DETAILED ACTION
This Office action is responsive to communication received 05/01/2026 – 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 .
Status of Claims
Claims 1-4 remain pending.
Abstract
The amended abstract, received 05/01/2026, has been entered.
Response to Arguments
In the arguments received 05/01/2026, the applicant contends that the claimed subject matter is adequately described in at least paragraphs [00243] – [00248] of the specification, with these passages allegedly adequately describing how the coefficient of restitution affects performance and how the deformable material affects the coefficient of restitution. The applicant moves on to argue that the meaning of the terms “target” and “alternative”, which are the subject of a rejection under 35 U.S.C. §112(b), is clear and unambiguous, given the well-known nature of these terms in the art and given the plain meaning of these terms.
Regarding the rejection(s) of the claims under 35 U.S.C. §103, the applicant contends that the prior art of record, namely US PUBS 2008/0305888 to Tseng, does not show the requirements of claim 5, which have now been incorporated within independent claim 1, wherein Tseng (‘888) allegedly fails to show that a portion of a deformable member is deformed as it is installed into a golf club head to cause a diameter of a portion of the deformable material abutting the rear surface of the striking face to be larger than a diameter of an aperture through which the deformable member is installed.
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IN RESPONSE:
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 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).
With respect to the applicant’s arguments of the rejection of the claims under 35 U.S.C. §103, it is noted that Tseng (‘888) clearly acknowledges multiple ways of installing a deformable elastomeric material within a cavity portion of a club head, with one method involving sizing a shock absorbing material to be larger in size than the volume of the cavity and compressing the shock absorbing material within the cavity (i.e., paragraph [0005] - [0006]), and a second method involving injecting shock absorbing material through an aperture into the cavity (i.e., paragraph [0007]). The primary reference to Mick discloses a golf club head (16) with an aperture (44) through which a deformable member (36) is introduced (i.e., as the polyurethane is introduced within the cavity, the material is heated and cured and is thus deformed), with the deformable member (36) abutting a rear surface of the striking face (18). Thus, the modification of the golf club head in Mick using an alternative installation procedure as specifically taught by Tseng (‘888) for installing the elastomeric material within a cavity of the golf club head would have involved combining prior art elements (i.e., introducing an elastomeric material within an interior portion of the golf club head) according to known methods (i.e., sizing a shock absorbing material to be larger in size than the volume of the cavity and compressing the shock absorbing material within the cavity as it is installed, as taught by Tseng ‘888) to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Although the applicant has not specifically addressed the rejection of claims 1-4 and 6 under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0028883 to Morin et al (hereinafter referred to as "Morin") 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"), it is noted that the limitations of original claim 5 have now been introduced within amended independent claim 1. Since claim 5 was not rejected using the combination of Morin, Motokawa and Oldknow, the rejection of claims 1-4 and 6 under 35 U.S.C. §103 and with consideration of the combination of Morin, Motokawa and Oldknow is no longer deemed applicable.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 U.S.C. § 112(a)
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 1-4 STAND 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.
As to independent claim 1, along with dependent claims 2-4, 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.
Essentially, the applicant’s disclosure makes a brief reference to the method of manufacturing a golf club head in each of paragraphs [0018] and [0247], reproduced below for the convenience of the applicant, along with providing a flowchart of the method steps in FIG. 67, reproduced hereinbelow.
“[0018] An additional non-limiting embodiment of the present technology includes a method of manufacturing a golf club head including identifying a target coefficient of restitution value for the golf club head; choosing an appropriate deformable member and adjustment driver for the golf club head to reach the target coefficient of restitution value; installing the appropriate deformable member and adjustment driver into the golf club head through an aperture formed in a back portion of the golf club head, wherein the deformable member abuts a rear surface of the striking face of the golf club head.”
“[0247] One method of utilizing the embodiments described herein is outlined in FIG. 67. During construction of the golf club head 800, one can identify a target coefficient of restitution of the golf club head 1211, then they can choose appropriate deformable member configuration to reach the target coefficient of restitution value 1212, then they can install the chosen deformable member configuration into the golf club head 1213, then they can optionally test the coefficient of restitution of the golf club head and modify the deformable member configuration if necessary 1214, then they can optionally repeat the prior step as necessary 1215. Alternatively, rather than utilizing coefficient of restitution as a measurement and target value for the golf club head, the characteristic time can be utilized, which is analogous to the coefficient of restitution and easier to measure.”
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With the above passages and drawing being the only explanation of the method of manufacturing a golf club head, there is no way to determine exactly how a target coefficient of restitution of the golf club head is to be identified. Exactly what parameters is a person supposed to use or rely on to come up with a “target coefficient of restitution”? Is the target coefficient of restitution selected randomly? Or is the selection of a target coefficient of restitution based upon a player’s performance with a known coefficient of restitution that is a part of a club head that a golfer has already used? Moreover, there is no way to understand exactly what an “appropriate” deformable member is. Further, how is the coefficient of restitution supposed to be tested? There are no details of any specific steps, parameters or equipment used for evaluating the coefficient of restitution. In addition, and more specific to claim 4, how does the spacer recited in claim 4 serve to “meet said target coefficient of restitution value”? There is no explanation provided explaining the effect of the spacer as applied to the claimed method.
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 STAND 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 is referring to.
As to claim 2, this claim shares the indefiniteness of claim 1.
As to claim 3, what exactly is an “alternative” deformable member?
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.
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Claims 1-3 are rejected 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.
As to claims 1 and 3, Mick discloses a golf club head (16) with an aperture (44) through which a deformable member (36) is introduced (i.e., as the polyurethane is introduced within the cavity, the material is heated and cured and is thus deformed), with the deformable member (36) abutting a rear surface of the striking face (18), as shown in FIGS. 3-4. Mick further includes an adjustment driver (i.e., a threaded brass plug).
However, Mick 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 Mick 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.
Mick clearly shows that the deformable member (36), after being installed within the club head and arranged so as to be in abutting relationship with a rear surface of the striking face portion, includes a diameter adjacent the rear surface that is larger than a diameter adjacent the aperture (44) at the rear of the club head (i.e., see FIGS. 2-4). However, Mick does not explicitly detail the step of “deforming said deformable member as it is installed into said golf club head”. Here, Tseng (‘888) is cited to show that the prior art acknowledges multiple ways of installing a deformable elastomeric material within a cavity portion of a club head, with one method involving sizing a shock absorbing material to be larger in size than the volume of the cavity and compressing the shock absorbing material within the cavity (i.e., paragraph [0005] - [0006]), and a second method involving injecting shock absorbing material through an aperture into the cavity (i.e., paragraph [0007]). In view of the teaching in Tseng (‘888), 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 Mick device by introducing the elastomeric material (36) within the sleeve (34) in such a way that the elastomeric material is made larger in size than the volume of the sleeve and subsequently compressing the elastomeric material as it is introduced into the sleeve via the rear aperture (44). The modification of the golf club head in Mick using an installation procedure as taught by Tseng (‘888) for installing the elastomeric material within a cavity of the golf club head would have involved combining prior art elements (i.e., introducing an elastomeric material within an interior portion of the golf club head) according to known methods (i.e., sizing a shock absorbing material to be larger in size than the volume of the cavity and compressing the shock absorbing material within the cavity, as taught by Tseng ‘888) to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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 Mick already teaches that testing is employed to evaluate the performance of a club head that is fitted with a particular polyurethane material (i.e., col. 3, line 63 through col. 4, line 7). With the combined teachings of Mick 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 Mick 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 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 and also in view of US PUBS 2009/0163295 to Tseng.
Mick, in view of Motokawa, Oldknow and Tseng (‘888) ,has been discussed above. Here, Mick, as modified by Motokawa, Oldknow and Tseng (‘888), 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 (‘295) 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 (‘295) 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 Mick by installing a spacer between elastomeric material (36) and the brass metal plug (46), with there being a reasonable expectation of success that a spacer would have served to prevent damage to the softer elastomeric material during tightening of the metal plug. Here, any modification 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 have altered the coefficient of restitution value of the golf club head.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, applicant’s amendment to independent claim 1 to now include the limitations from original claim 5 along with the further cancellation of claim 6 necessitated the new grounds of rejection.
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 SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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