DETAILED ACTION
Priority
The limitation of a “powder” in combination with a “sheet material” as recited in the claims 1 and 12 is first found in parent application 17/338,435, par. [00108], with a filing date of 6/3/21. As such, claims 1 and 12 receive a filing date of 6/3/21.
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 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.
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, 4, 6-9, 11, 12, 14-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable Tassistro et al. (herein “Tassistro”; US Pub. No. 2019/0118049 A1; as cited in applicant’s IDS) in view of Sasamoto et al. (herein “Sasamoto”; US Pat. No. 5,348,302).
Regarding claim 1, Tassistro discloses a forged golf club head (Figs. 12B, 26 and par. [0075]) comprising: a body portion having a face cavity (Fig. 39; noting several cavities are present and may collectively be “a cavity”, see also Figs. 12B or 26 disclosing a “single and continuous” cavity); a lightweight weight adjustment portion comprising a metallic sheet of material encased within the face cavity (Fig. 12B, item 1214 and see par. [0105]; also see par. [0143]; noting the top heel and the lower heel; see par. [0098] making obvious “metallic”); and a striking face insert adapted to cover the face cavity (Fig. 1B, item 1218 and par. [0105]; see also Fig. 39, item 3918). It is noted that Tassistro does not specifically disclose a non-metallic sheet material for the lightweight portion, that the lightweight portion includes in combination a powder type material, wherein the non-metallic sheet of material is a glass material, and wherein the powder type material is non-metallic. However, Tassistro makes it very clear that “numerous other materials can also be used as the third [lightweight] material without departing from the scope and content of the present invention” (par. [0098]). In addition, Sasamoto discloses a similar insert used behind a club head face (Fig. 2, item 47) with non-metallic material for the lightweight portion (Fig. 2, item 47 and col. 3, lines 58-63; noting the material can be ABS resin mixed with glass fibers; both being “non-metallic”); wherein the lightweight portion includes in combination a powder type material (col. 3, lines 58-63; noting specifically “carbon powder” may be used in a “mixture”, i.e. “in combination”), wherein the non-metallic material is a glass material (col. 3, lines 58-63; noting ABS resin in combination with “glass fibers” makes obvious a “glass material”; the Examiner taking the broadest reasonable interpretation of the claim language), and wherein the powder type material is non-metallic (col. 3,lines 58-63; noting “carbon powder” is “non-metallic”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Tassistro to make the lightweight portion includes in combination with a powder type material, wherein the non-metallic sheet of material is a glass material, and wherein the powder type material is non-metallic as taught and suggested by Sasamoto because doing so would be combining prior art elements (using a lightweight sheet material behind the face, and using a lightweight material behind the face made of resin, glass and powder) according to known methods (using the resin, glass and powder to create a lightweight sheet material, consistent with Tassistro) to yield predictable results (the continued ability to use a lightweight sheet material behind the striking face of an iron, the sheet material being made from both glass and powder).
Regarding claim 3, the combined Tassistro and Sasamoto disclose that the non-metallic sheet is the same shape as the striking face insert (Tassistro: Fig. 12B, item 1214 and par. [0105]; Sasamoto: col. 3, lines 58-63 making obvious that it can be “non-metallic”).
Regarding claim 4, the combined Tassistro and Sasamoto disclose that the non-metallic sheet of material contains a plurality of cutouts (Tassistro: Fig. 22, item 2214).
Regarding claims 6 and 14, the combined Tassistro and Sasamoto disclose at least one high density weight adjustment portion encased within at least one weight cavity formed in the body portion (Tassistro: Fig. 26, item 2615 and par. [0127]).
Regarding claims 7 and 15, the combined Tassistro and Sasamoto disclose that the at least one high density weight adjustment portion is encased monolithically within the at least one weight cavity (Tassistro: Fig. 26, item 2615 and par. [0127]; noting it is “monolithically encased” when the face plate is added to seal it shut).
Regarding claims 8 and 16, the combined Tassistro and Sasamoto disclose that a density of the at least one high density weight adjustment portion is greater than a density of the body portion (Tassistro: Fig. 26, item 2615 and par. [0127]; see par. [0092] specifically stating that “heavy” weights have a density greater than the material used for the body).
Regarding claims 9 and 17, the combined Tassistro and Sasamoto disclose that the at least one high density weight adjustment portion is located near a sole of the golf club head (Tassistro: Fig. 26, item 2615 and par. [0127]).
Regarding claims 11 and 19, the combined Tassistro and Sasamoto disclose that the at least one high density weight adjustment portion is located near a toe portion of the sole of the golf club head (Tassistro: Fig. 26, item 2615 and par. [0127]).
Regarding claim 12, Tassistro discloses a forged golf club head (Figs. 12B, 26 and par. [0075]) comprising: a body portion having a face cavity Fig. 39; noting several cavities are present and may collectively be “a cavity”, see also Figs. 12B or 26 disclosing a “single and continuous” cavity); a lightweight weight adjustment portion comprising a metallic sheet of material encased within the face cavity (Fig. 12B, item 1214 and see par. [0105]; also see par. [0143]; noting the top heel and the lower heel; see par. [0098] making obvious “metallic”); and a striking face insert adapted to cover the face cavity (Fig. 1B, item 1218 and par. [0105]; see also Fig. 39, item 3918); wherein the metallic sheet of material contains a plurality of cutouts (Fig. 26, item 2640; noting a different embodiment, but still obvious under Boston Scientific) and wherein the body portion and the striking face insert are made from the same material (par. [0105]). It is noted that Tassistro does not specifically disclose a non-metallic sheet material for the lightweight portion, that the lightweight portion includes in combination a powder type material, wherein the non-metallic sheet of material is a glass material, and wherein the powder type material is non-metallic. However, Tassistro makes it very clear that “numerous other materials can also be used as the third [lightweight] material without departing from the scope and content of the present invention” (par. [0098]). In addition, Sasamoto discloses a similar insert used behind a club head face (Fig. 2, item 47) with non-metallic material for the lightweight portion (Fig. 2, item 47 and col. 3, lines 58-63; noting the material can be ABS resin mixed with glass fibers; both being “non-metallic”); wherein the lightweight portion includes in combination a powder type material (col. 3, lines 58-63; noting specifically “carbon powder” may be used in a “mixture” or “in combination”), wherein the non-metallic material is a glass material (col. 3, lines 58-63; noting ABS resin in combination with “glass fibers” makes obvious a “glass material”; the Examiner taking the broadest reasonable interpretation of the claim language), and wherein the powder type material is non-metallic (col. 3,lines 58-63; noting “carbon powder” is “non-metallic”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Tassistro to make the lightweight portion includes in combination with a powder type material, wherein the non-metallic sheet of material is a glass material, and wherein the powder type material is non-metallic as taught and suggested by Sasamoto because doing so would be combining prior art elements (using a lightweight sheet material behind the face, and using a lightweight material behind the face made of resin, glass and powder) according to known methods (using the resin, glass and powder to create a lightweight sheet material, consistent with Tassistro) to yield predictable results (the continued ability to use a lightweight sheet material behind the striking face of an iron, the sheet material being made from both glass and powder).
Response to Arguments
Applicant's arguments filed 11/18/25 have been fully considered but they are not generally persuasive.
Specification
The previous objection to the specification has been overcome by the amendments.
112(b) Rejection
The previous 112(b) rejection has been overcome by the amendments.
103 Rejection
The previous secondary reference Gilbert has been replaced by Sasamoto. As such, all arguments directed at Gilbert are moot.
Turning to the limitation “wherein the non-metallic sheet is a glass material”, the Examiner construes the limitation under the broadest reasonable interpretation and does not import any limitations from the specification into the claims. That is, the Examiner construes any material that contains “glass” to be a “glass material”; that includes ABS resin with glass fibers as taught by Sasamoto. If applicant’s position is otherwise, they should amend the claim to be more specific as to the exact structure.
Furthermore, the Examiner does not import from the specification the exact form or timing of the sheet material and the powder when combined (i.e. “in combination”), but rather also takes a broadest reasonable interpretation of this language.
Conclusion
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 MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
2/3/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711