DETAILED ACTION
This Office action is responsive to communication received 12/16/2025 – 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, 3-22, 24-31 and 34-42 remain pending.
Specification
The amendment to the specification received 12/16/2025 has been entered.
Response to Arguments
Applicant’s arguments received 12/16/2025 have been acknowledged. The applicant addresses the various outstanding objections and rejections with amendments to the claims and to the specification. The applicant introduces new claims 41-42, noting that claim 41 is similar to original claim 1 and further highlights the additional features of markings on the shaft and a stiffening element in the club head assembly.
IN RESPONSE:
The amendments to the claims have introduced new instances of indefiniteness under 35 U.S.C. §112(b) into the claims. Moreover, the newly-added claim 41 is being rejected under 35 U.S.C. §103, as set forth hereinbelow. No further comments are deemed necessary here.
Claim Objections - Minor
Claim 31 is objected to because of the following informalities: In line 15, it appears that “an” should instead read --and--. The language introduced within claim 31 appears to have been borrowed in part from claim 33, wherein claim 33 has now been cancelled. Note that original claim 33 included language which was objected to for reasons similar to the instant objection now in claim 31. See the “Claim Objections” at the top of scanned page 4 in the non-final Office action, mailed 09/16/2025, wherein it is noted that “an” should read --and--. It would appear that the most recent amendment carried the limitations from claim 33 without correction of this minor objection to the term “an”. Appropriate correction is required.
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 10-21 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 10, this claim depends from cancelled claim 2.
As to claims 11-21, these claims share the indefiniteness of claim 10.
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 (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.
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.
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.
"[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.
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.
I. EXEMPLARY RATIONALES
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.
/
/
/
/
/
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 4,027,886 to Katsube in view of USPN 5,586,946 to Haber et al (hereinafter referred to as “Haber”) and also in view of USPN 2,135,648 to Stumpf and also in view of USPN 3,848,737 to Kenon.
As to claim 1, Katsube shows a golf training aid configured as a golf club (FIG. 3), comprising an elongated shaft (2) extending from a grip end (1) to an opposed club head end (3), a movable sound element assembly (8) for coupling to the shaft between the grip end and the club head end (FIG. 3), wherein the movable sound element assembly (5) is configured to retain a sound element (8) and to selectively release the sound element (8) based on a selected swing speed of the golf club, and a club head assembly (3) coupled to the club head end of the shaft (2) and having a flange element (6) sized and configured for creating a contact surface, wherein the sound element (8) when released from the movable sound element assembly (5) axially moves along the shaft (2) and strikes the contact surface of the flange element (6). The shaft in Katsube includes a uniform outer diameter (i.e., FIG. 3).
Katsube differs from the claimed invention in that Katsube lacks “an adjustable grip assembly coupled to the grip end of the shaft and configured to be axially and rotationally movable relative to the shaft”. Haber shows a golf training aid configured as a golf club, comprising an elongated shaft (10) extending from a grip end to an opposed club head end, an adjustable grip assembly (20, 22) coupled to the grip end of the shaft and configured to be axially and rotationally movable relative to the shaft (i.e., col. 5, lines 32-52), and a club head (2) assembly coupled to the club head end of the shaft, as shown in FIG. 6. The adjustable grip assembly in Haber enables the golfer to grip and play the golf club in a consistent and optimal manner (i.e., col. 1, lines 7-12 and 39-44; col. 5, lines 47-52; and col. 6, lines 3-7). In view of the teaching in Haber, 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 in Katsube by replacing the grip (1) with an adjustable grip assembly coupled to the grip end of the shaft and configured to be axially and rotationally movable relative to the shaft, the motivation being to enable a golfer to adjust the gripping member(s) to produce a more comfortable grip assembly that a golfer may consistently hold onto for achieving more consistent and accurate shots.
Katsube further lacks “wherein the shaft has markings formed thereon that correspond to a plurality of swing speed positions”. Stumpf shows it to be old in the art to provide a shaft with markings along the length of the shaft, with the markings corresponding to a plurality of swing speed positions (i.e., page 2, col. 2, lines 17-50). In view of the teaching in Stumpf, 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 Katsube by providing markings formed on the shaft that correspond to a plurality of swing speed positions to make it easier for a golfer to focus on repeatedly practicing and correcting their swing.
Katsube also lacks “wherein the club head assembly includes a stiffening element for seating at least partly within a passage formed in the shaft to provide support to the shaft”. Kenon shows it to be old in the art to provide a club head assembly with a stiffening element (i.e., element 24; col. 2, lines 64-67; FIG. 5) that is fitted within a shaft portion and helps to support and stiffen the area of the shaft adjacent the club head assembly. In view of the teaching in Kenon, 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 Katsube by including a stiffening element for seating at least partly within a passage formed in the shaft, the motivation being to help prevent buckling or bending of the lower shaft portion and to steadfastly couple the club head assembly to the lower shaft portion.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Figs. 1, 1A in Reilly; and
Fig. 1 in Hurdzan.
Allowable Subject Matter
Claims 1-9, 22 and 24-31 and 34-40 are allowable over the prior art references of record. Note the minor objection to claim 31 which must also be addressed.
As to independent claim 1, the prior art of record does not disclose and does not fairly suggest the combination of claimed features that requires a golf training aid configured as a golf club, comprising an elongated shaft extending from a grip end to an opposed club head end, an adjustable grip assembly coupled to the grip end of the shaft and configured to be axially and rotationally movable relative to the shaft, a movable sound element assembly for coupling to the shaft between the grip end and the club head end, wherein the movable sound element assembly is configured to retain a sound element and to selectively release the sound element based on a selected swing speed of the golf club, and a club head assembly coupled to the club head end of the shaft and having a flange element sized and configured for creating a contact surface, wherein the sound element when released from the movable sound element assembly axially moves along the shaft and strikes the contact surface of the flange element, wherein the movable sound element assembly includes: a sleeve element for seating about the shaft, a securing mechanism disposed about the sleeve element and configured to apply a radially inwardly extending force to the sleeve element, a flange housing sized and configured for retaining the sleeve element and the securing mechanism and having a recess formed therein for seating a magnet, wherein the magnet secures the sound element to the movable sound element assembly, and a nut housing having an inner surface forming a chamber, wherein the nut housing is configured to be selectively secured to the flange housing, wherein the flange housing and the nut housing house the sleeve element and the securing mechanism.
As to independent claim 22, the prior art of record does not disclose and does not fairly suggest the combination of claimed features that requires a golf training aid configured as a golf club, comprising an elongated shaft extending from a grip end to an opposed club head end,
a movable sound element assembly for coupling to the shaft between the grip end and the
club head end, wherein the movable sound element assembly is configured to retain a sound
element and to selectively release the sound element based on a selected swing speed of the golf club, and a club head assembly coupled to the club head end of the shaft and having a flange element sized and configured for creating a contact surface, wherein the sound element when released from the movable sound element assembly axially moves along the shaft and strikes the contact surface of the flange element, wherein the movable sound element assembly includes: a sleeve element for seating about the shaft, a securing mechanism disposed about the sleeve element and configured to apply a radially inwardly extending force to the sleeve element, a flange housing sized and configured for retaining the sleeve element and the
securing mechanism and having a recess formed therein for seating a magnet, wherein the magnet secures the sound element to the movable sound element assembly, and a nut housing having an inner surface forming a chamber, wherein the nut housing is configured to be selectively secured to the flange housing, wherein the flange housing and the nut housing house the sleeve element and the securing mechanism.
As to independent claim 31, the prior art of record does not disclose and does not fairly suggest the combination of claimed features that requires a golf training aid configured as a golf club, comprising an elongated shaft extending from a grip end to an opposed club head end, an adjustable grip assembly coupled to the grip end of the shaft and configured to be axially and rotationally movable relative to the shaft, and a club head assembly coupled to the club head end of the shaft, wherein the adjustable grip assembly includes: a first stationary subassembly configured to be secured to the grip end of the shaft and is stationary relative thereto, and a second movable subassembly configured to be selectively coupled to the first stationary subassembly and sized and configured to be rotationally movable relative to the shaft and axially movable along the shaft and wherein the first stationary subassembly includes a hub element having a circular tab portion having an outer circumferential surface having a plurality of teeth formed thereon and a stop element, and a shaft extension element coupled to and extending outwardly from the circular tab portion and configured to be secured to the grip end of the shaft.
Claims 10-21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 42 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the cancellation of claim 2 created an indefiniteness in claims 10-21 under 35 U.S.C. §112(b). Newly-introduced claim 41 necessitated the new grounds of rejection under 35 U.S.C. §103.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571)-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711