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 .
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.
Claims 1-20 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.
The independent claims have been amended to recited the indefinite language of, “a lower hosel component formed independently and separately from said main body chassis”. Such is open to multiple interpretations the first being that such is broad and can be used to describe any a separate and independent element that is formed apart from another element. More likely, such is an attempt to insert a process limitation within the apparatus claim. However, such does not clearly set forth the steps or structures applicant is seeking to exclude others from practicing. Where the limitation appears directed to the separate element 1338 such as in fig. 13 that is attached at 1337, merely being separately formed does not necessitate later being attached rendering the scope of the claim inferential.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 6-10, and 15-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Galloway et al. 6,575,845.
As set forth in the previous office action;
“As to claim 1 and 10, Galloway teaches a golf club head comprising a body 40 with main body chassis 50 having an upper hosel opening 59 and a lower hosel opening as shown in fig. 6, wherein said main body chassis forms a striking face portion 72 that defines a forwardmost vertical plane at 73, and wherein said main body chassis further comprises a recess 80 around a perimeter of said main body chassis, an upper hosel component 121 adapted to engage said upper hosel opening, and a lower hosel component 120 adapted to engage said lower hosel opening, and a crown portion 62 wrapping around a skirt 64 of said golf club head forming at least a portion of a sole where 64 is in the lower portion of the club capable of being defined as the sole of the club.
The crown of a first material is considered shown where the crown portion 60 is “non-metal” (col. 7, ln. 11) and a body of a second material is considered met where the 6-4 titanium alloy has a density of 4.43 g/cc (col. 6, ln. 21) meeting the density of about 4.5 g/cc as further called for by claim 19.
Claims 6-9 are considered shown where the hosel 54 “may be composed of a non-similar material that is light weight” (col. 8, ln. 20).
Claim 18 is met where “other thermoplastics” (col. 7, ln. 14) such as high-density plastics are known to range between 1.16-1.58 g/cc that is inherently below the about 2.0 g/cc being claimed.
As to claims 15-17 and 20, the crown portion overlaps said body portion at said recess of said body portion as best shown in fig. 9 and wherein a forwardmost point of said crown portion is located less than about 17.5 mm away from said forwardmost vertical plane where Galloway teaches that d ranges from .2-1 inch (5.08-25.4mm) (col. 6, ln. 51).”
Where the claims have been amended to recite, a lower hosel component formed independently and separately from said main body chassis, such a recitation is broad and is considered met by the component 120 as the element is considered to be separated from the other elements making it separately formed.
Applicant argues that Galloway is “integral” and cast and cannot meet this amended limitation. The examiner does not agree with such an narrow interpretation of the limitation that such would preclude an integrally cast club. Instead, all that is broadly required is that the elements of the prior art be formed such that they are “independent” and separate”.
To the extent that applicant’s attempt to characterize the relationship of his fig. 13, an alternative ground for rejection is further applied below.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 6-10, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galloway in view of Yi et al.
Claims 1 and 10 have been amended to broadly recite without any specific structure a lower hosel component formed independently and separately. Yi teaches he use of separately formed lower hosel components 114 and 116 to secure the shaft to the club head. To have used a lower hosel component as taught by Yi on Galloway would have been obvious in order to adjust the weight and improve the aerodynamics as set forth in his abstract.
Claim(s) s 2-5 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galloway in view of Ogg 12,179,076 as set forth in the previous office action.
Claim(s) 2-5 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galloway in view of Yi et al. and further in view of Ogg 12,179,076 for the reason as set forth in the previous office action.
Conclusion
Applicant's arguments filed 8/7/26 have been fully considered but they are not persuasive as set forth above in the ground for rejection
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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 Nicholas Weiss at (571)270-1775.
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, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I 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.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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