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 18-20 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
Claim 18 is inferential an unclear as it fails to define the scope of a body contact area with respect to any recited structure. Where the claim recites both a body and an internal weight it recites no structures or relationships between the two. Here one must infer that there is some type of “contact” between them, but it is unclear how the would occur and how such an area is to be measured.
Similarly with respect to claims 19 and 20 on cannot determine the limits or the relationship of something considered to be a “weighting contact area’.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 10-12, 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Evans 11,207,577.
As to claim 1, Evans shows a club head comprising: a frontal striking face portion located at a frontal portion of said golf club head, and an aft body portion, attached to a rear of said striking face portion; wherein the aft body portion further comprises a lightweight shell, wherein said lightweight shell further comprises a sole recessed skirt as shown in fig. 10 and having a weighting system sandwiching both an internal surface and an external surface of said recessed skirt at 186, wherein said weighting system further comprises; an internal weight housing 144, an outer weight housing 181, and a high density weight 182, wherein an external surface of said internal weight housing mates with an internal surface of said recessed skirt, and wherein an internal surface of said outer weight housing mates with an external surface of said recessed skirt.
Claim 2 is shown where a portion of said outer weight housing directly engages said internal weight housing at surface of 184.
Claim 10 is interpreted as claim 1 above where the internal weight housing 184 can be described as having H shaped internal ribbing structure 189.
Claims 11 and 12 are broadly met as shown in fig. 11 where toe and heel side vertical ribs 189 are connected by a horizontal rib at 194 and are consided to have the same height.
As to claims 16 and 17, 108 is considered to be a a lightweight crown sub-shell and 140 a lightweight sole sub-shell that are joined together via lap joints away from the skirt portion as best shown in fig. 12B.
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) 14, 15 and 18-20 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans.
While the size of the ribs 189 of Evans are not disclosed with respect to claims 14 and 15, the selection of a size with in the claimed range suitable to secure the weight structure would have been an obvious matter of design choice. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Similarly, with respect to claims 18-20 the corresponding elements to claim 1 are considered shown as set forth above with 192 of fig. 12B considered to be a body contact area and 191 a weighing contact area. While it size is not disclosed with respect to either, the selection of a size suitable secure the weighting system would have been obvious l
Conclusion
Claims 3-9 and 13 are 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.
The use of adhesives in Evans does not appear fairly taught in Evans as called for in claims 3-9. The different height rigs as called for in claim 13 cannot be fairly construed to be shown by Evans.
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.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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