DETAILED ACTION
Allowable Subject Matter
Claims 8-9 are allowed.
Claim 8 includes limitations directed towards 8. The shaft according to Claim 1, wherein a content of the thermoplastic resin is 1 mass% or more and 80 mass% or less with respect to a total mass of the thermosetting resin and the thermoplastic resin. The closest art of record Kumamoto teaches a shaft with different layers however it is silent with regards to the mass % as shown in the limitations above. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
Claim 9 includes limitations directed towards 9. The shaft according to Claim 1, wherein a ratio of a thickness of the layer B to a sum of thicknesses of the layers A and the thickness of the layer B (the thickness of the layer B/the sum of the thicknesses of the layers A and the thickness of the layer B) is 0.5% or more and 90% or less. The closest art of record Kumamoto teaches a shaft with different layers however it is silent with regards to the ratio of thickness and the other limitations as shown above. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-7, 10-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kumamoto (US 20030073508 A1).
Regarding claim 1, Kumamoto teaches 1. A shaft comprising: a plurality of layers A; and at least one layer B, See Fig. 2B; [0063+], wherein the layer A comprises a cured product of a thermosetting resin, and See Fig. 2B; [0063+]; (20), the layer B comprises a thermoplastic resin and a continuous fiber substrate, and See Fig. 2B; [0063+]; (10), the at least one layer B is disposed between two layers A. See Fig. 2B.
Regarding claim 2, Kumamoto teaches 2. The shaft according to Claim 1, wherein the continuous fiber substrate is a fabric substrate or a unidirectional fiber substrate. See Fig. 2B; [0063+].
Regarding claim 3, Kumamoto teaches 3. The shaft according to Claim 1, wherein the layer A is a fiber-reinforced resin layer comprising a continuous fiber substrate. See [0063+].
Regarding claim 4, Kumamoto teaches 4. The shaft according to Claim 3, wherein the continuous fiber substrate comprised in the layer A is a fabric substrate or a unidirectional fiber substrate. See [0063+].
Regarding claim 6, Kumamoto teaches 6. The shaft according to Claim 1, wherein the thermosetting resin comprises an epoxy resin. See [0041+].
Regarding claim 7, Kumamoto teaches 7. The shaft according to Claim 1, wherein the continuous fiber substrate comprised in the layer B comprises carbon fibers. See [0043+].
Regarding claim 10, Kumamoto teaches 10. The shaft according to Claim 1, wherein the shaft is hollow. See Fig. 2B.
Regarding claim 11, Kumamoto teaches 11. The shaft according to Claim 1, wherein the layer A is disposed as an outermost layer. See Fig. 2B.
Regarding claim 12, Kumamoto teaches 12. The shaft according to Claim 11, wherein the layers A and the layer B are disposed in an order of the layer A, the layer B, and the layer A. See Fig. 2B.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 International Co. v. Teleflex Inc., 550 U.S. 398, 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. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(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;
(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.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kumamoto (US 20030073508 A1) in view of Kusumoto (US 6106413 A).
Regarding claim 5, Kusumoto teaches 5. The shaft according to Claim 1, wherein the thermoplastic resin comprises polyetherimide. See 8:66+.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kumamoto with Kusumoto as the use of a known material in the art is an indication of obviousness. Additionally, reference In re Leshin where the courts held that the selection of a known material to make an apparatus of a type made of similar material prior to the invention was held to be obvious. (See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kogawa US 20240307748 A1 - which teaches a golf club shaft with multiple layers.
Shigetoh US 5088735 - which teaches a shaft for golf club with wound fiber layer.
Negishi US 5653646 A - which teaches a shaft for a golf club with a thermosetting resin.
Furukawa WO 2015004819 A1 - which teaches a golf club shaft with thermosetting resin.
Kanno WO 2011096129 A1 - which teaches a golf club shaft with thermosetting resin.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
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