam's resonant response if this damping treatment is carefully designed. Though the prediction of the damping effectiveness of constrained layer damping treatments has been well understood for over twenty years, their optimum design is often obtained by trial and error. To avoid this, an efficient method is presented for optimizing the adhesive layer's thickness. This is usually the most difficult parameter to optimize and existing design guidelines are not always accurate. It is shown that if the ratio of the "effective" shear stiffness of the adhesive layer to the "effective" extensional stiffness of the metal layers is greater than a factor that depends only on the adhesive's loss tangent, the damping effectiveness will increase monotonically with increasing adhesive layer thickness. If the ratio is less than this factor there will be some optimum value of adhesive layer thickness. The value of this thickness is obtained by a simple numerical procedure.”
Here the thickness of the adhesive layer in a constrained dampening layer is a clear result effective variable to optimize dampening in the system.
While JASA does not appear to give any explicit thickness values, (NLM) similarly teaches using polymer adhesive layers for such a constrained dampening layer and shows a direct relationship between the thickness of the adhesive to the dampening in his fig. 8 of 7mm. At the end of his section 2.1 he teaches other variables of consideration;
“An open issue is the influence of the thickness of the polymer layer and the increase of the additional mass (causing an increase in the large deflection of the cantilever beam, thus generating an increase in shear strain in the polymer in the range of large deformations).”
NLM clearly teaches varying the thickness to optimize the vibrations desired in a device and the other variables one would need to consider to obtain satisfactory results.
To have used an adhesive element having a thickness of 7mm, over that of the claimed 1mm or greater would have been obvious in order to reduce the vibrations on the club head as desired.
As to claim 11, Roach shows placing dampening elements heelward and toeward and to, “only cover specific portions” (col. 23, ln. 31) without prescribing any exact dimensions with respect to their positions. However, to have placed such at least 5 mm heelward and toeward of said face center would have been obvious in order to dampen vibrations in those points of the striking face. "[W]here 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" as set forth above with respect to In re Aller.
As to claims 3 and 17, applicant argues that Roach uses of silicone for the rearward most damping element and not the adhesive element. In contrast, the NLM now applied teaches the use of polyurethane adhesives. As such, these claims fail to distinguish over what is fairly suggested by the applied art.
Claim(s) 4 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roach in view of The Journal of the Acoustical Society of America (JASA) and further in view of National Library of Medicine (NLM), Experimental Study on the Effectiveness of Polyurethane Flexible Adhesive in Reduction of Structural Vibrations and further in view of JBC-Vibration Damping Tapes.
As to claims 4 and 18, Roach shows his damping inserts can be made of metal (col. 2, ln. 13), but does not explicitly appear to discuss aluminum. From JBC, the use of aluminum in constrained dampening elements is considered fairly taught. One of ordinary skill in the art would have considered obvious the selection of a known material such as aluminum in Roach to dampen the vibrations in his club head.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roach in view of The Journal of the Acoustical Society of America (JASA) and further in view of National Library of Medicine (NLM), Experimental Study on the Effectiveness of Polyurethane Flexible Adhesive in Reduction of Structural Vibrations and further in view of Wada et al. 2023/0201678
While Roach does not show a support arm with a dampening element between it in contact with the interior surface of the striking face at a face center, Wada teaches that providing what can be considered an arm of elements 12 and 30x with a dampening element 22 element that supports the face at the point of contact and increases strength. To have combined the abutment arm of Wada with Roach would have been obvious in order to strengthen the center of the club face.
Conclusion
Applicant’s remarks filed 5/1/26 are considered moot as they fail to consider the relevant art applied with respect to using adhesive layers to dampen vibrations in bodies.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Melba Bumgarner at (571)272-4709.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, | hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. | understand that a copy of these communications will be made of record in the application file.”
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).
/WILLIAM M PIERCE/
Primary Examiner, Art Unit 3711
Prosecution Insights