DETAILED ACTION
This Office action is responsive to communication received 08/18/2026 – Request for Continued Examination (RCE) and Amendment.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/18/2026 has been entered.
Status of Claims
Claims 1-4 remain pending.
Response to Arguments
In the arguments received 08/18/2026, the applicant contends that the claimed subject matter is adequately described in the specification throughout paragraphs [00243] – [00248]. The applicant further argues that the plain meaning of the term “target” used in the claims is well understood to mean a desired result or aim and that the plain meaning of the term “alternative” used in the claims is understood to mean a different option. The applicant further contends that amended claim 1 distinguishes over the previously-applied combination of references, as claim 1 now requires that the deforming of the deformable member is accomplished by rotation of the adjustment driver.
IN RESPONSE:
Upon further review of the disclosure, including paragraphs [00243] – [00248] of the specification referenced by the applicant in the arguments, it would appear that the inventor(s), at the time the application was filed, had possession of the claimed invention under the interpretation of 35 U.S.C. §112(a). Thus, the rejection of claims 1-4 under 35 U.S.C. §112(a) has been withdrawn.
However, it is not agreed that the plain meaning of the terms “target” and “alternative” is well known, when considering these terms as part of the method steps. In response to the applicant’s arguments that the term “target”, when referring to a “target coefficient of restitution”, is intended to refer to a desired result or aim, the question simply becomes what exactly is that desired result or aim. “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained. During patent examination, the pending claims must be given the broadest reasonable interpretation consistent with the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969). See also MPEP § 2111 - § 2111.01. When the specification states the meaning that a term in the claim is intended to have, the claim is examined using that meaning, in order to achieve a complete exploration of the applicant’s invention and its relation to the prior art. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).” See MPEP 2173.05(a). In this case, paragraphs [0018], [0020] and [00247] mention a “target coefficient of restitution value”. However, if the “target” coefficient of restitution is meant to be construed to be a desired result or aim, then the interpretation of “target” changes dependent upon who carries out the method steps. Such an interpretation and execution of the method steps equates to confusion in what exactly the scope of the claim is.
Similarly, when the term “alternative” is considered in describing the deformable member, the specification at paragraphs [0020], [00205], [00210], [00216], [00218], [00220], [00223] and [00243] discusses how deformable members may be “alternative” in the sense that the deformable members may exhibit a different shape, a different manner of construction (i.e., integral with or separate from another deformable member), a different stiffness, a different elastic modulus, and a different spacing arrangement with respect to another deformable member. While it is understood that “alternative” can mean a “different option”, as argued by the applicant, the use of the term “alternative” in the method claims certainly presents a broad range of options, when considered in light of the specification. While it is understood that the breadth of a claim does not necessarily equate to indefiniteness of a claim, when the same claim language may be interpreted in a multitude of ways, a question is raised as to what exactly the scope of the claim is. See MPEP 2173.04 and 2173.05(a)(I) and 608.01(o).
Applicant’s arguments, with respect to the rejection of claims 1-3 under 35 U.S.C. §103 as being unpatentable over USPN 5,586,948 to Mick in view of US PUBS 2019/0209904 to Motokawa et al (hereinafter referred to as "Motokawa") and also in view of US PUBS 2012/0289358 to Oldknow et al (hereinafter referred to as "Oldknow") and also in view of US PUBS 2008/0305888 to Tseng have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US PUBS 2019/0201760 to Golden et al as a primary reference. Here, it is noted that the effective filing date of the instant claims 1-4 is the filing date of the parent application 17/138,618, filed 12/30/2020. The newly-applied reference to Golden et al includes a publication date of 07/04/2019 and qualifies as prior art under 35 U.S.C. §103. The previously-applied references to Motokawa and Oldknow, used in the previous rejection of claims 1-3, as well as the reference to US PUBS 2009/0163295 to Tseng, used in the previous rejection of claim 4, are being relied upon for substantially the same teachings as set forth in the final rejection. No further comments are deemed necessary here.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 U.S.C. § 112(b)
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 1-4 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.
As to claim 1, line 2, there is no way to understand what a “target coefficient of restitution” (emphasis added) is referring to. If the plain meaning of “target” is understood as being a desired result or aim or a goal to achieve, then the meaning of “target” becomes subjective and clouds the scope of the claim. See MPEP 2173.05(b)(IV). Considering the fact that not even a range of coefficient of restitution values has been recited, different skilled artisans may identify a different target coefficient of restitution, thus creating confusion as to what exactly the desired result or aim actually is when attempting to identify a particular coefficient of restitution.
As to claim 2, this claim shares the indefiniteness of claim 1.
As to claim 3, what exactly is an “alternative deformable member” (emphasis added)? If the plain meaning of “alternative” is understood as being a different option, then the meaning of “alternative” becomes subjective and clouds the scope of the claim. See MPEP 2173.05(b)(IV). It is further noted that the claimed method does not require providing more than one deformable member or more than one adjustment driver. How is an “alternative” supposed to be chosen or considered?
As to claim 4, this claim shares the indefiniteness of claim 2 (as dependent upon independent claim 1).
Claim Rejections - 35 U.S.C. § 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 (i.e., changing from AIA to pre-AIA ) 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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
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 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2019/0201760 to Golden et al (hereinafter referred to as “Golden”) in view of US PUBS 2019/0209904 to Motokawa et al (hereinafter referred to as “Motokawa”) and also in view of US PUBS 2012/0289358 to Oldknow et al (hereinafter referred to as “Oldknow”).
As to claims 1 and 3, Golden discloses a golf club head (300) with an aperture (i.e., paragraph [0016]) through which a deformable member (302) can be introduced, with the deformable member (302) abutting a rear surface of the striking face (318), as shown in FIG. 3B. Golden further includes an adjustment driver (330). Since the adjustment driver (330) is intended to adjust and increase the compression of the deformable member (302) upon rotation of the adjustment driver (330), it is clear that the adjustment driver is capable of increasing the diameter of a portion of the deformable member (302) that is closest to the rear surface of the striking face (318). See paragraph [0086] – [0087], [0090] and [0092] in Golden and describing the deformable member (i.e., elastomer element 302) and the rotation of the adjustment driver (330), along with the effect on the compression of the deformable member through rotation of the adjustment driver.
However, Golden does not explicitly detail the method steps of “identifying a target coefficient of restitution” and “choosing an appropriate deformable member”. Motokawa teaches designing a golf club head may comprise the steps of 1) an expected or target coefficient of restitution is recognized, 2) a prototype club head is selected and the coefficient of restitution is measured or simulated, 3) modifications are made to the prototype club head and 4) another expected coefficient of restitution is calculated (i.e, see paragraphs [0037], [0041] and [0048], along with FIG. 7). While Motokawa teaches that an appropriate modification to the club head is made to effectuate a change in the coefficient of restitution, Motokawa does not specifically discuss that an appropriate deformable member is selected, as required by claim 1, or that an alternative deformable member may be selected to provide a change in the coefficient of restitution, as further required by claim 3. Here, Oldknow teaches one or more of a variety of different materials may be selected and fitted within a cavity and abutting a rear surface of the striking portion of a golf club head. The material(s) may be introduced as part of the club head assembly in order to change the coefficient of restitution (i.e., see paragraphs [0087] – [0088]). In view of the teaching in Motokawa, coupled with the additional teaching in Oldknow, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Golden by identifying a target coefficient of restitution and selecting a suitable deformable member or selecting an alternative deformable member that meets the target coefficient of restitution, with there being a reasonable expectation of success that altering the coefficient of restitution of the club head with the introduction of a specific deformable member would have altered the ball striking characteristics of the club head (e.g., higher coefficient or restitution would have increased ball speed upon impact), with the goal being to enable the skilled artisan to select a deformable member that maximizes the performance of the club head.
As to claim 2, note that Motokawa shows it to be obvious to use appropriate testing procedures to generate information about the coefficient of restitution (i.e., again, see paragraphs [0037], [0041] and [0048]). It is also noted that Golden already teaches that any one of a number of differently-shaped deformable members (i.e., elastomer elements 302) may be installed within the opening to the rear of the striking face (i.e., see paragraphs [0099] – [0101] and that testing is employed “to determine the effectiveness of different elastomer elements” (i.e., see paragraph [0144]). With the combined teachings of Golden and Motokawa, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Golden by testing the coefficient of restitution value, as required by claim 2, as periodic testing would have enabled the club head designer to measure and track the coefficient of restitution as the deformable member is adjusted (i.e., replaced or otherwise altered).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2019/0201760 to Golden et al (hereinafter referred to as “Golden”) in view of US PUBS 2019/0209904 to Motokawa et al (hereinafter referred to as “Motokawa”) and also in view of US PUBS 2012/0289358 to Oldknow et al (hereinafter referred to as “Oldknow”) and also in view of US PUBS 2009/0163295 to Tseng.
Golden, in view of Motokawa and Oldknow, has been discussed above. Here, Golden, as modified by Motokawa and Oldknow, lacks a disclosure of a method step involving “placing a spacer between said deformable member and said adjustment driver in order to meet said target coefficient of restitution value”. Tseng shows it to be old in the art to make use of a spacer (i.e., a washer 42; FIG. 1; paragraph [0036]) that abuts a rear surface of a deformable material (30). Logically, the washer clearly serves to prevent damage to the elastomeric material during tightening of the bolt/base assembly (i.e., elements 41, 43). In view of the teaching in Tseng and the above reasoning, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the device in Golden by installing a spacer between elastomeric material (302) and the adjustment driver (330), with there being a reasonable expectation of success that a spacer would have served to prevent damage to the softer deformable member (302) during tightening of the adjustment driver (330). Here, any modification made between the adjustment driver and the deformable member (e.g., adding a further compressive force to the deformable member as a result of a spacer abutting the deformable member) would also have altered the coefficient of restitution value of the golf club head.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights